Earthstone Int’l. LLC

Trademark Trial and Appeal Board

Sep 22, 2004

No. 76434394 (T.T.A.B. Sep. 22, 2004)

Mailed:
September 22, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Earthstone International LLC
________
Serial No. 76434394
_______
Robert W. Becker of Robert W. Becker & Associates for
Earthstone International LLC.
Frederick M. Mandir, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Quinn, Hairston and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Earthstone International LLC [applicant] has applied
to register the mark PURE CLEAN for goods identified,
following amendment, as "abrasive preparation for use for
cleaning, removing stains, polishing and smoothing
surfaces, in institutional and residential use," in Class
3. Applicant has disclaimed the exclusive right to use
CLEAN apart from the mark proposed for registration.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76434394
2
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).
The refusal is based on the prior registration of the mark
PURE CLEAN for "hand cleansers, hair shampoos and skin
lotions for use in industrial and institutional
facilities," in Class 3,1 and the prior registration of the
mark PURE 'N CLEAN for "cloths for wiping, cleaning and
dusting," in Class 21.2 The former of these two cited
registrations (for the mark PURE CLEAN) includes a
disclaimer of CLEAN.
After the refusal of registration was made final,
applicant filed an amendment alleging use of its mark (the
application had been filed under the intent to use
provision of the Trademark Act), and subsequently filed two
requests for reconsideration. The amendment to allege use
was accepted; each request for reconsideration was denied.
Applicant's appeal has been fully briefed, but
applicant did not request time for presenting oral
arguments. The only issue to be decided on appeal is the
refusal of registration under Section 2(d).
1 Registration no. 2021921 issued December 10, 1996 and an
affidavit or declaration of use under Section 8, 15 U.S.C. §
1058, has been filed.
2 Registration no. 2511213 issued November 20, 2001.
Ser No. 76434394
3
The examining attorney has argued, addressing first
the marks in the cited registrations, that the PURE CLEAN
mark is identical to applicant's mark and that the PURE 'N
CLEAN mark is "highly" or "very" similar to applicant's
mark; that when marks are identical or highly similar, for
a likelihood of confusion to exist the goods need not be as
close as they would have to be if the marks bore only some
similarity; that goods need not be competitive or
physically alike and only need be related in such a way
that consumers would consider them to emanate from the same
source or have common sponsorship; and that applicant's
abrasive preparation for various purposes and for use in,
inter alia, institutional settings, the first registrant's
"hand cleansers… for use in… institutional facilities,"3 and
the second registrant's "cloths for wiping, cleaning and
3 In analyzing the likelihood of confusion under Section 2(d),
and in particular in comparing applicant's goods with those
listed in the first of the two cited registrations, the examining
attorney clearly has argued that a likelihood of confusion exists
only insofar as the first of the cited registrations covers hand
cleansers for use in institutional facilities; by implication he
does not view confusion as likely insofar as the first
registration covers hand cleansers for industrial facilities or
hair shampoos and skin lotions for use in industrial or
institutional facilities. In other words, while the first of the
cited registrations covers three products (hand cleansers, hair
shampoos and skin lotions) for use in two different types of
settings (industrial or institutional), the examining attorney is
only concerned with use of one of the products (hand cleansers)
in one of the settings (institutional). It appears the examining
attorney reasons that hand cleansers could be abrasive, i.e.,
they could have a characteristic like that of applicant's goods,
but hair shampoos and skin lotions would not be abrasive.
Ser No. 76434394
4
dusting," would all be presumed by consumers to come from
the same source.
To support his argument, the examining attorney relies
on third-party registrations showing that marks have been
registered for goods that are identical to, or closely
related to, the goods of applicant and the goods listed in
the cited registrations. He also contends that the goods
of applicant and the two registrants are inexpensive and
would be the subject of impulse purchases made with less
care than would be exercised in regard to purchases of more
expensive goods. Finally, he contends that applicant's
goods would be perceived by consumers to be within the
natural zone of expansion for each of the registrants.
In each of its briefs, applicant makes a passing
reference to the mark in the second of the two cited
registrations, i.e., PURE 'N CLEAN, which applicant
contends "differs aurally and visually" from its own mark;
but applicant also allows in its reply brief that the
involved marks are "similar in appearance." Applicant's
principal argument against the refusal of registration is
that the third-party registrations introduced by the
examining attorney do not establish a likelihood of
confusion among typical consumers of the involved goods,
exercising ordinary caution, but only demonstrate the mere
Ser No. 76434394
5
possibility that a merchant could adopt the same mark for
goods traveling in different "streams of commerce."4
Applicant also argues that its goods are not similar to
those in either of the cited registrations and that
applicant's stream of commerce differs from those of the
registrants.
As for the goods listed in the first of the two cited
registrations, applicant contends its abrasive product for
cleaning, removing stains from, polishing and smoothing
surfaces and the registrant's "personal hygiene" products
clearly are dissimilar, and that a typical consumer
exercising ordinary caution would not confuse them. As for
the goods in the second of the cited registrations,
applicant contends that cloths for wiping, cleaning and
dusting, being inherently soft in nature, "cannot be" an
abrasive preparation such as applicant's product; would be
used only for non-abrasive cleaning; and a typical consumer
exercising ordinary caution would not confuse them.5
4 While applicant characterizes this argument as contending that
the examining attorney utilized the wrong test for likelihood of
confusion, i.e., mere possibility of confusion rather than
likelihood of confusion, it is essentially an argument that the
evidence on which the examining attorney relies is insufficient
to prove likelihood of confusion.
5 In arguing that its product would not be confused with a soft
cloth, applicant states that its product, though termed an
"abrasive preparation" in the identification, is an "abrasive
block." While that may be so, we must assess relatedness of the
Ser No. 76434394
6
Applicant also contends that "unlike several" of the
third-party registrations on which the examining attorney
relies, that are for house marks, the cited registrations
are not for house marks; and while a typical consumer
exercising ordinary caution might expect to find a house
mark on diverse products, such a consumer would not expect
to find a "non-house mark" on different products in
different streams of commerce. Finally, applicant contends
that consumers utilize packaging to differentiate products
and their sources.
As to its contention regarding streams of commerce,
applicant asserts that the concurrent registration of the
two cited registrations is evidence that the products
identified therein must travel in different streams.
Applicant also relies on the limitation in the
identification for the PURE CLEAN personal hygiene products
goods based on identifications, not actual products. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion
that the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the sales
of goods are directed”).
Moreover, in comparing goods listed in a registration and an
application we are assessing their relatedness and, if related,
the likelihood of confusion if the goods were marketed under the
same or similar marks. We are not assessing whether one product
could be confused for another.
Ser No. 76434394
7
that they are sold "for use in industrial and institutional
facilities; and it contends that the market for cleaning
cloths is very different from the market for abrasive
cleaners.
In its reply brief, applicant largely repeats
arguments made in its main brief and posits numerous
hypothetical situations involving asserted house marks and
product marks, situations in which it asserts that
consumers would not be likely to be confused. Applicant
analogizes these situations to the circumstances presented
by comparison of its application and the cited
registrations.
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 likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
typical analysis of likelihood of confusion, key
considerations are the similarities or dissimilarities of
the marks and the question whether the goods are related in
some way. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
As to all three of the involved marks, we note that
they are very highly suggestive. "Clean" has been
Ser No. 76434394
8
disclaimed in two of the marks and "Pure" is clearly a
suggestive term when considered in connection with the
various involved products.6 See, for example, the following
definition of "pure": "8. clean, spotless, or
unblemished." The Random House College Dictionary 1073
(revised ed. 1982). Thus, in our comparisons of
applicant's mark and each of the marks in the cited
registrations, we adopt the view that the marks are
entitled to a limited scope of protection.
Considering the marks individually, the mark in the
first of the cited registrations is identical to that of
applicant, which weighs heavily against applicant. In re
Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984). This is true
notwithstanding our conclusion that the involved marks are
entitled to only a limited scope of protection, for even a
highly suggestive or weak mark is entitled to protection.
Cf. In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982).
When marks are identical, as are applicant's mark and
the mark in the first of the cited registrations, their
contemporaneous use can lead to the assumption that there
6 The fact that "Clean" is not the subject of a disclaimer for
the PURE 'N CLEAN mark, even though it is registered for, inter
alia, "cloths for… cleaning" may be attributable to the Office's
policy of not requiring disclaimers of a word that is part of a
Ser No. 76434394
9
is a common source "even when [the] goods or services are
not competitive or intrinsically related." In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
The examining attorney has put into the record printouts of
information regarding a number of registrations, and one
intent-to-use application, to establish that the same mark
has been registered for, on the one hand, hand cleaners,
and on the other, surface cleaners. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). See
also, In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988), aff'd as not citable precedent 88-
1444 (Fed. Cir. Nov. 14, 1988).
Three of the registrations proffered by the examining
attorney must be disregarded, because they are not based on
use of the registered marks, and the intent-to-use
application likewise is not probative. Nonetheless, there
are still four other registrations that are based on use,
and cover both hand cleaners of some type and surface
unitary phrase. See TMEP Section 1213.05 (third ed. rev. 2, May
2003).
Ser No. 76434394
10
cleaners of some type. In fact, two of these registrations
specifically list both abrasive surface cleaners and hand
cleaners. We find these third-party registrations
probative evidence that consumers would conclude, when
seeing the identical mark used on or in conjunction with
applicant's products and the hand cleanser listed in the
first of the cited registrations, that they had a common
source or sponsor.
Finally, we note that the identifications in both
applicant's application and the first of the cited
registrations list institutional customers as a class of
consumers for the identified products. This, too,
contributes to a likelihood of confusion.
We affirm the refusal of registration under Section
2(d) based on the first of the cited registrations. On the
other hand, we reverse the refusal as to the second of the
cited registrations.
As noted above, we consider the involved marks to be
entitled to only a very limited scope of protection. The
mark and goods applicant proposes to register intrude on
that scope of protection only for the first of the cited
registrations. The mark in the second of the cited
registrations, PURE 'N CLEAN, is different. Clearly, the
differences are slight, but when the marks are not entitled
Ser No. 76434394
11
to broad protection, slight differences may contribute to a
finding of no likelihood of confusion. See, e.g., In re
Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed.
Cir. 1986)(No likelihood of confusion between BED &
BREAKFAST REGISTRY for "making lodging reservations for
others in private homes" and BED & BREAKFAST INTERNATIONAL
for "room booking agency services."); Hard Rock Cafe
Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1409 (TTAB
1998)(Stating, "in view of the suggestive nature of
opposer's marks, as discussed herein, we do not accord to
opposer's marks a broad scope of protection as would be
warranted if fame had been established" the Board found no
likelihood of confusion between opposer's HARD ROCK CAFE
marks and applicant's COUNTRY ROCK CAFE mark.). Moreover,
applicant's "abrasive preparation for use for cleaning,
removing stains, polishing and smoothing surfaces, in
institutional and residential use," is a different product
than the second registrant's "cloths for wiping, cleaning
and dusting." Though the third-party registrations the
examining attorney entered into the record are sufficient
to show that consumers likely would attribute applicant's
goods and those of the first registrant, when sold under
the identical mark, to a common source, these registrations
Ser No. 76434394
12
largely do not support a refusal of registration based on
the second of the cited registrations.
Only one of the four registrations that are based on
use of the marks in commerce covers both a product like
applicant's and products like that of the second
registrant. Moreover, that registration, no. 1279488, is
for a mark that is clearly a house mark (the mark is
CLEVELAND COTTON PRODUCTS and so is registrant's name).
In short, given the limited scope of protection to be
accorded PURE 'N CLEAN for wiping cloths and PURE CLEAN for
applicant's products, the differences in the goods, and the
paucity of evidence showing that such products typically
have a common source or sponsor, we reverse the refusal of
registration based on the second registration.
Decision: The refusal of registration under Section
2(d) is affirmed as to the first of the two cited
registrations but is reversed as to the second of the two
cited registrations.