Dan McCarthy

Trademark Trial and Appeal Board

Jun 10, 2003

No. 76243538 (T.T.A.B. Jun. 10, 2003)

Mailed: June 10, 2003
Paper No. 10
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dan McCarthy
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Serial No. 76/243,538
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Frederick L. Tolhurst of Cohen & Grigsby, P.C. for Dan
McCarthy.
John T. Lincoski, Jr., Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______
Before Simms, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Dan McCarthy (applicant) has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark PANORAMA for windows with vinyl frames.1 The Examining
Attorney has refused registration under Section 2(d) of the
Act, 15 USC §1052(d), on the basis of Registration No.
1,313,090, issued January 8, 1985, Section 8 affidavit

1 Application Serial No. 76/243,538, filed April 20, 2001, based
on an allegation of applicant’s bona fide intention to use the
mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/243,538
2
accepted, Section 15 affidavit acknowledged, for the mark
shown below
for “patio doors, residential steel doors, door frames, and
parts thereof—namely, astragals, molding and trim, all made
primarily of metal.” Applicant and the Examining Attorney
have filed briefs, but applicant did not request an oral
hearing.
We affirm.
Briefly, the Examining Attorney argues that the marks
have the same commercial impression because the minor
design elements (“decorative flourish”) in registrant’s
mark are not pronounced and have little trademark
significance. Giving greater weight to the arbitrary and
dominant element in registrant’s mark (the word PANORAMA),
the only element pronounced in calling for registrant’s
goods, the Examining Attorney argues that the respective
marks are substantially similar. Because the marks are so
similar, the relationship between the goods need not be so
close to support a finding of likelihood of confusion,
Serial No. 76/243,538
3
according to the Examining Attorney. As to the goods, the
Examining Attorney has submitted Nexis evidence and copies
of third-party registrations in support of his argument
that doors and windows are made by some of the same
manufacturers and may be sold under the same marks.
According to the Examining Attorney, these closely related
goods will be sold in the same channels of trade to the
same class of potential purchasers. Also, windows and
doors may be installed by the do-it-yourself homeowner at
the same time. Finally, the Examining Attorney asks us to
resolve doubt in favor of the registrant.
Nine third-party registrations of record show that
other companies have registered the same mark for such
goods as non-metallic windows and doors, and vinyl and
aluminum windows and doors. The Nexis excerpts show a
number of references to manufacturers of windows and doors
(of unspecified composition) as well as of wood windows and
patio doors and aluminum windows and doors.
On the other hand, applicant contends that when the
marks are considered in their entireties and not dissected,
they have different commercial impressions. In fact, in
his brief (3, 5) applicant argues that “the dominant
feature is the design” and that “the design is more
conspicuous than the accompanying word and has greater
Serial No. 76/243,538
4
force.” See also reply brief, 4 (“…the eye is drawn to the
more conspicuous design that prominently appears in the
center of the mark…”). Applicant also contends that the
goods are noncompetitive and that the comparison here
should not be between windows and doors but between vinyl
windows and metal or steel doors, and that there are
differences in the characteristics (strength, weight, fire
resistance, cost, etc.), manufacturing process and
application of vinyl and metal or steel products.
Applicant also contends that there is no evidence that
metal or steel doors are offered in the same channels of
trade or to the same purchasers as applicant’s vinyl
windows.
In response, the Examining Attorney points to two
registrations for both vinyl (or non-metal) windows and
doors as well as aluminum (or metal) windows and doors,
arguing that the same company may make both vinyl or non-
metal as well as metal doors and windows.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely.
Concerning the marks, the correct test is not whether
the marks can be distinguished when compared side-by-side,
but rather whether the marks at issue create the same
Serial No. 76/243,538
5
overall commercial impression. The reason for utilizing
such a test, as opposed to basing a decision on a side-by-
side comparison, is that the latter ordinarily is not the
way that customers will be exposed to the respective marks.
Instead, it is the similarity of the general overall
commercial impression engendered by the marks at issue which
must determine, due to the fallibility of memory and the
lack of perfect recall, whether confusion as to source or
sponsorship is likely. The proper emphasis is thus on the
recollection of the average purchaser, who normally retains
only a general rather than a specific impression of marks.
See, e.g., Envirotech Corp. v. Solaron Corp., 211 USPQ 724,
733 (TTAB 1981); and Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
The marks here, although not identical, are very
similar in appearance and identical in pronunciation and
meaning. As the Examining Attorney properly points out,
where, as here, a mark consists of a literal portion and a
design portion, it is generally the literal portion which
is more likely to be impressed upon a consumer's memory and
to be used in calling for or asking about the goods. In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987). Also, there is no indication that the registered
mark is other than arbitrary for the goods listed in the
registration.
Serial No. 76/243,538
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The fact that the respective marks are very similar
“weighs heavily against applicant.” In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
(Fed. Cir. 1984). Indeed, the fact that an applicant has
selected the identical mark as a registrant “weighs [so]
heavily against the applicant that applicant’s proposed use
of the mark on “goods... [which] are not competitive or
intrinsically related [to registrant’s goods]...can [still]
lead to the assumption that there is a common source.” In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689
(Fed. Cir. 1993). That is to say, “the greater the
similarity in the marks, the lesser the similarity required
in the goods or services of the parties to support a
finding of likelihood of confusion.” 3 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:20.1
(4th ed. 2001).
With respect to the goods, it is well settled that the
issue of likelihood of confusion must be determined on the
basis of the goods as they are set forth in the involved
application and the cited registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS
Serial No. 76/243,538
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Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). Thus, where an applicant's and a registrant's
goods are broadly described as to their nature and type, it
is presumed in each instance that in scope the application
and registration encompass not only all goods of the nature
and type described, but that the identified goods move in
all channels of trade which would be normal for those goods
and that they would be purchased by all potential buyers
thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Further, in order to find likelihood of confusion, it
is not necessary that the goods on which the marks are used
be identical or even competitive. It is enough if there is
a relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate from the same source or that they are
sponsored or approved by the same source. McDonald's Corp.
v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In
re Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001). As
the Court of Appeals for the Federal Circuit stated in
Recot, Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1895,
1898 (Fed. Cir. 2000):
Serial No. 76/243,538
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[E]ven if the goods in question are
different from, and thus not related
to, one another in kind, the same goods
can be related in the mind of the
consuming public as to the origin of
the goods. It is this sense of
relatedness that matters in the
likelihood of confusion analysis.
See also Bose Corporation v. QSC Audio Products, Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309-1310 (Fed. Cir.
2002)(“Hence the products as described in the pertinent
registrations are not the same. But they are related as
required by DuPont.”); and Hewlett-Packard Company v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“[E]ven if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
Here, registrant’s goods are metal patio and other
residential doors while applicant’s goods are windows with
vinyl frames. The Examining Attorney has made of record
evidence that there are third-party manufacturers of both
windows and doors, and some manufacturers of both metal and
non-metal windows and doors. The evidence is sufficient to
conclude that purchasers, aware of registrant’s PANORAMA
and design mark for metal patio and other residential doors
who then encounter applicant’s PANORAMA vinyl windows
Serial No. 76/243,538
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(which could also be for residential use) are likely to
believe that these goods are made by the same manufacturer
or are sponsored or licensed by the same entity.
Decision: The refusal of registration is affirmed.