Allegheny Wood Products, Inc.

Trademark Trial and Appeal Board

Jul 17, 2013

No. 85358279 (T.T.A.B. Jul. 17, 2013)

Mailed:
July 17, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Allegheny Wood Products, Inc.
________

Serial No. 85358279
_______

Ty Kendrick of Law Office of Benjamen E Kern LLC, for Allegheny
Wood Products, Inc.

Janice Kim, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Bucher, Bergsman, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Allegheny Wood Products, Inc. (“applicant”) filed an
application to register the mark AWP and design, as shown below,
for goods identified as “Untreated and unfinished boards of
wood; untreated and unfinished lumber; and untreated and
unfinished wood boards” in International Class 19:1

1 Serial No. 85358279, filed June 28, 2011, pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. § 1051(a), alleging dates of first use
and first use in commerce on September 1, 1988. The description of
the mark reads: “The mark consists of the uppercase letters A, W, and
P in green, with a square on point invading upon the top of the W, the
square being in red and having a white maple leaf in its center.”
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85358279
2

The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark AWP, in stylized lettering, as
shown below, for “Chemically treated wood, namely, wood beams,
wood boards, wood joists, wood rafters, wood siding, wood tile
floors and flooring, wood trim, wooden beams, wooden flooring,
wooden railings, and wooden wainscoting, all of the above
containing a fire retardant chemical; creosote treated railroad
cross ties, bridge timbers, crossing timbers, fabricated
timbers, namely, artificial and partly processed timbers, and
timber, namely, wooden timbers; chemically treated non-metal
fence post, non-metal posts for nurseries, wood poles, namely,
barn building poles, and non-metal utility poles; pressure-
Serial No. 85358279
3
treated wood columns,” in International Class 19,2 that when used
on or in connection with applicant’s identified goods, it is
likely to cause confusion or mistake or to deceive:

Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.

2 Registration No. 3515307, issued on October 14, 2008. The
description of the mark reads: “The mark consists of the stylized
letters ‘A,” ‘W,’, and ‘P.’”

Serial No. 85358279
4
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”).
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant’s mark consists of the letters “AWP” with a design of
a maple leaf, while the mark in the cited registration consists
of the same three letters in a stylized fashion. Applicant
argues that the appearance and commercial impressions are
different since although the letters are the same, they “extend
into one another” in the mark in the cited registration, thereby
blending together. (appl’s brief at 10). While true, the
letters in the mark are still clearly recognizable as such, as
they are in applicant’s mark.
We also find the maple leaf design in applicant’s mark,
while noticeable, would not be likely to be pronounced by
consumers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012), citing CBS v. Morrow, 708 F.2d. 1579; 218
USPQ 198 (Fed. Cir. 1983) (“the verbal portion of the mark is
the one most likely to indicate the origin of the goods to which
it is affixed”). It also does not significantly alter the
commercial impression of applicant’s mark since a maple leaf
Serial No. 85358279
5
calls to mind wood products such as those identified in the
application. Therefore, we find, in analyzing the marks in
their entireties, they are highly similar in sight, sound,
connotation and commercial impression. In reaching this
conclusion, we are mindful that the test 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 so that
confusion as to the source of the goods and/or services offered
under the respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d
683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The proper
focus is on the recollection of the average customer, who
retains a general rather than specific impression of the marks.
Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ
335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975). As discussed below, the products are
sold at Lowe’s and, therefore, the average customer is any
ordinary consumer who may attempt a “do-it-yourself project.
This du Pont factor favors finding a likelihood of confusion.

We next consider the similarities or dissimilarities of the
goods as identified, as well as the channels of trade, and the
conditions of sale. We note that with fairly similar marks as
we find here, the goods or services need not be identical or
Serial No. 85358279
6
even competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that the goods or services are
related in some manner or that some circumstances surrounding
their marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used or intended to be used therewith, to a
mistaken belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); see
also In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It
is only necessary that there be a viable relationship between
the goods or services to support a finding of likelihood of
confusion. In re Concordia Int’l Forwarding Corp., 222 USPQ
355, 356 (TTAB 1983).
The application identifies “untreated and unfinished boards
of wood; untreated and unfinished lumber; and untreated and
unfinished wood boards” while the cited registration identifies
“Chemically treated wood, namely, wood beams, wood boards, wood
joists, wood rafters, wood siding, wood tile floors and
flooring, wood trim, wooden beams, wooden flooring, wooden
railings, and wooden wainscoting, all of the above containing a
fire retardant chemical; creosote treated railroad cross ties,
bridge timbers, crossing timbers, fabricated timbers, namely,
Serial No. 85358279
7
artificial and partly processed timbers, and timber, namely,
wooden timbers; chemically treated non-metal fence post, non-
metal posts for nurseries, wood poles, namely, barn building
poles, and non-metal utility poles; pressure-treated wood
columns.” The examining attorney argues that these are similar
to the extent that both include wood boards and other types of
wood-based lumber building products. To support this argument,
the examining attorney submitted a number of third-party
registrations that include the term “boards of wood” as well as
“chemically treated wood, namely wood beams, wood boards [and
other items] . . . containing a fire retardant chemical.” Our
case law dictates that copies of use-based, third-party
registrations may serve to suggest that the goods are of a type
which may emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993). However,
we find the registrations submitted by the examining attorney to
be less significant in that while they do identify the
“chemically treated” items included in the cited registration,
they do not clearly also identify the “untreated” wood
identified in the application, but rather more generally
identify “boards of wood.” To the extent that this is not
completely clear, we do n’ot rely on the third-party
registrations for our decision.
Serial No. 85358279
8
Applicant argues that in fact the goods in the cited
registration are quite different from those in the application,
and there is no relationship between them. To support this
argument, applicant submitted the declaration of its president,
John Crites II, dated April 17, 2012, stating, in relevant part
as follows:

Para 1:
I am the President of Allegheny Wood Products, Inc
. . . I have extensive knowledge of the lumber
industry.

Para 3:
Acme’s trademark registration . . . recites
exclusively chemically treated woods . . . Allegheny
does not sell, or use its mark in association with,
any treated woods.

Para 4:
Allegheny provides green rough cut lumber and kiln
dried lumber. Allegheny sells exclusively to
wholesale industrial customers, including furniture
manufacturers, flooring manufacturers, cabinet
manufacturers, pallet manufacturers, lumber treaters,
hardwood distributers, and moulding and millwork
manufacturers. Allegheny’s products are sold
exclusively to industrial customers, which are of a
level of sophistication such that they would readily
recognize the difference between Allegheny’s green
rough cut lumber and kiln dried lumber, and Acme’s
chemically treated, creosote treated, and pressure-
treated wood. As I understand Acme’s product line,
there is no overlap between the products sold or
produced by Allegheny and those sold or produced by
Acme.

Despite Mr. Crites description of applicant’s discrete
channels of trade, the channels of trade and classes of
consumers in neither applicant’s application nor the cited
registration are in any way restricted. The issue of likelihood
Serial No. 85358279
9
of confusion must be decided on the basis of the respective
descriptions of goods. Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.3d 901, 177 USPQ 76, 77 (CCPA 1973).
See also CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983) (the issue of likelihood of confusion “must be
resolved on the basis of not only a comparison of the involved
marks, but also on consideration of the goods named in the
application and in opposer's registration and, in the absence of
specific limitations in the application and registration, on
consideration of the normal and usual channels of trade and
methods of distribution.”). Moreover, because applicant’s
description of goods is not limited to any particular channels
of trade, registrant’s products could be sold to wholesale
industrial customers.
We note, however, that despite applicant’s argument and
declaration to the contrary, there is in the record a web page
from home store Lowes, which shows it offering for sale both
unfinished wood siding and prefinished wood siding.
www.lowes.com. We also find that there is an inherent
relationship between the wood boards identified in the
application and the cited registration. The goods are
necessarily related since “chemically treated” wood boards are
simply a step away from being “untreated and unfinished boards
of wood.” It also stands to reason that, as shown in the
record, they will sometimes travel in the same channels of trade
to the same purchasers even though applicant’s president may not
Serial No. 85358279
10
be aware of his own products sharing an overlap with the
particular products of registrant.
We also note applicant’s argument that it sells only to
industrial consumers “which are of a level of sophistication
such that they would readily recognize the difference between
Allegheny’s green rough cut lumber and kiln dried lumber, and
Acme’s chemically treated, creosote treated, and pressure-
treated wood.” However, with marks that include the same
sequence of letters, even a careful, sophisticated consumer of
these goods may not note the differences in the marks.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-49 (Fed. Cir.
2000). Accordingly, we deem this du Pont factor to be neutral.
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent
du Pont likelihood of confusion factors. We conclude that the
marks are highly similar in sight, sound, connotation and
commercial impression, and the goods, and channels of trade are
related. Accordingly, although the overlapping consumers may be
sophisticated, we find a likelihood of confusion between the
applied-for mark and the cited registration for the identified
goods.
Decision: The refusal to register is affirmed.