Hughes Supply IP, Inc.

Trademark Trial and Appeal Board

May 13, 2003

No. 75907894 (T.T.A.B. May. 13, 2003)

Paper No. 17
TJQ
Mailed: 5/13/03
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hughes Supply IP, Inc.1
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Serial No. 75/907,894
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Terry M. Sanks and Robert L. Wolter of Beusse, Brownlee,
Bowdoin & Wolter for applicant.
Matthew Swyers, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Seeherman, Quinn and Bucher, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Hughes Supply IP,
Inc. to register the mark OH-SO-SOFT for “water softening
units; and accessory parts therefor, namely filters.”2
1 The application originally was filed by Hughes Supply
Management Services, Inc. An assignment to the above-identified
applicant was recorded in the records of the Assignment Branch of
the Office on March 11, 2002 at reel 2472, frame 0338.
2 Application Serial No. 75/907,894, filed February 2, 2000,
alleging a bona fide intention to use the mark in commerce.
Applicant subsequently filed an amendment to allege use setting
forth dates of first use anywhere and first use in commerce as
February 2000.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/907,894
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered mark O-SO
PURE (“PURE” disclaimed) for “water conditioning units”3 as
to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant contends that the marks are different in
sound, appearance and meaning. While applicant concedes
that the beginnings of the marks are phonetically
equivalent, applicant points to the dissimilarities between
the ends of the marks. As to the goods, although applicant
“does not contest that there is some common level of
generality between the goods since both goods are
identified for use with units that treat water in some
fashion” (brief, p. 8), applicant goes on to argue that
there are differences between applicant’s and registrant’s
goods. Further, according to applicant, its goods are sold
to sophisticated purchasers. In support of its position,
applicant submitted dictionary definitions of the words
3 Registration No. 1,996,751, issued August 27, 1996; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/907,894
3
“soft” and “pure,” and the declaration of one of
applicant’s managers relating to the absence of any known
instances of actual confusion.
The Examining Attorney maintains that “both the
applicant and the registrant’s marks utilize the
phonetically equivalent, dominant, arbitrary prefixes OH-SO
and O-SO in conjunction with the descriptive or suggestive
terms SOFT and PURE” (brief, p. 5). The Examining Attorney
also asserts that the goods are related, and that the goods
must be compared as they are specifically identified in the
identifications of goods. In support of the refusal, the
Examining Attorney introduced a dictionary definition of
“soft water,” and third-party registrations which show that
parties have registered a single mark for both types of
goods involved herein.
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 between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 75/907,894
4
With respect to the goods, it should be noted that it
is not necessary that the goods be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the goods originate from or are in some way associated
with the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
We find that applicant’s water softening units and
registrant’s water conditioning units are, at a minimum,
closely related. Both are used to treat water, albeit,
perhaps, in somewhat different manners. Further,
registrant’s goods are broadly identified, and the
terminology “water conditioning units” is arguably broad
enough to cover goods of the type sold by applicant.
In connection with comparing the goods, we have taken
note that the Examining Attorney has introduced into the
record third-party registrations which show that parties
have registered a single mark for both water conditioning
units and water softening units. Third-party registrations
which individually cover both types of goods and which are
Ser No. 75/907,894
5
based on use in commerce serve to suggest that the listed
goods are of a type which may emanate from a single source.
See: In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993).
Applicant argues that the channels of trade for its
goods and registrant’s goods are different, and
specifically that applicant’s goods are sold to
sophisticated purchasers (e.g., water well drillers and
plumbing contractors). According to applicant, its goods
range in price from thirty dollars for a filter to several
thousand dollars for a complete system.
It is not clear to us that a filter which costs thirty
dollars would be purchased with a great deal of care. More
importantly, the question of likelihood of confusion must
be determined on the basis of the identification of goods
set forth in the subject application and the cited
registration. In re Elbaum, 211 USPQ 639 (TTAB 1981). The
identifications of goods do not include any limitations,
and therefore we must deem the goods to move through all
normal channels of trade, and to all relevant purchasers.
These channels would include such places as do-it-yourself
hardware stores, and consumers would include the public at
large. Thus, we are not persuaded by applicant’s assertion
that its customers are sophisticated.
Ser No. 75/907,894
6
We next turn to compare the marks OH-SO-SOFT and O-SO
PURE. The marks are similarly constructed, beginning with
the phonetically equivalent, arbitrary OH-SO and O-SO
portions, followed by the descriptive terms SOFT and PURE.
The marks, when considered in their entireties, are similar
in sound and appearance. Although there are specific
differences between SOFT and PURE, when these words are
used in the context of water conditioning/softening units,
they have a similar connotation, and the overall commercial
impressions of the marks are the same. Thus, it is
reasonable to assume that consumers familiar with the mark
O-SO PURE will view the mark OH-SO-SOFT as a variant
thereof, and believe that registrant has expanded its brand
to a closely related product. In finding that the marks
are similar, we have kept in mind the fallibility of human
memory over time and the fact that consumers usually retain
a general rather than a specific impression of trademarks
encountered in the marketplace.
Finally, we have considered the declaration of Richard
Davis, one of applicant’s area managers. Mr. Davis states
that since February 2000, applicant has sold about 1,500
units throughout the Midwest and eastern United States, and
that he is not aware of any instances of actual confusion
between the involved marks.
Ser No. 75/907,894
7
Although the absence of actual confusion over a long
period of time is a factor which is indicative of no
likelihood of confusion, it is a meaningful factor only
where the record demonstrates appreciable and continuous
use by applicant of its mark in the same markets as those
served by registrant under its mark. See: Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In
particular, there must be evidence showing that there has
been an opportunity for incidents of actual confusion to
occur. See: Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed Cir. 2000).
In the present case, we do not find Mr. Davis’
declaration to be persuasive that confusion is not likely.
It is possible that confusion has not occurred because of
applicant’s fairly limited sales over a relatively short
period of time. Moreover, we have not had an opportunity
to hear from registrant in this ex parte proceeding as to
what its experience has been regarding actual confusion.
We conclude that purchasers familiar with registrant’s
water conditioning units sold under registrant’s mark O-SO
PURE would be likely to believe, upon encountering
applicant’s mark OH-SO-SOFT for water softening units and
filters therefor, that the goods originated with or are
somehow associated with or sponsored by the same entity.
Ser No. 75/907,894
8
Decision: The refusal to register is affirmed.