Arcadia Chair Company

Trademark Trial and Appeal Board

May 22, 2013

No. 85284409 (T.T.A.B. May. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Arcadia Chair Company
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Serial Nos. 85284409 and 85284417
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Steven J. Natupusky and Jonathan A. Menkes of Knobbe, Martens, Olson & Bear,
LLP for Arcadia Chair Company.

Rudy R. Singleton, Trademark Examining Attorney, Law Office 102 (Mitchell Frost,
Managing Attorney).
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Before Quinn, Taylor and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Arcadia Chair Company (“applicant”) seeks registrations for the marks LEAF
and LEAVES, both in standard characters, for “commercial furniture; furniture,
namely, lounge seats, bench seats and tables excluding outdoor furniture and baby
furniture.”1 The examining attorney refused registration of both marks under
Section 2(d) of the Act, on the ground that applicant’s marks, when used in
connection with applicant’s goods, so resemble the mark LEAF, in standard

1 Application Serial Nos. 85284409 and 85284417, respectively, both filed April 1,
2011 under Section 1(b) of the Act based on an intent to use the marks in commerce.
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characters, previously-registered on the Supplemental Register for “outdoor
furniture, namely, side tables and beach chairs,”2 as to be likely to cause confusion.
After the refusals were made final, applicant appealed, and its requests for
reconsideration were denied. Applicant and the examining attorney have filed
briefs.
Appeals Consolidated
The appeals involve common questions of law and fact and the records are
substantially similar. Accordingly, we decide both appeals in this single decision.
See, In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (3d ed. rev.
2012).
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of 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 and/or services. 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 discuss each of the

2 Supplemental Register Registration No. 3956160, filed June 2, 2010, issued May 3,
2011.
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du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence.
The Marks
Turning first to the similarity of the marks, we must compare them “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
That is, we may not dissect the marks into their various components. In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin
Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
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
offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). The focus
is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Here, one of applicant’s marks is identical to the cited mark, and this factor
therefore weighs heavily in favor of a finding of likelihood of confusion with respect
to that mark. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
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1289, 1290 (Fed. Cir. 1984); see also, Kohler Co. v. Baldwin Hardware Corp., 82
USPQ2d 1100, 1109 (2007).
Applicant’s other mark, LEAVES, is merely the plural form of the cited mark,
as established by the dictionary definition applicant made of record. Office Action
response of Dec. 28, 2011 Ex. J (dictionary.com). This is a distinction with little if
any material difference. Wilson v. DeLaunay, 245 F.2d 877, 114 USPQ 339, 341
(CCPA 1957) (“It is evident that there is no material difference, in a trademark
sense, between the singular and plural forms of the word ‘Zombie’ and they will
therefore be regarded here as the same mark.”); In re Sarjanian, 136 USPQ 307,
308 (TTAB 1962). In fact, LEAVES looks and sounds somewhat similar to the cited
mark and conveys an essentially identical meaning. Therefore, with respect to
applicant’s mark LEAVES, this factor also weighs, though less so, in favor of a
finding of likelihood of confusion.
The Parties’ Goods, Services and Channels of Trade
Turning next to the parties’ goods and channels of trade, “we initially note
that where identical marks are involved, as is [in part] the case here, the degree of
similarity between the parties’ goods that is required to support a finding of
likelihood of confusion declines.” Kohler Co., 82 USPQ2d at 1109; see also, In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“even when
goods or services are not competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common source”). And with
respect to applicant’s mark LEAVES, while it is not identical to the cited mark, it is,
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as we have found, similar, and “[t]he degree of ‘relatedness’ must be viewed in the
context of all the factors, in determining whether the [goods] are sufficiently related
that a reasonable consumer would be confused as to source or sponsorship.” In re
Shell Oil, 992 F.2d at 1204, 26 USPQ2d at 1689.
In any event, it is settled that the goods need not be identical or even
competitive in order to support a finding of likelihood of confusion. It is enough that
the goods are related in some manner or that the 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, to a mistaken belief
that the parties’ goods originate from or are in some way associated with the same
source or that there is an association between the sources of each of the parties’
goods. Hilson Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, 1432 (TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991); Schering Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980);
Oxford Pendaflex Corp. v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The
issue 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
at 832.
Here, applicant’s “lounge seats, bench seats and tables” specifically exclude
outdoor furniture, but applicant’s “commercial furniture” does not. In fact, in
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applicant’s identification of goods, “commercial furniture” is followed by a semicolon
and therefore stands alone, without limitation.
In the cited registration's identification of services, the
“providing banquet and social function facilities for
special occasions” are services separated by a semicolon
from the “restaurant and bar services.” Under standard
examination practice, a semicolon is used to separate
distinct categories of goods or services. We find that here,
the semicolon separates the registrant's “restaurant and
bar services” into a discrete category of services which is
not connected to nor dependent on the “providing banquet
and social function facilities for special occasions” services
set out on the other side of the semicolon. We further find
that the registrant's “restaurant and bar services,” as
separately set out in the identification of services by
means of the semicolon, stand alone and independently as
a basis for our likelihood of confusion findings under the
second and third du Pont factors.

In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1166 (TTAB
2013). As there, so here. And because applicant’s “commercial furniture” is not
limited, to indoor furniture or otherwise, it encompasses outdoor commercial
furniture. See id.
Moreover, the examining attorney has introduced evidence that some
commercial furniture is also outdoor furniture, for example outdoor furniture
purchased and used by restaurants on their patios. Office Action of Jan. 30, 2012
(printouts from “patiostore.com,” “contractfurniture.com” and
“centralrestaurant.com”). We presume that beachfront restaurants or other
beachfront businesses may have a need for commercial, outdoor side tables or beach
chairs, but even if this were not the case, the fact that some commercial furniture is
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also outdoor furniture is sufficient to find that the parties’ goods are at least
related.
Applicant’s argument that the parties’ goods are unrelated and move in
different channels of trade is unpersuasive. It simply does not matter that
applicant in fact offers commercial indoor furniture when applicant’s identification
of goods is not so limited. Indeed, where, as here, applicant’s and registrant’s
identifications of goods contain no limitations, they are presumed to encompass all
goods of the type described, and the goods are presumed to move in all normal
channels of trade and be available to all classes of consumers. Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). We are bound by the parties’
identifications and we simply cannot limit the goods, channels of trade or classes of
customers to what applicant’s evidence shows them to be. In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is well settled that in a proceeding
such as this, the question of likelihood of confusion must be determined by an
analysis of the marks as applied to the goods identified in the application vis-à-vis
the goods recited in the registration, rather than what extrinsic evidence shows
those goods to be.”); see also, Tuxedo Monopoly, Inc. v. General Mills Fun Group,
Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re Thor Tech Inc., 90
USPQ2d 1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or
dissimilarity and nature of the goods based on the description of the goods set forth
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in the application and the registration at issue … we may not limit or restrict the
trailers listed in the cited registration based on extrinsic evidence”).
In any event, the examining attorney submitted evidence establishing that
the Contract Furniture Company, which claims to “provide the highest quality
Professional Grade Furniture to Foodservice, Hospitality and related
marketplaces,” offers both indoor and outdoor commercial furniture. Office Action
of Jan. 30, 2012. This further supports the finding that the parties’ goods and
channels of trade overlap. See also, Office Action response of Dec. 28, 2011 Ex. H
(showing that “cabanahome.com” offers both indoor and outdoor home furniture).
In short, applicant’s identification of “commercial furniture” may encompass
outdoor furniture such as that offered by registrant, and neither applicant’s nor
registrant’s identifications contain any limitations as to their channels of trade.
Therefore, both the similarity of the parties’ goods and their channels of trade weigh
in favor of a finding of likelihood of confusion.3
Other Factors
Applicant argues that the relevant consumers are sophisticated and will be
careful in purchasing the parties’ goods, including because they are expensive,
costing several thousand dollars. “Consumers of furniture are especially
discriminating given that the style, brand, and overall look of furniture reflects

3 Applicant’s reliance on the Board’s decision in In re KAEMARK, Inc., Serial No.
77091033, Nov. 28, 2008, is misplaced. That decision is not precedential. Even if it were, it
is distinguishable because there the Board found that applicant’s “salon furniture” was
“more in the nature of equipment,” and not used in the same manner as “general furniture.”
Here, by contrast, applicant’s commercial furniture and registrant’s outdoor furniture are
types of general furniture and some commercial furniture is outdoor furniture.
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one’s taste, judgment, and personality. Furniture is also meant to last a very long
time and be seen over and over again by purchasers and their visitors.” Applicant’s
Appeal Brief at 11. We do not disagree and in fact accept this argument. However,
it is well-settled that even sophisticated purchasers are not immune from source
confusion. This is especially true where, as here, they are faced with identical, and
highly similar, marks, as well as related goods. In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); In re
Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988). This factor therefore does not
outweigh the similarity of the parties’ marks, overlapping channels of trade and
related goods.
Applicant also points out that the cited registration coexists with Nuna
International B.V.’s registration for the identical mark LEAF, in standard
characters, for “Infant exercise seats, namely, jumpers; infant swings and gliders;
baby carriers for use with infant swings and gliders.”4 Applicant argues that as a
result its mark may also coexist with the cited registration and the Nuna
registration without consumer confusion arising. We disagree. Commercial
furniture is significantly closer to, and in fact may encompass, outdoor furniture,
and neither applicant’s nor registrant’s identification of goods includes any

4 Registration No. 3920311, issued February 15, 2011. This registration, and evidence
that the mark therein is in use, are of record because the examining attorney originally
refused registration of the involved application based on a finding that use of applicant’s
mark would be likely to cause confusion with Nuna’s identical mark. The examining
attorney ultimately withdrew the refusal based on Nuna’s registration.
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limitations with respect to channels of trade. By contrast, the Nuna registration is
specifically limited to products for infants and babies, and infant jumper seats,
swings and gliders are more different from commercial and outdoor furniture than
commercial and outdoor furniture are from each other. There is simply no evidence
that the cited mark is so weak that it would not be likely to be confused with
applicant’s mark for related goods traveling in unlimited channels of trade.5
In the absence of relevant evidence or argument, we find that the remaining
likelihood of confusion factors are neutral.
Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors, including applicant’s arguments and evidence, even if not
specifically discussed herein. In view of our findings that the marks are identical on
the one hand and similar on the other, the goods and services related and the
channels of trade unlimited, we find that use of each of applicant’s marks is likely to
cause confusion with the cited registered mark as applied to registrant’s goods. To
the extent that applicant’s arguments raise any doubt concerning the likelihood of
confusion, we resolve any such doubt in registrant’s favor. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, 223 USPQ at 1290.
Decision: The examining attorney’s refusals to register applicant’s marks
under Section 2(d) of the Act are affirmed.

5 Applicant claims that LEAF “has no direct or obvious meaning in relation to the
goods.” Request for Reconsideration, May 19, 2008 at 11.