Eagle & Taylor Co.

Trademark Trial and Appeal Board

Nov 15, 2000

No. 75446093 (T.T.A.B. Nov. 15, 2000)

Paper No. 9
HRW
11/15/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Eagle & Taylor Company
________
Serial No. 75/446,093
_______
Raymond J. Lillie of Carella, Byrne, Bain, Gilfillan,
Cecchi, Stewart & Olstein for applicant.
Alex S. Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Hairston, Chapman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Eagle & Taylor Company has filed an application to
register the mark BOSTONIAN for “decorative glass panels
for residential steel doors.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the registered mark BOSTONIAN for “wooden

1 Serial No. 75/446,093, filed March 6, 1998, claiming first use
dates of October 28, 1991.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/446,093
2
interior and exterior doors and door skins of molded wood
fiber material.”2
The final refusal has been appealed and both the
applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont3 factors which are
relevant under the circumstances. Two key considerations
in any analysis are the similarity or dissimilarity of the
respective marks and the similarity or dissimilarity of the
goods with which the marks are being used. See In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
Here the marks are identical, the word BOSTONIAN. As
we turn to the goods, we are guided by the well-recognized
principle that the greater the degree of similarity in the
marks, the lesser is the degree of similarity that is
required of the goods on which the marks are being used in
order to support a likelihood of confusion. If the marks
are the same, as here, there need only be a viable

2 Registration No. 1,831,354, issued April 19, 1994, Section 8 &
15 affidavits accepted and acknowledged, respectively.
3 See In re E I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser No. 75/446,093
3
relationship between the goods. See In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The Examining Attorney argues that such a relationship
exists in that both wooden and steel doors are goods which
may emanate from a single source; that applicant’s
decorative glass panels are used with doors; that both
doors and door panels may travel in the same channels of
trade; and that the conditions surrounding the marketing of
the respective goods may be such that the goods would be
encountered by the same purchasers who might assume a
common source for both.
As pointed out by the Examining Attorney, applicant
has failed to make any arguments whatsoever with respect to
the issue of likelihood of confusion. Applicant’s only
contention is that applicant used its mark in interstate
commerce prior to the date of first use set forth in the
cited registration.4 Inasmuch as priority of use is not
germane to applicant’s right to register in an ex parte
proceeding, the Examining Attorney correctly refused to
consider this argument and we do the same. See In re
Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971).

4 Applicant’s further request that the appeal be suspended until
the Office determined the acceptability of the Section 8
affidavit filed by registrant on May 13, 1999 is to no avail.
The affidavit was accepted on September 21, 1999 and accordingly
the registration is valid and subsisting.
Ser No. 75/446,093
4
While we will not consider the likelihood of confusion to
have been conceded by applicant, we are without any
substantive arguments to the contrary.
Moreover, we note that it is not necessary that the
goods of applicant and registrant be similar or even
competitive to demonstrate a viable relationship between
the respective products. It is sufficient if the goods are
either related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that
could, because of the similarity of the marks used
therewith, give rise to the mistaken belief that they
emanate from, or are associated with, the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
and the cases cited therein.
Although registrant’s products are wooden doors
whereas applicant’s decorative glass panels are intended to
be used with steel doors, we find it reasonable to assume
that doors in general and decorative panels for use in
doors, whether wooden or steel, would travel in the same
channels of trade. As such, the same purchasers would be
likely to encounter both wooden and steel doors and
decorative panels for the same and, if the same mark is
used for both doors, whether wooden or steel, and
Ser No. 75/446,093
5
decorative panels for doors, we find it likely that these
purchasers might assume a common source for both types of
products. Applicant has failed to submit any rebuttal
argument or evidence which might lead us to a different
conclusion.
Accordingly, we find a sufficient relationship exists
between the respective goods that the use of identical
marks therewith would lead to a likelihood of confusion.
Decision: The refusal to register under Section 2(d)
is affirmed.
P. T. Hairston
B. A. Chapman
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
Ser No. 75/446,093
6