Fairview Import Corp

Trademark Trial and Appeal Board

Aug 16, 2013

No. 85395780 (T.T.A.B. Aug. 16, 2013)

Mailed: August 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fairview Import Corp.
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Serial No. 85395780
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Gino Cheng of Orrick Herrington & Sutcliffe LLP for
Fairview Import Corp.

Seth A. Rappaport, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On August 11, 2011 applicant, Fairview Import Corp.,
filed an intent-to-use application, under Section 1(b) of
the Trademark Act, 15 U.S.C. 1051(b), to register on the
Principal Register the mark displayed below for
cases for eyeglasses and sunglasses; cases for
spectacles and sunglasses; chains for spectacles
and for sunglasses; eyewear, namely, sunglasses,
eyeglasses and ophthalmic frames and cases
therefor; frames for spectacles and sunglasses;
lenses for sunglasses; spectacles and sunglasses;
sunglass lenses; sunglasses

in International Class 9.
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Ex Parte Appeal No. 85395780

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“Color is not claimed as a feature of the mark.” “The mark
consists of a moose over the words ‘Heritage Collection’ in
stylized lettering.” In response to the trademark
examining attorney’s requirement, applicant disclaimed
“COLLECTION” apart from the mark as shown.
The examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark, when applied to
applicant’s goods, so resembles the previously registered
mark HERITAGE 1981 (in standard characters, 1981
disclaimed) for, inter alia, “eyewear, namely, sunglasses”
in International Class 9.1

1 Registration No. 3447097 issued on June 10, 2008. The
registration recites additional goods in Classes 14, 18 and 25
and services in Class 35.

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When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Applicant argues at length that the marks are
dissimilar; and that the cited registration issued over
subsequently cancelled Registration No. 2467899 for the
mark HERITAGE COLLECTION for “eyeglass frames and sun
glasses,” issued to a third party. In support of its
contentions, applicant has made of record a copy of the
cancelled registration discussed above, and a copy of
additional cancelled third-party registrations for
HERITAGE-formative marks for various goods including
eyewear and other, unrelated goods and services. Applicant
further submitted a definition of “moose” and internet
articles discussing moose to support its argument that the
moose design gives its mark a different connotation and
commercial impression from the mark in the cited
registration. Applicant also submitted copies of eleven
live third-party registrations for marks that include the
term HERITAGE for goods and services unrelated to those at
issue herein. The following examples are illustrative:
Registration No. 3709988 for the mark HERITAGE
COLLECTION for greeting cards;

Ex Parte Appeal No. 85395780

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Registration No. 2102984 for the mark THE
HERITAGE COLLECTION for various items of
insulated tableware;

Registration No. 2740536 for the mark HERITAGE
STORE for retail, mail order and online store
services featuring natural and holistic foods,
herbs and related products; and

Registration No. 3024079 for the mark THE
HERITAGE and design of a colonial figure holding
a golf club for clothing and golf tournaments.

The examining attorney maintains that the goods are
identical in part and otherwise closely related, their
trade channels are the same, and that the marks are
similar. In support of his position, the examining
attorney made of record approximately forty third-party
registrations reciting sunglasses as well as additional
goods identified in the involved application. In addition,
the examining attorney made of record screenshots from four
commercial internet sites at which both sunglasses and
eyeglasses and eyeglass frames are offered for sale.
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 issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
Ex Parte Appeal No. 85395780

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confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
We first turn to consider the du Pont factor regarding
the similarity/dissimilarity between the goods. When
comparing the goods, the respective identifications in the
application and the cited registration control the
analysis. In re Giovanni Food Co., 97 USPQ2d 1990, 1991
(TTAB 2011). In this case, applicant does not argue that
the goods are dissimilar. Indeed, registrant’s goods are
sunglasses and applicant recites sunglasses in three places
in its identification of goods. Furthermore, based on the
evidence made of record by the examining attorney, which
suggests that sunglasses and eyeglasses, eyeglass frames,
eyeglass chains and cases may emanate from a common source,
we find that these goods are related. Thus, on the face of
their respective identifications and evidence of record,
applicant’s goods are identical in part, and otherwise
related, to those in the cited registration.
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Because the goods are identical and/or closely related
and there are no restrictions as to their channels of trade
or classes of purchasers, we must assume that the goods
are, or will be, sold in all the normal channels of trade
to all the usual purchasers for such goods, and that, at
least with respect to the identical goods, sunglasses, the
channels of trade and the purchasers for applicant’s and
registrant’s goods would be the same. See Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000).
The identity in part and otherwise close similarity
between the goods, trade channels and classes of purchasers
are factors that weigh in favor of a finding of likelihood
of confusion.
The coexistence of the cited registration with the
earlier, subsequently cancelled third-party Registration
No. 2467899 for the mark HERITAGE COLLECTION for “eyeglass
frames and sun glasses,” is of limited probative value. On
this record, we do not know the circumstance surrounding
the registration of these marks, or any relationship or
agreements that may exist between the owners thereof.
Further, it is settled that expired or cancelled
registrations are of no probative value. See Action
Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563,
Ex Parte Appeal No. 85395780

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10 USPQ2d 1307, 1309 (Fed. Cir. 1989)(“[A] cancelled
registration does not provide constructive notice of
anything”).
Next, we consider applicant’s evidence of live third-
party registrations for HERITAGE COLLECTION and HERITAGE-
formative marks. It is settled that the registrations are
not evidence of use of the marks shown therein. Thus, they
are not proof that consumers are familiar with such marks
so as to be accustomed to the existence of the same or
similar marks in the marketplace. See Smith Bros. Mfg. Co.
v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462 (CCPA 1973);
and Richardson-Vicks, Inc. v. Franklin Mint Corp., 216 USPQ
989 (TTAB 1982). The Federal Circuit has made it clear
that:
The probative value of third-party trademarks
depends entirely upon their usage. E.g., Scarves
by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d
1167, 1173 (2d Cir. 1976) (“The significance of
third-party trademarks depends wholly upon their
usage. Defendant introduced no evidence that
these trademarks were actually used by third
parties, that they were well promoted or that
they were recognized by consumers.”)… As this
court has previously recognized where the “record
includes no evidence about the extent of [third-
party] uses … [t]he probative value of this
evidence is thus minimal.” Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed.
Cir. 2001) (emphasis added).

Ex Parte Appeal No. 85395780

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Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1689, 73 USPQ2d 1689, 1693 (Fed.
Cir. 2005).
Here, applicant has presented no evidence of use so we
must accord this evidence limited weight. We further note
that the third-party registrations recite a broad range of
goods and services that are unrelated to those identified
in the involved application and cited registration.
Nonetheless, it is proper to consider these types of
registrations in the same manner as dictionary definitions.
In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006)
(“[T]hird-party registrations can be used in the manner of
a dictionary definition to illustrate how a term is
perceived in the trade or industry”). See also In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird
party registrations are of use only if they tend to
demonstrate that a mark or a portion thereof is suggestive
or descriptive of certain goods and hence is entitled to a
narrow scope of protection”). In this case, the third-
party registrations for HERITAGE COLLECTION and other
HERITAGE-formative marks suggests that the term HERITAGE
possesses a suggestive significance that others have
recognized in adopting the term in their marks. We find,
as a result, that the term HERITAGE is not a term with
Ex Parte Appeal No. 85395780

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strong source-identifying significance, and that the cited
registration is accordingly entitled to a narrower scope of
protection.
We turn then to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In comparing the marks, we are
mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); and Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
In this case, we note that applicant’s mark
Ex Parte Appeal No. 85395780

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is similar to the mark HERITAGE 1981 in the cited
registration solely to the extent that both contain the
word HERITAGE as a prominent element thereof. However, the
marks are dissimilar to a significant extent in that
applicant’s mark contains the prominently sized and
arbitrary design of a moose. This design contributes
greatly to the visual impression of applicant’s mark. This
is not a case in which the design portion of applicant’s
mark is an easily overlooked geometric carrier or an
abstract pattern that is much smaller in size than the
wording. We observe that in registrant’s mark the term
HERITAGE is the first and most prominent portion thereof.
However, in applicant’s mark, the term HERITAGE is located
below the prominent moose design, which is equal in size to
the wording HERITAGE COLLECTION and appears to be arbitrary
as applied to the goods. Even if consumers did not
recognize the design as a moose per se, they nonetheless
would be likely to recognize it as the design of an animal
Ex Parte Appeal No. 85395780

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with a large rack of antlers. Thus, when viewed as a
whole, applicant’s mark is notably dissimilar from that of
registrant in appearance.
With regard to the overall impression conveyed by the
marks, we note that the meaning or connotation of a mark
must be determined in relation to the recited goods. See
In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987);
and In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984).
In this case, the wording HERITAGE COLLECTION and HERITAGE
1981 are likely to have similar connotations as applied to
identical or otherwise related goods. However, the
arbitrary moose design does not appear to have any meaning
or connotation as applied thereto, and thus creates an
arbitrary and noticeable addition to the connotation
engendered by applicant’s mark. Taken as a whole, the
marks thus are different in connotation and commercial
impression.
Based upon the foregoing, we find that the
dissimilarities between applicant’s mark and the mark in
the cited registration outweigh the similarities. Thus,
the first du Pont factor regarding the dissimilarity of the
marks favors applicant. Moreover, we find this factor is
determinative and, despite the in-part identity of the
goods, we conclude that the marks are sufficiently
Ex Parte Appeal No. 85395780

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dissimilar that confusion is not likely between applicant’s
mark and the mark in the cited registration. Kellogg Co.
v. Pack’em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991).
Decision: The refusal to register is reversed.

Opinion by Bergsman, Administrative Trademark Judge,
dissenting:
I respectfully dissent because I find that the marks
are similar and, therefore, their use on in part identical
and otherwise closely related products is likely to cause
confusion.
Based on this record, there is insufficient evidence
to support the majority’s finding that the cited
registration is entitled to a narrow scope of protection.
As the majority notes, there is no evidence of third-party
use and none of the third-party registrations are related
to eyewear. Further, because HERITAGE 1981 has been
registered and is not subject to a petition for
cancellation, the registration is entitled to the
presumptions accorded by Section 7(b) of the Trademark Act,
15 U.S.C. § 1057(b) (i.e., prima facie evidence of the
validity of the registered mark and of the registration of
the mark, of the ownership of the mark, and of the owner's
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exclusive right to use the registered mark in commerce on
or in connection with the goods or services specified in
the registration). Thus, the registered mark HERITAGE 1981
must be viewed as suggestive at worst. As indicated above,
the record does not show that the cited mark is so highly
suggestive that its scope of scope of protection or
exclusivity of use should be limited when it is compared
with similar marks on in part or closely related products.
Further, even if I agreed that HERITAGE 1981 is an
inherently weak mark, that would not be fatal to finding
likelihood of confusion because even weak marks are
entitled to protection against confusion. King Candy Co.
v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 109 (CCPA 1974).
In comparing the marks, where, as here, the goods are
in part identical and otherwise closely related, the degree
of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare
Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB
2007).
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In considering applicant’s mark, I see no reason to
depart from the practice of giving greater weight to the
word portion of a mark because the words would be used by
consumers to request the products. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re
Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987).
See also Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565,
218 USPQ 390 (Fed. Cir. 1983).
In view of the foregoing, I find that the dominant
element of both marks is the word “Heritage.” In the
registered mark HERITAGE 1981, “1981” will be considered
the year registrant was established and it has little
source indicating significance. Likewise, the word
“Collection” in applicant’s mark will be considered as the
works of a particular designer and it has little source
indicating significance.2 Thus, consumers will believe that
that applicant’s HERITAGE COLLECTION with the moose design
is a variation of the HERITAGE 1981 eyewear line.

2 Thefreedictionary.com derived from the Random House Hernerman
Webster’s College Dictionary (2010). The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online
dictionaries that exist in printed format or have regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Ex Parte Appeal No. 85395780

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In view of the foregoing, I find that applicant’s
mark HERITAGE COLLECTION and design for “cases for
eyeglasses and sunglasses; cases for spectacles and
sunglasses; chains for spectacles and for sunglasses;
eyewear, namely, sunglasses, eyeglasses and ophthalmic
frames and cases therefor; frames for spectacles and
sunglasses; lenses for sunglasses; spectacles and
sunglasses; sunglass lenses; sunglasses” so resembles
the mark HERITAGE 1981 for “eyewear, namely,
sunglasses” as to be likely to cause confusion.
Therefore, I would affirm the refusal to register.