Dennis Bearden

Trademark Trial and Appeal Board

Aug 27, 1999

No. 75108390 (T.T.A.B. Aug. 27, 1999)

Paper No.11
HRW
THIS DISPOSTION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dennis Bearden
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Serial No. 75/108,390
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John S. Egbert of Harrison & Egbert for Dennis Bearden.
Mitchell Front, Trademark Examining Attorney, Law Office
101 (Christopher Wells, Acting Managing Attorney).
_______
Before Cissel, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Dennis Bearden has filed an application to register
the mark CENTURY A/C SUPPLY and design, as shown below, for
“wholesale distributorships featuring air conditioning
supplies for contractors and for multi-family housing.”1
Ser No. 75/108,390
2

1 Serial No. 75/108,390, filed May 23, 1996, claiming first use
dates of 1974. A disclaimer of the phrase “A/C SUPPLY” has been
entered.
Ser No. 75/108,390
3
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 USC § 1052(d), on the ground
of likelihood of confusion with the registered mark CENTURY
for “electronic air cleaners,” in Class 9, and “air
conditioners, gas, oil and electric furnaces, heat pumps,
blowers, coils, coil cabinets, electric duct heaters,
humidifiers, air handlers and condensing units,” in Class
11.2
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
As a preliminary matter, we note that the Board, on
September 16, 1998, denied applicant’s request, filed as
part of a reply brief, to suspend this appeal and remand
the application to the Examining Attorney for consideration
of additional evidence which was first submitted in
connection with applicant’s appeal brief. The Examining
Attorney had objected in his brief to this evidence as
being untimely under Trademark Rule 2.142(d), 37 CFR
2.142(d), and requested that no consideration be given
thereto. The Board, in denying applicant’s request for a
remand, pointed out that applicant had failed to show that

2 Reg. No. 1,089,611, issued April 18, 1978, claiming a first use
date and first use in commerce date of August 1, 1969 for the
Class 9 goods and a first use date and first use in commerce date
of October 7, 1926 for the Class 11 goods. Combined Section 8 &
15 affidavit accepted; first renewal in 1998.
Ser No. 75/108,390
4
this evidence was not earlier available, the usual
prerequisite for granting such a request. Accordingly, in
deciding this appeal, we have given no consideration to
Exhibits A-H attached to applicant’s brief or to
applicant’s arguments with respect thereto.
Turning to the issue of likelihood of confusion, we
consider first the similarity or dissimilarity of the marks
involved. The Examining Attorney takes the position that
inasmuch as the A/C SUPPLY portion of applicant’s mark
CENTURY A/C SUPPLY is descriptive wording which has been
disclaimed, and the design element is not sufficient to
alter the overall commercial impression, the dominant
feature of applicant’s mark is CENTURY, which is identical
to the registered mark CENTURY. The Examining Attorney
points out that applicant, in one of the catalogs which
serve as specimens in the application, often refers to his
company simply as CENTURY and argues that customers would
be likely to call for applicant’s services in the same way.
Applicant, on the other hand, argues that the additional
wording A/C SUPPLY cannot be ignored; that this phrase is
suggestive of the services performed under the mark and
thus creates a different commercial impression for the mark
as a whole from the registered mark.
Ser No. 75/108,390
5
Although it is true that in determining the 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). Although descriptive portions of a
mark cannot be ignored, the fact remains that the
purchasing public is more likely to rely on 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, as
is the case here. See Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
We find the word CENTURY to be the dominant feature of
applicant’s mark. The fact that applicant has included a
descriptive reference to the type of services rendered in
the mark is not likely to have a significant effect on
purchasers; it is the word CENTURY which creates the
commercial impression for the mark as a whole. Applicant’s
own use of the shortened form CENTURY is indicative that
purchasers will do the same. The design element is also of
little import, because it is the word portion of a mark,
rather any design feature, unless highly distinctive, which
is more likely to be remembered and relied upon by
Ser No. 75/108,390
6
purchasers in calling for the services. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Moving on to the distributorship services in
connection with which applicant uses his mark and the goods
covered by the registration, we note that it is sufficient
for finding a likelihood of confusion if the goods and
services with which the respective marks are being used are
related in some manner such that they would be seen by the
same individuals 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
Inc., 204 USPQ 396 (TTAB 1979), aff’d, 648 F.2d 1335, 209
USPQ 986 (CCPA 1981).
The degree of similarity of the goods and services need not
be as great when the marks are essentially the same, as
contrasted to situations in which are there are arguable
differences between the marks. In re Peebles, Inc., supra
at 1796.
The Board has found in the past that there is no
question but that there is a relationship between store
services and the goods which may be sold in that store.
See In re Best Products Co., 231 USPQ 988 (TTAB 1988). We
are of the opinion that a similar relationship exists
Ser No. 75/108,390
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between distributorship services and the products carried
by that distributorship. As pointed out by the Examining
Attorney, applicant, as a distributor of air conditioning
supplies, would be expected to handle goods covered by the
registration, such as air conditioners, blowers, coils, air
handlers, condensing units and electronic air cleaners.
The catalogs submitted as specimens show that products of
this nature are in fact being offered by applicant. While
applicant argues that the products actually sold by his
distributorship are air conditioning “components” for the
maintenance of existing air conditioning systems, the
specimens clearly demonstrate an overlap with the products
listed in the registration. Furthermore, not only does the
phrase “air conditioning supplies” as used in applicant’s
recitation of services cover original equipment as well as
replacement parts, but also the goods recited in the
registration include components as well as complete units.
In addition, the Examining Attorney has made of record
four third-party registrations showing that these entities
have registered their marks for both distributorship
services for air conditioning units, replacement parts
therefor or other home equipment and for the equipment
itself. This evidence, in conjunction with the depiction
in the specimens of record of products carried by
Ser No. 75/108,390
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applicant, demonstrates that purchasers have a basis to
expect that a manufacturer of air conditioning equipment
also provides distributorship services for its equipment or
that a distributor might be offering equipment under its
own brand name, particularly when virtually identical marks
are being used for both the services and the goods. See In
re Mucky Duck Mustard Co., Inc., 6 USPQ 1467 (TTAB 1988).
Applicant further argues that the channels of trade
are dissimilar, in that applicant’s services are directed
to managers and maintenance personnel of multifamily
dwellings and not to the individual home owners who would
purchase registrant’s air conditioners. We find no basis
for this distinction, however, in the goods as identified
in the registration. There are no restrictions as to
channels of trade for registrant’s goods, and thus they
must be presumed to travel in all the normal channels of
trade. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.22d
161, 23 USPQ2d 1945 (Fed. Cir. 1992) and the cases cited
therein. The same contractors and managers or maintenance
personnel who would avail themselves of applicant’s
distributorship services fall within the group of potential
purchasers of the air conditioners, electronic air cleaners
or other equipment sold by registrant.
Ser No. 75/108,390
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The remainder of applicant’s arguments are directed to
the purportedly minimal use by registrant of its mark and
the alleged weakness of CENTURY as a mark, in view of the
many existing registrations and applications for this mark.
Because of the exclusion of the evidence offered by
applicant in support of these arguments, we have no reason
to entertain them. Suffice it to say, the cited
registration must be given the full statutory presumptions
accorded it under Section 7(b), and cannot be challenged in
this ex parte proceeding. See In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Moreover, even if the registered mark were a so-called
“weak” mark, it would be entitled to protection against the
registration of a nearly identical mark for services which
might reasonably be assumed to emanate from the same
source. See OPTOmechanisms, Inc. v. Optoelectronics, Inc.,
175 USPQ 246 (TTAB 1972).
In summary, in view of the high degree of similarity
of applicant’s mark CENTURY A/C SUPPLY and design and the
registered mark CENTURY, and the close relationship between
the services and goods, respectively, with which the marks
are being used, we find confusion of the part of potential
purchasers to be likely.
Ser No. 75/108,390
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Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
G. D. Hohein
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board