Clark Door Ltd.

Trademark Trial and Appeal Board

Feb 3, 2017

No. 86513686 (T.T.A.B. Feb. 3, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: February 3, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Clark Door Ltd.
_____

Serial No. 86513686
_____

Timothy J. Maier of Maier & Maier PLLC,
for Clark Door Ltd.
Katrina J. Goodwin, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.1
_____

Before Quinn, Cataldo and Ritchie,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Clark Door Ltd. (“Applicant”) seeks registration on the Principal Register of the
mark shown below

1 The above application has been reassigned to the Examining Attorney whose name is
shown to prepare the appeal brief.
Serial No. 86513686
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for
Door panels of metal; Metal doors; Metal runners for
sliding doors; Metal sliding doors; Metallic fire doors in
International Class 6;
Acoustical insulation barrier panels; Soundproofing
materials; Soundproofing materials for buildings in
International Class 17; and
Door casings, not of metal; Door frames, not of metal;
Door jambs not of metal; Door panels, not of metal; Fire
doors, not of metal; Non-metal door frames; Non-metal
door panels; Non-metal doors; Safety doors, not of metal
in International Class 19.2
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
of likelihood of confusion with the following registered marks, both registered on the
Principal Register:3

2 Application Serial No. 86513686 was filed on January 26, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), in connection with all three classes of goods. As
originally filed, the application also recited services in Class 37; however, these were
subsequently deleted by Applicant.
“No claim is made to the exclusive right to use “DOOR” apart from the mark as
shown.”
“Color is not claimed as a feature of the mark.”
“The mark consists of a line drawing of three doors in a two dimensional row evenly
spaced across the center. Each door drawing in the line is unique, starting from the left
where the first door appears to be an abstract representation of an open door with a
backwards italicized L shape in open area of the bottom of the door, the middle or second
door is a flat rectangle with a simple flat line centered on the bottom of the door, and the
third door is a notched rectangle, with the notch on the top left side of the rectangle facing
inward and a capital L shape below the notch extending to the bottom of the door figure.
The words ‘CLARK DOOR’ appear beneath the line drawing capitalized and centered.”
3 The listed owners for the cited registrations are Clark Hall Iron Doors, Inc. (Reg. No.
4357463) and Doors By Design International, LLC (Reg. No. 4479771), both located at Suite
G, 307 West Tremont Ave., Charlotte, NC. While the exact nature of the relationship
Serial No. 86513686
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CLARK HALL IRON DOORS (standard characters, “IRON DOORS” disclaimed)
for “metal doors” in International Class 6;4 and
CLARK HALL DOORS (standard characters, “DOORS” disclaimed) for “on-line
retail store featuring doors; retail store services featuring doors” in International
Class 35.5
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm in part and reverse in part the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant submitted with its May 17, 2016 communication, inter alia, a copy of a
printout from the Trademark Electronic Search System (TESS) of third-party
registrations for various “CLARK” formative marks, including the underlying serial
number, registration, mark, and status as live or dead.6 To make a third-party
registration of record, a copy of the registration, either a copy of the paper USPTO
record, or a copy taken from the electronic records of the Office, should be submitted
during prosecution/examination of the application. Mere listings of or references to
registrations are not sufficient to make the registrations of record. In re Compania

between these companies is not clear from the evidence of record, it appears from their
common address that they are related entities.
4 Registration No. 4357463 issued on June 25, 2013. “The name in the mark does not
identify a particular living individual.”
5 Registration No. 4479771 issued on February 11, 2014. “The name(s), portrait(s), and/or
signature(s) shown in the mark does not identify a particular living individual.”
6 4 TTABVUE 51-65.
Serial No. 86513686
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de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012); In re
Hoefflin, 97 USPQ2d 1174, 1177 (TTAB 2010). Because the Examining Attorney did
not advise Applicant that a mere listing of these registrations is insufficient to
make them of record, we will consider the list, bearing in mind that without any
accompanying indication of the goods and/or services associated therewith, it has
very limited probative value. See TBMP § 1208.02 (2017) and the authorities cited
therein. Further, any expired registrations are also of no value. See Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989) (“[A] cancelled registration does not provide constructive notice of
anything”).
II. Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis
Ind., Inc., 135 S.Ct.1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
considered each du Pont factor that is relevant and for which there is evidence of
record. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114
USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which
we have evidence, we focus our analysis on those factors we find to be relevant.”). In
Serial No. 86513686
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any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or services. See In re
Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”); see also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
The similarity or dissimilarity and nature of the goods.
Because Applicant’s description of Class 6 goods includes “Metal doors,” the
goods are in part identical to the “Metal doors” in cited Registration No. 4357463.
Furthermore, Applicant’s “Metal sliding doors” and “Metallic fire doors” are
presumed to be included among the more broadly identified “Metal doors” in
Registration No. 4357463, and thus are legally identical thereto. Under this du Pont
factor, the Trademark Examining Attorney need not prove, and we need not find,
similarity as to each and every product listed in the description of goods. It is
sufficient for a refusal based on likelihood of confusion that relatedness is
established for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d
at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014).
Serial No. 86513686
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In order to further demonstrate the relatedness of the goods, the Examining
Attorney introduced into the record screenshots from the following third-party
Internet web pages:7
Masonite.com offers online retail store services under the Masonite
mark featuring various interior, entry and patio doors. In addition,
Masonite.com offers various types of doors, including wood panel doors,
wood French doors and wood louver doors under the Masonite mark.8

Jeld-Wen.com offers online retail store services under the Jeld-Wen
mark featuring various interior, exterior and patio doors. In addition,
Jeld-Wen offers various door jambs in wood, fiberglass and steel, doors
made of wood and other materials and hardware therefor. However,
there is no indication from the evidence whether these products are
offered under the Jeld-Wen mark or another mark.

Millikenmillwork.com offers online retail store services under the
Milliken Millwork mark featuring various interior, exterior, storm,
commercial and patio doors and related hardware and accessories.
However, there is no indication from the evidence whether the doors
and accessories themselves are offered under the Milliken Millwork
mark or another mark. We observe that the webpage discussing “Color
Options” states “Have your new Milliken Millwork door prefinished or
do it yourself.”9 The “Product Spotlight” on the same webpage states as
follows: “Introducing the latest addition to the family of Milliken
Millwork Products-Storm Doors.”10 However, we cannot deduce from
these statements whether the doors in question bear the Milliken
Millwork mark or whether they are simply available on the Milliken
Millwork website under its online retail store services.

Soundproofing.org discusses techniques for soundproofing doors
using door sweeps. The webpages indicate that door sweeps are offered
by Super Soundproofing Co. for use in sealing bottom gaps on doors in
hotels, motels, bed and breakfasts and apartments for inexpensive
sound proofing. However, there is no indication from this evidence that

7 Examining Attorney’s first Office action at 17-38.
8 Masonite.com also offers additional products, including steel frame door jambs. However,
it offers such goods under other marks. Id. at 21-22.
9 Id. at 31.
10 Id.
Serial No. 86513686
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sound proofing sweeps for doors and/or the doors themselves are
offered under the Super Soundproofing Co. mark or another mark or
marks.

Acousticalsurfaces.com offers a variety of soundproof doors and door
sealing systems for soundproofing doors and door jambs. However,
there is no indication from this evidence whether the doors and/or
soundproofing products are offered under the Acoustical Surfaces mark
or another mark or marks.

The Examining Attorney’s evidence establishes that a single third party
(Masonite) offers both online retail store services featuring doors and doors
themselves under the same mark. As discussed above, it is not clear from the
evidence whether the remainder of the third parties offering online retail stores
featuring doors also offer doors, door frames or jambs, or the remainder of
Applicant’s door-related goods under the same marks. There also is no indication
from the evidence that third parties offer both metal and non-metal doors and door-
related goods under the same mark. As a result, the evidence of record fails to
support a finding that the goods and services identified in the cited registrations are
related to Applicant’s goods in Class 19.
Similarly, the evidence of record only supports a finding that door hardware
such as door sweeps and seals may be used for soundproofing purposes. The
evidence does not support a finding that Applicant’s “Acoustical insulation barrier
panels; Soundproofing materials; Soundproofing materials for buildings” in
International Class 17 emanate from the same source as Registrant’s metal doors or
retail store services featuring doors. Simply put, the mere fact that door sweeps and
Serial No. 86513686
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seals may be used for soundproofing does not establish that these goods are
marketed to consumers under the same mark as Registrant’s good and services.
As a result, this du Pont factor heavily favors a finding of likelihood of confusion
as to Applicant’s recited Class 6 goods, but does not favor a finding of likelihood of
confusion as to Applicant’s Class 17 and Class 19 goods.
Established, likely-to-continue channels of trade and classes of consumers.
Because the goods described in Class 6 of the application and cited Registration
No. 4357463 are in part identical, we must presume that the channels of trade and
classes of purchasers are the same as to those goods. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed
to travel in same channels of trade to same class of purchasers); In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
As discussed above, there is insufficient evidence that Applicant’s goods in
Classes 17 and 19 are related to the goods and services identified in the cited
registrations. As a result, there is no presumption that these goods and services
travel in common trade channels and are marketed to the same consumers.
Furthermore, there is no evidence that these goods and services are available in the
same channels of trade to the same consumers. While we recognize that metal doors
Serial No. 86513686
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on the one hand and non-metal doors on the other, and their frames, jambs and
other parts may be available in common trade channels, there is no evidence in the
record that these goods travel in the same channels of trade or may be purchased by
the same classes of purchasers.
These du Pont factors also supports a finding of likelihood of confusion as to
Applicant’s Class 6 goods and no likelihood of confusion as to its Class 17 and Class
19 goods.
The number and nature of similar marks in use on similar goods.
Applicant argues that the word “Clark” in both marks is a weak term, entitled to
only a narrow scope of protection or exclusivity of use.11 To support its argument,
Applicant submitted printouts from TESS of third-party registrations for various
“CLARK” formative marks, including only the underlying serial number,
registration, mark, and status as live or dead.12 As discussed above, because this
evidence does not indicate the goods or services recited in the registrations, we can
accord it only very limited probative value. In re Compania de Licores
Internacionales S.A., 102 USPQ2d at 1843; In re Hoefflin, 97 USPQ2d at 1177.
In addition, Applicant introduced into the record copies from the Trademark
Search and Data Retrieval (TSDR) database of third-party registrations for
“CLARK” formative marks, all in standard characters unless otherwise noted.13 The
registrations are listed below:

11 7 TTABVUE 21.
12 4 TTABVUE 51-65.
13 Applicant’s December 4, 2015 communication at 18-48; 4 TTABVUE 66-70.
Serial No. 86513686
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1. Registration No. 4374598 for the mark CLARKDEITRICH and
Registration No. 4378526 for the mark CLARKDEITRICH BUILDING
SYSTEMS and design, both for goods including metal framing supports
for forming structural door, window and other openings in walls, floors
and assemblies;

2. Registration No. 1026003 for the mark CLARK for goods including paint,
battery cleaners, lubricants, hydraulic systems, electric motors, parts for
land vehicles;

3. Registration No. 2344332 for the mark CLARKE for wall mounted tool
racks, wall mounted metal tool cabinets and metal tool boxes;

4. Registration No. 1032768 for the mark CLARKE’S SHEET METAL and
design for rotary feeders, surge bins, and storage bunkers, centrifugal
blowers, air locks, switch gates, diversion valves, cyclone separators,
mechanical and pneumatic conveyors and parts thereof;

5. Registration No. 3275995 for the mark KELLY CLARKSON for a variety
of musical sound recordings, printed materials, clothing, toys and
entertainment services;

6. Registration No. 2440882 for the mark LEWIS N. CLARK for various
types of locks.

7. Registration No. 4085254 for the mark CLARK + KENSINGTON for
various paints, primers, stains, thinners, varnishes and lacquers; and

8. 1026003 for the mark CLARK for goods including paint, guard elements,
seats, oil filters.

Applicant also submitted the following definition of “clark” – a masculine name,
from the surname Clark, a literate or scholarly person;14 an English occupational
surname, variant of Clarke, for someone who was either a scribe or priest/cleric, a
male given name transferred from the surname.15 Applicant further introduced data

14 Id. at 17-19, definition from Webster’s New World Collegiate Dictionary (2010).
15 Id., definition from English Wiktionary.
Serial No. 86513686
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from an article discussing the results of the 2000 census, indicating that “Clark” is
the 25th most common surname in the United States.16
It has often been said that the “existence of [third party] registrations is not
evidence of what happens in the market place or that customers are familiar with
them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973). See also Jack Wolfskin Ausrustung Fur Draussen GmbH v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015).
Nonetheless, third-party registrations can be used to “show the sense in which a
mark is used in ordinary parlance.” Juice Generation, Inc. v. GS Enters. LLC, 115
USPQ2d 1671, 1674 (Fed. Cir. July 20, 2015); In re Box Solutions Corp., 79 USPQ2d
1953, 1955 (TTAB 2006). In this case, Applicant has introduced evidence of the
registration of four third-party registrations for CLARK(E) and CLARK formative
marks and five additional registrations for marks in which the term “CLARK” is
embedded within other wording. None of these third-party registrations, with the
exception of Reg. No. 4374598 for CLARKDEITRICH and Reg. No. 4378526 for
CLARKDEITRICH BUILDING SYSTEMS and design, identify goods that are
related to the goods at issue herein, and the marks identified in these third-party
registrations are dissimilar from the marks at issue herein. The existence of these
third-party registrations is insufficient to persuade us that the marks in the cited
registrations are entitled to such a narrow scope of protection as to permit
registration of a confusingly similar mark for in part identical goods. Cf. Jack

16 Id. at 24-44.
Serial No. 86513686
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Wolfskin, 116 USPQ2d at 1136 (third-party weakness evidence characterized as
“voluminous”). Finally, as has often been said, we simply are not bound by the
decisions of examining attorneys. The Board must make its own findings of fact,
and that duty may not be delegated by adopting the conclusions reached by an
examining attorney. In re Cordura Rests., Inc., 119 USPQ2d 1832 (Fed. Cir. 2016);
In re Nett Designs, Inc., 57 USPQ2d 1564 (Fed. Cir. 2001); In re Sunmarks, Inc., 32
USPQ2d 1470 (TTAB 1994).
With regard to Applicant’s evidence of surname significance, we note that the
same evidence establishes that CLARK is also a masculine given name, i.e., a first
or middle name, in addition to a surname. As a result, CLARK is not weak on the
basis of being primarily merely a surname, particularly in the context of the cited
marks in which the term CLARK HALL appears to be a name with CLARK as the
given name and HALL as the surname.
Based on the evidence of record, we find that cited marks are reasonably strong
and entitled to an ordinary scope of protection as opposed to a limited scope of
protection that would be accorded a weaker mark, particularly as used on identical
goods. This du Pont factor weighs in favor of a finding of likelihood of confusion.
The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. Regarding the goods that are in part identical, the degree of
Serial No. 86513686
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similarity necessary to find likelihood of confusion need not be as great as where
there is a recognizable disparity between the goods. Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB
2007); Schering-Plough HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721; see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp.,
565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir.
1992). The proper focus is on the recollection of the average customer, who retains a
general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas
Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
Serial No. 86513686
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Applicant’s mark is and Registrant’s marks are
CLARK HALL IRON DOORS and CLARK HALL DOORS. Because the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, our
analysis is not predicated on dissecting the marks into their various components. In
re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also
Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood of
confusion.”). On the other hand, there 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 a consideration of the marks in
their entireties. In re Nat’l Data, 224 USPQ at 751.
The word “CLARK” is the dominant part of Applicant’s mark because it is
displayed in much larger font and also is more distinctive than the term “DOOR,”
which is the generic term for some of the goods at issue. With respect to the
registered marks, the term “CLARK HALL” is dominant because it appears first in
the marks, and the terms “IRON DOORS” and “DOORS” are generic in connection
with Registrant’s goods and services. Presto Products Inc. v. Nice-Pak Products, Inc.,
9 USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part of a mark which is
most likely to be impressed in the mind of a purchaser and remembered”). See also
Serial No. 86513686
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Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at 1700 (upon
encountering the marks, consumers must first notice the identical lead word). It
further is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark
may be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re National Data Corp., 224 USPQ at 752; In re Dixie Rests. Inc., 105
F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants,
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark’s commercial impression”). In the case of a mark
such as Applicant’s mark consisting of words and a design, the words are normally
accorded greater weight because the words are likely to make an impression upon
purchasers, would be remembered by them, and would be used by them to request
the goods. See In re Viterra Inc., 101 USPQ2d at 1908 (citing CBS Inc. v. Morrow,
708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)); Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987).
According to the description of the mark, the design in Applicant’s mark is a
stylized depiction of three doors, which reinforces the term “DOOR” in the mark.
Thus, the words, particularly the word “CLARK,” have more trademark significance
than the designs.
Serial No. 86513686
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Consumers encountering Applicant’s mark are likely to
view it as a shortened version of the marks CLARK HALL IRON DOORS and
CLARK HALL DOORS. “[U]sers of language have a universal habit of shortening
full names – from haste or laziness or just economy of words.” In re Abcor
Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich,
concurring); see also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 395 (Fed. Cir. 1983); Marshall Field & Co. v. Mrs. Fields Cookies, 25
USPQ2d 1321, 1333 (TTAB 1992); Big M Inc. v. The United States Shoe Co., 228
USPQ 614, 616 (TTAB 1985). Under such circumstances, consumers are likely to
mistakenly believe that Applicant’s mark represents a line of the registered CLARK
HALL IRON DOORS or CLARK HALL DOORS.
In view of the foregoing, we find that the marks are more similar than dissimilar
in appearance, sound, meaning and commercial impression.
Consumer sophistication.
Applicant argues that
Both Appellant and the registrant sell large, expensive, and
permanent goods under their respective marks. Few, if any, consumers
would be likely to purchase a specialized, custom door—whether a
large, industrial warehouse door sold under Appellant’s mark or a
handcrafted custom residential door sold under the registrant’s
marks—without careful deliberation and consideration.17

17 7 TTABVUE 20-1.
Serial No. 86513686
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However, Applicant’s identification of goods is not limited to large, industrial
warehouse doors. Similarly, the goods and services in the cited registrations are not
limited to handcrafted, custom residential doors or retail stores featuring such
specialized doors. Thus, we must presume that the broadly identified doors include
doors at all price points, including less expensive doors that may not be subject to
careful purchase. Simply put, an applicant may not restrict the scope of the goods or
services covered in the application or cited registrations by argument or extrinsic
evidence. See, e.g., In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986).
Even if we accept, in considering the fourth du Pont factor, Applicant’s assertion
that the involved goods may be the subject of sophisticated purchases, careful
purchasers nonetheless may be confused by similar marks particularly as applied to
identical goods, in this case, metal doors. As stated by our primary reviewing court,
“[t]hat the relevant class of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between similar trademarks for
similar goods. ‘Human memories even of discriminating purchasers ... are not
infallible.’” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed.
Cir. 1986) (quoting Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)). Therefore, the fact that the
purchasers may exercise care before purchasing these goods does not mean there
can be no likelihood of confusion. As such, this du Pont factor weighs in favor of a
finding of likelihood of confusion.
Serial No. 86513686
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Balancing the factors.
Because the marks are similar, the Class 6 goods are identical in part and there
is a presumption that the identical goods move in the same channels of trade and
are sold to the same class of consumers, we find that Applicant’s mark is likely to
cause confusion with the registered marks for the goods identified in Class 6 of the
involved application. However, because there is insufficient evidence that the goods
in Class 17 and Class 19 of the cited registration are related to the goods and
services in the cited registrations, and there is no evidence that the goods and
services will be available in the same trade channels to the same classes of
consumers, we find Applicant’s mark is not likely to cause confusion with the
registered marks for the goods identified in Class 17 and Class 19.
Decision: The refusal to register Applicant’s mark is affirmed in part as to
Class 6 and reversed in part as to Classes 17 and 19.
The application will be forwarded for publication for the goods listed in Classes
17 and 19 in due course.