AWI Licensing CompanyDownload PDFTrademark Trial and Appeal BoardApr 12, 2007No. 76619768 (T.T.A.B. Apr. 12, 2007) Copy Citation 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. Copy with citationCopy as parenthetical citation