Hearthmark, LLC

Trademark Trial and Appeal Board

Apr 9, 2014

No. 85787880 (T.T.A.B. Apr. 9, 2014)

Mailed:
April 9, 2014

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Hearthmark, LLC
________
Serial No. 85787880
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Dan Cohn of Husch Blackwell LLP, representing Hearthmark, LLC.
Carol Spils, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
_______
Before Wellington, Wolfson, and Gorowitz, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Hearthmark, LLC (“applicant”) seeks registration on the Principal Register of
the mark depicted below:

for goods ultimately amended to “plastic food storage containers for household use
consisting of cups and lids packaged and sold together at grocery stores and mass
retail stores” in International Class 21.1

1 Serial No. 85787880, filed November 27, 2012, based on Section 1(a) of the Trademark
Act, alleging June 30, 2011 as the date of first use anywhere and in commerce.
This Opinion is Not a
Precedent of the TTAB
Serial No. 85787880

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The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the registered mark DIAMONDCLEAR (in
standard characters) and the mark DIAMOND CLEAR and design displayed below

for “plastic containers for food and beverages; plastic bottles, sold empty” in
International Class 21 that when used on or in connection with applicant’s
identified goods, it is likely to cause confusion or mistake or to deceive. 2
When the refusal was made final, applicant filed a request for
reconsideration. Following denial of the request for reconsideration, there being no
appeal taken, the application was deemed abandoned. Applicant filed a petition to
revive the application and concurrently filed a notice of appeal. The petition was
granted, the application was revived and this appeal was instituted. Upon
consideration of the arguments and all evidence of record in this proceeding, we
affirm the refusal to register.
Evidentiary Issue
The examining attorney has objected to copies of third-party web pages that
applicant submitted for the first time with its trial brief pursuant to Trademark
Rule 2.142(d).

2 Reg. No. 3401510 for the mark DIAMONDCLEAR, registered March 25, 2008; Section
8/15 combined declaration accepted and acknowledged.
Reg. No. 3326327 for the mark DIAMONDCLEAR and Design, registered October 30,
2007; Section 8/15 combined declaration accepted and acknowledged.
Serial No. 85787880

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Trademark Rule 2.142(d) reads as follows:
The record in the application should be complete prior to
the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence
filed with the Board by the appellant or by the examiner
after the appeal is filed. After an appeal is filed, if the
appellant or the examiner desires to introduce additional
evidence, the appellant or the examiner may request the
Board to suspend the appeal and to remand the
application for further examination.
Accordingly, since the evidence attached to the appeal brief is untimely, the
examining attorney’s objection is sustained, and we give the evidence no
consideration.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. 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 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
Serial No. 85787880

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I. The Similarity or Dissimilarity and Nature of the Goods Described in the
Application and Registrations

We begin by comparing the goods in the cited registrations with those in
applicant’s application. When evaluating the issue of likelihood of confusion in
Board proceedings, the Board must compare the goods as identified in the
application with the goods as identified in the cited registrations. See Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-70, 101 USPQ2d 1713, 1722
(Fed. Cir. 2012); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); In re Jump Designs, 80 USPQ2d 1370, 1374
(TTAB 2006) (“it is well settled 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 identified in the cited registration”). “The description of the goods in
an application for registration is critical because any registration that issues will
carry that description.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983).
Applicant’s goods are “plastic food storage containers for household use
consisting of cups and lids packaged and sold together at grocery stores and mass
retail stores.” Registrant’s goods are “plastic containers for food and beverages;
plastic bottles, sold empty.” Because registrant’s identification of goods
encompasses applicant’s more narrowly identified goods, the goods are considered
legally identical. Jump Designs, 80 USPQ2d at 1374 (“Registrant’s furniture is not
limited in any way as to nature, type, use or purpose and, thus, is broad enough to
encompass the type of furniture sold by applicant. When construed as such, the
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goods are, in part, legally identical.”); In re Linkvest S.A., 24 USPQ2d 1716, (TTAB
1992) (broadly identified goods “without any limitation as to the kind of programs or
the field of use” encompass all such computer programs including applicant’s more
narrowly defined programs).
This du Pont factor favors a finding of likelihood of confusion. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1244 (TTAB 2010); In re La Peregrina Ltd.,
86 USPQ2d 1645, 1647 (TTAB 2008) (“The identity, at least in part, between
applicant’s and registrant’s goods is a factor that weighs heavily against applicant
in the likelihood of confusion analysis.”); Jansen Enterprises, Inc. v. Rind and Stone,
85 USPQ2d 1104, 1108 (TTAB 2007).
II. Likely-To-Continue Trade Channels and Classes of Consumers
The goods identified in the cited registrations are unrestricted as to type,
channels of trade, or classes of consumers. Accordingly, they are presumed to move
in all normal channels of trade, including the more narrowly defined channels in
applicant’s application, i.e., grocery and mass retail stores, and to be available to all
classes of potential buyers, including those listed in applicant’s identification of
goods, namely, ordinary household consumers. In other words, given the lack of any
restrictions as to trade channels and purchasers in the cited registrations, we must
presume that the goods could be offered and sold to the same classes of purchasers
through the same channels of trade as would be applicant’s more narrowly
restricted, but legally identical, goods. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
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channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); 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); Jump Designs, 80 USPQ2d at 1374 (“Where the goods in the application
at issue and/or in the cited registration are broadly identified as to their nature and
type, such that there is an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods of the nature and type
described therein, but that the identified goods are offered in all channels of trade
which would be normal therefor, and that they would be purchased by all potential
buyers thereof.”); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994)
(“Because the goods are legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of purchasers”).
Applicant argues that there is no likelihood of confusion because registrant’s
goods are sold directly to the foodservices industry whereas applicant’s goods are
only for household use and are sold to the ordinary retail consumer in grocery and
mass retail stores. To support this assertion, applicant submitted excerpts from
registrant’s website. However, this argument is unavailing. We are bound by the
identifications that are present in applicant’s application and registrant’s
registrations and cannot rely on extrinsic evidence to narrow trade channels or
fields of use. Rather, we must presume that the goods identified in the cited
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registrations include plastic food containers for household use; that these goods are
offered in all channels of trade which would be normal therefor, including grocery
stores and mass retail stores; and that they would be purchased by all potential
buyers thereof, including ordinary household shoppers. See Jump Designs, 80
USPQ2d at 1374 (“Applicant’s attempt to distinguish its furniture from registrant’s
furniture is to no avail.”); In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB
2009) (“we must also analyze the similarity or dissimilarity and nature of the goods
based on the description of the goods set forth in the application and the
registration at issue … we may not limit or restrict the trailers listed in the cited
registration based on extrinsic evidence”); In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold
to discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). We simply cannot curtail the rights
defined by the identification of goods in the registrations to limit the goods,
channels of trade or classes of customers thereof to what applicant’s evidence may
show them to be. Nor is it relevant that applicant may use its mark on other,
unrelated products or own registrations for the mark with respect to unrelated
products. Moreover, the evidence obtained by the examining attorney from the
internet shows that a single company may offer goods both of the type listed in
applicant’s application and of the type listed in the registrations under the same
mark. For example, at www.rubbermaidcommercial.com, clear plastic storage
containers, “food boxes” and “food pans” are being offered to the commercial
Serial No. 85787880

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foodservice industry under the RUBBERMAID mark, and at www.rubbermaid.com,
a variety of similar food storage containers are being offered to the home market
under the same mark.3 The examining attorney has also attached nine4 use-based
third-party registrations that generally show the relatedness of plastic storage
containers for household or domestic use (applicant’s goods) and plastic bottles sold
empty (registrant’s goods). Several of the registrations include both types of items
under a single mark. As an example, the mark covers, inter alia, “plastic
storage containers for household or domestic use” and “plastic water bottles sold
empty.”5 Although such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with them, they nonetheless have
probative value to the extent that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Thus, these du Pont factors also favor a finding of likelihood of confusion.
III. The Similarity or Dissimilarity of the Marks in their Entireties as to
Appearance, Sound, Connotation and Commercial Impression

We turn next to a consideration of the marks. In comparing the marks, we
must consider the marks in their entireties as to appearance, sound, connotation
and commercial impression. Viterra, 101 USPQ2d at 1908; Palm Bay, 73 USPQ2d

3 Attached to the Final Office action dated April 18, 2013.
4 Ten third-party registrations were attached, but one (Reg. No. 3167963) has been
cancelled under Section 8.
5 Reg. No. 3762490, issued March 23, 2010.
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at 1692; and Trademark Manual of Examining Procedure (“TMEP”) §1207.01(b)-
(b)(v) (Oct. 2013). Similarity in any one of these elements may be sufficient to find
the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988); In re 1st USA Realty Prof’ls , Inc., 84 USPQ2d 1581, 1586 (TTAB 2007).
Where, as here, the goods are legally identical, “the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See
also, Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
The examining attorney submits that the marks are similar because they
have the word DIAMOND in common; that DIAMOND is the dominant feature in
the registered marks and CLEAR is of lesser significance because it is merely
descriptive of the goods; and that the design elements in the marks are likewise less
significant because they will not be used by purchasers to call for the goods.
Applicant argues that the marks differ in their overall commercial impressions; that
the term DIAMONDCLEAR is unitary and loses its meaning if the phrase is
dissected (but that to the extent any element is dominant, it is the word “clear”);
and that the design in applicant’s mark and in the registered design mark further
distinguish the marks. Applicant has also provided copies of printouts from several
third-party registrations that include the word DIAMOND in the mark for similar
goods to show that the term is weak.
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“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., 101 USPQ2d at 1721. Because the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on the entire marks, not just part of
the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). On the other hand, 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 a consideration of the marks in their
entireties. National Data, 224 USPQ at 751. 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). Contrary to applicant’s argument that “diamondclear” is a unitary
term that cannot be dissected, it is not improper to consider the mark as being
composed of the two words “diamond” and “clear,” because “diamond” and “clear”
are both common English words and registrant’s marks naturally divide into these
two words. Moreover, in the cited design mark, the word “DIAMOND” and
“CLEAR” are depicted in different fonts. Consumers will consider the meaning of
the marks no differently than they would if it were two words.
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Here, applicant’s mark and the cited marks are similar in appearance and
pronunciation because they share the word “diamond” and because DIAMOND is
the first word in the cited marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010) (“the presence of an additional term in the
mark does not necessarily eliminate the likelihood of confusion if some terms are
identical,” citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83 USPQ2d
1123 (Fed. Cir. 2007). The term DIAMOND is the dominant portion of the cited
marks because it is arbitrary as applied to the goods, unlike the term CLEAR,
which suggests the transparent nature of plastic storage containers. Descriptive
and generic wording is typically accorded lesser weight, because such words readily
identify aspects of the involved goods or services, unlike suggestive, arbitrary or
fanciful words. Thus, in comparing each of the cited marks to applicant’s mark, we
accord less weight to the word CLEAR in the cited marks. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (descriptive terms
are entitled to “little weight in reaching a conclusion on the likelihood of confusion,”
quoting In re Nat’l Data Corp., 224 USPQ at 752 . Applicant further argues that
the term CLEAR in Reg. No. 3326327 (the design mark) dominates the overall
impression of the mark because it is in larger, bold lettering. However, since the
word “clear” has a descriptive connotation in connection with plastic bottles and
food/beverage containers, it is less likely to be impressed upon the minds of the
purchasers and recollected when calling for the goods. The display of the mark in
Reg. No. 3326327 does not compel a contrary conclusion.6 Moreover, as the first

6 Of course, this is not a consideration with respect to Reg. No. 3401510 because that mark
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literal term in each of the cited marks, DIAMOND is most likely to make the
greater impression and be remembered by consumers. Presto Products Inc. v. Nice-
Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
We also find the designs in applicant’s mark and cited Reg. No. 3326327 do
not sufficiently distinguish the overall impressions of the marks and thereby avoid
confusion. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199, 200 (Fed.
Cir. 1983) (“[I]n a composite mark comprising a design and words, the verbal
portion of the mark is the one most likely to indicate the origin of the goods to which
it is affixed.”); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). The
design elements in applicant’s mark are displayed behind the words and act as a
carrier, forming a background geometric shape and a diamond design that serve to
merely emphasize the impression of the wording in the mark. The design in the
registered mark is described in the registration as “a diamond-shaped design that
appears over the letter ‘D’ and extends in a line over the word DIAMOND,” is also
subordinate to the wording. Consumers are likely to recall both the registered
marks by the wording DIAMOND CLEAR and applicant’s mark by the word
DIAMOND.
Applicant argues that as to meaning, the marks convey different commercial
impressions; that consumers will recognize its mark as suggesting “top quality,”
while registrant’s marks will be seen as being a play on the phrase “crystal clear.”

appears in standard characters and may be depicted in any font, size, style, or color.
Citigroup Inc. 98 USPQ2d at 1258-59. See also, In re Viterra Inc., 101 USPQ2d at 1909
(“[T]o the extent that the Board simply held that a standard character mark is not limited
to any particular font, size, style, or color, it is entirely consistent with our case law, the
relevant regulations, and the TMEP.”).
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Applicant makes this assertion with reference to registrant’s website, which
advertises its goods as being of exceptional transparency and clarity, giving
“consumers an unobstructed view of the product, and assur[ing] them of its quality
and freshness.”7 Applicant argues that this play on words brings to the cited marks
a “deeper, dominating meaning” that is missing from applicant’s mark. Applicant’s
Brief at 8. However, both applicant’s mark and the marks in the cited registrations
relate to plastic storage items, which may be clear or transparent, and “superior
transparency” is a quality often considered desirable in such items. Accordingly, the
overall commercial impressions of the words DIAMOND and DIAMONDCLEAR (as
one word or two) are not substantially different. Consumers familiar with
applicant’s DIAMOND goods for plastic food storage containers may, upon
encountering registrant’s goods under the DIAMONDCLEAR mark, mistakenly
believe that the registrant’s goods are a related line of products that are clear or
transparent. Cf., In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ 2d 1944, 1946
(Fed. Cir. 2004) (JOSE GASPAR GOLD and GASPAR’S ALE confusingly similar;
“[w]ith respect to GOLD, … the term denotes a premium quality, a descriptive term
offering little to alter the commercial impression of the mark.”).
The seven registrations introduced by applicant with its request for
reconsideration for marks, that include the word “Diamond” do not compel a
different result. These registrations have very little probative value because they
do not show that the marks are in use or that consumers are aware of them. See

7 At http://www.constar.net, attached to applicant’s request for reconsideration dated
August 27, 2013.
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Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the Patent
[and Trademark] Office). Moreover, the marks include various and differing design
elements in combination with the wording, and the goods are not the same as those
recited in either applicant’s application or the registrations.
For these reasons, the first du Pont factor regarding the marks favors a
finding of likelihood of confusion.
IV. Summary
In view of the similarity between the marks in sight, sound, meaning and
commercial impression, and the fact that the goods are legally identical in part and
will travel through the same channels of trade and be offered to the same
customers, we find that applicant’s registration of its mark for “plastic food storage
containers for household use consisting of cups and lids packaged and sold together
at grocery stores and mass retail stores” is likely to cause confusion with the cited
marks DIAMONDCLEAR and for “plastic containers for food
and beverages; plastic bottles, sold empty.”
Decision: The Section 2(d) refusal to register applicant’s mark
is affirmed.