Fleetwood Enterprises, Inc.

Trademark Trial and Appeal Board

Feb 8, 2008

No. 78579524 (T.T.A.B. Feb. 8, 2008)

Hearing: Mailed:
October 26, 2007 February 8, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fleetwood Enterprises, Inc.
________

Serial No. 78579524
_______

Edward M. Prince of Alston & Bird LLP for Fleetwood
Enterprises, Inc.

Matthew Kline, Senior Attorney, Law Office 106 (Mary I.
Sparrow, Managing Attorney).1
_______

Before Sams, Chief Administrative Trademark Judge, Rogers
and Walsh, Administrative Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Fleetwood Enterprises, Inc. (applicant) has filed an
application to register the mark ROYALE in standard
characters on the Principal Register for goods identified
as “folding camping trailers” in International Class 12.2
The Examining Attorney has finally refused registration

1 A different examining attorney was responsible for this
application prior to the oral argument in the case.
2 Application Serial No. 78579524, filed March 3, 2005, claims a
bona fide intention to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. § 1051(b).

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78579524
2
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
based on a likelihood of confusion with Registration No.
2917194 for the mark ROYAL CARGO in standard characters for
“[t]railers and transportation equipment, namely, stock
trailers, horse trailers, utility trailers, flatdeck
trailers, truck decks, enclosed cargo trailers for the
transportation of snowmobiles, automobiles and other
equipment, and cargo trailers” in International Class 12.
The cited registration issued January 11, 2005. The cited
registration claims first use of the mark anywhere and
first use of the mark in commerce on February 1, 2000 and
includes a disclaimer of “CARGO.”
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs and presented arguments at an
oral hearing. We reverse.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Accordingly, we have considered each of the factors as to
Serial No. 78579524
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which applicant or the Examining Attorney presented
arguments or evidence. In this case, there is no one
factor which is dominant in the likelihood-of-confusion
analysis. Rather, a combination of factors, taken
together, lead us to conclude that there is not a
likelihood of confusion in this case.
The Marks
In discussing the marks, applicant first discusses the
sixth du Pont factor, that is, “the number and nature of
similar marks in use on similar goods,” and, more generally
the strength of the cited mark. In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567. Applicant argues that the
cited mark ROYAL CARGO is weak, and as such, only entitled
to a narrow scope of protection. On the other hand, the
Examining Attorney has argued that applicant has failed to
establish that ROYAL CARGO is weak, and furthermore that
even weak marks are entitled to protection.
In support of its argument that the cited mark is
weak, applicant notes that, in the first Office action in
the case, the Examining Attorney had based the refusal
under Section 2(d) not only on the cited registration for
the ROYAL CARGO mark, but also on two additional
registrations: Registration No. 1562070 for the mark
ROYALE for “motor vehicles, namely, automobiles, engines
Serial No. 78579524
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therefor, and structural parts thereof”; and Registration
No. 2140117 for the mark ROYAL for “truck bodies for on
road vehicles.” Three different parties own the three
registrations cited originally. The Examining Attorney
later withdrew the latter two registrations as bases for
the Section 2(d) refusal. The withdrawal notwithstanding,
applicant argues that these two registrations for ROYAL and
ROYALE for similar goods have coexisted demonstrating that
“ROYAL” is weak and that ROYAL and ROYALE are not
confusingly similar.
Applicant has also provided copies of twenty-six
active registrations for marks which include either ROYAL
or ROYALE for a wide range of goods to show that
ROYAL/ROYALE is weak. These registrations, include, for
example: Registration No. 652140 for the mark ROYAL for
cookies; Registration No. 360030 for the mark ROYALE for
playing cards; Registration No. 1707629 for the mark ROYAL
for sensitized photographic paper; Registration No. 1212386
for the mark ROYALE for toilet paper and paper towels;
Registration No. 979759 for the mark ROYAL for aluminum
foil; Registration No. 1349470 for the mark ROYALE for
sheets, pillow cases, comforters, bedspreads and towels;
and Registration No. 1450432 for ROYAL SOUND for automobile
stereo systems.
Serial No. 78579524
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Applicant has also submitted copies of numerous
registrations for ROYAL and ROYALE which have either
expired or been canceled. Dead registrations, however,
have little or no probative value. In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1048 (TTAB 2002).
With its request for reconsideration, applicant also
provided listings of results from searches it conducted of
USPTO application and registration records showing 189
records for active applications and registrations for marks
which include ROYALE and 1,787 active applications and
registrations for marks which include ROYAL.
As a general rule, the Board will not consider a mere
listing of applications or registrations, and the Board
will not take judicial notice of USPTO records. In re
Duofold Inc., 184 USPQ 638 (TTAB 1974). Applicants must
submit copies of USPTO paper or electronic records. In
this case, however, the Examining Attorney failed to advise
applicant of these requirements when responding to the
request for reconsideration. Under the circumstances
present here, we will consider the information applicant
provided because the Examining Attorney failed to advise
applicant in a timely manner of the requirements related to
making USPTO records properly of record. See In re Hayes,
62 USPQ2d 1443, 1443 n.3 (TTAB 2002). Nonetheless, these
Serial No. 78579524
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listings have limited probative value because the listings
only show application and/or registration numbers, the
marks and status (live or dead). Among other things, the
listings do not indicate the goods and services.
Furthermore, even if copies of the records related to the
pending applications had been submitted, the applications
serve no evidentiary purpose other than to show that they
were filed. In re Phillips-Van Heusen Corp., 63 USPQ2d
1047, 1049 n.4 (TTAB 2002); Glamorene Products Corp. v.
Earl Grissmer Co., Inc., 203 USPQ 1090, 1092 n. 5. (TTAB
1979).
Copies of third-party registrations may serve to show,
in the nature of a dictionary definition, how language is
used. Specialty Brands, Inc. v. Coffee Bean Distributors
Inc., 748 F.2d 669, 223 USPQ 1281, 1285-86 (Fed. Cir.
1984). Thus, third-party registrations may be relevant to
show that a term is descriptive or suggestive such that the
public will look to other elements to distinguish the
marks. See Tektronix, Inc. v. Daktronics, Inc., 53 F.2d
915, 189 USPQ 693 (CCPA 1976).
In this case, we have the benefit of both dictionary
evidence and third-party registrations. We looked to the
dictionary to see whether ROYALE or ROYAL has a suggestive
meaning in this context. Merriam-Webster’s Collegiate
Serial No. 78579524
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Dictionary, (Eleventh ed. 2003) defines “royal,” in
relelvant part, as follows: “3:a of superior size,
magnitude or quality.”3 Cassell’s French-English English-
French Dictionary (Fifth revised ed. 1951) identifies
“royale” as the feminine form of the adjective “royal” with
the English meaning of “royal.”4 Therefore, for purposes of
our consideration of the meaning and strength of the marks
we treat “ROYALE” and “ROYAL” as equivalent. In re
Thomas, 79 USPQ2d 1021 (TTAB 2006).
In this case, we have a dictionary definition which
shows that ROYAL generally suggests quality. We also have
in the record the third-party registrations, cited in the
first Office action, for ROYAL and ROYALE marks for goods
in the same general category as those at issue here, such
as motor vehicles and motor vehicle parts. The dictionary
definitions and third-party registrations indicate a
suggestive meaning for the terms ROYAL and ROYALE for those
goods. In addition, we have in the record third-party
registrations for ROYAL and ROYALE for a wide range of
other goods generally confirming the suggestive meaning of
the marks at issue. The Murray Corp. of America v. Red

3 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
4 Id.
Serial No. 78579524
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Spot Paint and Varnish Co., Inc., 280 F.2d 158, 126 USPQ
390, 392 (CCPA 1960) (EASY held suggestive as applied to
paint in view of third-party registrations and excerpts
from a trademark directory). Accordingly, we conclude,
based on this record, that ROYAL/ROYALE is somewhat
suggestive, and as such, entitled to a more limited scope
of protection than otherwise might apply.
We now turn to a comparison of the marks themselves.
In comparing the marks we must consider the appearance,
sound, connotation and commercial impression of the marks
at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
Applicant argues both that the distinction in
spelling, ROYALE versus ROYAL, and the inclusion of CARGO
in the cited mark serves to distinguish the marks. The
Examining Attorney, on the other hand, argues that the
difference in spelling is inconsequential and that the
presence of the disclaimed term “CARGO” in the cited mark
does nothing to distinguish the marks.
Applicant attempts to use third-party registrations
for both ROYAL and ROYALE marks owned by different parties
for similar goods to show that the USPTO previously
considered the two words/spellings distinguishable. As we
Serial No. 78579524
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discussed above, applicant has noted the two coexisting
registrations originally cited by the Examining Attorney
for ROYAL and ROYALE marks, both for motor vehicle parts.
Among the further examples, applicant points to are active
Registration No. 652140 for the mark ROYAL for “cookies”
and canceled Registration No. 1321039 for the mark ROYALE
also for “cookies” which coexisted for a time. Applicant
provided seven such examples of coexisting registrations.
We find this evidence and these arguments generally
unpersuasive. We must decide each case on the record
before us; decisions on prior applications do not dictate a
particular decision here. In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Furthermore,
to the extent that these examples rely on canceled or
expired registrations, and nearly all of them do, the
records have little or no probative value. In re Phillips-
Van Heusen Corp., 63 USPQ2d at 1048.
Nonetheless, we conclude that the difference in
spelling between ROYALE and ROYAL, is of some importance in
distinguishing the marks of the parties. The difference in
spelling results in a minor difference in appearance and a
difference in pronunciation which is subtle but
significant. There is also a subtle difference in
Serial No. 78579524
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connotation and commercial impression between the spellings
-- ROYALE connotes something “continental” or rare.
There is one additional distinction between the marks,
namely, the inclusion of “CARGO” in the cited mark. In our
comparison, we must view the marks in their entireties; in
that comparison we recognize that disclaimed, descriptive
terms are generally less important. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
On the other hand, we cannot ignore a disclaimed term
entirely and, in a case such as this, where the only other
element in the cited mark is both weak and somewhat
different, the descriptive term may play a significant role
in distinguishing the marks overall. The Murray Corp. of
America v. Red Spot Paint and Varnish Co., Inc., 126 USPQ
at 392 (EASY for touch-up enamel supplied in self-spraying
containers for application to domestic laundry and other
appliances held not likely to be confused with EASYTINT for
white paint particularly constructed to be mixed with
various colors as desried). See also Knight Textile Corp.
v. Jones Investment Co., 75 USPQ2d 1313 (TTAB 2005);
Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477
(TTAB 1987); Kayser-Roth Corp. v. Morris & Co., Inc., 164
USPQ 153 (TTAB 1969).
Serial No. 78579524
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It is the combination of the differences in the
pronunciation, connotation and commercial impression of
ROYALE versus ROYAL and the presence of CARGO in the cited
mark, taken together, which lead us to conclude that the
marks are different. Accordingly, in this case, we
conclude that, when the marks are viewed in their
entireties, they are more dissimilar than similar,
particularly when we consider the marks along with the
other factors discussed below.
The Goods and Channels of Trade
The goods in the application and the cited
registration need not be identical to find a likelihood of
confusion under Section 2(d) of the Trademark Act. They
need only be related in such a way that the circumstances
surrounding their marketing would result in relevant
consumers mistakenly believing that the services originate
from the same source. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). See also
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Applicant identifies its goods as “folding camping
trailers.” The goods identified in the cited registration
are “[t]railers and transportation equipment, namely, stock
trailers, horse trailers, utility trailers, flatdeck
Serial No. 78579524
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trailers, truck decks, enclosed cargo trailers for the
transportation of snowmobiles, automobiles and other
equipment, and cargo trailers.” The Examining Attorney
states, “The registrant offers a variety of trailers, which
may or may not include camping trailers.” Examining
Attorney’s Brief at 7. Applicant disagrees with the
Examining Attorney’s assessment of the scope of the goods
identified in the cited registration. Applicant argues
that its goods and the goods identified in the cited
registration are different, in particular, that they are
used for different purposes. Applicant explains, “a
camping trailer includes a fold-up tent in which someone
camps or sleeps. … There is no reference whatsoever to
camping trailers in the registrant’s goods. … A camping
trailer is not considered transportation equipment in the
sense of carrying cargo. Applicant’s goods do not
encompass registrant’s goods, nor do registrant’s goods
encompass applicant’s goods.” Applicant’s Reply Brief at
4-5.
Applicant also challenges the Examining Attorney’s
assertions that the respective goods are marketed in the
same manner, that they would appeal to the same consumers,
and that they are both likely to be seen in magazine
advertisements, radio and print advertisements. Applicant
Serial No. 78579524
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argues, we think correctly, that the Examining Attorney
offers these assertions without support.
To support the position that the goods are related,
the Examining Attorney provided copies of third-party
registrations which the Examining Attorney asserts include
applicant’s goods as well as goods identified in the cited
registration. In the brief the Examining Attorney directs
our attention to six of these registrations:
Registration No. 1563256 for “recreational
vehicles namely, camping trailers and cargo
trailers”;

Registration No. 2927960 for “trailers, namely,
bulk hauling trailers, camping trailers, cargo
trailers, semi-trailers, equine trailers,
livestock trailers, motorsports trailers, and
automobile trailers”;

Registration No. 2793378 for “motor vehicles,
namely; automobiles and structural parts
therefore (sic); axle-brake assemblies for
camping trailers, cargo trailers, refrigerated
trailers, travel trailers, low-bed trailers and
trucks”;

Registration No. 2369914 “recreational vehicles,
namely, campers, travel trailers, camping
trailers, motor homes, mini motor homes; cargo
trailers; truck caps; trailer hitches; and
structural parts for all of the above”;

Registration No. 2361764 for “recreational
vehicles, namely, campers, travel trailers,
camping trailers, motor homes; mini motor homes;
cargo trailers; truck caps; trailer hitches; and
structural parts for all of the above”; and

Registration No. 2374643 for “recreational
vehicles, namely, campers, travel trailers,
Serial No. 78579524
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camping trailers, motor homes, mini motor homes;
cargo trailers; truck caps; trailer hitches;
structural parts for all the above.”

We note that the latter three registrations are for
related marks owned by the same party. Registration No.
2793378 includes “axle-brake assemblies for camping
trailers…” but not camping trailers or “folding camping
trailers.”
First, we concur with applicant’s assertion that the
goods identified in the cited registration do not include
“folding camping trailers” as the Examining Attorney
suggests they may. We see no basis for this construction
of the identification. Accordingly, we conclude that the
goods of applicant and registrant, as identified, are not
the same or overlapping.
Furthermore, under the particular circumstances of
this case, without further evidence, we cannot and do not
assume that the respective goods move in the same trade
channels. Here again, we concur with applicant’s assertion
that the goods of applicant and registrant, as identified,
differ in purpose. Furthermore, the difference in purpose,
namely, the use of applicant’s goods as shelter while
camping, as opposed to the use of the goods in the cited
registration to haul cargo, may very well mean that the
Serial No. 78579524
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goods are marketed through distinct channels of trade.
Accordingly, in this case, where we find that the goods
identified in the application and the cited registration
differ signficantly in their nature and purpose, we decline
to presume that the goods would move in the same channels
of trade. Cf. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In sum, based on this record we conclude that there
are differences between applicant’s goods and the goods
identified in the cited registration, and more importantly,
likely differnces in the channels of trade for the goods.
The Purchasing Conditions
Applicant also argues that its goods are quite
expensive and that the purchase of the goods will not be
casually undertaken. The Examining Attorney disagrees and
argues further that even sophisticated purchasers may be
subject to trademark confusion.
It is obvious that, due to their cost, the trailers at
issue here of both general types are not subject to
purchase on impulse, but rather that some degree of care
would attend such a purchase. While the purchasers may
include the general public, we conclude that the nature of
the purchase, along with the other factors we have
Serial No. 78579524
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discussed here, would serve to diminish any likelihood of
confusion. Accordingly, we conclude that the conditions of
sale in this case tend to support the conclusion that there
would not be a likelihood of confusion.
Conclusion
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there
would not be a likelihood of confusion between applicant’s
ROYALE mark used in connection with “folding camping
trailers” and the registered mark ROYAL CARGO used in
connection with “[t]railers and transportation equipment,
namely, stock trailers, horse trailers, utility trailers,
flatdeck trailers, truck decks, enclosed cargo trailers for
the transportation of snowmobiles, automobiles and other
equipment, and cargo trailers.” We conclude so based on
the cumulative effect of differences in the marks,
differences in the goods and channels of trade for the
goods and the conditions of purchase.
Decision: We reverse the refusal under Section 2(d).