EU Imports Inc.

Trademark Trial and Appeal Board

Nov 20, 2018

No. 87599073 (T.T.A.B. Nov. 20, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 20, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re EU Imports Inc.
_____

Serial No. 87599073
_____

Michael Steinmetz of Garson, Segal, Steinmetz, Fladgate LLP,
for EU Imports, Inc.
Monica L. Beggs, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
_____

Before Zervas, Taylor and Wolfson,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
EU Imports Inc. (“Applicant”) seeks registration on the Principal Register of the
standard character mark BERLIN MODISCH for “Door handles of metal; Door knobs
of common metal; Door knockers of metal; Door stops of metal; Metal door kick plates;
Metal hinges; Metal mail slots” in International Class 6.1 In response to a query from

1 Application Serial No. 87599073 was filed on September 7, 2017, based upon an allegation
of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), and claims
September 9, 2016 as both the date of first use of the mark and date of first use in commerce.
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the Trademark Examining Attorney, Applicant provided the following translation:
“The English translation of MODISCH in the mark is FASHIONABLE.”2
The Examining Attorney has refused registration of Applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of
confusion with the mark in U.S. Registration No. 5237832, BERLIN (in standard
characters) for “Electric ceiling fans for non-industrial use” in International Class
11.3 Registration also was refused because Applicant failed to comply with the
requirement to pay additional fees for its loss of TEAS Plus4 status. See 37 C.F.R.
§§2.6(a)(1)(v), 2.22(a), (c); TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) Sections 819.01 et seq., 819.04 (Oct. 2018).
When the refusal and requirement were made final, Applicant appealed and
requested reconsideration. The Examining Attorney denied the request for
reconsideration, and the appeal was resumed on April 11, 2018. We affirm the
refusals to register.
I. Evidentiary Issue
We consider first the record on appeal. Applicant submitted for the first time with
its appeal brief, evidentiary material consisting of: (1) the definition of “adjective”; (2)
internet excerpts from Applicant’s website; and (3) internet excerpts featuring

2 January 22, 2018 Response to Office Action. The translation statement is not reflected as
yet in the electronic application record.
3 Issued July 4, 2017.
4 TEAS Plus identifies one of the United States Patent and Trademark Office’s (“USPTO”)
Trademark Electronic Application System’s (“TEAS”) filing options.
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Applicant’s Berlin Modisch products from Amazon.com. We treat the submission of
the dictionary definition as including Applicant’s request, which we grant, that we
take judicial notice of the definition. The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format or have regular
fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014),
aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
However, because the internet materials were not made of record until after the
filing of the appeal, they are untimely and will be given no further consideration.5 See
Trademark Rule 2.142(d), 37 C.F.R. § 142(d) (“The record in the application should
be complete prior to the filing of an appeal. Evidence should not be filed with the
Board after the filing of a notice of appeal.”). See also In re Zanova Inc., 59 USPQ2d
1300, 1302 (TTAB 2001) (“By attempting to introduce evidence with its reply brief,
applicant has effectively shielded this material from review and response by the
Examining Attorney.”). Any arguments based solely on the untimely materials also
will not be considered.

5 The Board does not take judicial notice of internet materials of the type submitted by
Applicant. If Applicant desired to introduce additional evidence, it could have requested
suspension of the proceeding and remand of the application for further examination. See
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).
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II. Issues on Appeal
We next clarify the issues on appeal. While Applicant and the Examining Attorney
argued their positions on the likelihood of confusion issue in their briefs, the only
reference to the refusal based on Applicant’s failure to satisfy the requirement to pay
additional fees is in the “Facts” section of the Examining Attorney’s brief. However,
the prosecution history of Applicant’s application and the “Facts” section make clear
that a final refusal was made on the requirement for additional fees. Applicant did
not address the fee requirement in its brief, and the requirement was never
withdrawn or otherwise satisfied. Accordingly, the issues on appeal are as follows:
(1) Likelihood of confusion under Section 2(d); and
(2) Requirement for payment of additional fees incurred
after the loss of TEAS Plus status.
III. Fee Requirement
Applicant’s application was filed as a TEAS Plus application. TEAS Plus permits
an applicant who files an application for registration of a trademark based on
Section 1 of the Trademark Act to pay a reduced filing fee of $225 per class, if the
applicant, in relevant part, “[f]iles a complete application.” See TMEP § 819 and
authorities cited therein. To be eligible for the reduced fee, a TEAS Plus application
must comply with the requirements set forth in Trademark Rule 2.22, 37 C.F.R. §
2.22, which include, among others, that “[i]f the mark includes non-English wording,
an English translation of that wording” must be included with the application.
Trademark Rule 2.22(a)(16). An Applicant must submit an additional processing fee
Serial No. 87599073
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of $125 per class when an application as filed does not meet the TEAS Plus
application requirements. See Trademark Rules 2.6(a)(1)(v) and 2.22(c).
In this case, Applicant failed to provide a translation of the word MODISCH in its
mark when it filed its application and thus failed to meet the requirements for a
TEAS Plus application. An additional processing fee of $125 therefore was required.
Applicant has not paid the $125 processing fee. Accordingly, the requirement that
Applicant pay the processing fee is affirmed.6
IV. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under § 2(d) is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.

6 Notably, when the Board has issued its final decision in an ex parte appeal, the Board has
no authority, either in its final decision on appeal or thereafter, to remand the case to the
examining attorney for further examination or action. A case that has been considered and
decided on appeal to the Board may be reopened only for entry of a disclaimer. See 37 C.F.R.
§ 2.142(g), see also TBMP § 1218 (2018).

Serial No. 87599073
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See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered).
A. The Goods
It is well settled that the goods of Registrant and Applicant need not be identical
or competitive, or even be offered through the same channels of trade, to support a
finding of likelihood of confusion. It is sufficient that the respective goods are related
in some manner, and/or that the conditions and activities surrounding the marketing
of the goods are such that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source. See Coach Servs. Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1723 (Fed. Cir. 2012)
(citation omitted); Hilson Research, Inc. v. Society for Human Resource Management,
27 USPQ2d 1423 (TTAB 1993). The issue here, of course, is not whether purchasers
would confuse the goods, but rather whether there is a likelihood of confusion as to
the source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB
2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
In making our determination regarding the relatedness of the goods, we must look
to the goods as identified in the application and the cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918
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F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011).
Applicant’s goods are identified as “door handles of metal; door knobs of common
metal; door knockers of metal; door stops of metal; metal door kick plates; metal
hinges; [and] metal mail slots” and Registrant’s goods are identified as “electric
ceiling fans for non-industrial use.” The Examining Attorney maintains that the
goods are related because they are commonly manufactured by the same company
and marketed under the same mark.
In support of this position, the Examining Attorney made of record web pages from
various websites showing use of the same mark for goods of the types identified in
both Applicant’s application and the cited registration.
The internet uses include:7
• Honeywell (www.honeywellstore.com)8 showing door knobs and
ceiling fans sold under the HONEYWELL mark;

7 The Examining Attorney also made of record excerpts from the Rejuvenation
(www.rejuvenation.com, December 20, 2017 Office Action; TSDR 8-18), Birch Lane
(www.birchlane.com, December 20, 2017 Office Action; TSDR 24-43) and Design House
(www.todaysdesignhouse.com, February 22, 2018 Final Office Action; TSDR 46-62) websites.
While these materials are not probative to show that the entity uses the same mark on goods
of a type identified in both Applicant’s application and the cited registration, they are
somewhat probative to show that the same store offers for sale both door hardware and other
finishing hardware such as door knockers, hinges and mail slots and ceiling fans.
The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations
reference the docket and electronic file databases for the involved application. All citations
to the TSDR database are to the downloadable .pdf version of the documents. Complete URLs
may be found in the cited TSDR records.
8 December 20, 2017 Office Action; TSDR 19-23.
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• Cask Industries (www.caskindustries.com)9 showing metal door
knobs and ceiling fans sold under the CASK INDUSTRIES mark;
• Tri-Supply (http://trisupplyhometeam.com)10 showing door knobs
and ceiling fans sold under the TRI-SUPPLY mark;
• Vima Multi-Family Supply & Decor (www.vimadecor.com)11
showing metal door knockers and kick plates and ceiling fans sold
under the VIMA mark; and
• House of Antique Hardware (www.houseofantique
hardware.com)12 showing metal door hinges and kick plates and
ceiling fans sold under the HOUSE OF ANTIQUE HARDWARE
mark.
The Examining Attorney also made of record printouts of use-based, third-party
registrations for marks covering items of the types identified in both Applicant’s
application and the cited registration, such as metal door knobs, hinges, door
knockers and mail slots and ceiling fans.13 Third-party registrations that individually
cover different goods and that are based on use in commerce serve to suggest that the

9 February 22, 2018 Final Office Action; TSDR 8-15.
10 Id. at TSDR 16-21.
11 Id. at 22-33.
12 Id. at TSDR pp. 34-45.
13 Id. at TSDR 63-69 and 77-116. The Examining Attorney also made of record Registration
No. 4425899. Id. at 70-76. However it does not cover goods identified in both Applicant’s
application and the cited registration and, accordingly, has no probative value. We
additionally take into consideration the fact that Registration Nos. 1800433, 5253550 and
5954196 mirror third-party uses, also of record.
Serial No. 87599073
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listed goods are of a type that may emanate from a single source. See Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party
registrations are “not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, [they] may nonetheless
have some probative value to the extent that they may serve to suggest that such
goods or services are of a type which may emanate from a single source”). See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). The registrations
include as excerpted below, for example:
Registration
No.
Mark Pertinent Goods14
1800433 DESIGN HOUSE metal door hardware and door knobs and ceiling
fans
4126477 MULTIHOUSING DIRECT [metal] door knobs and ceiling fans
4066326 ALLEN + ROTH metal knobs and ceiling fans
4734086 RESTORATION
HARDWARE
metal knockers and door hinges and ceiling fans
4724088 TEMPUS metal door stops, knockers and hinges and ceiling
fans
5116850 metal hinges and ceiling fans
4971759 WHOLE HOUSE metal door knobs and ceiling fans
5253550 REJUVENATION metal mail slots and door knockers and ceiling
fans
5054196 metal door knobs and ceiling fans
5279179 MISENO Residential metal door knobs and residential
interior and exterior ceiling fans

We find this evidence sufficient to show that Applicant’s “door handles of metal;
door knobs of common metal; door knockers of metal; door stops of metal; metal door
kick plates; metal hinges; [and] metal mail slots” are commercially related to

14 The registrations include additional goods and/or services that are not at issue here.
Serial No. 87599073
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Registrant’s “electric ceiling fans for non-industrial use,” such goods all being home
finishing items that may emanate from the same source under the same mark.
Applicant, for the first time in its reply brief, questions the probative value of the
third-party registrations relied on by the Examining Attorney, particularly noting
that the marks in those registrations “cover[ ] a variety of goods in a variety of
international classes.”15 We find this argument untimely inasmuch as it was not
raised until after any opportunity for the Examining Attorney to respond. Even if it
were timely raised, the argument is unpersuasive. That the third-party registrations
include additional goods does not negate the fact that they include some of the same
goods identified in both Applicant’s application and the cited registration.
We also find unpersuasive Applicant’s assertion that the third-party registrations
made of record by the Examining Attorney in an unrelated proceeding on the question
of relatedness of the goods were more probative than the ones made of record here.16
The result of this appeal must be decided on its own facts and record. See In re USA
Warriors Ice Hockey Program, Inc. 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Here,

15 10 TTABVUE 9-10.
16 Applicant primarily relies on the non-precedential decision 7-Eleven Inc. v. HEB Grocery
Co. LP, 83 USPQ2d 1257 (TTAB 2007) for this proposition. While applicants may cite to non-
precedential decisions, such decisions are not binding on the Board and the Board does not
encourage this practice. In re Fiat Grp. Mktg. & Corporate Commc’ns S.p.A., 109 USPQ2d
1593, 1596 n.6 (TTAB 2014); In re Procter & Gamble Co., 105 USPQ2d 1119, 1121 (TTAB
2012); In re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011); Corporacion Habanos
SA v. Rodriquez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011). Moreover, the third-party
registrations made of record in 7-Eleven Inc. are not of record in this case. The Board does
not take judicial notice of registrations that reside in the USPTO. See UMG Recordings Inc.
v. O’Rourke, 92 USPQ2d 1042, 1046 (TTAB 2009) (citing Corporate Fitness Programs Inc. v.
Weider Health and Fitness Inc., 2 USPQ2d 1682, 1683-84, n.3 (TTAB 1987); TBMP
§ 704.03(b)(1)(B), n.7.
Serial No. 87599073
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the Examining Attorney did not rely solely on the third-party registrations, but also
on third-party uses and our findings are based on all of the pertinent evidence.
Applicant also argues that the respective goods are non-competitive and unrelated
and thus unlikely to be confused; Registrant’s sole focus being fans while Applicant
does not sell fans and Amazon.com, Applicant’s marketplace, does not recommend
fans to consumers who search for “BERLIN MODISCH.” We find these arguments
unavailing. As stated, the goods need not be identical or even competitive; rather,
they need only be related in such a manner that they could be encountered by the
same consumer under situations that would lead to the mistaken belief that they
originate from the same source. Coach Servs. v. Triumph Learning, 101 USPQ2d at
1723. As for the Amazon.com search results, there is no information in the record as
to the criteria used by Amazon to make its recommendations and, more importantly,
Applicant’s application does not reflect Amazon-only trade channels.
In addition, while we agree with Applicant that the presence of goods in the same
store does not necessarily lead to the conclusion that confusion is likely, the record in
this case shows that not only are the types of goods Applicant sells sold in the same
online stores as ceiling fans, they are sold under a single mark owned by the same
entity.
The du Pont factor of relatedness of the goods favors a finding of likelihood of
confusion.
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B. Channel of Trade/Classes of Consumers
Because there are no limitations as to channels of trade or classes of purchasers
in Applicant’s or Registrant’s identifications of goods, we must presume that
Applicant’s and Registrant’s goods move in all channels of trade usual for these goods.
See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Channels of trade for both
Applicant’s and Registrant’s goods include online and home improvement and
hardware stores. They are purchased by the usual classes of purchasers, which in
this case include ordinary consumers. We accordingly find the channels of trade and
the classes of consumers of Applicant’s and Registrant’s goods to overlap.
This du Pont factor thus favor a finding of likelihood of confusion.
C. Similarity/Dissimilarity of the Marks
We now consider the du Pont factor of the similarity or dissimilarity of the marks
and compare them, as we must, in their entireties in terms of sound, appearance,
meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). However, there is
nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of the mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). That is, “[t]he 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
Serial No. 87599073
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would be likely to assume a connection between the parties.” Coach Servs. v. Triumph
Learning, 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. L’Oreal
v. Marcon, 102 USPQ2d at 1438; Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). As stated, the average customers include ordinary ones.
On comparison, we find that Applicant’s applied-for mark BERLIN MODISCH
incorporates the cited mark BERLIN in its entirety. Likelihood of confusion is often
found where the entirety of one mark is incorporated within another. See In re
Integrated Embedded, 120 USPQ 1504, 1513 (TTAB 2016) (citing In re Denisi, 225
USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson Publ’g Co. v. Int’l Dev.
Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); In re South Bend Toy Mfg. Co., 218 USPQ 479, 480
(TTAB 1983) (LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for doll
clothing)). See also Coca-Cola Bottling Co. of Memphis Tenn., Inc. v. Jos. E. Seagram
& Sons, Inc. 526 F.2d 556, 188 USPQ2d 105, 106 (CCPA 1975) (BENGAL and
BENGAL LANCER for closely related goods found confusingly similar).
Serial No. 87599073
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Moreover, the first word BERLIN is a notable, if not the dominant, component of
BERLIN MODISCH given its location as the first part of the mark and, thus, the first
word to appear on any label or to be articulated when pronouncing the mark. See
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 upon the
mind of a purchaser and remembered”); see also Palm Bay v. Veuve Clicquot, 73
USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label.); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers
must first notice the identical lead word). To bilingual German and English speakers,
the additional word MODISCH, translated as “fashionable” in German, does not
distinguish Applicant’s mark from Registrant’s. It merely modifies the BERLIN
component of Applicant’s mark and imparts an impression of an upscale line of
BERLIN goods.
We are unpersuaded by Applicant’s argument that the word MODISCH is most
likely to stand out considering it is a foreign word that requires translation. While we
agree that consumers familiar with the German language would stop and translate
MODISCH into English,17 as stated above, it merely modifies the term BERLIN.

17 Under the doctrine of foreign equivalents, foreign words from common languages are
translated into English to determine … similarity of connotation in order to ascertain
confusing similarity. Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1696 (citations omitted). We
recognize that German is a common, modern language and we take judicial notice of U.S.
Census data showing German is spoken in 1,109,216 U.S. households in 2009,
(www.census.gov/hhes/socdemo/language/data/acs/Ortman_Shin_ASA2011_paper.pdf).
Serial No. 87599073
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Moreover, consumers who are not familiar with the German language are likely to
believe, because of the similarities between Applicant’s and Registrant’s marks and
the syntax of Applicant’s mark, that they are variant marks used by a single entity
to identify and distinguish a companion product line.
Also, both Applicant’s and Registrant’s marks are in standard characters and, as
such, their display is not limited to any particular font style, size, or color. We
therefore must consider that both marks might be used in any stylized display,
including the same or similar lettering style or color. See In re Viterra, 101 USPQ2d
at 1909-10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1259 (Fed. Cir. 2011); In re Aquitaine Wine USA, LLC, 126 USPQ2d
1181, 1886 (TTAB 2018) (literal elements of standard character marks may be
presented in any font style, size or color).
The marks are similar to the extent that they both include the term BERLIN.
Applicant argues that confusion is unlikely when the marks are considered in
their entireties. In addition to the apparent differences in appearance and sound as
a result of the addition of the term MODISCH to Applicant’s mark, Applicant asserts
that the “unique combination” of the words BERLIN and MODISCH together imparts
a meaning to Applicant’s mark of “European (Berlin), fashionable and stylish
(MODISCH),” while “BERLIN in the cited mark could refer to a multitude of
meanings,” one being “the name of one type of Registrant’s fan[s].”18 We find this
argument unpersuasive. While it appears that Registrant uses the term BERLIN as

18 7 TTABVUE 11.
Serial No. 87599073
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a trademark identifying its ceiling fans, Applicant has offered no evidence of
additional meanings of BERLIN or why we should not attribute the same meaning,
e.g., the capital of Germany/European, to the word BERLIN in both Applicant’s and
Registrant’s marks.
We reiterate, likelihood of confusion is not necessarily avoided between otherwise
confusingly similar marks merely by adding or deleting other matter. If an important
or, as in the case here, the dominant or sole portion of both marks is the same, then
the marks may be confusingly similar notwithstanding some differences. See, e.g., In
re Detroit Athletic Co., ___ F3d ___, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018)
(affirming TTAB’s finding that the marks DETROIT ATHLETIC CO. and DETROIT
ATHLETIC CLUB are nearly identical in terms of sound, appearance and commercial
impression, and noting that, while “the words ‘Co.’ and ‘Club’ technically differentiate
the marks, those words do little to alleviate the confusion that is likely to
ensue”); Stone Lion v. Lion Capital 110 USPQ2d at 1161 (affirming TTAB’s finding
that applicant’s mark STONE LION CAPITAL incorporated the entirety of the
registered marks LION CAPITAL and LION, and that the noun LION was the
dominant part of both parties’ marks); Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that, even though
applicant’s mark PACKARD TECHNOLOGIES, with “TECHNOLOGIES”
disclaimed, does not incorporate every feature of opposer’s HEWLETT PACKARD
marks, a similar overall commercial impression is created); In re Apparel Ventures,
Inc., 229 USPQ 225, 226 (TTAB 1986) (holding applicant’s mark, SPARKS BY
Serial No. 87599073
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SASSAFRAS (stylized), for clothing, and registrant’s mark, SPARKS (stylized), for
footwear, likely to cause confusion, noting that “[t]hose already familiar with
registrant’s use of its mark in connection with its goods, upon encountering
applicant’s mark on applicant’s goods, could easily assume that ‘sassafras’ is some
sort of house mark that may be used with only some of the ‘SPARKS’ goods”).
While there are differences between the marks when viewed on a side-by-side
basis, we find that when considered in their entireties, Applicant’s mark BERLIN
MODISCH and the cited BERLIN mark are similar in appearance, sound and
connotation and convey a similar commercial impression due to the shared term with
the same meaning, BERLIN, and those similarities outweigh the differences
identified by Applicant.
Accordingly, the similarity between the marks is a factor that weighs in favor of a
finding of likelihood of confusion.
D. The Number and Nature of Similar Marks in Use on Similar Goods
Applicant has made of record Registration No. 5366679 for the stylized mark
LALA BERLIN and Registration No. 4394333 for the mark KÖNIGLICHE
PORZELLAN-MANUFAKTUR BERLIN and design, arguing that these marks
peacefully co-exist with the cited mark and that its mark can similarly co-exist
without giving rise to consumer confusion:
Registration No. 5366679
(BERLIN disclaimed) for, inter alia,
“furniture and mirrors”;
Serial No. 87599073
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Registration No. 4394333
(KÖNIGLICHE PORZELLAN-
MANUFAKTUR BERLIN disclaimed) for, inter alia,
“lamps for domestic use and lamp stands.”
To the extent that Applicant is arguing that since these two registrations owned
by different entities can co-exist on the register, its applied-for mark should also be
registrable, we find the argument unpersuasive. These two registrations are for
marks where BERLIN is subordinate to the other words and/or designs in those
marks, and the goods in those registrations are unrelated to door hardware or ceiling
fans. Moreover, while the Office strives for consistency in examination, the Board is
not bound by the prior decisions of examining attorneys in allowing marks for
registration. It is well established that each case must be decided on its own facts.
See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1142 (Fed. Cir. 1987).
Applicant also appears to argue that these registrations demonstrate that
BERLIN is a geographically descriptive term. Specifically, Applicant argues that “the
Cited Mark BERLIN is merely descriptive of a city in Germany and is entitled to a
Serial No. 87599073
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narrow scope of protection.”19 To the extent that Applicant is challenging the validity
of the cited registration, the descriptiveness argument constitutes an impermissible
collateral attack. In re Hanson Co., 116 USPQ2d 1351, 1355 n.13 (TTAB 2015)
(citing In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)).
Moreover, if we were to attribute some degree of inherent weakness to the word
BERLIN, even weak marks are entitled to protection against registration of a similar
mark for related goods. See In re FabFitFun, Inc., 127 USPQ2d 1670, 1676 (TTAB
2018) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d 1123,
1125 (Fed. Cir. 2007).
E. Conclusion
When we consider all of the arguments and evidence relating to the relevant
likelihood of confusion factors, even if not specifically discussed in this opinion, we
find that confusion is likely between Applicant’s mark BERLIN MODISCH for “door
handles of metal; door knobs of common metal; door knockers of metal; door stops of
metal; metal door kick plates; metal hinges; [and] metal mail slots” and the cited
registered mark BERLIN for “electric ceiling fans for non-industrial use.” We find so
principally due to the similarity between the marks, the commercial relatedness of

19 10 TTABVUE 11.
Serial No. 87599073
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the goods, and the overlap in purchasers and trade channels, and Applicant has not
established any commercial weakness in the cited mark.
Decision: The requirement that Applicant pay an additional fee for its loss of
TEAS Plus status and the refusal to register Applicant’s mark BERLIN MODISCH
under Section 2(d) are affirmed.