Bertch Mfg., Inc.

Trademark Trial and Appeal Board

Aug 14, 2008

No. 78777649 (T.T.A.B. Aug. 14, 2008)

OPN

Mailed:
August 14, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bertch Mfg., Inc.
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Serial No. 78777649
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Allan L. Harms of Wenzel & Harms for Bertch Mfg., Inc.

Florentina Blandu, Trademark Examining Attorney, Law Office
117 (Loretta Beck, Managing Attorney).
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Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
On December 20, 2005, Bertch Mfg., Inc. (“applicant”)
filed an application (Serial No. 78777649) for registration
on the Principal Register of the mark LEGACY (in standard
character form) for goods identified as “cabinets, kitchen
cabinets, bathroom cabinets, vanities, medicine cabinets,
hutches, bookcases, shelves, beds, bedroom furniture,
chests for clothing, desks, wood countertops, appliance
enclosures, TV stands and shelf units, wood range hood
enclosures, cabinet end panels, chopping blocks, casework,
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 78777649
2
also known as trim, moldings and paneling, and kitchen
accessories, namely knife blocks, bread boards and cutlery
dividers, all for household use” in International Class 20.
Applicant claimed first use anywhere and first use in
commerce of its mark on August 1, 1992.
The examining attorney has finally refused
registration pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), in view of Registration No. 2596713 for
the mark LEGACY (in typed form) for “furniture particularly
for use in a library, namely atlas stands, desks,
dictionary stands, file drawers, shelves, study carrels,
and tables” in International Class 20.1
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. The refusal to register is affirmed.
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 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.

1 The examining attorney had also refused registration in view of
Registration No. 2849037 for the mark LEGACY for “laboratory
furniture.” In her appeal brief, the examining attorney withdrew
her refusal based on this registration. The refusal to register
in view of Registration No. 2849037 is therefore moot.
Serial No. 78777649
3
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, 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
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
There is no dispute that the marks are identical. See
applicant's brief at p. 5 (“Applicant concedes that its
mark is identical to the … Registrant[’]s mark[].”) The
du Pont factor regarding the similarity of the marks
therefore is resolved against applicant.
We next consider the du Pont factor regarding the
similarity or dissimilarity and nature of the goods. We
consider those of applicant's and registrant’s goods which
are identified in both applicant's and registrant's
identifications of goods, namely, desks and shelves. In
order to affirm a refusal, it is only necessary that we
find likelihood of confusion with respect to at least one
item in each class of applicant's goods or services; see
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (“[L]ikelihood of
confusion must be found if the public, being familiar with
[opposer's] use of MONOPOLY for board games and seeing the
Serial No. 78777649
4
mark on any item that comes within the description of goods
set forth by appellant in its application ….”).
Applicant's shelves and desks are limited to household
use and registrant’s shelves and desks are limited to use
in a library. Registrant’s use restriction does not
specify a type of library, thus, we presume that its goods
may be used in any kind of library, including small
libraries in offices or businesses. We consider, as we
must, that the registration is presumed to encompass all
goods of the type described, and that they move in all
normal channels of trade and that they are available to all
potential customers. In re Elbaum, 211 USPQ 639 (TTAB
1981). Thus, the terms “desks” and “shelves” encompass a
variety of styles, models and materials, including those
that may be used in both homes and libraries. Just as the
same refrigerator may be used in a home and an office, some
shelves and desks may be used in both a home and a library.
We therefore find that certain goods, despite their
use restrictions, to be legally identical.2 The du Pont
factor regarding the goods is therefore resolved against
applicant.

2 The examining attorney essentially takes the position that the
uses of the goods are identical because libraries are also in the
home. We are not persuaded by this argument; it ignores the
essence of registrant’s identification of goods.
Serial No. 78777649
5
We now consider the du Pont factor regarding the
similarity or dissimilarity of established, likely-to-
continue trade channels. Applicant argues that while
registrant’s goods are commercial in nature and sold
through commercial trade channels involving libraries,
applicant's goods are household in nature and sold through
trade channels more closely associated with home
furnishings rather than commercial trade channels.
Applicant has submitted the declaration of John J. Curtis,
President of Curtis Construction Company, Inc., which
provides construction services to schools, colleges and
churches. Mr. Curtis states in his declaration that
library furniture is “distributed by dealers oriented to
providing equipment to schools and libraries”; that
furniture and furnishings used for libraries have to be
especially sturdy and long-lived; and that the channels of
trade for household use such as applicant's are different
from the channels of trade of library furniture. Applicant
also submitted the declaration of Tom Reidy, President of
Forest Glen Construction Company which is in the business
of home additions and remodeling. Mr. Reidy states, inter
alia, that residential contractors introduce customers to
the products that they represent, in contrast to commercial
or institutional contractors who are referred to product
Serial No. 78777649
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manufacturers by the engineer and architects involved with
the projects. Both Mr. Curtis and Mr. Reidy state that
applicant's goods are not marketed to buyers of library
furniture; and that there is no likelihood of confusion
between applicant's goods and those of registrant.
Both Messrs. Curtis’ and Reidy’s statements are based
on the assumption that registrant’s goods are offered to
large libraries such as those found in universities or
central libraries in major metropolitan areas and ignore
smaller libraries such as those in small businesses. Their
declarations therefore have limited probative value.
Because the same shelves and desks may be used in
libraries and homes, we find that the trade channels
overlap for such goods. We resolve this du Pont factor
against applicant.
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, applicant's
arguments are premised on the assumption that purchasers of
registrant’s goods are “commercial or institutional
contractors who are referred to product manufacturers by
the engineers and architects involved with the projects.”
Brief at p. 11. The purchasers of registrant’s goods need
not be sophisticated and may even be the same individuals,
for example, who are purchasing shelving for small offices
Serial No. 78777649
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and for their homes. There is no evidence in the record
regarding the cost of any shelves or desks, or the other
goods in the identifications of goods. Also, applicant’s
identification of goods does include a common kitchen item,
a cutlery divider, which would not be purchased with any
heightened care. The du Pont factor regarding the
conditions under which and buyers to whom sales are made
therefore is neutral.
Additionally, applicant states that there have been no
instances of actual confusion between the marks. Brief at
p. 7. In support, applicant relies on the declaration of
Rebecca L. Bertch, applicant's vice president. 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). On the record before us there is no evidence as to
whether there has been any opportunity for confusion to
occur - we have no information as to the extent of
applicant’s use, or that of registrant. Applicant's
argument regarding a lack of actual confusion therefore is
unpersuasive, and the du Pont factor regarding actual
confusion is neutral.
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
Serial No. 78777649
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arguments relating thereto, we conclude that, when
potential purchasers of applicant's and registrant’s goods
encounter the applied-for and registered marks for their
respective goods, they are likely to believe that the
sources of these goods are in some way related or
associated with one another. As a result, there is a
likelihood of confusion.
DECISION: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.