Bernhardt Furniture Co.

Trademark Trial and Appeal Board

Dec 14, 1999

No. 75176890 (T.T.A.B. Dec. 14, 1999)

Hearing: Paper No. 14
May 12, 1999 HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 14, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Bernhardt Furniture Company
________
Serial No. 75/176,890
_______
Howard A. MacCord Jr. of Rhodes, Coats & Bennett LLP
for Bernhardt Furniture Company.
Jeri J. Fickes, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Bernhardt Furniture Company has filed an application
to register the mark VISIONS for “furniture – namely,
modular furniture components for high-end corporate
offices, featuring a unique wire management enhancement,
and conference tables with wire handling capabilities.”1

1 Serial No. 75/176,890, filed October 4, 1996, based on an
assertion of a bona fide intention to use the mark in commerce.
Ser No. 75/176,890
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the registered mark VISION BUSINESS PRODUCTS
in the format shown below for “distributorship services in
the field of business office and computer products,
supplies and furniture; mail order services in the field of
business, office and computer product supplies and
furniture.”2
Both applicant and the Examining Attorney have filed
briefs, and both participated in an oral hearing.
Here, as in any determination of likelihood of
confusion, two key considerations in our analysis are the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods and/or services
with which the marks are, or will be, used. See In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).

2 Registration No. 1,827,264, issued March 22, 1994, claiming
first use dates of July 1, 1988. A disclaimer has been made with
respect to the words BUSINESS PRODUCTS. Although the
registration also covers certain office and computer supplies in
Classes 9 and 16 and franchising services in Class 35, these
goods and services have not been argued by the Examining
Attorney.
Ser No. 75/176,890
3
Insofar as the marks are concerned, we agree with the
Examining Attorney that the dominant feature of
registrant’s mark is the word VISION. Although it is true
that in determining likelihood of confusion, marks must be
considered in their entireties, it is 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). While
descriptive portions of a mark cannot be ignored, the fact
remains that the purchasing public is more likely to rely
upon the non-descriptive portion as the indication of
source. This is particularly true when the descriptive
portion has been graphically relegated to subordinate
status in the mark. See Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
A design element is also of lesser import, unless highly
distinctive, because it is the word portion of a mark which
is more likely to be remembered and relied upon by
purchasers in calling for the goods or services. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Thus, neither the descriptive wording BUSINESS
PRODUCTS, which has been disclaimed, nor the design element
is the dominant feature of registrant’s mark. We concur
with the Examining Attorney that it is the word VISION
Ser No. 75/176,890
4
which is most responsible for creating the commercial
impression of the mark as a whole.
As such, there is little difference between the
registered mark and applicant’s word mark VISIONS. While
applicant’s mark is the plural form of the word VISION, we
do not find this to be a distinction which would be readily
recalled by purchasers over a period of time, if in fact it
would be recognized at first impression. Furthermore,
although applicant argues that the design components of
registrant’s mark cannot be ignored, the Examining Attorney
is correct in pointing out that applicant, being unlimited
by its typed drawing to any particular style, could present
its mark in a format very similar to that of the
registrant. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937 (Fed. Cir. 1983); Jockey International Inc. v.
Mallory & Church Corp., 25 USPQ2d 1233 (TTAB 1992).
Accordingly, we find that the marks involved create similar
overall commercial impressions.
Applicant insists, however, that it is the
dissimilarities of the respective goods and services
involved, of the channels of trade for the goods versus the
services, and of the conditions of sale which are the
controlling factors in this case. Applicant argues that
its goods are high-end office furniture which is purchased
Ser No. 75/176,890
5
by discerning customers and is sold in such a manner that
these customers may view the furniture prior to purchase.
Registrant, accordingly to applicant, is simply a
distributor and mail-order vendor of office furniture,
along with information processing and imaging supplies.
Applicant argues that there is no indication that
registrant’s furniture would be high-end in nature, would
be manufactured by registrant, would be available for on-
site appraisal, or would travel in the same channels of
trade as applicant’s furniture.
In the first place, although applicant has restricted
its office furniture to a particular type and cost range,
there are no such limitations or qualifications in the
registration as to the type of office furniture being
distributed and/or offered through mail-order by
registrant. Thus, it must be presumed that registrant’s
office furniture encompasses the high-end varieties offered
by applicant and travels in the normal channels of trade
for office furniture of this nature. See Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). Contrary to applicant’s arguments, the
fact that registrant also offers office and computer
Ser No. 75/176,890
6
supplies does not necessarily relegate its furniture
products to low-cost items.3
Further, there is no limitation of the manner of sale
of applicant’s office furniture to on-site purchases.
Instead, applicant’s furniture could be made available to
purchasers through distributors or mail-order merchants
such as registrant.
The crux of the matter is whether the goods of
applicant, high-end modular office furniture, and the
services of registrant, distributorship and mail-order
services offering business office furniture, are related in
such a manner that they would be encountered by the same
persons under circumstances which would cause them to
believe that the goods and services emanate from the same
source. See In re Peebles, Inc., 23 USPQ2d 1795 (TTAB
1992); and General Mills Fun Group, Inc. v. Tuxedo Monopoly

3 Applicant’s reliance upon the holdings of the District Court in
Frehling Enterprises Inc. v. International Select Group Inc., 45
USPQ2d 1750 (S.D. Fl. 1997) is misplaced. The issues in that
case included infringement and unfair competition. The Court
found distinctions between the specific furniture being sold by
the defendant and the distributorship services of the plaintiff
based on the evidence of record. Here, the issue is
registrablity, which must be determined on the basis of the goods
and services as identified in the application and registration,
and not on any extrinsic evidence of differences in the goods and
services with which the marks are actually used. See In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
supra.
Ser No. 75/176,890
7
Inc., 204 USPQ 396 (TTAB 1979), aff’d, 648 F.2d 1335, 209
USPQ 986 (CCPA 1981). The Board has previously held that
store services and goods which may be sold in that store
are related goods and services for purposes of determining
likelihood of confusion. In re Peebles, supra at 1796; In
re Best Products Co., Inc., 231 USPQ 988 (TTAB 1988). A
relationship of this nature has been specifically held to
exist between general merchandising store services and
furniture. In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988). Moreover, the Board has
found a similar relationship to exist between a
distributorship and the products it offers, such that it
would be reasonable for prospective purchasers to presume
that a mark used to identify the distributorship services
would also be used as a trademark for at least some of the
products sold by the distributor. In re Burroughs Corp., 2
USPQ2d 1532 (TTAB 1986).
Accordingly, we find it likely that persons
encountering registrant’s distributorship or mail-order
services for office furniture under the mark VISION
BUSINESS PRODUCTS and applicant’s office furniture, if
marketed as intended under the mark VISIONS, would assume a
relationship between these services and goods. In view of
the similar commercial impressions created by the marks, it
Ser No. 75/176,890
8
would be most reasonable for potential purchasers to
mistakenly believe that VISIONS office furniture is a
product not only emanating from, but also directly
associated with, the same source providing the VISION
BUSINESS PRODUCTS distributorship or mail-order services
for office furniture.4
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
H. R. Wendel
D. E. Bucher
Trademark Administrative Judges,
Trademark Trial and Appeal Board

4 We note, as applicant points out, that applicant now owns
Registration No. 668,677 for the mark VISION for “tables,
upholstered furniture and furniture case goods,” which
registration was subsisting when the cited registration was
allowed. We do not agree, however, that the existence of
applicant’s prior registration is in any way indicative of the
registrablity of the mark which is the subject of the present
application. In the present application, the furniture is
specifically restricted to office furniture, as is the furniture
in the cited registration, making the relationship between
furniture and distributorship services much more direct.
Ser No. 75/176,890
9
Ser No. 75/176,890
10