Atico Int’l. USA, Inc.

Trademark Trial and Appeal Board

Aug 30, 2000

No. 75418428 (T.T.A.B. Aug. 30, 2000)

Paper No. 10
HRW
8/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Atico International USA, Inc.
________
Serial No. 75/418,428
_______
Peter T. Cobrin of Cobrin & Gittes for Atico International
USA, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Wendel and Rogers, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Atico International USA, Inc. has filed an application
to register the mark EASY DECOR for “electrical decorative
lights sold in retail outlets.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of

1 Serial No. 75/418,428, filed January 15, 1998, based on an
allegation of a bona fide intent to use the mark in commerce.
A disclaimer has been made with respect to the word DECOR.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/418,428
2
confusion with the mark depicted below, which has been
registered for “electrical receptacle for multiple inputs.”2
The refusal has been appealed and both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors3 which are
relevant under the circumstances at hand. Two key
considerations in our analysis are necessarily the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods in connection with
which the marks are being used, or are intended to be used.
See In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d
1209 (TTAB 1999) and the cases cited therein.
As for the present marks, the Examining Attorney
maintains that the dominant portion of registrant’s mark is
E-Z DECOR, and as such is the phonetic equivalent of
applicant’s mark, EASY DECOR. She argues that the

2 Registration No. 1,801,407, issued October 26, 1993. Section 8
& 15 affidavits have been accepted and acknowledged,
respectively. A disclaimer has been made of the word OUTLET.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/418,428
3
remaining term in registrant’s mark, the word OUTLET, being
the generic name for registrant’s goods and also being
disclaimed matter, has minimal trademark significance.
She also gives little weight to the design features of
registrant’s mark, arguing that it is the literal portion
of the mark which will be used by consumers in calling for
the goods.
Applicant contends that, notwithstanding any phonetic
similarity, when considered in their entireties, the two
marks are clearly dissimilar in overall appearance.
Applicant notes that there are three “formatives” in
registrant’s mark, as well as a “distinctive” design
element, as opposed to the plain type style in which
applicant’s mark is presented. Applicant insists that the
term OUTLET is both the visually dominant portion of
registrant’s mark and the term likely to be remembered by
consumers and emphasized when the mark is pronounced.
Applicant further argues that the marks create different
commercial impressions, because the connotation of E-Z, as
presented in registrant’s mark, is not the same as EASY in
applicant’s mark. Specifically, applicant argues that the
E-Z in “stressed” lettering in registrant’s mark is
indicative of the electrical function of registrant’s
outlet and the connotation of the mark as a whole is of a
Ser No. 75/418,428
4
“decorative electrical outlet,” whereas the EASY of
applicant’s mark refers to the ease with which its
decorative lights are assembled.
Although it is true that in determining likelihood of
confusion, marks must be considered in their entireties, it
is also well established that there is nothing improper in
giving more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985). Although disclaimed matter cannot be
ignored, the fact remains that purchasers are more likely
to rely upon the non-descriptive portions of the mark as
the indication of source. See Hilson Research Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423 (TTAB
1993). Design elements also may be of lesser import,
because it is generally the word portion of a mark, rather
than any design feature, unless highly distinctive, which
is more likely to be remembered and relied upon by
purchasers in calling for the goods. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
We agree with the Examining Attorney that E-Z DECOR is
the dominant portion of registrant’s mark. As shown by the
dictionary definition made of record by the Examining
Attorney, the term “outlet” is a generic term for an
electrical receptacle and, as such, has no source
Ser No. 75/418,428
5
indicating significance. The words E-Z DECOR are what
would be used by purchasers to refer to, or call for, the
goods. The design is more likely to be perceived as a
representation of the strip receptacle and not as an
indication of source. See In re Appetito Provisions Co.,
supra.
Furthermore, applicant has provided no basis for us to
conclude that the use of “stressed” lettering for E-Z in
registrant’s mark converts the connotation of this term to
“electrical,” in contrast to the generally recognized
meaning of E-Z as a shortened form of the word “easy.”
Accordingly, we find that not only are the dominant
portions of the two marks, E-Z DECOR and EASY DECOR,
phonetic equivalents, but also the overall commercial
impressions created by the marks are very similar.
Thus, we turn to the issue of the similarity or
dissimilarity of the respective goods. We are guided by
the well-established principle that it is not necessary
that the goods of applicant and registrant be similar or
even competitive to support a holding of likelihood of
confusion. It is sufficient if the respective goods are
related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
Ser No. 75/418,428
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could, because of the similarity of the marks used
therewith, give rise to the mistaken belief that they
emanate from, or are associated with, the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
and the cases cited therein.
Here, the Examining Attorney argues that the goods are
related in that they are complementary, i.e., applicant’s
decorative lights are operated by plugging them into an
electrical receptacle such as registrant’s. In addition,
she points to third-party registrations in which the same
marks are registered for both electrical lights and
fixtures and electrical outlets/receptacles as evidence
that the same companies manufacture and/or sell both types
of goods. On the basis of this evidence, she concludes
that purchasers would be likely to believe that both types
of goods emanate from the same source, if highly similar
marks are used thereon.
Applicant strongly contends that the goods are not
related. As support for its position, applicant has
introduced the declaration of Martin Sutker, Vice President
of Marketing for applicant, a person claiming to have
extensive experience in merchandising all types of consumer
goods to retail stores, including electrical products such
as decorative lights and receptacles with multiple outlets.
Ser No. 75/418,428
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In his declaration, Mr. Sutker states, inter alia:
6. Retail outlets place electrical decorative lights
in the lighting section of the store and electrical
receptacles with multiple inputs in the electrical
hardware section of the store. These generally are
in different locations.
9. Electrical receptacles with multiple inputs can be
used for connecting electrical decorative lights to a
source of power because the electrical receptacles are
built for general purpose connectivity with electrical
equipment having plugs and the electrical receptacle
sockets are compatible with electrical decorative light
plugs as well [as] electrical plugs for other
electrical devices.
10. Electrical decorative lights are generally for
festive or holiday occasions and require only a single
electrical socket since they usually have only one
electrical plug.
11. Purchasers who buy an electrical decorative
light set have no practical reason to go to the expense
of purchasing an electrical receptacle with multiple
inputs as the electrical decorative light generally has
but a single electrical plug.
12. The market for electrical decorative lights is
separate and distinct from the market for electrical
receptacle with multiple inputs and if both types
of products have similar or phonetically identical marks
there would be little or no likelihood of confusion in
the marketplace among purchasers or retailers.
13. In the event one or the other type of product
fails and requires replacement, a consumer would seek
repair or replacement of the particular product itself,
without regard to the trademark appearing on any other
product.
14. In my opinion, retailers are generally aware that
electrical decorative lights are not supplied by the
same supplier as electrical receptacles with multiple
inputs and similarities in the trademarks used to
identify each product would not change this perception,
unless both were packaged and sold together as a unit.
Relying on these statements, applicant argues that the
goods are unrelated; that registrant’s receptacles are
clearly not designed specifically for use with applicant’s
Ser No. 75/418,428
8
decorative lights. Applicant further argues that the
channels of trade are different, since the products would
be sold in separate sections of a retail outlet.
Applicant also contends that of the thirteen third-
party registrations made of record by the Examining
Attorney, only two identify the electric light goods
covered thereby as “electric string lights,” goods said to
be similar to those of applicant, and only one identifies
the receptacles or outlets as those for multiple inputs.
Thus, applicant argues, the evidence submitted by the
Examining Attorney fails to contradict statements made in
the Sutker declaration to the effect that the two types of
products involved here are not supplied by the same
supplier.
The Examining Attorney has challenged the probative
weight which may be given to the Sutker declaration as a
whole, in view of the conclusory statements made therein,
particularly those in paragraphs 11-14. While we are in
total agreement that the statements made with respect to
the ultimate issue of likelihood of confusion or opinions
expressed with respect to purchaser or supplier perception
of trademarks extend beyond the scope of Mt. Sutker’s
personal knowledge or expertise, we have given weight to
those factual statements directed to the specific nature
Ser No. 75/418,428
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and manner of use of the goods involved here. See In re
Helene Curtis Industries, Inc., 143 USPQ 456 (TTAB 1964).
Even so, we find the evidence as a whole demonstrates that
a complementary relationship exists between the goods,
namely, that the decorative lights of applicant could be
plugged into the electrical receptacles of registrant.
Applicant has acknowledged as much in paragraph 9 of the
Sutker declaration. The fact that registrant’s receptacles
may used for other purposes is immaterial; applicant’s
decorative lights still may use a means such as
registrant’s for connection to a power source.
Furthermore, although a single string of decorative lights
has only one plug, it is only reasonable to assume that
more than one string of decorative lights might be used at
the same time, requiring use of a multiple input
receptacle. Although applicant stresses that the
decorative lights and the receptacles would normally be
located in different sections of a retail outlet, this does
not detract from the fact that purchasers might well
purchase both items on a single shopping trip for use
together. The question is whether, in view of this
potential for use together, these purchasers would be
likely to mistakenly believe that both products originate
Ser No. 75/418,428
10
from the same source, if similar marks are used therewith.
This record shows they would.
We place little weight in Mr. Sutker’s opinion that
retailers would not expect both types of products to be
supplied by the same source, unless packaged together. In
the first place, this is only declarant’s opinion,
unsupported by objective evidence. Second, it is the
ultimate purchasers of the products with whom we are
concerned. In this regard, we find the third-party
registrations relied upon by the Examining Attorney
adequate to establish that these are the type of goods
which may be produced by a single entity, and thus
purchasers encountering both products might reasonably
assume that they emanate from a single source. See In re
Albert Trostel & Sons Co., supra; In re Mucky Duck Mustard
Co., 6 USPQ2d 1467 (TTAB 1988).
Although applicant argues that the majority of these
registrations are not for “electric string light” or lights
for festive occasions, as pointed out by the Examining
Attorney, neither are applicant’s “decorative lights” so
restricted. Thus, we see no reason not to consider
registrations covering electric lamps, electric garden
lights and the like. Under similar reasoning, although
most of the registrations simply identify the electrical
Ser No. 75/418,428
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outlets as “receptacles” or “outlets” without any
specification of “multiple inputs,” we agree with the
Examining Attorney that such products may be assumed to
encompass receptacles similar to registrant’s.
Accordingly, the Examining Attorney’s reliance upon the
third-party registrations is well taken. We find the
evidence of record fully adequate to establish that a
viable relationship exists between the goods, so that the
use of similar marks thereon would be likely to result in
confusion as to source.
Although applicant argues that the channels of trade
differ for the goods, applicant relies solely on the
statement of Mr. Sutker that the products would be sold in
separate sections of a store to support this claim.
Separate sections of the same retail outlets do not
necessarily qualify as different channels of trade. The
products are offered to the same class of purchasers, are
made available in the same type of commercial enterprise,
and may even be bought at the same time. The channels of
trade are identical. Similarly, even though applicant’s
lights may be found in the lighting section and
registrant’s receptacles in the electrical hardware
section, the conditions for sale are not different. Both
are offered to the same purchasers under the same retail
Ser No. 75/418,428
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conditions; the difference in location within the store is
not a difference in condition of sale or marketing.
Accordingly, upon a review of all relevant du Pont
factors, and particularly upon consideration of the overall
similarity of the marks and the complementary relationship
which exists between the goods, we find that confusion
would be likely if applicant were to use its mark on the
goods set forth in the application.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
H. R. Wendel
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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