Horizon Merchant, Inc.

Trademark Trial and Appeal Board

Jul 10, 2017

No. 86736229 (T.T.A.B. Jul. 10, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: July 10, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Horizon Merchant, Inc.
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Serial No. 86736229
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Melissa M. Martinez of Martinez Law Group, PLLC,
for Horizons Merchant, Inc.
Kevon L. Chisolm, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Kuhlke, Taylor and Ritchie,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Horizon Merchant Inc., DBA Billy Bob’s Beds, (“Applicant”) seeks registration on
the Principal Register of the mark FURNITUREBOBS (in standard characters) for
“retail furniture stores” in International Class 35.1
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

1 Application Serial No. 86736229 was filed on August 25, 2015, based upon Applicant’s
allegation of use under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming first
use anywhere and use in commerce since at least as early as April 1, 2014.
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Applicant’s mark is likely to be confused with the marks in the three registrations
listed below all owned by the same entity.
1. Registration No. 20234142
BOB’S DISCOUNT FURNITURE (in typed form3 and with
DISCOUNT FURNITURE disclaimed) for “retail furniture
store services” in International Class 42.
2. Registration No. 44326514
BOB’S DISCOUNT FURNITURE and design (DISCOUNT
FURNITURE disclaimed) as shown below, for “Retail
discount store services featuring furniture, mattresses and
mattress foundations; On-line retail discount store services
featuring furniture, mattresses and mattress foundations”
in International Class 35; and
“Furniture, mattresses and mattress foundations” in
International Class 20.

3. Registration No. 44326525
BOB’S DISCOUNT FURNITURE and design (DISCOUNT
FURNITURE disclaimed) as shown below, for “Retail
discount store services featuring furniture, mattresses and
mattress foundations” in International Class 35.

2 Issued December 17, 1996; second renewal.
3 Before November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (April
2017).
4 Issued November 12, 2013.
5 Issued November 12, 2013.
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After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section 2(d) 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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). We consider the likelihood of confusion factors about
which either party introduced evidence, and treat the remaining factors as neutral.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed.
Cir. 2006) (even within du Pont list, only factors that are “relevant and of record”
need be considered).
In analyzing likelihood of confusion, we limit our discussion to Registration No.
2023414 for the mark BOB’S DISCOUNT FURNITURE (in standard characters) for
“retail furniture store services” as this mark and services are the closest to
Applicant’s mark and recited services. If we find no likelihood of confusion with this
mark, then it follows there would be no likelihood of confusion with the marks in the
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other cited registrations. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2008) (confining likelihood of confusion analysis to one of multiple cited
registrations deemed closest to the applied-for mark).
A. The Services, Trade Channels and Classes of Consumers
We begin our analysis with the second and third du Pont factors and consider the
relationship between the services at issue, the channels of trade in which they travel
and the classes of purchases to which they are offered. In determining the
relationship between the services, we look to the services as identified in the involved
application and cited registration. See Octocom Sys., Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion
that the question of registrability of an applicant’s mark must be decided on the basis
of the identification of goods [and services] set forth in the application regardless of
what the record may reveal as to the particular nature of an applicant’s goods [and
services], the particular channels of trade or the class of purchasers to which the sales
of goods [and services] are directed.”). Here, both Applicant’s application and the cited
registration recite retail furniture store services.6 Because the services are legally
identical, and Applicant’s and Registrant’s recitations of services are unrestricted as
to trade channels, we must presume both Applicant’s and Registrant’s restaurant
services move in the same ordinary channels of trade and are marketed to the same

6 Applicant’s services are identified as “retail furniture stores” and Registrant’s services are
identified as “retail furniture store services.” While there is a slight difference in the wordings
of the recitations, we find the difference in wording to be a matter of nomenclature, and the
services to be substantively the same.
.
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potential classes of ordinary consumers. 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). We note that Applicant did
not dispute this finding. Indeed, it did not even address the relatedness of the
services, channels of trade or classes of purchasers in its appeal brief.
Thus, the second and third du Pont factors strongly weigh in favor of a finding of
likely confusion.
C. Similarity/Dissimilarity of the Marks
We now consider the du Pont factor of the similarity or dissimilarity of the marks
and compare them, as we must, in their entireties in terms of sound, appearance
meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). However, and as
Applicant acknowledges, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of the mark,
provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). That is, “[t]he 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. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). See also San
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Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper
focus is on the recollection of the average customer, who retains a general rather than
specific impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). Here, the average customer includes members of the general public seeking to
purchase furniture. Finally, given the identical retail store services, “… the degree of
similarity necessary to support a conclusion of likely confusion declines.” Century 21
Real Estate v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992).
With these principles in mind, we compare Applicant’s FURNITUREBOBS mark
with the cited mark BOB’S DISCOUNT FURNTITURE and find that they are similar
in their entireties. Both marks include as essential elements the descriptive word
“FURNITURE” and the given name “BOBS” or, as in the case of the cited mark
“BOB’S” inclusion of the possessive forming “apostrophe s” rather than the
pluralizing “s” present in Applicant’s mark. The word “DISCOUNT” in the cited mark
fails to distinguish it from Applicant’s mark as it merely describes a characteristic of
the furniture store services provided by Registrant. Indeed, the word “Discount,”
along with the word “Furniture” has been disclaimed in the cited mark. Although
Applicant has not disclaimed the descriptive portion, i.e., “Furniture” of its applied-
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for mark, we point out that Applicant’s mark is in a compound format, and is thus
considered unitary for disclaimer purposes. TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) Section 1213.05(a) (April 2017). The descriptive meaning of
the term “Furniture” in Applicant’s mark remains the same despite the absence of a
space between it and “BOBS.” While we cannot, and do not, ignore these descriptive
elements in both marks, they have little source-indicating significance.
We are not persuaded by Applicant’s assertion that the apostrophe, along with
other elements in the cited mark, change the connotation of BOB’S from that of BOBS
in Applicant’s mark.7 That is, we do not find that the apostrophe “s” in BOB’S in the
cited mark would be understood as a singular possessive and the lack thereof in
BOBS in Applicant’s mark to render the mark as pluralizing the term BOBS. Rather
we find that both spellings lend a possessive impression to the name BOB in both
marks, particularly given the lack of alternative meanings engendered by the use of

7 Applicant particularly maintains that when the marks are viewed in their entireties they
“clearly” have different meanings and commercial impressions. Specifically, Applicant urges:
The term “BOB’S” and “BOBS” have different
connotations. The use of “BOB’S in Registrant’s marks is as a
possessive which is in line with the context of the registered
marks. BOB’S DISCOUNT FURNITURE means the discount
furniture belonging to Bob. There is no other way to interpret
the connotation of the registered marks.
Applicant’s mark, on the other hand, is not a possessive
use of “BOB” and does not in any way connote the same meaning
as Registrant’s marks. Applicant’s use of “BOBS” is as a plural
noun. More particularly, the plural noun is actually the whole of
Applicant’s mark: FURNITUREBOBS. The connotation being
that FURNITUREBOB is the name of a location and
FURNITUREBOBS is the name of more than one location.

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BOB in connection with Applicant’s identified furniture-related services. Consumers
viewing both Applicant’s and the Registrant’s mark, in their entireties, are likely to
perceive them as identifying furniture store services under the purview of “Bob.”
We also find that the reversal of the positions of BOB and FURNITURE in the
marks fails to distinguish them. “[T]he reversal in one mark of the essential elements
of another mark may serve as a basis for a finding of no likelihood of confusion only
if the transposed marks create distinctly different commercial impressions.” In re
Nationwide Industries Inc., 6 USPQ2d 1882, 1884 (TTAB 1988), (citing Bank of
America National Trust and Savings Assn. v. American National Bank of St. Joseph,
201 USPQ 842 (TTAB 1978), and the cases cited therein). Here, the arrangement of
the essential terms “BOB” and “FURNITURE” in the marks have no bearing on their
connotation, as they still impart the connotation of furniture store services owned
and/or overseen by Bob and they convey very similar commercial impressions. In
making this finding, we are cognizant that it is unlikely that the marks will be viewed
on a side-by-side basis and, given the fallibility of memory of the average purchaser,
he or she may transpose these elements in their own minds, especially in view of the
identical services. To the extent Applicant argues that Applicant’s mark would be
perceived by consumers as the name of more than one location of a furniture store
and the cited mark as an individual that owns the discount furniture that is to be
sold, we find that consumers are likely to perceive the marks as variant marks under
which identical furniture services are offered, perhaps in a different location.

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Although Applicant’s mark and the cited mark differ in appearance and sound due
to additional or transposed elements, we find that in their entireties, they are
substantially similar in connotation and commercial impression due to their shared
essential elements “FURNITURE” and “BOB.” We find so even in the face of the
third-party evidence (discussed below) submitted by Applicant.
We thus find the du Pont factor of similarity of the marks favors affirmance.
D. Strength of Cited Mark
We turn then to the sixth du Pont factor which requires us to consider evidence
pertaining to the number and nature of similar marks used in connection with similar
goods and services, as this is the factor which is at the heart of Applicant’s arguments
in favor of registration of its applied-for mark. Applicant maintains that “the Cited
Marks are very weak when considered in light of the numerous third-party uses of
similar marks on similar goods [and services], both registered marks and common
law trademarks and/or trade names in actual use in the furniture industry; therefore
the Cited Marks only deserve a limited scope of protection.” Br. p. 12.8
Although we have considered all of the evidence of record on this factor, we focus
on that which Applicant highlighted (summarized in table form) during prosecution
and in its brief. We add that we do not find the third-party evidence of additional
entities using Bob’s, Bobs, Bobby, and Bob combined with a surname for furniture as
a collateral attack on the cited registration. Rather, we consider it, as appropriate,
merely to determine the scope of protection to be accorded the cited mark.

8 4 TTABVUE 17.
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Turning then to Applicant’s evidence, we first note that Applicant has made of
record copies of various third-party registrations covering the same or similar goods
and services that include the given name “BOB’S” or derivatives thereof, to show that
the purchasing public is able to distinguish between these businesses based on small
distinctions between the marks. The registrations are summarized in the following
table, included in Applicant’s Response to Office Action dated March 31, 2016 and
reproduced below.9

9 Table 1, submitted with the Response to Office Action dated March 31, 2016; TSDR pp. 4-
6. Copies of the listed registrations are found at TSDR pp. 21-117.
Applicant noted in the footnote for the second Roche Bobois entry that although “[t]his
registration was originally filed under §44(e) of the Lanham Act[,]…a statement of use in
commerce in the U.S. was filed by the registrant on Feb. 22, 2007.

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We find that these registrations have little probative value in our decision
because the marks at issue in this proceeding are much closer to each other than are
any of the marks in the registrations listed above. With the exception of the two Bob
Mills Furniture marks, none of the remaining marks include both the word “BOB’S”
(or any derivative thereof for that matter) and the word “FURNITURE.” The addition
of the non-descriptive surname “Mills” to the BOB MILLS marks imbue those marks
with an additional point of distinction between them and Applicant’s mark that is not
found in the cited mark.
Applicant also made of record a table summarizing a listing of verified businesses
that use the name BOB’S (or derivatives thereof) to identify furniture-related
businesses. These business were identified using either the Demographics Now®
database or a limited Google® search, and were subsequently contacted by one of
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Applicant’s attorneys, whose affidavit is of record, to verify actual use of the
trademarks/trade names in connection with furniture-related goods and services.
These business are summarized in the tables reproduced below.10
Table 2:

10 Tables 2 and 3, submitted with the Response to Office Action dated March 31, 2016; TSDR
pp. 31-34.
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Table 3:

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Again, while this evidence appears prolific, of the verified thirty-nine uses, only
eleven include both the terms “BOB’S” and “FURNITURE.” Of those eleven, six
include additional terms which further distinguish the marks and alter their
commercial impressions, i.e., BOB’S FURNITURE & BEDDING, BOB’S
FURNITURE REPAIR SERVICE, BOB’S FURNITURE & AUCTION, BOB MILLS
FURNITURE, BOB’S FURNITURE HOSPITAL and BOB LOFTIS FURNITURE. We
find the remaining five uses, i.e., BOB’S FURNITURE, BOB’S NEW & USED
FURNITURE, BOB’S FURNITURE OUTLET, BOB’S FURNITURE AND BOB’S
FAMILY FURNITURE, do not evidence such a widespread and significant use of the
terms “BOBS” and “FURNITURE” in the furniture industry that we can conclude
that the cited mark is so weak that the public would be able to distinguish the source
of Applicant’s services from those of Registrant by the slight differences in their
respective marks. Cf., Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA
v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136, n.2 (Fed.
Cir. 2015) (at least fourteen relevant third-party uses or registrations of record); Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1672, n.1 (Fed.
Cir. 2015) (at least twenty-six relevant third-party uses or registrations of record);
see also, In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996) (“Broadway” is
weak for restaurant services based on evidence that hundreds of restaurants and
eating establishments use Broadway as a trademark or trade name).
Applicant also made of record third-party registration evidence demonstrating
that it is common practice in the furniture industry to utilize a given name in
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combination with additional terms, usually descriptive or generic in nature, to
identify their goods and/or services to their consumers. Examples of these marks
include, by way of example, LINDA’S STUFF (Registration No. 4617600), STEVE’S
STATION (Registration No. 4115847), DANIEL’S AMISH (Registration No. 467760)
and BILLY BALDWIN (Registration No. 2588057). While the marks in these
registrations show use of given names in the furniture industry, they have little to no
persuasive value in our determination of whether the use of the given name “Bob”
with the descriptive/generic term “Furniture” is so prevalent in the furniture industry
that marks including the term are entitled to only a limited scope of protection.
While this evidence fails to demonstrate that the cited mark is entitled to only a
narrow scope of protection, we recognize that there is a certain degree of weakness in
the cited mark given that it is comprised of descriptive terms and a given name.
Nonetheless, even weak marks are entitled to protection against registration of
similar marks for identical goods and/or services. King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 1401 182 USPQ 108, 109 (C.C.P.A. 1974). See also In re
Max Capital Group, 93 USPQ2d 1243, 1246 (TTAB 2010); In re Colonial Stores, 216
USPQ 793, 795 (TTAB 1982). Here, Registrant is at least entitled to protection from
registration of Applicant’s very similar mark for identical services.
In view of the foregoing the sixth du Pont factor, at best, slightly favors Applicant.
Lastly, we note that both Applicant and the Examining Attorney have relied on a
number of prior decisions to bolster their positions with regard to a finding, or not, of
likelihood of confusion in this case. While our decision is made within the confines of
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established statutes, rules and case precedent, it is axiomatic that each case must be
decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics
similar to [Applicant’s] application, the PTO’s allowance of such prior registrations
does not bind the Board or this court.”); and In re Merrill Lynch, Pierce, Fenner &
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). We are therefore
obligated and have assessed the registrability of Applicant’s mark on its own merits
and have carefully considered the arguments and evidence of record in this case, even
if not specifically addressed in the decision.
E. Conclusion
Based on our findings above, we are unpersuaded by Applicant’s argument that
there is only a theoretical possibility of likelihood of confusion. Instead, we conclude
that despite any weakness that may be attributed to the mark in the cited
registration, given the identity of the services, trade channels and classes of
purchasers, and the similarity in the commercial impressions of the marks, a
likelihood of confusion exists between Applicant’s applied-for mark
FURNITUREBOBS and the cited registered mark BOB’S DISCOUNT FURNITURE.
Decision: The refusal to register Applicant’s mark FURNITUREBOBS under
Section 2(d) of the Trademark Act is affirmed.