AWI Licensing Company

Trademark Trial and Appeal Board

Apr 12, 2007

No. 76619768 (T.T.A.B. Apr. 12, 2007)

Mailed: April 12, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re AWI Licensing Company
________

Serial No. 76619768
_______

Bruce J. Wolstencroft for AWI Licensing Company.

Tina Brown,1 Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Grendel, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by AWI Licensing Company to
register the mark WOODHAVEN in typed or standard character
form on the Principal Register for the following goods, as
amended: “non-metal ceiling tiles, panels and planks for
indoor use” in International Class 19.2

1 The above application originally was examined by another
examining attorney, but subsequently was reassigned to the
attorney whose name is shown to prepare the appeal brief.

2 Application Serial No. 76619768 was filed November 8, 2004,
based on applicant’s assertion of September 7, 2000 as a date of
first use of the mark anywhere and in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76619768
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 WOODHAVEN, previously registered on the
Principal Register in typed or standard character form for
“vinyl soffits” in International Class 19,3 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.
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
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).

3 Registration No. 2610114 issued August 20, 2002.
Ser No. 76619768
3
The Marks
We first consider the similarity of the marks.
Applicant’s mark is identical to the cited mark, WOODHAVEN,
in appearance and sound. Further, applicant has applied
for its mark in standard character form. Registrant’s mark
is presented in typed form, which is the term formerly used
by the United States Patent and Trademark Office to
identify marks appearing in standard character form. See
TMEP §807.03. Marks appearing in typed or standard
character form may be displayed in any reasonable
stylization, font, color and size. See Phillips Petroleum
Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA
1971) [a mark in typed or standard character form is not
limited to the depiction thereof in any special form]; INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992)
["[a]s the Phillips Petroleum case makes clear, when [an]
applicant seeks [or a registrant has] a typed or block
letter registration of its word mark, then the Board must
consider all reasonable manners in which ... [the word
mark] could be depicted"]; and TMEP §807.03 Thus,
applicant’s mark may be displayed in a stylized manner that
is identical to a stylization adopted by registrant.
We are not persuaded by applicant’s argument that the
marks convey different commercial impressions due to
Ser No. 76619768
4
differences in the identified goods. Applicant fails to
explain how use of its WOODHAVEN mark on “non-metal ceiling
tiles, panels and planks for indoor use” conveys a
commercial impression that differs from registrant’s use of
the identical mark on “vinyl soffits.” See, e.g., In re
Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006). Cf. In re
Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987). In view
of the foregoing, we find that the marks are identical in
all respects. Use of identical marks is a fact which
“weighs heavily against applicant.” See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984); and In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993).
We further find that on the facts before us, and in
the absence of any evidence to the contrary, the mark
WOODHAVEN is a strong mark, and as such is entitled to a
broad scope of protection.
The Goods
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
Ser No. 76619768
5
likelihood of confusion. See In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). If the marks are the same,
as in this case, it is only necessary that there be a
viable relationship between the goods in order to support a
finding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
Furthermore, it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the examining attorney has made of
record a number of use-based third-party registrations
which show that various entities have adopted a single mark
for goods that are identified in both applicant’s
application and the cited registration. See, for example:
Ser No. 76619768
6
Registration No. 2532894 for, inter alia, plastic
or plastic composite extruded building materials,
namely, planks, soffits, panels;

Registration No. 0874992 for solid vinyl siding,
panels and soffits;

Registration No. 2687125 for, inter alia, non-
metal building materials, namely, paneling,
soffits; decorative building accents made of a
polymeric material, namely, panels;

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). In this case, the evidence of record suggests that
applicant’s and registrant’s goods are related building
materials that may emanate from a common source. As a
result, we find that the goods are related such that
consumers could, because of the identical nature of the
marks, mistakenly believe that they originate from the same
source.
Channels of Trade
We are not persuaded by applicant’s argument that
registrant’s goods are exterior building products which are
separate and distinct from applicant’s interior building
products and thus move in different channels of trade. It
is settled that in making our determination regarding the
Ser No. 76619768
7
relatedness of the parties’ goods, we must look to the
goods as identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”) Thus,
while applicant’s “non-metal ceiling tiles, panels and
planks for indoor use,” as identified, may be interior
building products, registrant’s “vinyl soffits” contain no
such limitations. Accordingly, registrant’s goods are
presumed be suitable for both building interiors and
exteriors, and also to move in all normal channels of trade
and be available to all classes of potential consumers.
See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Ser No. 76619768
8
Furthermore, the examining attorney has introduced
evidence from retail Internet websites showing that the
same retail entities provide both interior and exterior
building materials. See, for example:
www.conwedplastics.com/markets;
www.bluelinxco.com/ourProducts;
www.peoplesbuild.com; and
www.traditional-building.com.
Therefore, in this case, we find that the same consumers
would purchase both applicant's and registrant's goods and
that they would be sold in the same channels of trade such
as home improvement stores and Internet websites.
Third Party Use
In its brief, applicant argues that third party
registration of WOODHAVEN to identify various goods weighs
against a finding of likelihood of confusion. In support
of its contention, applicant asserts that a “search of TESS
reveals thirteen (13) records” (brief, p. 9). However,
applicant did not make either these search results or any
other evidence of third party use of WOODHAVEN of record at
any time during the prosecution of its application.4 As a

4 We note in addition that if applicant has submitted evidence of
third party use with its brief on appeal, such submission would
be untimely. See Trademark Rule 2.142(d).

Ser No. 76619768
9
result, we find on this record that there is no evidence of
third party use of WOODHAVEN such that that confusion
between the cited registration and challenged application
is unlikely.
Conditions of Sale
Another du Pont factor discussed by applicant and the
examining attorney is that of the conditions of sale.
Applicant asserts that its goods are “relatively high
priced” (brief, p. 7) and would be purchased by careful and
sophisticated users. However, there is no evidence that
either applicant’s or registrant’s goods would be purchased
only by highly sophisticated persons. Further,
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 addition, even if some degree of care were exhibited in
making the purchasing decision, because applicant and
registrant use the identical mark to identify their goods,
even careful purchasers are likely to assume that the marks
identify goods emanating from a single source.
Actual Confusion
The final du Pont factor discussed by applicant and
the examining attorney is that of the lack of instances of
actual confusion. Applicant asserts that the absence of
Ser No. 76619768
10
actual confusion for approximately six years suggests no
likelihood of confusion. However, and as pointed out by
the examining attorney, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). Particularly in an
ex parte proceeding, applicant's assertion of the absence
of actual confusion is of little probative value in our
determination on the issue of likelihood of confusion
because the Board cannot readily determine whether there
has been a significant opportunity for actual confusion to
have occurred, such that the absence of confusion is
meaningful. See In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB
1984); and In re Jeep Corp., 222 USPQ 333 (TTAB 1984). In
those situations where the Board has recognized the absence
of actual confusion as probative in an ex parte setting,
there existed a "confluence of facts" which together
strongly suggested that the absence of confusion was
meaningful and should be given probative weight. See In re
Opus One Inc., supra; and In re Jeep Corp., supra. The
"confluence of facts" is not present in this record.
Ser No. 76619768
11
Summary
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, including
those not specifically addressed in this decision, we find
that a likelihood of confusion exists. Moreover, to the
extent that any of the points raised by applicant raise a
doubt about likelihood of confusion, that doubt is required
to be resolved in favor of the prior registrant. See In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.