Certainteed Corp.

Trademark Trial and Appeal Board

Sep 16, 2003

No. 75790432 (T.T.A.B. Sep. 16, 2003)

Mailed:
9/16/2003
Paper No. 20
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Certainteed Corporation
________
Serial No. 75/790,432
_______
Roberta Jacobs-Meadway of Ballard Spahr Andrews &
Ingersoll, LLP for Certainteed Corporation.
Lauriel Dalier, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Cissel and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 28, 1999, applicant filed the above-
identified application to register the mark CLAREMONT on
the Principal Register for “polyvinyl chloride (PVC)
windows and patio doors,” in Class 19. The basis for
filing the application was applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
in connection with these goods.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/790,432
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark so resembles the mark
CLERMONT, which is registered1 for “interior doors and door
facings made of construction board, namely composite board,
fiberboard, hardboard and synthetic lumber or artificial
lumber,” also in Class 19, that if applicant were to use
the mark it seeks to register in connection with polyvinyl
chloride windows and patio doors, confusion would be
likely.
In response to the refusal to register, applicant
argued that confusion would not be likely because the “vast
majority” of the products applicant intends to sell under
the mark are windows, rather than doors, and applicant’s
“window customers are primarily specialized installers of
exterior building products such as asphalt roofing
shingles, vinyl siding and vinyl windows and patio doors.
These installers generally do not install interior products
such as the interior doors sold by Masonite under the
CLERMONT mark.” (Response to first Office Action, p. 3).
Additionally, applicant argued that such specialized
1 Reg. No. 1,953,493, issued on the Principal Register on January
30, 1996 to Masonite Corp.; affidavits under Sections 8 and 15 of
the Act accepted and acknowledged, respectively.
Ser No. 75/790,432
3
installers are “relatively sophisticated and are not likely
to be confused between a vinyl window or patio door on the
one hand and an interior door made of fiberboard or
synthetic lumber on the other hand.” (p. 2 of the
response). Applicant submitted no evidence in support of
any of its arguments.
The Examining Attorney was not persuaded to withdraw
the refusal to register, and in her second Office Action,
she made the refusal to register under Section 2(d) final.
Submitted in support of the refusal were a number of use-
based third-party registrations wherein the lists of goods
include doors and windows that can be used for the interior
and/or the exterior of a home or building. For example, in
Reg. No. 2,294,916, the list of goods includes window
frames made of wood and vinyl and doors and doorframes made
of wood, without any restriction or limitation to interior
or exterior installation; Reg. No. 2,276,946 lists
installation services, including the installation of “metal
and wood bifold doors,” “interior doors,” “interior pre-
hung door,” “interior slab door,” “mirror doors” and
“exterior doors”; and Reg. No. 2,361,014 lists “window
assemblies” as well as “patio doors” and “patio door
tracks” not made of metal, without regard to whether said
Ser No. 75/790,432
4
products are for use inside of a structure or outside of
it.
Also submitted in support of the refusal to register
was an entry from the Thomas Register website describing a
company in Oregon as a manufacturer of both doors and
windows of several varieties and describing another company
in Wisconsin as a “supplier of steel entry doors/entrances
including … interior doors [and] window trim.” The
Examining Attorney asserted that this evidence demonstrates
that the same sources make doors and windows that can be
used for the interiors of buildings and doors and windows
for use on the exteriors of buildings.
Applicant filed a Notice of Appeal concurrently with a
request for suspension of action on the appeal in view of
applicant’s statement that it was seeking a letter of
consent from the owner of the cited registration. The
designated suspension period expired without submission of
such a consent, however, and following an additional
extension granted by the Board, applicant was advised that
action on the appeal was resumed, and applicant would have
to file its brief on appeal.
The Board dismissed the appeal because no brief was
filed within the time period it had set, but in view of the
fact that applicant had actually timely filed an additional
Ser No. 75/790,432
5
request for an extension of time, the Board’s dismissal was
vacated, and applicant was allowed additional time in which
to submit its brief on appeal. Applicant timely did so,
and the Examining Attorney filed her appeal brief, but
applicant did not request an oral hearing before the Board.
The sole issue before us in this appeal is whether
confusion would be likely if applicant were to use the mark
CLAREMONT for “polyvinyl chloride windows and patio doors”
in view of the registered mark CLERMONT for “interior doors
and door facings made of construction board, fiberboard,
hardboard and synthetic lumber or artificial lumber.”
Based on careful consideration of the record in this
application and the written arguments of applicant and the
Examining Attorney, we hold that the refusal under Section
2(d) of the Lanham Act is well taken. Confusion would be
likely because these two marks are similar in appearance,
pronunciation and commercial impression, and the goods
specified in the application are commercially related to
those identified in the registration.
The predecessor to our primary reviewing Court listed
the principal factors to be considered in determining
whether confusion is likely in the case of In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are (1) the similarity of
Ser No. 75/790,432
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the marks as to appearance, pronunciation, meaning and
commercial impression; and (2) the similarity of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Notwithstanding applicant’s arguments to the contrary,
these two marks are quite similar. Applicant argues that
the differences in the ways the marks are spelled require
that they be pronounced differently; and that they have
different geographic meanings. The issue is not whether a
side-by-side comparison of the marks would make
distinctions apparent, but rather whether the marks create
similar overall commercial impression in connection with
the goods with which they are, or are intended to be, used.
Visual Information Institute, Inc. v. Vicon industries
Inc., 209 USPQ 179 (TTAB 1980). In determining what the
overall commercial impressions of the marks are, we must
focus on the perception and recollection of the average
purchaser of the goods in question, recognizing that people
normally retain general, rather than specific, impressions
of trademarks. Chemtron Corp. v. Morris Coupling & Clamp
Co., 203 USPQ 537 (TTAB 1979). In keeping with the
decision in the duPont case, supra, although the marks are
compared for similarities in pronunciation, appearance and
connotation, similarity in any one of these factors may be
Ser No. 75/790,432
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a sufficient basis upon which to conclude that confusion
would be likely.
Recognizing that there is no necessarily “correct”
pronunciation of either of these two marks, we nonetheless
conclude that they are likely to be pronounced similarly,
i.e., we agree with the Examining Attorney that CLAREMONT
and CLERMONT are essentially phonetic equivalents. These
marks are similar in appearance and pronunciation, and if
they have any connotations, they would appear to be place
names or surnames, so their connotations are also similar.
Plainly, if these marks were to be used in connection with
the same or similar products, confusion within the meaning
of Section 2(d) of the Lanham Act would be likely.
We thus turn to the relationship between the goods
listed in the registration, interior doors and door facings
made of different kinds of board and synthetic or
artificial lumber, and the goods identified in the cited
application, polyvinyl chloride windows and patio doors.
Applicant argues that the goods are used for different
purposes; that they are not likely to move in the same
channels of trade; and that the customers who buy them are
sophisticated.
To the contrary, the record shows that doors, whether
interior or exterior, are available from the same suppliers
Ser No. 75/790,432
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and that the same people who install interior doors also
install exterior doors. Contrary to the argument presented
by applicant responsive to the first Office Action, the
question is not whether purchasers are likely to confuse
applicant’s products with those specified in the cited
registration, but rather whether the use of similar marks
in connection with both is likely to lead to confusion as
to the source of the goods. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467 (TTAB 1988).
Similarly, the fact that applicant intends to sell
more windows under the mark than doors is not persuasive on
the issue of likelihood of confusion. The relative
proportions of the sales of these two related products have
no bearing on whether applicant’s mark is unregistrable
because confusion with the cited registered mark would be
likely.
Applicant’s argument that its products are expensive
goods which are marketed to specialized installers who are
sophisticated, non-impulsive purchasers as regards these
goods is not supported by any evidence. As identified
without restrictions or limitations in the application and
the cited registration, respectively, these products could
also be sold in home improvement stores, in which case
ordinary consumers would be one class of purchasers. Even
Ser No. 75/790,432
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if applicant’s assertions with regard to trade channels and
the sophistication of purchasers of its products had been
established as facts, the fact that purchasers are
sophisticated or knowledgeable in a particular field does
not necessarily translate into sophistication or knowledge
regarding trademarks. Even sophisticated and knowledgeable
people are susceptible to source confusion caused by the
use of similar marks on related products. In re Decombe, 9
USPQ2d 1812 (TTAB 1988).
In summary, the record demonstrates that prospective
purchasers would be likely to conclude that use of similar
marks in connection with polyvinyl chloride windows and
patio doors, on the one hand, and interior doors and door
facings made of construction board, on the other, indicates
that a single source is responsible for these products.
We have no doubt regarding this conclusion, but if we
did, such doubt would necessarily be resolved in favor of
the prior user and registrant, and against the applicant,
who, as the second comer, has a duty to select a mark which
is not likely to cause confusion with one that is already
in use in the same field of commerce. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1998).
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.