Healthier Choice Flooring, Inc.

Trademark Trial and Appeal Board

Feb 12, 2008

No. 78682683 (T.T.A.B. Feb. 12, 2008)

February 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Healthier Choice Flooring, LLC
___________

Serial No. 78682683
___________

Harry B. Ray of Husch & Eppenberger, LLC for applicant Healthier
Choice Flooring, Inc.

Aisha Y. Salem, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
____________

Before Grendel, Drost and Mermelstein, Administrative Trademark
Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Healthier Choice Flooring, LLC has filed an application to
register the mark SOUND SOLUTION (in standard characters) on the
Principal Register for
Sound absorbing flooring underlayment made of
polyurethane foam and polyurethane foam with attached
polyethylene film, sold only through distributors and
retailers who specialize in floor covering products and
who do not distribute or sell at retail acoustical
ceiling and wall tiles for use in the building
industry,

in International Class 17 (as amended).1
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.

1 Serial No. 78682683, filed August 6, 2005, based on use (first use
and first use in commerce as of February 5, 2003), and upon a foreign
registration pursuant to Trademark Act § 44(e).
THIS OPINION
IS NOT A PRECEDENT
OF
THE TTAB
Serial No. 78682683

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§ 1052(d), on the ground that applicant’s mark so resembles the
mark SOUND SOLUTIONS, previously registered for “acoustical
ceiling and wall tiles for use in the building industry”2 that,
if used on or in connection with applicant’s goods, it would be
likely to cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the examining
attorney have filed briefs. We affirm the refusal to register.
Applicable Law
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 likelihood of confusion issue. See In
re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689
(Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

2 Registration No. 1215822 (“sound” disclaimed), issued November 9,
1982, currently owned by Sound Solutions Canada, Inc. Trademark Act
§§ 8 & 9 affidavits accepted, Trademark Act § 15 affidavit
acknowledged.
Serial No. 78682683

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1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases cited
therein.
Evidence
Examining Attorney’s Evidence
The examining attorney submitted the following evidence in
support of the refusal to register:
1. Three third-party registrations submitted to show a
relationship between the goods recited in the subject application
and those in the cited registration.
2. Excerpts from eleven web sites, showing the advertising
and sale of acoustical underlayment on the one hand and acoustic
ceiling or wall tiles on the other.
Applicant’s Evidence
Applicant submitted the following evidence in support of
registration:
1. The declarations of applicant’s President, Craig
Poteet, signed August 18, 2006, and February 13, 2007. Mr.
Poteet avers in essence that
(a) applicant “has used the trademark SOUND SOLUTION …
to identify its flooring underlayment for over four
years”;
(b) that he has been employed in the floor covering
industry for 5 years;
(c) that to his knowledge “there is no significant
overlap in the marketplace between the sale and
distribution of flooring underlayment and the sale and
distribution of wall and ceiling products”;
Serial No. 78682683

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(d) that “[f]looring underlayment is not typically sold
through the same channels of distribution as ceiling
and wall products. Generally, flooring underlayment is
sold by manufacturers to wholesale floor covering
distributors, who in turn sell the flooring
underlayment to floor covering retailers. Floor
covering distributors and retailers are usually
specialized and sell only floor covering products”;
(e) that “floor covering retailers do not sell any
manner of wall or ceiling products”;
(f) that applicant’s products are expensive and
purchasers are sophisticated;
(g) that despite four years of the parties’ concurrent
use of their marks on the respective goods, he has not
seen any instances of actual confusion.

2. The declarations of eight individuals in the flooring
industry, including consultants, the executive director of the
American Floorcovering Alliance, and several distributors of
floor covering products. These third-party declarations
generally track and support Mr. Poteet’s declaration.
3. A TESS search result page for the search “live[ld] and
floor[gs] not ceiling[gs] not wall[gs].” This result page
indicates that the search resulted in 8,335 “hits,” and further
displays a listing of the first 100 marks (literal portions only)
and the associated application and registration number (if any).
4. Copies of 20 registrations from the search in item #3.
5. A TESS search result page for the search “live[ld] and
(wall[gs] or ceiling[gs]) not floor[gs].” This result page
indicates that the search resulted in 14,218 “hits,” and again
lists the first 100 marks and application or registration
numbers.
Serial No. 78682683

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6. The full TESS print-out of twenty registrations from
the search in item #5.
7. Web pages from five distributors who sell ceiling and
wall products, but not floor covering products.
Discussion
I. Similarity of Marks
We consider first whether applicant’s mark and the
registered mark, when viewed in their entireties, are similar in
terms of appearance, sound, connotation and commercial
impression. 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 impressions that confusion as to the
source of the goods or services offered under the respective
marks is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general rather than
a specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant argues that its mark is “highly similar” to the
mark in the cited registration, “but not identical.” Applicant’s
Br. at 6. Applicant seeks registration for the mark SOUND
SOLUTION, while the mark in the cited registration is SOUND
SOLUTIONS. We find that the marks are substantially identical in
sound, appearance, connotation and commercial impression. The
only difference between the marks – the use of the singular word
Serial No. 78682683

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“SOLUTION” in the subject application as opposed to the plural
word “SOLUTIONS” in the cited registration – is an immaterial
distinction. Wilson v. Delauney, 245 F.2d 877, 114 USPQ 339, 341
(CCPA 1957); In re Pix of America, Inc., 225 USPQ 691, 692 (TTAB
1985).
This factor strongly supports the refusal to register.
II. The Similarity or Dissimilarity and Nature of the Goods
Considering next the goods involved in this case, we note
that the question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods or services recited in the
registration, rather than what the evidence shows the goods or
services actually are. Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago
Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB
1991). Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks used
therewith, to a mistaken belief that they originate from or are
Serial No. 78682683

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in some way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and
cases cited therein; Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002). Moreover, when the marks at issue
are legally identical, the extent to which the goods of the
applicant and registrant must be similar or related to support a
finding of likelihood of confusion is lessened. See In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is only necessary
that there be a viable relationship between the goods to support
a finding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
A. Nature of Goods
As noted above, the goods at issue are “sound absorbing
flooring underlayment made of polyurethane foam and polyurethane
foam with attached polyethylene film,” while the goods in the
cited registration are “acoustical ceiling and wall tiles….”
Applicant’s goods and those of the cited registrant are
plainly different – applicant identifies a sound-absorbing
product, which is to be installed underneath flooring, while the
cited registration covers sound-absorbing products to be
installed on walls and ceilings.3 Nonetheless, the examining

3 The examining attorney’s statement that “registrant’s identification
of goods is broad enough to include applicant’s more narrow
identification…,” Brief at 7, is incorrect. There are no goods which
actually fall within both identifications.

Serial No. 78682683

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attorney argued that the goods are both “for the purpose of
reducing noise.” Final Office Action at 3. We agree that the
goods are related in this purpose and function. As such, both
applicant’s goods and the cited registrant’s goods would be
purchased to reduce noise in a room or building, and may be used
as complementary products, one on floors and the other on walls
and ceilings, to provide maximum noise reduction.
B. Third-Party Registrations and Market Evidence
In support of her argument that the goods are related, the
examining attorney has made of record the following third-party
registrations:
Reg. No. Mark Goods
2642140 EXPANKO Cork material products namely floor, ceiling and wall tiles,
underlayment, closures and rolls.
2756029 TDC
(stylized)
Wooden flooring, wood tile floors and flooring
underlayments; non-metal doors; ceiling tiles of clay, glass,
gypsum, ceramic, earthenware or wood.
2985571 ROCKFON Panels, sheets, mats and batts, all made of mineral fibers
and for insulation against sound, noise, heat, cold and fire
and for acoustic regulation. Wall, floor and ceiling panels of
mineral fibers.

Although third-party registrations which cover a number of
differing goods, and which are based on use in commerce, are not
evidence that the respective marks are in use on a commercial
scale or that the public is familiar with them, such
registrations nevertheless 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 In re
Serial No. 78682683

9
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
We first note that Registration No. 2985571 was filed under
the provisions of the Madrid Protocol, as implemented in
Trademark Act § 66, 15 U.S.C. § 1141f, and no declaration of use
under Trademark Act § 8, 15 U.S.C. § 1058, is yet of record in
this registration. Because “requests for extension of
protection,” (i.e., applications) under the Protocol are
registered without any requirement for use of the mark in the
United States, until the filing of a declaration of use, such
registrations are of no use in inferring that purchasers in this
country are accustomed to seeing a common source for the goods or
services listed, and we have accordingly given this registration
no consideration. Cf. Mucky Duck, 6 USPQ2d at 1470, n. 6
(registrations issued pursuant to Trademark Act § 44 “have very
little, if any, persuasive value” for this purpose).
Registration No. 2756029 identifies flooring and flooring
underlayment on the one hand and wall and ceiling tiles on the
other. Nonetheless, it is not indicated that the goods in this
registration are intended for use in noise abatement, as are the
goods at issue in this case. Although grammatically, “sound
absorbing flooring underlayment” would appear to be a subset of
“flooring underlayment,” such is not the case for purposes of
registration. “Sound-absorbing flooring underlayment” is in
International Class 17, while “flooring underlayment” is in
Serial No. 78682683

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International Class 19. Indeed, some of the third-party
registrations submitted by applicant, see infra, include both
goods, in their respective classes. Therefore, it is logical to
assume that the goods identified in this third-party registration
do not encompass “sound-absorbing flooring underlayment” because,
if they did, the registration would include a specification of
such goods classified in International Class 17.
The examining attorney’s last registration, No. 2985571, is
somewhat ambiguous as to whether it covers wall, floor, and
ceiling treatments for sound insulation. However, even assuming
that it does, this and the preceding’029 registration offer only
weak support for the proposition that such goods are related.
Applicant submitted two lists of third-party applications
and registrations from the USPTO’s Trademark Electronic Search
System (TESS), and twenty records of registrations from each
list, arguing that the “Examining Attorney does not accurately
represent the relevant markets.” The first list shows the
results of a search for records in which the word “floor,” but
not the words “ceiling” or “wall” appear in the identifications
of goods or services. The second list shows the results of a
search for records in which the word “wall” or “ceiling,” but not
the word “floor” appear in the identifications of goods or
services.
Serial No. 78682683

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We find the results of applicant’s search4 to be of very
little relevance. There are undoubtedly many registrations that
include certain words but not others, and many of the
registrations submitted by applicant involve entirely different
goods than those at issue here. But even the registrations for
comparable goods do not support applicant’s point because
ownership of, say, a registration for sound-absorbing flooring
underlayment, does not preclude the registrant from owning a
different registration for acoustic ceiling tiles or selling such
products without a registration. Moreover, the relevant question
is not whether a majority of purveyors of applicant’s goods also
sell the registrant’s (and vice versa), but whether there is a
significant relationship between the goods or an overlap in their
channels of trade, such that confusion is likely.
The examining attorney has also made of record a number of
web pages, indicating the marketing and sale of sound-reducing
flooring products together with acoustic products for walls and
ceilings. For instance:
ACOUSTICAL SURFACES, INC.
Your One-Stop Resource for Soundproofing and Noise
Control Solutions
* * *

4 The search result lists are part of the record because the examining
attorney raised no objection to their submission, and we have
considered them for what they are worth, although they are of little
probative value without information such as the associated goods and
services, and the name of the owners. Further, we note the result
lists indicate that most of the “hits” are applications, which are
evidence of little more than their filing. We add, however that
inclusion of more of the complete registration records would not
change our view that this evidence is entitled to little, if any,
weight.
Serial No. 78682683

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• Flooring Underlays
* * *
• Ceilings
* * *
• Wall Insulation

www.acousticalsurfaces.com (2/22/06).

OWENS CORNING®
QUIETZONE® PRODUCTS
* * *
QuietZone® Noise Control Batts
• Acoustically engineered to absorb sound vibrations
within the wall cavity to control noise in the home.

• Installed between interior walls, floors and
ceilings
* * *

QuietZone® Acoustic Floor Mat
QuietZone SOLSERENE® Fabric Ceiling System

QuietZone® Acoustyle® Wood Ceiling Panels

www.owenscorning.com/quietzone/products/products3.asp
(9/18/06).
THE ACOUSTICAL SOURCE
Noise Control Solutions for Soundproofing and Acoustic
Applications

• Noise Control Solutions for Walls [link]
• Noise Control Solutions for Floors [link]
• Noise Control Solutions for Ceilings [link]

www.acousticalsource.com (9/18/06).

Silent Source
Offering Quality Interior Acoustical Products Since
1992
* * *
Acoustical Sound Barrier
Sound Barrier is a … sheet material used to block and
reduce sound transmissions through walls, ceilings and
floors.
* * *
Serial No. 78682683

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Ceilings
We have a variety of styles in
Acoustical Ceilings …

Fabric Wallcoverings
Acoustical wall fabrics available by the bolt or linear
yard…

www.silentsource.com/index.html (9/18/06).

AMI
Acoustic Product Division
* * *
• Wall Soundproofing/Ceiling Soundproofing
• Floor Soundproofing/Footfall Soundproofing

www.soundprooffoam.com (9/18/06).

AVT, Inc.
Acoustics & Vibration Specialists
* * *
Sound/Noise Control
• For Floors, Walls and Ceilings

www.avtinc.net (11/1/06).

Federal Flooring Co.
* * *
Distributor Of Acoustical Tiles, Ceilings,
Insulation, Flooring …

www.thomasnet.com/heading.html (11/1/06).
Two things are apparent from the examining attorney’s
Internet evidence: First, there appears to be a distinct market
for noise-abatement products and services. While applicant’s
business is evidence that the noise abatement products market is
not entirely separate from the general floor-, wall-, and
ceiling-covering market, the existence of specialist purveyors in
such products is readily apparent from the evidence of record.
Second, at least within the market for noise-abatement products,
Serial No. 78682683

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it is clear that flooring underlayment is sold at the same time,
and for the same purpose, as ceiling and wall products to be
used, either as alternatives to or in conjunction with each
other.
In sum, while applicant’s goods and those of the cited
registrant are not identical, the examining attorney’s evidence
convinces us that they are nonetheless closely related as to
their purpose and use, and can be produced or marketed together
by the same purveyors. At best, the third-party registrations
submitted by applicant prove only that the relationship shown by
the examining attorney is not a perfect correlation.
Accordingly, we find that this factor weighs against
registration.
III. The Similarity or Dissimilarity of Established, Likely-to-
Continue Trade Channels

Both the applicant’s identification of goods and that of the
cited registrant include limitations in their respective channels
of trade. The cited registrant’s goods are limited to goods “for
use in the building industry,” while applicant’s goods have been
amended to include those “sold only through distributors and
retailers who specialize in floor covering products and who do
not distribute or sell at retail acoustical ceiling and wall
tiles for use in the building industry.” Applicant argues that
because of these limitations, the channels of trade for their
respective products are distinct, thus reducing or eliminating
any potential confusion.
Serial No. 78682683

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A. Declarations
Before turning to the specific language of the identified
goods at issue, we note again that applicant submitted eight
third-party declarations in support of registration. The
declarations are substantially similar in significant part,5 and
allege as follows:
¶4. “[T]here is no significant overlap in the
marketplace between the sale and distribution of
flooring underlayment and the sale [sic] distribution
of wall and ceiling products,” and that “the floor
covering industry” does not overlap with the
construction or building supply industries.

¶5. [C]ommercial flooring underlayment is not
typically sold through the same channels of
distribution as ceiling and wall products.

¶6. The declarant is unaware of the sale of wall or
ceiling products by any floor covering retailer.
“[W]all and ceiling products would generally be sold
through commercial building supplies distributors, and
such … distributors would not typically sell flooring
underlayment.”

¶7. “Purchases of floor covering supplies involve
significant expenses. These purchases are typically
made by sophisticated purchasers and are made after
careful deliberation.”

¶8. The declarant is unaware of any confusion
regarding applicant’s SOUND SOLUTION mark.

The declarations were signed by people employed in “the
floor covering industry” for between 13 and 39 years (average
27.25 years). Declarations ¶¶ 2, 3. Despite the fact that the
declarants appear to have considerable experience in the “floor

5 One declaration, that of Lee Phillips, is slightly different form the
others, resulting in one less paragraph than the others, although it
attests to essentially the same facts.
Serial No. 78682683

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covering industry,” it is not at all clear to what extent this
includes experience in the field of noise abatement products. As
noted above, the evidence of record indicates that there is a
channel of trade for noise abatement products, which would
include floor, wall and ceiling products, distinct from the
market for general floor, wall, and ceiling treatments. Thus,
the declarants’ statements are of limited value.
Put simply, this record shows that there is a significant
overlap in the customary trade channels for the goods at issue,
and consequently an overlap in the purchasers for such products.
B. Channels of Trade, Use of the Goods, and Consumers

When determining registrability, we must presume that –
unless limited – the identified goods or services to move in all
channels of trade normal for such items, and that they are
purchased by all of the usual consumers for such goods. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958).
The identification of goods and channels of trade in the
subject application and in the cited registration are limited as
follows:

Application Registration
• . . . sold only through distributors and retailers who
specialize in floor covering products and
• who do not distribute or sell at retail acoustical
ceiling and wall tiles for use in the building
industry.
• . . . for use in the building industry.
Serial No. 78682683

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The prior registrant’s ceiling and wall tiles are limited to
those sold “for use in the building industry.” Accordingly, they
are construed to be sold to the entire range of purchasers in
that industry, including those involved in large-scale
commercial, industrial, and home construction, as well as those
involved in building, remodeling and renovating individual homes,
and would be sold in the usual channels of trade for such goods,
including noise abatement specialty distributors.
Applicant’s only sells its sound absorbing flooring
underlayment through distributors and retailers specializing in
floor covering products who do not sell ceiling and wall tiles
for use in the building industry. Nevertheless, the fact remains
that applicant’s flooring underlayment may still be sold to
purchasers for use in the building industry, because applicant’s
goods are not restricted to particular uses or users.
Further, as discussed above, while applicant’s goods would
not be sold under the same roof as the registrant’s, the evidence
establishes that there are businesses that manufacture and sell
together sound absorbing products for use on floors, walls and
ceilings. Therefore, consumers in the building industry,
accustomed to seeing similar goods sold in the same channels of
trade, are likely to encounter both applicant’s and registrant’s
products – albeit not in the same store – and believe that the
goods share a common source.
Serial No. 78682683

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While the examining attorney’s case would obviously be
stronger if the respective goods were sold under the same roof,
sale of the goods in the same stores is not required to support a
finding of likelihood of confusion. We find that the
restrictions in the application and the cited registration do not
obviate confusion. Goods of the type at issue here are commonly
sold together by others in the marketplace, and there is clearly
an overlap in both applicant’s and the registrant’s purchasers.
This factor thus supports the refusal to register.
IV. The Nature and Extent of any Actual Confusion
Applicant states that it is aware of no actual confusion
through four years of concurrent use of its mark and applicant’s
mark on their respective goods. However, as we have pointed out
before, such evidence is of little relevance in an ex parte
appeal:
[A]pplicant's assertion that it is unaware of any
actual confusion occurring as a result of the
contemporaneous use of the marks of applicant and
registrant is of little probative value in an ex parte
proceeding such as this where we have no evidence
pertaining to the nature and extent of the use by
applicant and registrant (and thus cannot ascertain
whether there has been ample opportunity for confusion
to arise, if it were going to); and the registrant has
no chance to be heard from (at least in the absence of
a consent agreement, which applicant has not submitted
in this case. Moreover, the test under Section 2(d) is
not actual confusion but likelihood of confusion.

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984)
(citations omitted).
Serial No. 78682683

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Accordingly, this factor is entitled to little or no weight
in our analysis.
V. The Fame of the Prior Mark
The Court of Appeals for the Federal Circuit has held that
when the prior mark is famous, that factor is entitled to great
weight in determining whether confusion is likely. E.g. Recot,
Inc. v. M.C. Becton, 214 F.3d 1322; 54 USPQ2d 1894, 1897 (Fed.
Cir. 2000). Here, applicant claims that the converse is true,
namely that confusion is not likely because the mark in the cited
registration is not famous. In In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003), the Court of
Appeals rejected this reasoning:
[W]e find no evidence in the record to substantiate
Majestic's counsel's argument that [the prior
registrant’s] marks are not famous. Even if such
evidence were of record, though, it would have little
probative value. Although we have previously held that
the fame of a registered mark is relevant to likelihood
of confusion, DuPont, 476 F.2d at 1361, 177 USPQ at 567
(factor five), we decline to establish the converse
rule that likelihood of confusion is precluded by a
registered mark's not being famous.

65 USPQ2d at 1205.
As was the case in Majestic, aside from the lack of legal
support for applicant’s major premise, we have little evidence in
the record from which we could make a factual determination about
the fame of the cited registrant’s mark. While each of the
declarations submitted by applicant contains the statement that
the declarant “had never [previously] heard of or otherwise been
made aware of the company Sound Solutions Inc. or its mark SOUND
Serial No. 78682683

20
SOLUTIONS,” Declarations ¶ 9, there is no record evidence
indicating the nature and extent of the registrant’s sales, its
relevant advertising expenditures, market surveys, or any other
evidence which might be available to the cited registrant. Such
evidence is rarely, if ever, available in an ex parte proceeding,
which by its nature precludes participation by the cited
registrant. Cf. In re Thomas, 79 USPQ2d 1021, 1027, n. 11 (TTAB
2006) (“Because this is an ex parte proceeding, we would not
expect the examining attorney to submit evidence of fame of the
cited mark.”)
Accordingly, we consider this du Pont factor neutral.
VI. Strength of the Cited Mark
Applicant argues that the mark in the cited registration “is
a relatively weak mark and is not entitled to an overly broad
scope of protection.” Applicant’s Br. at 10 (“The Cited Mark …
is suggestive of the … [g]oods in that [it] suggests that the
[goods] are related to a solution to a problem with the
transmission of sound.”) However, even relatively weak marks are
entitled to protection, King Foods, Inc. v. Town & Country Food
Co., Inc., 159 USPQ 44 (TTAB 1968), and we note again that the
marks at issue here are legally identical, while the goods are
closely related. While applicant argues that the registrant’s
mark is weak because it is suggestive of the goods, applicant’s
virtually identical mark carries the same suggestive quality.
Even if we were to conclude that neither mark is inherently
Serial No. 78682683

21
strong, confusion is not avoided if the marks are essentially
identical and the goods are closely related. To conclude
otherwise would give the prior registration virtually no scope of
protection.
We likewise consider this factor neutral.
VII. Sophisticated Purchasers
Applicant argues that its goods are bought by sophisticated
purchasers, who make buying decisions only after careful
deliberation. The only evidence supporting applicant’s argument
appears to be the statement in each of the declarations filed by
applicant that “[p]urchases of floor covering supplies involve
significant expense. These purchases are typically made by
sophisticated purchasers and are made after careful
deliberation.” Declarations ¶ 7.
There are two problems with this argument: First, there is
no record evidence of the price of the relevant goods or what the
affiants consider to be “significant expense” or “careful
deliberation.” Further, as noted above, the goods in the
application and cited registration are not limited to those sold
to large-scale commercial purchasers. As such, they include
sound abatement products for smaller projects, including single
homes or even single rooms, and may be purchased by small
contractors, handymen, and do-it-yourself homeowners.
Second, merely because the goods may be expensive or
purchased after careful deliberation does not mean that the
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purchasers are sophisticated, or that confusion as to source
would therefore be avoided. Even consumers who exercise a high
degree of care are not necessarily knowledgeable regarding the
trademarks at issue, and therefore immune from source confusion.
In re Wilson, 57 USPQ2d 1863, 1865-66 (TTAB 2001)(where marks are
very similar and goods related, confusion may be likely even
among sophisticated purchasers); In re Decombe, 9 USPQ2d 1812,
1814-1815 (TTAB 1988)(“Being knowledgeable and/or sophisticated
in a particular field does not necessarily endow one with
knowledge and sophistication in connection with the use of
trademarks.”).
Because we are not able to conclude that this factor
benefits applicant in any significant way, we consider it
neutral.
Conclusion
After careful consideration of the briefs and the entire
record, we conclude that in view of the essentially identical
marks at issue, their contemporaneous use on the related goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods. To the extent we harbor any
doubt, that doubt must be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The refusal under Section 2(d) of the Act is
affirmed.