G-U Hardware, Inc.

Trademark Trial and Appeal Board

Jan 29, 2003

No. 76051359 (T.T.A.B. Jan. 29, 2003)

Paper No. 10
TJQ
Mailed:1/29/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re G-U Hardware, Inc.
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Serial No. 76/051,359
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James C. Wray, Esq. for applicant.
Sean W. Dwyer, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______
Before Cissel, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by G-U Hardware, Inc. to
register the mark LIFT-SLIDE for “hardware for doors and
windows, carriages, rollers, locking bolts, plugs, bottom
guides, cover plates, bumpers, sealing pieces, handles,
pulls, plates, stops, lift locking gear, locks, connecting
bars, gaskets and end caps.”1
The Trademark Examining Attorney has refused
1 Application Serial No. 76/051,359, filed June 18, 2000,
alleging first use anywhere and first use in commerce in 1987.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/051,359
2
registration on three bases: (i) that applicant failed to
comply with a requirement to amend the identification of
goods; (ii) that applicant’s mark, when applied to
applicant’s goods, is merely descriptive thereof under
Section 2(e)(1) of the Trademark Act; and (iii) that
applicant’s mark, when applied to applicant’s goods, so
resembles a previously registered mark as to be likely to
cause confusion under Section 2(d) of the Act.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
Identification of Goods
The identification of goods, as noted above, reads
“hardware for doors and windows, carriages, rollers,
locking bolts, plugs, bottom guides, cover plates, bumpers,
sealing pieces, handles, pulls, plates, stops, lift locking
gear, locks, connecting bars, gaskets and end caps.”
The Examining Attorney suggested an amended
identification, but applicant declined to adopt it,
maintaining that the identification is definite. The
Examining Attorney asserts that the term “hardware” is
indefinite, that the goods, as identified, can be
classified in multiple classes, and that applicant must
Ser No. 76/051,359
3
clarify the identification by stating whether the
“hardware” is “metal” or “nonmetal.”
Applicant maintains that the identification of goods
is definite as written, and that the Examining Attorney’s
suggestions are unnecessary.
Section 1402.03 of the Trademark Manual of Examining
Procedure (TMEP) states that “[a] term that clearly
includes particular items that are classified in more than
one class is not acceptable.” More specific to the current
appeal is Section 1402.05(b) of the TMEP which provides
that “[i]f an identification of goods is specific, but the
goods could be classified in more than one class depending
on the material composition, then the material composition
must be indicated in the identification of goods.” In the
present case, applicant’s hardware, if made of metal, is
classified in International Class 6, whereas if the
hardware were nonmetal, the goods would be classified in
International Class 20.
The identification of goods is indefinite in the
absence of an indication whether the “hardware” is “metal”
or “nonmetal.” Accordingly, the requirement for a more
definite identification of goods is affirmed.
Ser No. 76/051,359
4
Mere Descriptiveness
The Examining Attorney maintains that the term LIFT-
SLIDE is merely descriptive of a feature, function or
purpose of the goods, namely that applicant’s hardware is
used to lift and slide doors and windows. In support of
the refusal, the Examining Attorney submitted dictionary
definitions of the words “lift” and “slide”; evidence
obtained from various websites on the Internet; and
excerpts retrieved from the NEXIS database.
Applicant contends that the term LIFT-SLIDE “is an
unusual combination of words” and that the words “are
verbs, not nouns or adjectives, which are commonly used as
trademarks.” (brief, p. 5) Applicant also argues that the
Examining Attorney has improperly dissected the mark in
considering mere descriptiveness and that, when properly
considered as a whole, the mark is just suggestive.
Applicant asserts that the record falls short of
establishing mere descriptiveness, and that the record is
devoid of any evidence showing that others in the field
have used or would need to use the term LIFT-SLIDE to
describe their similar goods.
It is well settled that a term is considered to be
merely descriptive of goods, within the meaning of Section
2(e)(1) of the Trademark Act, if it immediately describes
Ser No. 76/051,359
5
an ingredient, quality, characteristic or feature thereof
or if it directly conveys information regarding the nature,
function, purpose, use or intended use of the goods. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term describe all
of the properties or functions of the goods in order for it
to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant
attribute or feature about them. Moreover, whether a term
is merely descriptive is determined not in the abstract,
but in relation to the goods for which registration is
sought. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
The term “lift” is defined as “to raise” and “slide”
as “to glide; to move over a surface while maintaining
smooth, continuous contact.” The American Heritage
Dictionary of the English Language (3rd ed. 1992).
A review of applicant’s literature reveals the nature
of applicant’s hardware which is used in connection with
“lift-sliding doors.” According to the literature, the
doors are “based on the effective and successful principle
of lift, slide and lower.” The literature goes on to state
that the technology is “based on the successful lift-
Ser No. 76/051,359
6
sliding systems with lifting, tilting, sliding, lowering,
sealing and locking functions.”
Also of record are excerpts obtained from various
websites on the Internet. The websites include references
to “lift-slide doors” and “lift & slide door systems,” also
indicating that “[o]ne single operating handle activates a
special hardware system that first ‘lifts’ the sliding door
from a weather tight position[,] then ‘slides’ with ease on
rollers and tracks at the head and sill.” One excerpt
states that the “hardware lifts the door panel off the
weather stripping and allows it to roll freely.” Another
excerpt states that “[t]hese sliding doors also use the
lift/slide operating system from Europe.”
We find that, when used in connection with applicant’s
“hardware for doors and windows, carriages, rollers,
locking bolts, plugs, bottom guides, cover plates, bumpers,
sealing pieces, handles, pulls, plates, stops, lift locking
gear, locks, connecting bars, gaskets and end caps,” LIFT-
SLIDE immediately describes, without conjecture or
speculation, a significant characteristic or feature of the
goods, namely, that they are used in connection with lift
and slide door and window systems. As shown by applicant’s
literature, the goods enable a user to lift and slide large
doors and windows easily. To purchasers of applicant’s
Ser No. 76/051,359
7
goods, there is nothing in the term LIFT-SLIDE which, in
the context of applicant’s specific goods, would be
ambiguous, incongruous or susceptible to any other
plausible meaning.
In view of the above, the term LIFT-SLIDE, when
applied to applicant’s goods, is merely descriptive thereof
under Section 2(e)(1) of the Act, so the refusal to
register on this ground must be affirmed.
Likelihood of Confusion
Refusal under Section 2(d) of the Act was made on the
basis of the previously registered mark TILT ’N SLIDE for
“window assemblies, window sashes, window sash supporting
hardware, namely, pivots, brackets, interconnecting
members, carriers with or without rollers, handles, pivot
shoes, sash retainers, sash clips, locks and latches, patio
door assemblies, patio doors, patio door supporting
hardware, namely, pivots, brackets, interconnecting
members, carriers with or without rollers, handles, pivot
shoes, sash retainers, sash clips, locks and latches.”2
The Examining Attorney contends that the marks LIFT-
SLIDE and TILT ’N SLIDE are similar in overall commercial
impression, both marks’ being formed by a descriptive word
2 Registration No. 2,118,741, issued December 9, 1997 pursuant to
the provisions of Section 2(f) of the Act.
Ser No. 76/051,359
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followed by the same term “SLIDE.” The Examining Attorney
also points out that applicant’s literature refers to
“Lift-Tilt-Sliding Doors.” Also weighing against
registration, according to the Examining Attorney, is that
the goods are related and that the goods are presumed to
travel in similar channels of trade to similar classes of
purchasers.
Applicant, in urging that the Section 2(d) refusal be
reversed, argues that the marks are dissimilar in their
entireties, that the goods are dissimilar and move in
distinct trade channels, and that purchasers are careful
and sophisticated. Applicant also points to the absence of
any instances of actual confusion despite several years of
contemporaneous use.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Ser No. 76/051,359
9
Turning first to compare the goods, we start with the
premise that they need not be identical or even competitive
to support a holding of likelihood of confusion. It is
sufficient that the goods are related or that conditions
surrounding their marketing are such that they are
encountered by the same persons who, because of the
relatedness of the goods and the similarities between the
marks, would believe mistakenly that the goods originate
from or are in some way associated with the same producer.
In re International Telephone and Telegraph Corp., 197 USPQ
910 (TTAB 1978).
In this case, based on the identifications of goods in
the cited registration and involved application, the goods
are, at least in part, legally identical, or otherwise
substantially similar. In the absence of any limitations
in the identifications, it also is presumed that the goods
move in the same channels of trade and are purchased by the
same classes of purchasers. In re Elbaum, 211 USPQ 639
(TTAB 1981). Notwithstanding applicant’s assertions on
this point, the record is devoid of any evidence to suggest
the contrary.
Accordingly, we turn to the question of whether the
respective marks are sufficiently similar such that their
Ser No. 76/051,359
10
use in connection with the goods would be likely to cause
confusion.
The marks must be considered in their entireties and,
in this case, overall, the marks LIFT-SLIDE and TILT ’N
SLIDE are not confusingly similar in sound, appearance and
meaning. The only common element of the marks is the term
“slide” which is merely descriptive when applied to the
goods in the involved application and registration.3
Because marks must be considered in their entireties, the
mere presence of a common descriptive or highly suggestive
portion is usually insufficient to support a finding of
likelihood of confusion. See: In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); and
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976). We find that to be the case here,
especially given that the other terms in the marks, namely,
“lift” and “tilt,” are different in sound and appearance,
and the terms do not have the same meaning, either alone or
in combination with the term “slide.” See: General Mills
Inc. v. Health Valley Foods, 24 USPQ2d 1270 (TTAB 1992).
In view of the differences between the marks,
3 It is noted that the cited registration issued pursuant to
Section 2(f) of the Act. See: In re Cabot Corp., 15 USPQ2d 1224
(TTAB 1990)[registration under Section 2(f) is tantamount to
admission that the term lacks inherent distinctiveness].
Ser No. 76/051,359
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purchasers in the marketplace are not likely to be
confused, so the refusal to register under Section 2(d)
must be reversed.
Decision
The refusal to register based on likelihood of
confusion under Section 2(d) is reversed. The refusal to
register because applicant failed to comply with the
requirement for a more definite identification of goods is
affirmed. The refusal to register based on mere
descriptiveness under Section 2(e)(1) is affirmed.