Armstrong World Industries, Inc.v.La Crosse Acoustical Tile, Inc.

Trademark Trial and Appeal Board

Jul 9, 1998

No. 91096081 (T.T.A.B. Jul. 9, 1998)

Paper No. 13
EWH/HLJ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 9, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Armstrong World Industries, Inc.
v.
La Crosse Acoustical Tile, Inc.
_____
Opposition No. 96,081
to application Serial No. 74/425,928
filed on August 13, 1993
_____
Douglas E. Winters for Armstrong World Industries, Inc.
M. Paul Hendrickson for La Crosse Acoustical Tile, Inc.
______
Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
La Crosse Acoustical Tile, Inc. (applicant) seeks to
register the mark SIGNATURE SERIES for “custom designed
acoustical tiles.” The application was filed on August 13,
1993 with a claimed first use date of March 31, 1993.
Armstrong World Industries, Inc. (opposer) has opposed
this application on the basis that since at least as early
as January 1, 1990, opposer has used the mark SIGNATURE
Opposition No. 96,081
2
VINYL for acoustical wall panels and that the
contemporaneous use of SIGNATURE SERIES by applicant and
SIGNATURE VINYL by opposer would result in confusion.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition.
The record in this case is the testimony deposition
with exhibits of Clifford B. Price, an employee of opposer.
Applicant has submitted no evidence. Opposer filed a brief.
Applicant did not. Neither party requested a hearing.
Through the testimony of Mr. Price, opposer has
established that it has made continuous use of its mark
SIGNATURE VINYL in connection with acoustical wall panels
since at least as early as October 1990, if not earlier.
Because applicant has made of record no evidence,
applicant’s earliest “proven” first use date of its mark
SIGNATURE SERIES is the filing date of its application,
namely, August 13, 1993. Long John Silver’s Inc. v. Lou
Scharf Inc., 213 USPQ 263, 268 TTAB (1982). Thus, priority
of use rests in favor of opposer. Moreover, even if
applicant had proven its claimed first use date of March 31,
1993, priority of use would still rest in favor of opposer.
We now turn to the issue of likelihood of confusion.
In any likelihood of confusion analysis, two key
considerations are the similarity of the goods and the
similarity of the marks. Federated Foods, Inc. v. Fort
Opposition No. 96,081
3
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Considering first the goods of the parties, applicant’s
chosen description of goods is “custom designed acoustical
tiles.” While applicant’s specimens of use reflect use of
the mark SIGNATURE SERIES on custom acoustical ceiling tile,
the word “ceiling” does not appear in applicant’s
description of goods. Thus, applicant’s chosen description
of goods (custom designed acoustical tiles) is broad enough
to encompass tiles which are placed not only on ceilings,
but also on walls. Moreover, while opposer has
characterized its products as acoustical wall panels, Mr.
Price testified that opposer’s SIGNATURE VINYL acoustical
wall panels “could be considered an acoustical tile.”
(Price dep. 17). Mr. Price went on to note that “in the
trade, tile and panel really are used interchangeably to
indicate a board-type product whether it is put on the wall
or the ceiling.” (Price dep. 17). When shown applicant’s
description of its goods, Mr. Price testified that
applicant’s “description of goods clearly covers …
[opposer’s SIGNATURE SERIES] product.” (Price dep. 17).
Thus, based upon the testimony of Mr. Price, and in the
absence of any evidence from applicant to the contrary, we
find that opposer’s actual goods and applicant’s chosen
description of goods are virtually legally identical.
Opposition No. 96,081
4
Turning to a consideration of the marks, it is
important to remember that “when marks would appear on
virtually identical goods or services, the degree of
similarity [of the marks] necessary to support a conclusion
of likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
We find that the dominant portion of both marks is the
word SIGNATURE. We note that applicant has disclaimed the
exclusive right to SERIES apart from applicant’s mark
SIGNATURE SERIES in its entirety. Moreover, Mr. Price
testified that the VINYL portion of opposer’s mark SIGNATURE
VINYL merely named the material used in making the
particular type of acoustical wall panels. Thus, the SERIES
portion of applicant’s mark and the VINYL portion of
opposer’s mark are not source identifiers, but rather are
descriptive terms. While it is certainty true that marks
must be compared in their entireties, by the same token, it
is not improper to give more weight to arbitrary terms and
less weight to descriptive terms in making the comparison.
In both marks, the term SIGNATURE is the only arbitrary
term. Moreover, both marks consist of two words, and in
both marks, the first word is SIGNATURE. Hence, we find
that when the marks SIGNATURE SERIES and SIGNATURE VINYL are
Opposition No. 96,081
5
used on virtually legally identical goods, there is a
likelihood of confusion.
DECISION: The opposition is sustained and applicant is
refused registration.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administration Trademark Judges,
Trademark Trial and Appeal Board