Universal Furniture International, Inc.v.Welcome Industrial Corporation

Trademark Trial and Appeal Board

Dec 31, 2012

No. 91180838 (T.T.A.B. Dec. 31, 2012)

Hearing: Mailed:
5/16/12 12/31/12

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Universal Furniture International, Inc.
v.
Welcome Industrial Corporation
_____

Opposition No. 91180838
to application Serial No. 76516735
filed on 05/02/03
_____

William M. Bryner and Laura C. Miller of Kilpatrick Townsend &
Stockton for Universal Furniture International, Inc.

Stephen E. Feldman, Nupur Shah and Kalpana Nagampalli of Feldman
Law Group for Welcome Industrial Corporation.
______

Before Quinn, Kuhlke and Greenbaum,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Welcome Industrial Corporation filed, on May 2, 2003, an
application to register the mark UNIVERSAL HOME FASHIONS (in
standard characters)(“HOME FASHIONS” disclaimed) for
Window hardware curtain rods; baker’s racks;
mirrors; hampers; shower curtain rods;
plastic tissue cover boxes; neck roll
pillows; decorative pillows (in
International Class 20);

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opp. No. 91180838

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Towel rings; towel bars; vanity trays not of
precious metal; tumblers; lotion dispensers;
toothbrush holders; soap dishes; ceramic
tissue cover boxes; wastepaper baskets (in
International Class 21);

Comforters; duvets; pillow shams; bedskirts;
bed sheet sets; window drapery; drapery
panels; fabric valences; shower curtains;
towels (in International Class 24); and

Bath rugs (in International Class 27).

Applicant claimed, for each class, first use anywhere and first
use in commerce in October 2001.
Universal Furniture International, Inc. opposed
registration under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when applied to
applicant’s goods, so resembles opposer’s previously used and
registered mark UNIVERSAL (in standard characters) for
“furniture” (in International Class 20)1 as to be likely to cause
confusion. Opposer also alleged that applicant failed to use
its mark on certain goods identified in the application.
Applicant, in its answer, denied the salient allegations in
the notice of opposition.
The record consists of the pleadings; the file of the
involved application; trial testimony, with accompanying
exhibits, taken by each party; official records, applicant’s
answers to opposer’s interrogatories and excerpts of printed

1 Registration No. 2018192, issued November 19, 1996; renewed.
Opp. No. 91180838

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publications, all introduced by opposer’s notices of reliance;
and official records, opposer’s answers to applicant’s
interrogatories, and excerpts of printed publications, all made
of record by applicant’s notices of reliance. Both parties
filed briefs,2 and both were represented by counsel at an oral
hearing held before this panel.
EVIDENTIARY OBJECTIONS
This has been a vigorously litigated case, with an
extensive record. Numerous motions were filed, and the
proceedings have spanned almost five years. Opposer, in an
appendix to its appeal brief, raised four major objections to
certain testimony and exhibits introduced by applicant.
Applicant, in its trial brief, responded to only one of
opposer’s objections, remaining silent on the other three;
applicant also raised its own objections. Although we will
consider each of the objections, we will not undertake a lengthy
discussion of them inasmuch as none of the disputed evidence,
either individually or collectively, is outcome determinative of
the merits of the likelihood of confusion claim.
We first turn to opposer’s objections, comprising four
major points. Opposer objected to exhibits 1-12, 15 and 16

2 Applicant’s brief is entirely silent in response to opposer’s pleaded
claim, which opposer also argued in its brief, that applicant has not
used its mark in connection with certain goods listed in the
application.
Opp. No. 91180838

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introduced during applicant’s cross-examination of Jeffrey
Scheffer, opposer’s chief executive officer, and the testimony
associated therewith. Opposer objected at the deposition, and
now reasserts that the evidence goes beyond the scope of direct
examination, the evidence lacked foundation and the documents
constitute hearsay.
The objections are well taken and, moreover, applicant did
not specifically respond to these objections. Thus, opposer’s
objection is sustained, and we have not considered this
evidence. In any event, this evidence is largely cumulative of
other evidence introduced by applicant relating to third-party
uses.
Opposer also objected to certain portions of the testimony
(and related documents) of Ping Kuo Lin, applicant’s founder and
chief executive officer, and John Sengelaub, applicant’s
director of operations, relating to applicant’s sales revenues
and customers. Opposer alleges that this evidence should be
excluded because none of the information was provided to opposer
despite discovery requests that asked for such information, and
because the documents underlying the sales records, the best
evidence of applicant’s sales, were not produced or offered into
evidence. Opposer’s charge is that applicant “sandbagged”
opposer by withholding probative and relevant information.
Opp. No. 91180838

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This second objection is the only one to which applicant
specifically responded, arguing that opposer’s objections fail
to take into account that the witnesses testified as to their
personal knowledge. Applicant also asserts that opposer waived
its right to object because it failed to move to compel
discovery for any deficiency. Applicant also states that the
best evidence rule is inapplicable because the objected-to
testimony is based on personal knowledge.
We agree with opposer’s assessment of the situation. As
shown by the attachments to opposer’s appendix, opposer asked
for and received some information and documents during
discovery; opposer was under the impression, after contacting
applicant about the completeness of the responses, that the
information was complete. The problem is, however, that
applicant relied upon more sales and customer information than
it provided to opposer during discovery. For example, although
applicant produced some invoices in response to Document Request
No. 24, they do not suggest that applicant’s sales were of the
magnitude to which the witnesses later testified. Likewise,
applicant responded to Document Request No. 26 regarding the
identification of customers, but the documents again do not name
many customers or suggest that applicant has nearly the number
of customers later identified by applicant. Further, while the
witnesses essentially testified about the contents of sales
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documents, the underlying documents were not produced. Thus,
applicant should not be permitted to rely on the evidence that
it failed to produce during discovery when requested to do so.
Opposer’s objection to this portion of the record is sustained.
To reiterate, however, consideration of this evidence would not
change our decision on the merits of the likelihood of confusion
claim.
Opposer’s third objection relates to the testimony of
Messrs. Lin and Sengelaub and related exhibit 20 (an eBay
listing); opposer contends that the document was not properly
authenticated. The objection is well taken inasmuch as neither
witness has any personal knowledge of the exhibit, and neither
could authenticate it. Accordingly, and inasmuch as applicant
did not respond to this objection, the objection is sustained.
See, e.g., NASA v. Bully Hill Vineyards Inc., 3 USPQ2d 1671,
1672 n.3 (TTAB 1987).
The final main objection lodged by opposer is to
applicant’s exhibits nos. 3-15 of applicant’s notice of reliance
#2. The exhibits are copies of portions of third-party
websites, and opposer objected to them as hearsay “if” offered
for the truth of any of the statements contained therein.
Applicant did not respond to the objection.
As opposer correctly points out, such documents have
limited probative value. We have considered these documents
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only to the extent of what they show on their face; we have not
considered them, however, for the truth of any matter asserted
therein, as for example, the length of time that an entity has
been in business.
We next turn to applicant’s objections. Applicant objected
to opposer’s exhibit nos. 8-15 attached to notice of reliance #3
(third-party websites) on the basis of hearsay in view of
opposer’s reliance on them to prove the truth of the matter
asserted therein, namely to show the relatedness of the goods.
As asserted by opposer, it has relied upon this evidence
specifically for what it shows on its face, namely that certain
retailers feature on their websites furniture products as well
as home textiles, home fashions and home accessories. See,
e.g., Stuart Spector Designs Ltd. v. Fender Musical Instruments
Corp., 94 USPQ2d 1549, 1552-53 (TTAB 2009).
Opposer’s reliance on this evidence is appropriate, and
applicant’s objection is overruled.
THE PARTIES
Opposer has been engaged in the manufacture and sale of
residential wood furniture for over thirty years. Opposer’s
furniture is made for every room in the home, and is sold
nationwide in a variety of retail outlets, including Macy’s and
Dillard’s. The parties have entered into a protective order,
and opposer’s impressive sales and advertising numbers have been
Opp. No. 91180838

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deemed confidential. Suffice it to say, however, that opposer’s
recent sales revenue is truly impressive. Opposer advertises
its furniture in general circulation magazines such as “Better
Homes and Gardens,” and in industry publications like “Furniture
Today.” Opposer’s promotional efforts also include its catalogs
and website, and attendance at furniture trade shows. Total
advertising expenditures are substantial. Due to opposer’s
success, opposer has attracted others, including Better Homes
and Gardens, Paula Deen and Alexander Julian, to join in co-
branding efforts related to opposer’s furniture.
Applicant has used its mark for over ten years in
connection with home furnishing goods such as bedding, window
treatments, rugs, soap dishes, toothbrush holders, and the like.
As applicant describes it, its business is focused on selling
non-furniture items such as soft home textiles, fixtures and
home accessories. Applicant’s goods are sold in chain stores
and through internet retailers, and its goods are advertised in
trade publications such as “Home Textile Weekly” and “Furnishing
Daily.”
STANDING
Opposer established its standing to oppose registration of
the involved application. In particular, opposer properly made
its pleaded registration of its mark UNIVERSAL for “furniture”
of record, as well as demonstrated use of its mark in connection
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with a wide variety of furniture items. Thus, opposer has shown
that it is not a mere intermeddler. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir.
1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
PRIORITY
In view of opposer’s ownership of a valid and subsisting
registration of its mark UNIVERSAL, opposer’s priority is not in
issue with respect to “furniture.” King Candy, Inc. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
LIKELIHOOD OF CONFUSION
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a likelihood
of confusion by a preponderance of the evidence. In any
likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the
similarities between the goods and/or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976). These factors, and the other relevant du Pont
factors in the proceeding now before us, are discussed below.
Opp. No. 91180838

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THE MARKS
We must compare opposer’s mark UNIVERSAL to applicant’s
mark UNIVERSAL HOME FASHIONS in their entireties as to
appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark UNIVERSAL HOME FASHIONS incorporates the
entirety of opposer’s mark UNIVERSAL and merely adds the highly
descriptive, if not generic words “HOME FASHIONS” which are
properly disclaimed. This fact situation generally does not
overcome a similarity between the marks. See, e.g., In re
Toshiba Med. Sys. Corp., 91 USPQ2d 1266 (TTAB 2009). The HOME
FASHIONS portion of applicant’s mark has little, if any, effect
in distinguishing source. See In re Dixie Restaurants Inc., 105
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F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (disclaimed
word “café” is less significant when comparing marks); and In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985) (“a descriptive component of a mark may be given little
weight”). Further, purchasers in general are inclined to focus
on the first word or portion in a trademark, especially where
the first portion is followed by a highly descriptive or generic
term (as in the case of HOME FASHIONS). Presto Products, Inc.
v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it
is often the first part of a mark which is likely to be
impressed upon the mind of a purchaser and remembered”). See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1692; In re Chatam Int’l. Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004); and In re Binion,
93 USPQ2d 1531, 1534 (TTAB 2009).
It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give more
weight to this dominant feature in determining the commercial
impression created by the mark. In re National Data Corp., 224
USPQ at 751 (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties.”). The
dominant portion, UNIVERSAL, of applicant’s mark is identical to
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the entirety of opposer’s mark UNIVERSAL in sound, appearance
and meaning. In focusing on the dominant portion of applicant’s
mark, we recognize, of course, that the marks ultimately must be
compared in their entireties, including the HOME FASHIONS
portion of applicant’s mark. When this comparison is made, we
find that the marks are similar in sound, appearance and
meaning. Because of the similarities between the marks in their
entireties, the marks engender similar overall commercial
impressions. See, e.g., In re Computer Sys. Ctr. Inc., 5 USPQ2d
1378, 1381 (TTAB 1987) (holding CSC ADVANCED BUSINESS SYSTEMS
for retail computer store services and computer maintenance and
repair services in connection therewith, and CSC for various
computer-related services, likely to cause confusion, noting
that “the inclusion of ‘ADVANCED BUSINESS SYSTEMS’ as a feature
of applicant’s mark is not likely to help customers…distinguish
the source of each party’s service”); and In re Equitable
Bancorporation, 229 USPQ 709, 711 (TTAB 1986) (holding RESPONSE
and RESPONSE CARD (CARD disclaimed), both for banking services,
likely to cause confusion, noting that “the addition of
descriptive matter to one of two otherwise similar,
nondescriptive marks will not serve to avoid a likelihood of
confusion”).
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Accordingly, the similarity between the marks UNIVERSAL and
UNIVERSAL HOME FASHIONS weighs in favor of a finding of
likelihood of confusion.
THE GOODS
We next turn to consider the second du Pont factor
regarding the similarity/dissimilarity between the goods. It is
well settled that the goods of the parties need not be identical
or competitive, or even offered through the same channels of
trade, to support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they would
or could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source.
See Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d
1399, 1410 (TTAB 2010); and Hilson Research, Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993). The
issue, of course, is not whether purchasers would confuse the
goods, but rather whether there is a likelihood of confusion as
to the source of the goods. In re Rexel Inc., 223 USPQ 830
(TTAB 1984). In the context of likelihood of confusion, it is
sufficient if likelihood of confusion is found with respect to
use of the mark on any item that comes within the identification
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of goods in each class in an application or registration.
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); and Rocket Trademarks Pty Ltd. v.
Phard S.p.A., 98 USPQ2d 1066, 1073 (TTAB 2011) (“Inasmuch as
opposer has opposed all three classes of goods in the subject
application, we address the similarity of goods for each class,
keeping in mind that a likelihood of confusion may be found with
respect to a particular class based on any item within the
identification of goods for that class.”).
During the course of this proceeding, applicant amended its
identification of goods, with opposer’s consent, to delete the
items “vanity desks” and “vanity stools” from the Class 20
identification of goods. Later in the proceeding, the Board
entered summary judgment in opposer’s favor on the basis that
applicant failed to use its mark on “mirror shelves,” and this
item was deleted from the Class 20 identification.
As noted above, opposer’s identification of goods in its
registration broadly reads “furniture.” Applicant’s goods are
identified as follows:
Class 20
Window hardware curtain rods; baker’s racks;
mirrors; hampers; shower curtain rods;
plastic tissue cover boxes; neck roll
pillows; decorative pillows;

Opp. No. 91180838

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Class 21
Towel rings; towel bars; vanity trays not of
precious metal; tumblers; lotion dispensers;
toothbrush holders; soap dishes; ceramic
tissue cover boxes; wastepaper baskets;

Class 24
Comforters; duvets; pillow shams; bedskirts;
bed sheet sets; window drapery; drapery
panels; fabric valences; shower curtains;
towels; and

Class 27
Bath rugs.

We make our determination regarding the similarities
between the parties’ goods, channels of trade and classes of
purchasers based on the goods as they are identified in the
application and registration, respectively. Octocom Systems
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); and Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir.
1992). Because there are no limitations as to channels of trade
or classes of purchasers in the identification of goods in the
pleaded registration and opposed application, it is presumed
that the parties’ goods move in all channels of trade normal for
those goods, and that they are available to all classes of
purchasers for those goods. See Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973);
Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
Opp. No. 91180838

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(CCPA 1958); and In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB
1992).
Opposer’s position may be summed up in its own words:
“[T]he nature of the goods, and the convergence of the furniture
and home textile and accessories industries, demonstrate the
relatedness of even Applicant’s non-furniture goods to the
‘furniture’ identified in Opposer’s UNIVERSAL registration.”
(Brief, p. 20). Applicant counters by contending that there is
a significant distinction between furniture and textile home
fashions that are décor accents. Applicant also states that
even if sold in the same department store, furniture and home
fashion items are sold in different sections.
The record includes numerous promotional depictions of
opposer’s furniture as it might appear in a home setting,
complete with coordinating home textile accessories such as
bedding, pillows, window treatments and rugs. Mr. Scheffer
indicated that this type of marketing is effective because
purchasers do not select and buy furniture in a vacuum;
according to Mr. Scheffer, opposer maximizes its sales when
opposer’s furniture is displayed as it might appear in a
prospective purchaser’s home. This is a common practice in the
furniture industry.
Likewise, it is not surprising that some of applicant’s
packaging shows its products used in connection with furniture.
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As shown by the record, applicant itself sells items of
furniture (e.g., baker’s racks), as well as home textiles,
fashions and accessories. All the goods may be purchased by the
same consumer seeking to completely furnish a room in the home.
And, the evidence shows that all of the goods, whether furniture
or home fashion items, may be bought in the same stores or on
the same online retailer website.
Although some of opposer’s competitors (e.g., Ashley
Furniture and Lee Furniture Industries) have expanded their
furniture product line to include bedding collections under the
same mark, opposer has not followed suit. Mr. Scheffer
indicated that some customers have inquired about opposer’s
plans to extend its brand; but, the simple fact is that opposer
has not engaged as yet in the same type of product expansion.
In connection with its argument that the furniture and home
fashion industries have converged, opposer submitted copies of
over one hundred third-party registrations showing that a single
entity has registered the same mark for both types of goods sold
by opposer and applicant, namely furniture on the one hand, and
home fashion items on the other. (Opposer’s notice of reliance
# 1, ex. 4). “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in
commerce, although not evidence that the marks shown therein are
in use on a commercial scale or that the public is familiar with
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them, may nevertheless have some probative value to the extent
that they may serve to suggest that such goods or services are
of a type which may emanate from a single source.” In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
A representative sample of the most probative use-based
registrations includes the following live registrations, all
listing furniture, along with at least some of the home fashion
items of the type listed in the involved application: ABBEY
HILL, Reg. No. 3507054, issued Sept. 30, 2008, listing furniture
in Class 20, soap dishes and toothbrush holders in Class 21,
shower curtains, bed sheets, comforters, duvet covers, shams,
and draperies in Class 24, and bath rugs in Class 27; ARCHER,
Reg. No. 3686445, issued Sept. 22, 2009, listing furniture and
mirrors in Class 20 and soap dishes, towel rings and towel bars
in Class 21; BE GOOD, Reg. No. 3796615, issued June 1, 2010,
listing furniture in Class 20 and comforters in Class 24; BELLE
MAISON, Reg. No. 3574368, issued Feb. 17, 2009, listing
furniture in Class 20 and comforters, pillows, pillow shams and
draperies in Class 24; DANZE and design, Reg. No. 3611314,
issued April 28, 2009, listing furniture in Class 20 and soap
holders, toothbrush holders, soap dispensers, towel bars and
soap dishes in Class 21; DECORATIVE LIVING, Reg. No. 3488696,
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issued Aug. 19, 2008, listing furniture in Class 20 and vanity
trays, tissue box covers, toothbrush holders and soap dishes in
Class 21; DESIGN IDEAS, Reg. No. 2212237, issued Dec. 22, 1998,
listing furniture in Class 20 and soap dishes and toothbrush
holders in Class 21; DETAILS, Reg. No. 3738529, issued Jan. 19,
2010, listing furniture in Class 20 and wastepaper baskets in
Class 21; DIGS AND THREADS, Reg. No. 3566040, issued Jan. 20,
2009, listing furniture in Class 20, and drapery, bed sheets and
towels in Class 24; DO YOUR ROOM, Reg. No. 3266126, issued July
17, 2007, listing furniture in Class 20, waste baskets in Class
21, bedding in Class 24 and rugs in Class 27; GRAND RIVER LODGE,
Reg. No. 3437773, issued May 27, 2008, listing furniture in
Class 20, toothbrush holders, soap dishes lotion dispensers and
wastebaskets in Class 21, and window treatments and bedding in
Class 24; GREAT MOODS, Reg. No. 3486854, issued Aug. 19, 2008,
listing furniture in Class 20 and bedding items such as
comforters, shams, towels and shower curtains in Class 24; HAPPY
CHIC, Reg. No. 3796183, issued June 1, 2010, listing furniture
in Class 20, toothbrush holders in Class 21, bed blankets in
Class 24, and rugs in Class 27; KRAUS, Reg. No. 3478541, issued
Aug. 5, 2008, listing furniture in Class 20 and soap dishes in
Class 21; NATURA LIVING, Reg. No. 2857017, issued June 22, 2004,
listing furniture in Class 20, and tissue dispenser covers,
waste baskets, towel holders, toothbrush holders and soap dishes
Opp. No. 91180838

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in Class 21; OVAL, Reg. No. 3555255, issued Dec. 30, 2008,
listing furniture in Class 20 and draperies, bed sheets,
comforters and shams in Class 24; RA, Reg. No. 2876676, issued
Aug. 24, 2004, listing furniture in Class 20 and window
treatments, pillow shams, comforters and bed sheets in Class 24;
ROOM ESSENTIALS, Reg. No. 3251676, issued June 12, 2007, listing
furniture in Class 20, soap dishes, toothbrush holders and waste
baskets in Class 21, and bed sheets, comforters, curtains,
draperies and towels in Class 24; SHADOW MOUNTAIN, Reg. No.
3431950, issued May 20, 2008, listing furniture in Class 20 and
rugs in Class 27; SMINK, Reg. No. 3713958, issued Nov. 24, 2009,
listing furniture in Class 20, bedding in Class 24 and rugs in
Class 27; STYLE SELECTIONS and design, Reg. No. 3796018, issued
June 1, 2010, listing furniture in Class 20, towel bars, towel
rings and metal soap dishes in Class 21, and shower curtains,
draperies, curtains and valences in Class 24; TOUCH OF CLASS,
Reg. No. 3604282, issued April 7, 2009, listing furniture in
Class 20, and towels, sheets, and pillowcases in Class 24, and
rugs in Class 27; and VINTAGE MODERN, Reg. No. 3292390, issued
Sept. 11, 2007, listing furniture in Class 20, soap dishes, soap
dispensers, toothbrush holders and facial tissue holders in
Class 21, and rugs and carpets in Class 27.
In according probative value to this evidence, we have
discounted some of the other registrations relied upon by
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opposer. There are several registrations of designer name marks
(see, e.g., CINDY CRAWFORD HOME, Reg. No. 3734252; DAVID EASTON,
Reg. No. 3552188; KATHY IRELAND DESIGN IT YOURSELF, Reg. No.
3592950; KRISTIANA, Reg. No. 3684033; and VICENTE WOLF, Reg. No.
3324621). The record also includes a few house marks that are
registered for a wide variety of products, far exceeding
furniture and home fashion items (see, e.g., Bull’s-eye design,
Reg. No. 3259178). The designer name and house mark
registrations are far less probative than the other
registrations referenced above. In addition, some of the
registrations cover only furniture (see, e.g., Reg. Nos.
3443551; 3450066; and 3784428), and these registrations are not
entitled to any probative value.
Opposer’s identification of goods reading “furniture” in
its registration is broad enough to encompass the “baker’s
racks” and “mirrors” listed in applicant’s application. Thus,
the furniture goods in Class 20 are, in part, legally identical.
Further, the third-party registration evidence is sufficient to
suggest that furniture and the types of home fashion products
listed in the application are related. The probative
registration evidence suggests the strongest relationship
between goods in Classes 20 and 24; the evidence, although
showing less overlap between Classes 20 on the one hand and
Classes 21 and 27 on the other, is still sufficient to establish
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relatedness for purposes of the likelihood of confusion
analysis.
The inherent nature of furniture and home accessories
compels a finding that the goods are related. As the record
makes clear, home fashion accents, whether textiles such as
bedding, or hardware such as towel bars, are complementary to
furniture. The parties’ marketing efforts invite customers to
connect the two distinctly different yet complementary types of
products as the customers go for a certain look in their homes.
As noted above, the question is not whether purchasers can
differentiate the goods themselves but rather whether purchasers
are likely to confuse the source of the goods. The similar
and/or complementary nature of the goods, emphasized by the way
the goods are marketed to consumers, is a factor that weighs in
favor of a finding of likelihood of confusion.
TRADE CHANNELS, CONDITIONS OF SALE and CLASSES OF PURCHASERS
As indicated earlier, the parties’ identifications of goods
are not restricted as to trade channels or customers; given the
relatedness of the goods, we presume that they move through the
same trade channels to the same classes of customers. American
Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
Moreover, the record shows overlapping trade channels (major
retail chains) and customers (ordinary consumers) for furniture
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23

and home fashion products. Further, the goods are not limited
by price point, and we must therefore presume that the goods
include those that are relatively inexpensive and bought with
nothing more than ordinary care. Applicant’s allegation that
relevant purchasers are “discriminating” (Brief, pp. 34-35) is
entirely unsupported by evidence.
These factors weigh in favor of a finding of likelihood of
confusion.
FAME
Although not going so far as to contend that its mark is
“famous” as contemplated by the case law, opposer contends that
its mark is strong and entitled to a broad scope of protection.
As noted earlier, opposer’s sales and advertising numbers have
been deemed “confidential” pursuant to the parties’ stipulated
protective order. While we are precluded from indicting the
specifics, we can safely say that opposer’s sales revenue is
impressive, with annual sales in the hundreds of millions.
Likewise, opposer’s promotional efforts are substantial, with
annual expenditures in the tens of millions. As a byproduct of
its significant success, opposer has engaged in co-branding of
its furniture with the likes of Paula Deen, Alexander Julian and
Better Homes and Gardens.
In view of the extreme deference that is accorded to a
famous mark in terms of the wide latitude of legal protection it
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receives, and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of a plaintiff asserting fame
“to clearly prove it.” Lacoste Alligator S.A. v. Maxoly Inc.,
91 USPQ2d 1594, 1597 (TTAB 2009). Evidence of fame, such as
sales, advertising and length of use must be placed in context
(e.g., a comparison of advertising figures with competitive
products, market share, reputation of the products, etc.). Bose
Corp. v. QSC Audio Products, Inc., 293 F.3d 1376, 63 USPQ2d
1303, 1309 (Fed. Cir. 2002). Based on the evidence of record,
we conclude that opposer’s mark has achieved at least a high
degree of recognition, is distinctive and well-known (see
discussion, infra, on strength). But, as even opposer
apparently recognizes, inasmuch as it has not used the term
“famous” to describe its mark, the proofs are not sufficient to
support a finding that the mark is famous.
ACTUAL CONFUSION
Opposer offered no evidence of any actual confusion and, in
fact, the parties are not aware of any actual confusion between
the marks. Although we have carefully considered this factor in
the context of the parties’ long use of their respective marks,
the absence of evidence of actual confusion is not dispositive
in this case. A showing of actual confusion would of course be
highly probative, if not conclusive, of a likelihood of
confusion. The opposite is not true, however. The lack of
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25

evidence of actual confusion carries little weight. J.C. Hall
Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438
(CCPA 1965). Moreover, as often stated, proof of actual
confusion is not necessary to establish likelihood of confusion.
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 396 (Fed. Cir. 1983).
Accordingly, the eighth du Pont factor of the length of
time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is
considered neutral.
THIRD-PARTY REGISTRATIONS AND USES
If the above du Pont factors were the end of the story in
this case, there would be no hesitation in concluding that there
is a likelihood of confusion between the involved marks.
However, applicant invested significant effort in an attempt to
diminish the distinctiveness of opposer’s mark, and thereby
limit the scope of protection to which opposer is entitled to
enjoy under the registered mark. We accordingly turn to this
factor.
The sixth du Pont factor focuses on the number and nature
of similar marks in use on similar goods. The Board has in the
past given weight to evidence of widespread and significant use
by third parties of marks containing elements in common with the
mark being opposed on grounds of likelihood of confusion to show
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26

that confusion is not, in reality, likely to occur. The
justification is that the presence in marks of common elements
extensively used by others unrelated as to source may cause
purchasers not to rely upon these elements as source indicators,
but to look to other elements as a means of distinguishing the
source of the goods/services. See, e.g., Carl Karcher
Enterprises Inc. v. Stars Restaurants Corp., 35 USPQ2d 1125,
1131 (TTAB 1995). By relying on third-party uses and
registrations of the word “UNIVERSAL,” applicant would have us
conclude that variations in such marks, coupled with specific
differences between various furniture items, are sufficient to
avoid a likelihood of confusion. That is to say, applicant’s
position is that opposer’s mark is inherently weak. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1693 (“Evidence of third-party use of similar
marks on similar goods is relevant to show that a mark is
relatively weak and entitled to only a narrow scope of
protection.”). Applicant begins its argument by referring to
the dictionary meaning of the word “universal” as “applicable to
all things; a nature or essence signified by a general term.”
The Oxford English Dictionary (2012).
Applicant has introduced testimony and evidence to support
its argument that opposer’s mark is weak and entitled to a
narrow scope of protection that does not extend to applicant’s
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27

mark. More specifically, applicant submitted third-party
registrations, excerpts of third-party websites and, most
significantly, testimony of third-party users of the term
“UNIVERSAL.” We shall consider each of these categories of
evidence to determine what effect, if any, the third-party
registrations and/or uses of UNIVERSAL have on the likelihood of
confusion analysis.
Third-Party Registrations
Applicant submitted seven third-party registrations as
follows: UNIVERSAL DISPLAYS AND FIXTURES COMPANY, Reg. No.
3875561, and UNIVERSAL, Reg. No. 3875560 (same owner), both for
display racks, table and counters, and metal shelving; UNIVERSAL
BEDLEGS, Reg. No. 3129743, for leg and base for bed support;
UNIVERSAL, Reg. No. 3195607, for restaurant products “other than
furniture” including tables and stands for food preparation, and
work stations; UNIVERSAL DESIGNS, Reg. No. 2832013, for novelty
items in the shape of a stone with a phrase, sentiment or
scripture etched therein; UNIVERSAL SLATE, Reg. No. 2899387, for
rock materials used in the manufacture of flooring, roofing,
countertops, walls, cladding and fireplaces; and THE UNIVERSAL
FAMILY FLAG, Reg. No. 3731959, for vinyl flags with magnetic
backing.
Insofar as this evidence is concerned, “[t]he existence of
[third-party] registrations is not evidence of what happens in
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the market place or that consumers are familiar with them nor
should the existence on the register of confusingly similar
marks aid an applicant to register another likely to cause
confusion, mistake or to deceive.” AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973).
See Stanadyne, Inc. v. Lins, 490 F.2d 1396, 180 USPQ 649 (CCPA
1974); and In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248
(TTAB 2010). The additional information regarding the
registrants and/or their businesses, supplied by applicant’s
investigator, Gerard Johansen of SSC, Inc., is insufficient to
increase the probative value of this evidence.
Moreover, we agree with opposer’s view that any probative
value of this evidence is severely undercut by the fact that the
goods covered in the registrations are different from the ones
involved in this proceeding. See In re Thor Tech. Inc., 90
USPQ2d 1634, 1639 (TTAB 2009). Indeed, as pointed out by
opposer, none of the identified goods is as related to opposer’s
furniture as are applicant’s home fashion goods.
Third-Party Websites
The thirteen excerpts are entitled to little probative
value. As we noted earlier in discussing opposer’s objection to
this evidence, we have considered these documents only to the
extent of what they show on their face; we have not considered
them, however, for the truth of any matter asserted therein, as
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29

for example, the length of time that an entity has been in
business and using “UNIVERSAL.” Thus, the websites, standing
alone without any corroborating evidence relating to extent of
use, number of views, etc., are extremely limited in their
probative value in the likelihood of confusion analysis. See
Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010). The information regarding the businesses, furnished by
Mr. Johansen, again is insufficient to give this evidence any
additional weight in our determination of likelihood of
confusion.
Third-Party Uses
Applicant took the testimony of six third parties. The
third-party uses may be broadly identified as follows: Bush
Industries, Inc. of UNIVERSAL COLLECTION for television and
audio entertainment stands and bookcases; Universal Business
Equipment Inc. of UNIVERSAL BUSINESS EQUIPMENT for office
furniture, such as computer desks, tables, couches and chairs;
Universal Patio Furniture, Inc. of UNIVERSAL PATIO FURNITURE for
outdoor furniture; Universal Design, Inc. of UNIVERSAL DESIGN
for custom-made furniture; Universal Ornamental Iron Works of
UNIVERSAL ORNAMENTAL IRONWORKS for fences, gates, doors and beds
and tables made by welding; and Universal Hotel Liquidators LLC
of UNIVERSAL HOTEL LIQUIDATORS for buying and selling of
furniture.
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30

An officer or owner of each of these third parties
testified about his company’s use of the referenced term. More
specific information regarding sales and advertising in
connection with each term varies, ranging from modest and local
use to numbers that tend to show more success. Opposer engaged
in a detailed critique of this evidence (Reply Brief, pp. 12-
13), concluding that the evidence does not materially weaken the
scope of protection of opposer’s mark UNIVERSAL. The critique
includes shortcomings such as geographically remote or limited
use, modest sales or little advertising. We agree with
opposer’s assessment (Reply Brief, p. 13): “Noticeably absent
from this record is the critical evidence that the alleged uses
have been widespread enough, consistent enough and qualitatively
significant enough, to infer that the relevant consumers ‘have
been so conditioned by a plethora of such similar marks’ that
they have learned to distinguish between otherwise similar
marks.” See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1693-94 (third-party use was
not “so widespread as to ‘condition’ the consuming public”); Han
Beauty Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d
1557, 1561 (Fed. Cir. 2001); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1110 (TTAB 2007); and Fort James Operating Co. v.
Royal Paper Converting Inc., 83 USPQ2d 1624, 1629 (TTAB 2007).
Thus, this evidence is entitled to only minimal probative value.
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31

In sum, none of the third-party uses or registrations is as
close to opposer’s mark and goods as is applicant’s mark and
goods. This du Pont factor is entitled to minimal probative
value, weighing only slightly in applicant’s favor.
CONCLUSION
We find that the du Pont factors, on balance, weigh in
favor of a finding of likelihood of confusion. The similarities
between the marks and the goods sold thereunder, the identity
between trade channels, purchasers and conditions of sale, and
the strength of opposer’s mark cumulatively outweigh the third-
party usage.
We conclude, based on the preponderance of the evidence,
that purchasers familiar with opposer’s furniture sold under the
mark UNIVERSAL would be likely to mistakenly believe, upon
encountering applicant’s mark UNIVERSAL HOME FASHIONS for home
fashion products, home textile products, home accessories and
the like, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points argued by
applicant raises a doubt about our finding of a likelihood of
confusion, we resolve that doubt, as we must, in favor of
opposer as the prior user. See Giant Food, Inc. v. Nation’s
Foodservice, Inc., 218 USPQ at 395; and Century 21 Real Estate
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32

Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1707 (Fed. Cir. 1992).
NONUSE OF THE MARK
Because we have sustained the likelihood of confusion claim
with respect to all of the classes in the involved application,
we decline to make a determination on the merits of the pleaded
ground of nonuse. See American Paging Inc. v. American
Mobilphone Inc., 13 USPQ2d 2036 (TTAB 1989), aff’d unpublished,
17 USPQ2d 1726 (Fed. Cir. 1990).
DECISION
The opposition grounded on likelihood of confusion is
sustained; and registration to applicant is refused.