Antigua Imports, Ltd.

Trademark Trial and Appeal Board

Feb 28, 2011

No. 77382611 (T.T.A.B. Feb. 28, 2011)

Mailed: February 28, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Antigua Imports, Ltd.
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Serial No. 77382611
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Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch
LLP for Antigua Imports, Ltd.

Amy E. Hella, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Antigua Imports, Ltd. (“applicant”) filed an
application to register the mark shown below on the
Principal Register for “custom furniture” in International
Class 20.1

1 Application Serial No. 77382611 was filed on January 28, 2008
based upon applicant’s assertion of June 30, 2004 as a date of
first use of the mark anywhere and in commerce on or in
connection with the identified goods. In response to a
requirement by the trademark examining attorney, applicant
disclaimed the exclusive right to use “FURNITURE” apart from the
mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77382611
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark ANTIGUA, previously registered on the
Principal Register in standard characters for “ready-to-
assemble furniture” in International Class 20,2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Applicant asserts that its mark differs in appearance
and sound from that of registrant due to the presence of
“FURNITURE” and “Applicant’s very dominant design element.”3
Applicant acknowledges that its “goods are closely related
but are not identical”4 to those in the cited registration.
Applicant asserts in addition that its goods move in
different trade channels from those of registrant because
it “markets its relatively high end furniture to a
different class of buyer than does the owner of the

2 Registration No. 3121241 issued on July 25, 2006 with a
translation of “ANTIGUA” as “ancient” or “old.”
3 Applicant’s brief, p. 4.
4 Id. at 3.
Ser No. 77382611
3
Registered Mark,”5 and that, due to the price of its goods,
applicant’s customers are discriminating and sophisticated.
The examining attorney maintains that ANTIGUA is the
dominant portion of applicant’s mark, and that the generic
term FURNITURE and the design are less significant in terms
of the mark’s overall commercial impression. The examining
attorney further maintains that the applicant’s goods are
closely related to those of registrant, and that the same
marks are used by third parties to indicate the source of
both the goods identified in applicant’s application and
the goods identified in the cited registration. The
examining attorney asserts in addition that the same
consumers will be exposed to the goods identified under
both applicant’s mark and that of registrant; and that even
sophisticated purchasers may experience confusion as to the
source of those goods.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of

5 Id.
Ser No. 77382611
4
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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
We first consider the similarity of the marks. In
this case, applicant’s mark,

incorporates in its entirety the cited mark, ANTIGUA, as
its most distinctive element. As for the presence of
FURNITURE in applicant’s mark, this term, which has been
disclaimed, is generic for the recited goods, and thus has
no source-indicating significance. Further, the design
portion of applicant’s mark is much smaller than the term
ANTIGUA and thus makes less of a visual impression. In
addition, consumers articulating applicant’s mark will
speak the word portion thereof and not the design. If a
mark comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Thus,
we find that ANTIGUA is the dominant portion of applicant’s
Ser No. 77382611
5
mark. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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 a consideration of the marks
in their entireties. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The additional elements of the generic term FURNITURE
and the design in applicant’s mark are not sufficient to
distinguish applicant’s mark from the cited mark. On the
contrary, an applicant may not avoid a likelihood of
confusion by appropriating a registrant’s entire mark and
adding descriptive matter to it. See In re Denisi, 225
USPQ 624 (TTAB 1985) and The State Historical Society of
Wisconsin v. Ringling Bros.-Barnum Bailey Combined Shows,
Inc., 190 USPQ 25 (TTAB 1976). Similarly, the addition of
a design to applicant’s mark does not obviate the fact that
applicant’s mark incorporates registrant’s mark as its most
significant element.
When viewed in their entireties, the marks are highly
similar in appearance, pronunciation, connotation and
commercial impression. Accordingly, this du Pont factor
favors a finding of likelihood of confusion.
Ser No. 77382611
6
Turning now to our consideration of the recited goods,
it is clear that, as acknowledged by applicant, its “custom
furniture” is related to registrant’s “ready-to-assemble
furniture” inasmuch as both are furniture products. In
addition, the examining attorney submitted evidence from
the GOOGLE® Internet search engine indicating that the same
entities provide both custom furniture and ready-to-
assemble furniture on their Internet websites.
Furthermore, this evidence demonstrates that such entities
may even offer the same types or pieces of furniture, i.e.,
chairs, tables, and bookcases, in both custom and ready-to-
assemble form. For example, the Internet websites
myclassicfurniture.com; industries.hoovers.com; and
bassettfurniture.com offer both custom-made and ready-to-
assemble furniture.
Thus, both the identifications of goods themselves and
evidence made of record by the examining attorney
demonstrates the related nature of the goods at issue, and
this du Pont factor also favors a finding of likelihood of
confusion.
In addition, because the Internet evidence made of
record by the examining attorney demonstrates that the same
entities make available both custom and ready-to-assemble
furniture on their websites, we find that these goods may
Ser No. 77382611
7
travel in the same channels of trade and be encountered by
the same classes of purchasers. As a result, this du Pont
factor favors a finding of likelihood of confusion.
The final du Pont factor discussed by applicant and
the examining attorney is that of the conditions of sale.
Applicant asserts that its goods are “high end” furniture
that will be purchased by careful and sophisticated users.
However, it is settled that even sophisticated purchasers
are not necessarily knowledgeable in the field of
trademarks or immune from source confusion. See In re
Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988). In this
case, even if some degree of care were exhibited in making
the purchasing decision, the marks are so similar that even
careful purchasers are likely to assume that the marks
identify goods emanating from a single source.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods sold under its mark that the
goods originated with or are associated with or sponsored
by the same entity.
Decision: The refusal of registration is affirmed.