Benjamin J. Gierschv.Scripps Networks, Inc.

Trademark Trial and Appeal Board

Mar 16, 2009

No. 92045576 (T.T.A.B. Mar. 16, 2009)

Mailed: March 16, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Benjamin J. Giersch
v.
Scripps Networks, Inc.
_____

Cancellation No. 92045576
_____

David A. Weinstein, Esq., for Benjamin Giersch.

Gerald J. Ferguson of Baker & Hostetler LLP, for Scripps
Networks, Inc.
_____

Before Quinn, Holtzman and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Mr. Benjamin J. Giersch (“petitioner”)1 has petitioned
to cancel Registration No. 2943958 for the mark DESIGNED TO
SELL, owned by Scripps Network, Inc (“respondent”).2 The
registration issued on April 26, 2005 on the Principal
Register. The services are identified therein as
"entertainment services, namely, an on-going audio and

1 Gerald J. Giersch was initially listed as a co-petitioner on
the petition for cancellation, but was later removed by the Board
for failure to pay the additional fee for a second petitioner.
2 Application Serial No. 78402459, which matured into the
registration at issue, was filed on April 15, 2004, claiming
first use and first use in commerce of January 1, 2004.
THIS OPINION IS A PRECEDENT
OF
THE T.T.A.B.
Cancellation No. 92045576
2
visual program distributed over television, satellite,
wireless, audio and video media, fiber optics, cable, and a
global computer network in the fields of gardening and
landscaping, furniture, antiques and collectibles; interior
design and decorating; architecture and home design,
building, improvement, repair and renovation; and similar
subjects in the fields of homes and gardens," in
International Class 41.
In his petition for cancellation, petitioner asserts
that since prior to respondent’s first use of its mark,
petitioner has continuously used in commerce the mark
DESIGNED2SELL in connection with the services listed in his
pending trademark application for: “providing the services
of staging managers and or renters who are placed in
residences for the sole purpose of maintaning [sic] them
through the sales cycle in order to improve the residence's
selling potential” in International Class 36; “interior
decorating service in the nature of providing furniture,
window treatments, wall treatments, art and decorative
accessories in order to improve a house's selling
potential,” in International Class 42; and “landscape
maintenance and imporvments [sic] in order to improve a
homes [sic] selling potential” in International Class 44.3

3 Application Serial No. 78426238 was filed on May 27, 2004, by
Benjamin J. Giersch and Gerald J. Giersch as co-applicants
Cancellation No. 92045576
3
Petitioner asserts in addition that his application has been
refused registration by the Trademark Examining Operation
under Section 2(d) of the Trademark Act on the basis of a
likelihood of confusion with the mark in respondent’s
Registration No 2943958.
Petitioner alleges that by virtue of his prior use of
the mark DESIGNED2SELL, he has built up valuable goodwill
therein which would be jeopardized by the continued
registration of respondent’s “confusingly similar” DESIGNED
TO SELL mark. Respondent’s answer denied the salient
allegations of the petition, and asserted the affirmative
defenses of laches and acquiescence.4 Both parties filed
trial briefs,5 and petitioner filed a reply brief.
The Record and Pending Motion to Strike
The record in this case includes the pleadings and the
file of the involved registration. In addition, during its
assigned testimony period, respondent submitted the
testimony deposition, with accompanying exhibits, of Michael
Eric Dingley, Senior Vice President, Programming and Content

alleging first use and first use in commerce of the identified
services in all classes on December 1, 2001.
4 Respondent did not maintain its affirmative defenses in its
trial brief. Accordingly, we consider the defenses to have been
waived, and we give them no further consideration.
5 Without explanation, petitioner filed an amended trial brief
the day after filing his original trial brief. Respondent did
not object. So, we have considered the amended brief in this
decision. Petitioner filed exhibits with his main and reply
briefs. We consider these only to the extent the exhibits were
otherwise properly made of record.
Cancellation No. 92045576
4
Strategy, of HGTV, a subsidiary of respondent that airs the
show, “Designed to Sell.” Additionally, the parties
stipulated into the record that “the discovery depositions
of Benjamin J. Giersch and Gerald David Giersch taken by the
Registrant on September 18, 2007, may be used as trial
testimony and offered in evidence by Petitioner.”
When petitioner filed the discovery depositions
pursuant to the stipulation, respondent countered with a
motion to strike “approximately 460 pages of documents” that
constitute “noncomplying evidence” that was “not stipulated”
and “not introduced” properly by the witnesses (these
correspond to the exhibits marked 35 and higher). Although
the stipulation did not specifically address its
applicability to exhibits, it is understood that the parties
intended it to include such exhibits as were properly
identified and introduced during the depositions. Indeed,
respondent’s motion to strike does not purport to exclude
all deposition exhibits from the record, but only those that
were “not introduced in connection with any testimony.” In
response to the motion to strike, petitioner set forth a
chart purporting to state where each of the contested
exhibits was identified by one of the two witnesses.
Trademark Rule 2.123(g)(2) provides that “[e]ntry and
consideration may be refused to improperly marked exhibits.”
The Board will consider an objection as to improper
Cancellation No. 92045576
5
authentication, but of course our ruling depends on the
facts of the case. Pass & Seymour, Inc. v. Syrelec, 224
USPQ 845, 847 (TTAB 1984) (allowing admission of documents
that were presented to, and identified by, witness at
deposition). Here, we find upon review of the contested
exhibits that the deponents did indeed refer to the
documents during the depositions, as asserted by petitioner.
However, as respondent asserts, the documents were not
physically present during the depositions, and therefore
were not specifically identified and authenticated. That
petitioner produced the documents in response to
respondent's document production requests during discovery
does not automatically make the documents of record. See
Trademark Rule 2.122(e), 37 CFR §2.122(e), (providing for
the filing of printed publications and official records
through a notice of reliance) and 2.123(h), 37 CFR §2.123(h)
(providing for the filing of all trial deposition
transcripts, with proper indexing and exhibits).
Accordingly, we grant respondent’s motion, and strike from
the record the exhibits to the Giersch depositions that are
numbered 35 and higher.6

6 Although we have struck these exhibits from the record, we
hasten to add that their inclusion would not change the outcome
of this cancellation proceeding since the relevant information
contained therein was mentioned elsewhere in the record.
Cancellation No. 92045576
6
Petitioner’s Standing and Priority of Use
Petitioner has established his common-law rights in the
mark DESIGNED2SELL, and has thereby established his standing
to bring this proceeding. In reaching this conclusion, we
do not rely on petitioner’s application for registration
because petitioner did not properly introduce his pending
application, nor did petitioner introduce, by testimony or
documentation, evidence that the application was refused and
suspended pending the outcome of this cancellation
proceeding.
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns “a mark or trade
name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. §1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use
or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create
a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§2(d)
and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
Cancellation No. 92045576
7
(Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which respondent may
rely is the filing date of its underlying application. See
Trademark Act Section 7(c), 15 U.S.C. §1057(c). See also
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840
(TTAB 1995). In this case, and as noted above, the
application that matured into the registration at issue
herein was accorded a filing date of April 15, 2004.
Respondent introduced testimonial and documentary evidence
that its actual first date of use in commerce of the
DESIGNED TO SELL mark in connection with its identified
services was January 1, 2004. (Dingley depo. at 11:20-21,
and Ex. 4). This date comports with the one alleged in the
underlying application, and is the earliest date upon which
respondent is entitled to rely for purposes of priority.
Inasmuch as petitioner has not pleaded ownership of any
registered trademark, petitioner must rely on his common-law
use of DESIGNED2SELL as a trademark to prove priority.7 In
order for a plaintiff to prevail on a claim of likelihood of
confusion based on its ownership of common-law rights in a
mark, the mark must be distinctive, inherently or otherwise,

7 We also note that petitioner's pleaded application, even if
made of record, was filed subsequent to the filing date of the
application that matured into respondent’s registration.
Cancellation No. 92045576
8
and plaintiff must show priority of use. See Otto Roth &
Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40
(CCPA 1981). Respondent has not raised an issue as to the
distinctiveness of petitioner's mark or otherwise put
petitioner on notice of this defense, and therefore we find
that the mark is distinctive. See Wet Seal Inc. v. FD
Management Inc., 82 USPQ2d 1629, 1634 (TTAB 2007) (absent
argument or evidence from applicant, opposer’s mark deemed
distinctive); The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715, note 5 (TTAB 1991) (affirmative
defense regarding descriptiveness of opposer’s mark, raised
for the first time in applicant’s brief, was untimely and
not considered by the Board).
In order to establish priority, petitioner must show
that he made common-law use of his DESIGNED2SELL mark in
connection with his alleged services prior to January 1,
2004. In a case involving common-law rights, “the decision
as to priority is made in accordance with the preponderance
of the evidence.” Hydro-Dynamics Inc. v. George Putnam &
Company Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir.
1987). In support of his claim of priority, petitioner
testified that he has been doing business under the name
DESIGNED2SELL since as early as the spring of 2002. (B.
Giersch depo. at 49:14). Petitioner’s tax filings back up
this claim (B. Giersch depo. Ex. 29), as does his filing of
Cancellation No. 92045576
9
a Colorado Business Registration with the State of Colorado
in 2001 (B. Giersch depo. Ex. 20). On his Colorado Business
Registration for DESIGNED2SELL, petitioner listed the
following: “Provide management of properties that are for
sell [sic] to the owner of the property when the property is
a vacant home. We provide furnishing to help sell the home
as well as monitor the property to maintain security.” (B.
Giersch depo. Ex. 20). Petitioner’s testimony and exhibits,
as well as those of his brother, corroborate the evidence
that at least since spring of 2002, petitioner has used the
mark DESIGNED2SELL in connection with “providing the
services of staging managers and/or renters who are placed
in residences for the sole purpose of maintaining them
through the sales cycle in order to improve the residence's
selling potential.” (G. Giersch depo. at 39:19-43:17 and
46:14; B. Giersch depo. at 33:1-2, 96:17-18, 101:13-25; and
Exs. 4,5,6,8,9,10,11,21,23,24).
We note that in describing the nature of the common-law
services that petitioner has established via the record, we
are not bound by petitioner’s identification of services in
his pending application Serial No. 78426238. Nevertheless,
this description coincides with petitioner’s identification
in the application for services in International Class 36.
Both petitioner and his brother testified that they have
also done some occasional decorating, in the nature of
Cancellation No. 92045576
10
indoor and outdoor improvements, in the homes where they
have placed tenants. (See G. Giersch depo. at 78:23-79:1;
B. Giersch depo. at 52:8-11, 99:14-17, and Ex. 28).
However, there is no evidence that this ever constituted a
regular or recurring activity such as to create common-law
rights in the DESIGNED2SELL mark for those services. (See G.
Giersch depo. at 114:21-24). On the contrary, petitioner
estimated that “managed staging services” comprised probably
“95 percent” of his reported income for 2001-2002. (B.
Giersch depo. at 105:14-17; Ex. 29), and 90% for 2002-2003
(Id. at 111:3-11; Ex. 30). Without evidence to show that
they were ever performed as a regular or recurring activity
associated with the mark, we decline to find that petitioner
has established common-law rights in the DESIGNED2SELL mark
for indoor or outdoor services related to decorating or home
improvement.
Respondent has argued in its trial brief that
petitioner has abandoned any common-law rights that
petitioner may have had in the mark DESIGNED2SELL, first by
discontinuing use, and second by selling his business.
Respondent did not raise the defense of abandonment in its
answer. However, petitioner did not object on that ground
in his reply brief, and instead addressed the merits of the
defense. The Board has discretion to deem the pleadings
Cancellation No. 92045576
11
amended to conform to the evidence in accordance with
Federal Rule of Civil Procedure, Rule 15(b).
Accordingly, we consider the issue of whether
petitioner at some point abandoned the common-law rights
that he had established in DESIGNED2SELL, either passively
by discontinuing his business in Colorado in the 2004 to
2007 time frame, or affirmatively by contracting to sell
that business. The statutory presumption of abandonment
after three years non-use does apply to marks established
via common-law usage. 15 USC §1127; see also Miller Brewing
Co. v. Oland’s Breweries Ltd., 548 F.2d 349, 192 USPQ 266,
267 (CCPA 1976); Lesley Hornby a/k/a Lesley Lawson a/k/a
Twiggy v. TJX Companies, Inc., 87 USPQ2d 1411 (TTAB 2008);
and L. & J.G. Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1967
(TTAB 2007). However, to fall under the statutory
presumption, the use must have been discontinued “with
intent not to resume such use.” 15 USC §1127. Intent not
to resume use may be inferred from the circumstances, and
“use” of a mark means “the bona fide use of such mark made
in the ordinary course of trade, and not made merely to
reserve a right in a mark.” Id. Regarding intent, the
predecessor court to the Court of Appeals for the Federal
Circuit, our primary reviewing court, quoted the Supreme
Court in saying: “To establish the defense of abandonment,
it is necessary to show not only acts indicating a practical
Cancellation No. 92045576
12
abandonment, but an actual intent to abandon. Acts which
unexplained would be sufficient to establish an abandonment
may be answered by showing that there never was an intention
to give up and relinquish the right claimed.” Miller
Brewing Co. v. Oland’s Breweries Ltd., 192 USPQ at 267,
citing Saxlehner v. Eisner & Mendelsohn Co., 179 U.S. 19, 31
(1900).
Here we do not have the three-year period of non-use to
create a presumption of abandonment. Thus, the burden of
establishing an intent to abandon the mark falls on
respondent. See Online Careline Inc. v. America Online
Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Respondent has not met this burden. Petitioner has
testified that to the extent he has briefly stopped use of
the mark in Colorado, he intended, and continues to intend,
to resume such use. (B. Giersch depo. at 90:11-21).
Meanwhile, his brother has continuously used the mark to run
a parallel business in Dallas, Texas since before the time
of alleged abandonment. (G. Giersch depo. at 19:20). It is
clear that Mr. Gerald Giersch’s use has been undertaken by
permission from petitioner and is controlled by petitioner.
Basic, Inc. v. Rex, 167 USPQ 696 (trademark license may be
oral); see also McCarthy on Trademarks and Unfair
Competition §18:43 and § 18:54 (4th ed. 2008), citing the
Trademark Manual of Examination Procedure 1201.03(b)(common-
Cancellation No. 92045576
13
law rights may be licensed, and federal registration may
even be based on such license). In this regard, Mr. Gerald
Giersch has testified as to the enormous extent of
petitioner’s involvement with his Dallas, Texas business,
whereby petitioner has shared his contracts and
advertisements, and has overall controlled the nature and
quality of his brother’s corresponding DESIGNED2SELL
services. (G. Giersch depo. at 39:19-21, 69:11, 93:13, and
113:10-12). Since we find Mr. Gerald Giersch’s use to be
permissive and controlled, we do not need to examine whether
such use constitutes a “related company” under 15 USC
§ 1055. In either case, we find that petitioner has not
passively abandoned his common-law rights via nonuse.
As to the sale of petitioner’s business, it is apparent
from the Agreement to Sell Business, that while petitioner
sold his Colorado business in 2004, petitioner intended to
maintain use of the DESIGNED2SELL mark for himself and his
licensees. (B. Giersch, Ex. 25). The agreement stipulates
that “Seller is the owner of that trade name
[DESIGNED2SELL].” Id., Para. 6. The agreement further
includes general quality-control provisions, consistent with
a valid licensing agreement. Id. Accordingly, we find that
petitioner has not affirmatively abandoned his common-law
rights via sale of his business.
Cancellation No. 92045576
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Accordingly, we accept petitioner’s claim of common-law
rights to the mark DESIGNED2SELL for “providing the services
of staging managers and/or renters who are placed in
residences for the sole purpose of maintaining them through
the sales cycle in order to improve the residence's selling
potential,” with a date of first use as of spring 2002,
which establishes priority over respondent’s earliest date
of January 1, 2004. We turn then to the merits of
petitioner’s claim of likelihood of confusion.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to a likelihood of confusion. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
While all the DuPont factors must be considered when
they are of record, the various factors "may play more or
less weighty roles in any particular determination." In re
E.I. du Pont, 177 USPQ at 567. "Indeed, any one of the
factors may control a particular case." In re Dixie
Cancellation No. 92045576
15
Restaurants Inc., 41 USPQ2d at 1533 citing du Pont, 177 USPQ
at 567.
The Marks
We start by examining the first du Pont factor, i.e.,
whether respondent’s and petitioner’s marks are similar or
dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
and/or services offered under the respective marks is likely
to result.
Petitioner’s mark DESIGNED2SELL is phonetically
identical to respondent’s mark DESIGNED TO SELL. The marks
are also highly similar visually, with the sole differences
being the substitution in respondent’s mark of the short
preposition “to” for the number “2” between the two dominant
words, and the use of spaces between them. See In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)
(“[T]here 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
Cancellation No. 92045576
16
consideration of the marks in their entireties. Indeed this
type of analysis appears to be unavoidable.”). There is no
apparent difference in connotation created by the
substitution of the “to” for “2.” Likewise, the spaces that
respondent places between the words do not create a distinct
commercial impression from petitioner’s presentation of his
mark as one word. See Stock Pot, Inc. v. Stockpot
Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d 737
F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no
question that the marks of the parties [STOCKPOT AND STOCK
POT] are confusingly similar. The word marks are
phonetically identical and visually almost identical.”)
Respondent has argued that it uses its DESIGNED TO SELL
mark together with HGTV, its “house mark.” (Respondent’s
brief at 3). This is not borne out by the evidence however.
(see Dingley depo., Exs. 4 and 5). Furthermore, the mark is
registered independently, and use with a “house mark” would
not necessarily make it less confusing. See In re Christian
Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (applicant’s LA
CACHET DIOR held confusingly similar to CACHET); In re the
United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)
(CAREER IMAGE for retail women’s clothing store services
likely to cause confusion with CREST CAREER IMAGE for
clothing).
Cancellation No. 92045576
17
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, connotation and
commercial impressions, all of which weighs in favor of
finding a likelihood of confusion.
Relative Strength and/or Weakness
Next, we consider the relative strength and/or weakness
of petitioner's mark. Petitioner’s DESIGNED2SELL mark is
highly suggestive of his service of providing “staging
managers and/or renters,” with the specific objective of
helping “to improve the residence’s selling potential.”
Likewise, respondent’s DESIGNED TO SELL mark is highly
suggestive of its programs covering “home design” and
related topics. As respondent’s witness described it, “Our
goal is to increase the desirability of their home. . . and
if all goes well, in return they will receive a higher value
on their home in the selling market.” (Dingley depo. at
9:13-20). Although the marks convey the same idea,
petitioner's highly suggestive mark is "weak" and entitled
to only a limited scope of protection. See The Drackett
Company v. H. Kohnstamm & Co., Inc., 404 F.2d 1399, 160 USPQ
407, 408 (CCPA 1969) ("The scope of protection afforded such
highly suggestive marks is necessarily narrow.") The highly
suggestive nature of petitioner's mark weighs against
finding a likelihood of confusion.
Cancellation No. 92045576
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The Services
With respect to the services, it is well-established
that the goods or services of the parties need not be
similar or competitive, or even offered through the same
channels of trade, to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services of the parties are related in some manner, and/or
that the conditions and activities surrounding the marketing
of the goods or services 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
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978). The issue, of course, is not whether
purchasers would confuse the goods or services, but rather
whether there is a likelihood of confusion as to the source
thereof.
As identified in its registration, respondent’s
services are "entertainment services, namely, an on-going
audio and visual program distributed over television,
satellite, wireless, audio and video media, fiber optics,
cable, and a global computer network in the fields of
gardening and landscaping, furniture, antiques and
Cancellation No. 92045576
19
collectibles; interior design and decorating; architecture
and home design, building, improvement, repair and
renovation; and similar subjects in the fields of homes and
gardens." We have accepted petitioner’s priority from
common-law usage in connection with “providing the services
of staging managers and/or renters who are placed in
residences for the sole purpose of maintaining them through
the sales cycle in order to improve the residence's selling
potential.”
Petitioner has submitted no third-party registrations,
Internet advertisements, or other evidence to show that his
services of providing “staging managers and/or renters” are
in any way related to the “entertainment services” of
respondent. Petitioner has testified that his services are
intended to “help sell the home.” (G. Giersch depo. at
58:22-24; See also B. Giersch depo. at 99:14-17, and Ex.
28., advertising “services designed to help you sell”).
While respondent’s television series also features
individuals who hope to sell their homes (see Dingley depo.
at 9:13-22), respondent’s mark is registered for
“entertainment services,” not for providing “staging
managers and/or renters.” (See also Dingley depo. at 29:21-
23). Specifically, as discussed in this decision under
“Petitioner’s Standing and Priority of Use,” we have
declined to extend petitioner’s common-law rights on his
Cancellation No. 92045576
20
DESIGNED2SELL mark to the decorating and home improvement
services that he pleaded in his petition to cancel.
Instead, we find that petitioner has not established that he
has offered decorating and home improvement services as a
regular or recurring activity such as to create common-law
rights in the DESIGNED2SELL mark for those services. (see G.
Giersch depo. at 114:21-24; B. Giersch depo. at 105: 14-17
and 111:3-11). Meanwhile, petitioner has not shown that the
service for which we do find petitioner has established
common-law rights, that of providing “staging managers
and/or renters . . . for the sole purpose of maintaining
them through the sales cycle” is sufficiently related to
respondent’s identified service as to “give rise to the
mistaken belief that they originate from the same source,”
particularly when we take into consideration the relative
weakness of petitioner’s mark.
Accordingly, despite the high similarity between the
marks, we find this second du Pont factor weighs strongly in
favor of finding no likelihood of confusion between
respondent’s identified services and the services protected
by petitioner’s common-law rights.
Channels of Trade/Classes of Consumers
It is apparent that petitioner’s two main consumer
targets are real estate brokers who will locate houses for
petitioner to “stage” and “staging managers” who will reside
Cancellation No. 92045576
21
therein. (G. Giersch depo. at 39:19-43:17 and 46:14; B.
Giersch depo. at 33:1-2, 96:17-18, 101:13-25; and Exs.
4,5,6,8,9,10,11,21,23,24). Accordingly, petitioner
advertises via letters to real estate brokers on the one
hand, and classified advertisements seeking staging managers
on the other. Id. Respondent considers its clients to be
those who provide it with direct revenue, i.e., “our clients
are, first and foremost, our ad sales clients and then,
secondary, it would be the cable operators or cable system
operators.” (Dingley depo. at 31:16-19).
Of course, it may be said that both petitioner and
respondent ultimately appeal to an overlapping audience of
the general public, since petitioner seeks contracts with
homeowners to stage homes under his DESIGNED2SELL mark and
respondent seeks to interest television (or related media)
viewers into watching its DESIGNED TO SELL show. To the
extent the purchasers may overlap, we find this third du
Pont factor to weigh slightly in favor of petitioner.
Conditions of Sale
The next du Pont factor discussed by the parties
regards the conditions of sale. Respondent asserts that the
“ad sales clients” and “cable systems operators” who
purchase its DESIGNED TO SELL services are “very
sophisticated,” adding “some ivy league.” (Dingley depo. at
34:1-12). However, respondent has introduced no evidence as
Cancellation No. 92045576
22
to the actual sophistication of its clients, and indeed
respondent’s witness noted that he is “the programming guy,”
not the sales manager. Id. In any event, it is well-
established that 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).
Moreover, the applicable standard of care is that of
the least sophisticated consumer. Alfacell Corp. v.
Anticancer, Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). As
noted above, both petitioner and respondent market to some
extent to the general public – petitioner to homeowners and
respondent to television (or related media) viewers. Taking
into consideration that the marks are nearly identical, but
that the services are dissimilar and unrelated, we find this
fourth du Pont factor to be neutral.
Actual Confusion
The final du Pont factor discussed by the parties is
the lack of verifiable instances of actual confusion.
Although respondent asserts that the absence of actual
confusion suggests no likelihood of confusion, 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). Thus, while evidence of actual confusion, if it
Cancellation No. 92045576
23
exists, would strongly support a finding of likelihood of
confusion, the absence thereof does not necessarily overcome
a finding of likelihood of confusion. Furthermore,
respondent has only offered its services under the DESIGNED
TO SELL mark for a few years. Accordingly, we find this
eighth du Pont factor also to be neutral.
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to priority of use and the relevant du
Pont factors, as well as all of the parties’ arguments with
respect thereto. We conclude that petitioner has
established priority of use of a nearly identical mark. We
have also found petitioner’s mark to be highly-suggestive
and weak however. Furthermore, we find the services at
issue to be dissimilar and unrelated. In particular, we
have declined to extend petitioner’s common-law protection
to the decorating and home improvement services for which he
seeks protection via his petition for cancellation, finding
that petitioner has not established that this ever
constituted a regular or recurring activity such as to
create common-law rights in the DESIGNED2SELL mark for those
services. Petitioner has not submitted documentary or
testimonial evidence to show the similarity of his services
to that of respondent such that consumers would be likely to
mistakenly believe that they originate from the same source.
Cancellation No. 92045576
24
Accordingly, because the services are different and
unrelated, and petitioner's mark is weak and entitled to a
limited scope of protection, on balance, we find no
likelihood of confusion between petitioner’s DESIGNED2SELL
common-law rights for “providing the services of staging
managers and/or renters who are placed in residences for the
sole purpose of maintaining them through the sales cycle in
order to improve the residence's selling potential,” and
respondent’s registered DESIGNED TO SELL mark for
"entertainment services, namely, an on-going audio and
visual program distributed over television, satellite,
wireless, audio and video media, fiber optics, cable, and a
global computer network in the fields of gardening and
landscaping, furniture, antiques and collectibles; interior
design and decorating; architecture and home design,
building, improvement, repair and renovation; and similar
subjects in the fields of homes and gardens."
DECISION: The petition to cancel is denied.