Atul Datta

Trademark Trial and Appeal Board

Oct 22, 2018

No. 87003347 (T.T.A.B. Oct. 22, 2018)

Mailed: October 22, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Atul Datta
_____

Serial No. 87003347
_____

Raj Abhyanker and Heather A. Sapp of LegalForce RAPC Worldwide, P.C.,
for Atul Datta.
Marco Wright, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Wellington, Wolfson, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Atul Datta seeks to register on the Principal Register the mark
QUANTUM QUARTZ, in standard characters and with “QUARTZ” disclaimed, for
“quartz; quartz slabs for use in kitchen and bathroom countertops” in International
Class 19.1

1 Application Serial No. 87003347 was filed April 16, 2016, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
This Opinion Is Not a
Precedent of the TTAB
Serial No. 87003347
- 2 -
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the standard-character marks
QUANTUM2 and QUANTUM STONE (with “STONE” disclaimed)3 as to be likely to
cause confusion, to cause mistake, or to deceive. Both cited marks are registered by
the same owner on the Principal Register for “tiles of ceramic for wall, floor or ceiling”
in International Class 19.
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. The appeal is fully briefed. We affirm the refusal to register.
I. Likelihood of Confusion
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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods 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.”).

2 Registration No. 4942883, issued April 19, 2016.
3 Registration No. 5138434, issued February 7, 2017.
Serial No. 87003347
- 3 -
A. Strength of the Cited Marks
Before assessing the similarity of the marks, we consider the strength of the cited
marks to determine the scope of protection to which they are entitled. In the
likelihood of confusion analysis, marks vary along a spectrum from very strong to
very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323,
122 USPQ2d 1733, 1734 (Fed. Cir. 2017). To determine a mark’s strength, we
consider both inherent strength, based on the nature of the mark itself, and
commercial strength. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”);
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014).
Applicant submitted copies of third-party registrations for marks comprising
QUANTUM or similar formatives in an attempt to show that the cited marks are
weak. Our primary reviewing court, the Court of Appeals for the Federal Circuit, has
instructed that evidence of extensive use and registration of a term as a mark by
others can be “powerful on its face, even where the specific extent and impact of the
usage has not been established.” Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136
(Fed. Cir. 2015) (quotation omitted).
Serial No. 87003347
- 4 -
Applicant submitted copies of the following existing, use-based third-party
registrations with different owners for goods in International Class 19:4
Mark Reg. No. Class 19 Goods
QUANTUM 1577775 Vinyl replacement windows
QUANTUM 2171589 Refractory bricks
QUANTUM 4914547 Building products, namely, vinyl rail products, namely, vinyl rail sections, rail posts, rail caps,
rail pickets, rail profiles, and rail spindles; vinyl
rail sections, rail posts, rail caps, rail pickets, rail
profiles, and rail spindles for decks, patios,
porches, balconies, roof decks, ramps, and gazebos;
vinyl railing kits consisting of vinyl rail sections,
rails, pickets, vinyl deck trim, stairs, and
attachment hardware for vinyl railings
QUANTAPANEL 3984925 Storm windows not of metal; glass panes; insulated glass panels
4212549
Natural Stone slabs and tiles; Slabs of natural
quartz; natural quartz surfaces composed of grits,
resin and pigments; Tiles and paving slabs, not of
metal; Non metal floor tiles; Non metal tiles for
walls, floors; Non metal wall tiles; Non-metal
cladding for construction and building; Artificial
stone; Wall boards, Wall panels not of metal; Floor
panels not of metal; Aggregate material composed
of natural quartz grits, resin and pigments for
countertops; natural quartz grits, resin and
pigments for countertops to be used as wall
cladding and table tops; Staircases; Stair treads
not of metal; Building materials, namely, non-
metal countertops for further installation;
building stone; natural stone; natural stone and
stone tile; Building materials, namely, composite
panels composed primarily of nonmetal materials;
Quartz; Reconstituted Stone, Recomposed stone

4 August 23, 2017 Response to Office Action at TSDR 13-39; February 4, 2017 Response to
Office Action at TSDR 41-58. Applicant also submitted a few additional third-party
registrations that have been cancelled or identify less relevant marks, goods, or services.
Serial No. 87003347
- 5 -
The last two third-party marks, and QUANTAPANEL, are readily
distinguishable from the QUANTUM-formative marks before us. The first three
third-party marks listed in the chart consist of the word QUANTUM, but they are for
goods much less similar to Applicant’s and Registrant’s identified goods than those
goods are to each other (i.e., “quartz; quartz slabs for use in kitchen and bathroom
countertops” and “tiles of ceramic for wall, floor or ceiling,” respectively).
The third-party registrations of record are insufficient to establish that the term
QUANTUM is in such widespread use that consumers have been educated to
distinguish marks containing that term based on minor differences. See In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (stating
that evidence of third-party use for similar goods “falls short of the ‘ubiquitous’ or
‘considerable’ use of the mark components present in [applicant’s] cited cases”); cf.
Jack Wolfskin, 116 USPQ2d at 1136 (discussing “voluminous evidence” of registration
and use of paw print design elements); Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (referring to evidence of “a fair
number” of third-party marks).
The record as a whole does not establish that the cited marks are entitled to only
a narrowed scope of protection due to third-party use of confusingly similar marks for
similar or related goods. We therefore accord Registrant’s marks the normal scope of
protection to which inherently distinctive marks are entitled.
Serial No. 87003347
- 6 -
B. Similarity of the Marks
The first du Pont likelihood of confusion factor focuses on “‘the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression.’” Palm Bay Imps. 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). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Because the similarity of the marks is determined based on the marks in their
entireties, our analysis is not predicated on dissecting the marks into their various
components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015).
On the other hand, in articulating reasons for reaching a
conclusion on the issue 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 consideration of
the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Applicant’s mark QUANTUM QUARTZ and the cited marks QUANTUM and
QUANTUM STONE each consist of or comprise one identical distinctive word:
QUANTUM. The disclaimed wording “QUARTZ” in Applicant’s mark is generic for
Applicant’s identified goods, which include quartz. Similarly, the generic or
Serial No. 87003347
- 7 -
descriptive term “STONE” is disclaimed from the cited mark QUANTUM STONE.
Consumers are likely to accord these generic and descriptive words less weight and
focus on the distinctive portion of each mark, QUANTUM, to identify source. See In
re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997).
As we often have said, the lead element in a mark – like QUANTUM in the marks
we are comparing – has a position of prominence; it is likely to be noticed and
remembered by consumers and so to play a dominant role in the mark. See, e.g., Palm
Bay, 73 USPQ2d at 1692 (stating that VEUVE is a prominent part of the mark
VEUVE CLICQUOT because it is the first word in the mark); Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)
(stating that consumers will first notice the identical lead word on encountering the
marks); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting
that the dominance of BARR in the mark BARR GROUP is reinforced by its location
as the first word in the mark).
Because it is the first and only distinctive element in Applicant’s mark, we find
QUANTUM to be the dominant portion of that mark. While there is no rule that
likelihood of confusion automatically applies where one mark encompasses another,
in this case, the fact that the entire cited mark QUANTUM is the dominant portion
of Applicant’s mark also increases the similarity between these two marks. See, e.g.,
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(affirming Board decision that ML is likely to be perceived as a shortened version of
ML MARK LEES, and stating that “the presence of an additional term in the mark
Serial No. 87003347
- 8 -
does not necessarily eliminate the likelihood of confusion if some terms are
identical”); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram &
Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER &
design for club soda, quinine water, and ginger ale likely to cause confusion with
BENGAL for gin); Integrated Embedded, 120 USPQ2d at 1516 (BARR GROUP, with
“group” disclaimed, likely to cause confusion with BARR for engineering services); In
re El Torito Rests. Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (MACHO COMBOS, with
“combos” disclaimed, likely to cause confusion with MACHO for restaurant entrees).
The addition of “QUARTZ” to Applicant’s mark introduces an alliterative
component and distinguishes it slightly from the cited marks in appearance, sound,
and connotation. See Appeal Brief at 12, 6 TTABVUE 13. In light of the generic nature
of the word “QUARTZ,” however, we find that it does little to distinguish Applicant’s
mark from the cited marks. On the particular facts of this appeal, in which Registrant
registered QUANTUM followed by QUANTUM STONE, we find that consumers are
likely to view QUANTUM QUARTZ as a line extension identifying quartz goods
emanating from Registrant. See, e.g., Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1433 (TTAB 2013).
Considered as a whole, we find that Applicant’s mark QUANTUM QUARTZ
makes a commercial impression very similar to Registrant’s marks QUANTUM and
QUANTUM STONE. The first du Pont factor thus weighs strongly in favor of a
finding that confusion is likely.
Serial No. 87003347
- 9 -
C. Similarity of the Goods and Channels of Trade
We next turn to the second and third du Pont factors, the similarity of the goods
and channels of trade. The test is not whether consumers would be likely to confuse
the goods, but rather whether they would be likely to be confused as to their source.
In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012). Therefore, to support a finding
of likelihood of confusion, it is not necessary that the goods be identical or even
competitive. It is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be encountered
by the same persons in situations that would give rise, because of the marks, to a
mistaken belief that they originate from the same source or that there is an
association or connection between the sources. In re Thor Tech Inc., 90 USPQ2d 1634,
1635 (TTAB 2009).
The Examining Attorney made of record at least eight existing, use-based third-
party registrations for the kinds of goods identified by both Applicant and Registrant,
including the following:5
Mark Reg. No. Selected Class 19 Goods
4031261 “Quartz” and “ceramic tiles”
KALINGASTONE 4437132 “Quartz” and “tiles of ceramic for wall, floor or ceiling”

4608722 “Quartz” and “ceramic tiles”
TREND TERRAZZO
(“TERRAZZO”
disclaimed)
4612834 “Building and home remodeling materials, namely, natural and engineered stone,
ceramic, glass, marble, quartz, granite and
porcelain mosaics, tiles and slabs”

5 September 13, 2017 Final Office Action at TSDR 27-61.
Serial No. 87003347
- 10 -
Mark Reg. No. Selected Class 19 Goods

5006029 “Quartz” and “ceramic tiles”

5011998 “Quartz” and “ceramic tiles”
IMMENSE 5130470 “Building and home remodeling materials, namely, natural and engineered stone,
ceramic, glass, marble, quartz, granite and
porcelain mosaics, tiles and slabs”

5226282 “Quartz” and “ceramic tiles”

Although these registrations are not evidence that the marks are in use or that the
public is familiar with them, they suggest that the kinds of goods identified in the
application and cited registrations may emanate from a single source under the same
mark. See, e.g., Anderson, 101 USPQ2d at 1919; In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).
The Examining Attorney also submitted Internet evidence showing both “quartz;
quartz slabs for use in kitchen and bathroom countertops” and “tiles of ceramic for
wall, floor or ceiling” offered for sale by the same retailers specializing in such goods,
including, for example:
• Arizona Tile (Aug. 5, 2016 Office Action at TSDR 8-9);
• Bedrosians (id. at TSDR 14-15);
• Galleria Stone and Tile (September 13, 2017 Final Office Action at TSDR
2-3, 25);
• Walker Zanger (id. at TSDR 4-6); and
• Dwyer Marble & Stone (id. at TSDR 9-14).
Serial No. 87003347
- 11 -
This evidence establishes a relationship between the channels of trade for the
identified goods.
Based on this evidence, we find that the goods identified in the application and
cited registrations are related and travel in the same channels of trade. In our
likelihood of confusion analysis, these findings under the second and third du Pont
factors also support a finding that confusion is likely.
D. Consumer Sophistication
Finally, we address Applicant’s argument that both homeowners and construction
professionals will exercise care when purchasing his goods and Registrant’s, which
Applicant contends are expensive and require professional installation. See Appeal
Brief at 21-23, 6 TTABVUE 22-24. This argument concerns the fourth du Pont factor,
the “conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs.
careful, sophisticated purchasing.” 177 USPQ at 567.
The record shows that the identified goods come in a range of prices, from 17 cents
for a ceramic wall tile6 to $4,000 for a professionally installed quartz countertop.7 As
the Examining Attorney argues in his brief, this evidence suggests that a small tile
project may be relatively inexpensive. See 8 TTABVUE 14. Therefore, we cannot

6 September 13, 2017 Final Office Action at TSDR 26 (from www.flooranddecor.com).
7 August 23, 2017 Response to Office Action at TSDR 7-10, from what appears to be the
website of HomeAdvisor, Inc. Although we consider this evidence because the Examining
Attorney did not object to it, it is not properly identified by the URL for the website, but
rather by what appears to be an identifier for the screen capture app used to copy the page:
. See In re I-Coat Co.,
126 USPQ2d 1730, 1733 (TTAB 2018); Trademark Trial and Appeal Board Manual of
Procedure (TBMP) § 1208.03 (2018).
Serial No. 87003347
- 12 -
conclude that all consumers of the identified goods are sophisticated, and precedent
requires that we base our decision on the least sophisticated potential purchasers.
Stone Lion, 110 USPQ2d at 1163. Even assuming some consumers of the identified
goods exercise care, moreover, it is well-settled that careful or sophisticated
purchasers are not immune from source confusion. In re Research & Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986). We find the fourth du Pont factor
to be neutral.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed, as they pertain to the relevant du Pont likelihood of
confusion factors. To the extent that any other du Pont factors for which no evidence
was presented by Applicant or the Examining Attorney may nonetheless be
applicable, we treat them as neutral.
We have found that Applicant’s mark is highly similar to the cited marks, and
that the goods identified in the subject application and cited registrations are related.
We are not persuaded that even careful consumers are unlikely to be confused when
the marks QUANTUM QUARTZ on the one hand and QUANTUM and QUANTUM
STONE on the other are used in connection with related goods traveling through the
same channels of trade. We find that Applicant’s mark is likely to cause confusion
with the marks in cited Registration Nos. 4942883 and 5138434 when used in
association with the goods identified in the application.
Decision: The refusal to register Applicant’s mark is affirmed.