Florida Appliances, Inc.

Trademark Trial and Appeal Board

May 15, 2015

No. 85918672 (T.T.A.B. May. 15, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Florida Appliances, Inc.
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Serial No. 85918672
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Michael D. Stewart of Stewart Law Office
for Florida Appliances, Inc.

Kathleen L. Kolacz, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
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Before Wellington, Ritchie, and Masiello,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Florida Appliances, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark shown below on “Air conditioners; Bathroom exhaust fans;
Ceiling fans; Cooling fan systems for wall ovens; Electric fans; Electric fans for
personal use; Electric freezers; Electric refrigerators; Electric window fans;
Freezers; Portable electric fans in International Class 11.1

1 Application Serial No. 85918672 was filed on April 30, 2013, based on an intent to use the
mark in commerce, under Section 1(b) of the Trademark Act. The mark is described in the
application as having a “faceted diamond” and “a stylized wave design that starts from the
left and curls upward on the right,” with “two drops splashing up” (below the repeated term
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The application contains a disclaimer of the exclusive right to use of the
(repeated) word COOL.
The Trademark Examining Attorney has refused registration of Applicant’s
mark on the ground of a likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), in view of the registered mark:

for “air conditioning units” in International Class 11.2 The registration contains a
disclaimer of the exclusive right to use of the word AIR.3

“Emerald Cool” in smaller lettering). The shades of blue and beige are claimed as features
of the mark.
2 Registration No. 3113826 issued July 11, 2006. The mark is described as consisting of “the
term ‘Emerald Aire’ with an arc located above the term.”
We also note that, in the final Office Action, the Examining Attorney made a requirement
for properly worded disclaimer. Specifically, the Examining Attorney requested a second
disclaimer for the term COOL since it appears twice in the proposed mark. In its appeal
brief, Applicant offered a disclaimer, again, of the term COOL, and the Examining Attorney
interpreted this as “an additional disclaimer of ‘COOL’” and did not further address the
disclaimer requirement in her brief. Ex. Attorney Brief at (unnumbered p. 3). We therefore
construe the likelihood of confusion refusal as the sole issue on appeal.
3 If a mark comprises a word that is misspelled but nonetheless must be disclaimed, the
USPTO requires a disclaimer of the word in the correct spelling. TMEP § 1213.08(c)
(January 2015 edition).
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Applicant has appealed and the refusal has been briefed by Applicant and the
Examining Attorney.
For the following reasons, we affirm the likelihood of confusion refusal.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, 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). See also, In re Dixie Restaurants Inc., 105 F.3d 1405,
41 USPQ2d 1531 (Fed. Cir. 1997).
Similarity of the Goods, Trade Channels and Classes of Purchasers
We turn first to the du Pont factor involving the relatedness of goods. It is
settled that in making our determination, we must look to the goods as identified in
the application vis-à-vis those recited in the cited registration. See Octocom Sys.,
Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Here, we quickly discern that the respective goods are, in part, identical
inasmuch as Applicant’s identification includes “air conditioners” and the goods in
the registration are identified as “air conditioning units.” Insofar as these particular
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identical goods are concerned, we must presume that the channels of trade and
classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); see also In re Yawata Iron
& Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
The Examining Attorney has also submitted evidence showing that many of
Applicant’s other goods, e.g., electric fans, freezers, and refrigerators, are related to
Registrant’s air conditioning units. In particular, the record demonstrates that
these goods are offered for sale in the same retail home appliance establishments,
e.g., Home Depot and Best Buy, and consumers would not be unaccustomed to
seeing these goods offered for sale under the same mark. In this regard, we note the
Examining Attorney submitted:
• Copies of use-based, third-party registrations, each covering air conditioners
as well as electric fans or refrigerators or freezers, thus suggesting that these
are the type of goods which may emanate from a single source. In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff'd, 864 F.2d
149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).4

• Printouts from numerous third-party retail and manufacturer websites (e.g.,
Best Buy, General Electric, Kenmore, Home Depot, AJ Madison, LG, Amana)

4 Attached to Office Action dated August 27, 2013.
Serial No. 85918672
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showing that they either manufacture or advertise air conditioners as well as
other goods, such as electric fans, freezers, etc., all under a single mark.5
In sum, Applicant’s “air conditioners” are identical to Registrant’s “air
conditioning units,” and we therefore presume these goods will be offered to the
same classes of purchasers in the same trade channels. With respect to Applicant’s
other goods, it has been shown that they are related to registrant’s air conditioning
units and may also be found in the same trade channels.
Accordingly, the factors involving the similarity of the goods, trade channels and
classes of purchasers weigh in favor of finding a likelihood of confusion and
especially so with respect to the identical goods.
Impulse versus Sophisticated Purchasing
Applicant argues that “[i]n the air conditioning industry consumers would
certainly make careful inquiry into the quality and cost of the product they are
buying.” Brief, p. 5. This assertion is not supported by evidence. Indeed, the
materials submitted by the Examining Attorney indicate that certain air
conditioners, such as window air-conditioning units may be purchased at home
appliance retail stores by the general public and are not especially expensive. We
therefore find that consumers will exercise only a normal amount of care and,
accordingly, this factor remains neutral.
Similarity of the Marks

5 Attached to Office Action dated August 27, 2013 (printouts from www.bestbuy.com,
www.ge.com, www.kenmore.com, www.homedepot.com, and www.AJMadison.com) and
Office Action April 9, 2014 (printouts from www.frigidaire.com, www.amana.com,
www.whirlpool.com, and www.lg.com).
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We now compare the two marks in their entireties and, in doing so, look to their
appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). We keep in mind that the test is not whether the marks
can be distinguished when subjected to a side-by-side comparison; “[i]nstead, it is
the similarity of the general overall commercial impression engendered by the
marks which must determine, due to the fallibility of memory and the consequent
lack of perfect recall, whether confusion as to source or sponsorship is likely.”
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991); see
also, Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012). Finally, while we consider the respective marks in their
entireties, as we must, it is entirely permissible, and often appropriate, to focus on a
composite mark’s dominant term. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on consideration of the marks in their
entireties.”).
As to Applicant’s mark, EMERALD is the initial element and appears
prominently at the apex, above the wave and diamond design. 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”). Given that one of the primary purposes of Applicant’s goods is to
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cool or provide refrigeration, the additional word in the mark, COOL, has less
source-identifying importance and plays less of a role in distinguishing the mark in
the context of such goods. Consumers are more likely to focus on the EMERALD
term for purposes of the mark’s overall commercial impression. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In
re National Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court
has noted that the descriptive component of a mark may be given little weight in
reaching a conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 105
F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants,
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less
significant in creating the mark's commercial impression”). With respect to the
diamond and curling wave design elements of Applicant’s mark, these too have less
importance for purposes of creating the mark’s overall commercial impression. Not
only do these elements appear at the bottom of Applicant’s mark in a less
conspicuous manner, but as design portions in a word and design composite mark,
they are less likely to be impressed in consumers’ memories than the wording. See,
e.g., Viterra, 101 USPQ2d at 1911; In re Dakin's Miniatures, Inc., 59 USPQ2d 1593,
1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ
198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261, 1267-68
(TTAB 2011). We further note that EMERALD COOL is repeated at the bottom of
the mark, alongside these design elements, thus reinforcing the literal portion.
Ultimately, it is the term EMERALD that dominates Applicant’s mark and plays
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the biggest role in creating the mark’s overall commercial impression. Consumers
are more likely to recall this when attempting to recall the mark and for purposes of
distinguishing it from other marks.
As to the registered mark, the term EMERALD once again dominates. The
additional term AIRE is merely a misspelling of the descriptive word “air” and has
thus been disclaimed. In the context of air conditioners, the word “air” or its
misspelling does very little to distinguish this mark or create a unique commercial
impression. Likewise, the arc design cannot be verbalized and visually appears as
little more than a stylized border wrapping the literal portion.
With the above in mind, we find the two marks extremely similar given that the
identical term, EMERALD, is the primary and dominant element in each mark. The
marks will sound similar given the shared first term. The differences in the marks,
namely the word COOL in Applicant’s mark, the word AIRE in the registered mark,
and the marks’ respective design elements, are of lesser significance in
distinguishing the two marks. Rather, as explained, consumers familiar with either
mark are likely to retain the term EMERALD in their minds and, upon
encountering the other mark with the same dominant term, will be influenced by
this similarity.
Accordingly, this du Pont factor weighs in favor of finding a likelihood of
confusion.
Strength or Weakness of the Shared Term EMERALD
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The word “emerald” has not been shown to be conceptually weak or to possess
any special meaning in the context of the involved goods. Specifically, although
“emerald” is a type of gem as well as a shade of green, neither of these meanings or
any other recognized meaning of this term has significance in connection with air
conditioners or any of the other goods involved in this proceeding. As a result, we
find the term arbitrary and strong.
Applicant relies on printouts showing the results of Google Internet searches for
the wording “emerald air conditioning” and “emerald heating” to support its
contention that “there are many references to EMERALD in the air conditioning
industry that all appear to be peacefully coexisting” and that “companies are
revealed, using the EMERALD mark for heating and air conditioning services.”
Brief at p. 3.6 Applicant also points to a now-cancelled registration for the mark
EMERALD AIR for, inter alia, filters for air conditioning units.
The materials submitted by Applicant fail to show that EMERALD is weak or
diluted by third-party uses in the field of air conditioners or any of the other goods
relevant in this proceeding. As the Examining Attorney pointed out, the Google
search results were submitted only in the abstract listing format and without
additional context. The printouts thus have little probative value. As no actual web
pages of particular companies are provided, this evidence does not show the actual
manner in which any marks containing EMERALD are used. It is also unclear how
many different entities are actually being listed and whether, perhaps, any of the

6 Printouts attached to Applicant’s February 18, 2014 response to an Office Action.
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listed entities are actually references to Applicant or Registrant. Although there is
some language in the list making reference to heating, air-conditioning and
ventilation (HVAC) services, there is little, if any, reference to the sale or
manufacture of air-conditioners or any of the other involved goods. As to the
cancelled registration for the EMERALD AIR mark, this has no probative value
because it is not proof that the mark was ever actually used in commerce. In sum,
the record falls far short of a showing that the term EMERALD is diluted by third-
party use.
Applicant also asserts that “[o]verly broad protection should not be granted for a
color to the exclusion of others who wish to utilize the name of a color in their
marks.” Brief, p. 3. In support, Applicant points to several third-party registrations
for marks containing the term PINK for clothing. However, whether the term PINK
is diluted by third-party use in the context of clothing is irrelevant to our decision in
this matter. Furthermore, there is no rule that a term is accorded any less
protection merely because it identifies a color or, as in this case, describes a color
shade. On this record, we find that the shared term EMERALD is arbitrary and
strong in the context of the involved goods.
Conclusion
Because Applicant’s EMERALD COOL (stylized with designs) mark is similar to
Registrant’s EMERALD AIRE (stylized with designs) mark, its concurrent use on
identical goods, namely, air conditioners, and the other related goods is likely to
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cause confusion as the source of these goods, given they will be offered in the same
or similar trade channels and sold to the general public.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.