Hytex Industries Inc.

Trademark Trial and Appeal Board

Jul 9, 2002

No. 75783289 (T.T.A.B. Jul. 9, 2002)

Paper No. 10
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hytex Industries Inc.
________
Serial No. 75/783,289
_______
Charles Hieken of Fish & Richardson P.C. for Hytex Industries
Inc.
Bridgett Smith, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Hohein, Bottorff and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Applicant, Hytex Industries Inc., has appealed from the
final refusal of the Trademark Examining Attorney to register the
mark BEDFORD for "decorative vertical textiles; namely,
acoustical panels for vertical surfaces for buildings sold to the
commercial interiors market through a distribution network of
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/783,289
2
professionals who are with interior designers, facility managers
and contractors in their respective markets."1
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 mark BEDFORD VILLAGE for "prefinished wall paneling"2 and the
mark BEDFORD PARK for "wallpaper sample" and "wallpaper,"3 each
owned by a different entity, as to be likely to cause confusion.
When the refusal was made final, applicant appealed.4
Briefs have been filed, but an oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular
attention to the factors most relevant to the case at hand,
including the similarity of the marks and the relatedness of the
goods or services. See Federated Foods, Inc. v. Fort Howard
1 Application Serial No. 75/783,289, filed August 24, 1999, alleging
dates of first use and first use in commerce in 1984.
2 Registration No. 1,470,675 owned by Georgia-Pacific Corporation;
issued December 29, 1987; Sections 8 and 15 affidavits accepted and
acknowledged, respectively.
3 Registration No. 1,980,620 owned by Rosedale Wallcoverings Inc.;
issued June 18, 1996 under Section 44 of the Trademark Act.
4 A final requirement for acceptable specimens was withdrawn by the
Examining Attorney in her appeal brief and is therefore moot.
Ser No. 75/783,289
3
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) and In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Turning first to the goods, the Examining Attorney contends
that applicant's and registrants' goods are related in that they
are, in each case, decorative wall coverings. To support her
position, the Examining Attorney has made of record third-party
registrations purporting to show that the same marks are
registered for various types of decorative wall coverings. In
addition, the Examining Attorney has submitted excerpts of
articles from the NEXIS database which, according to the
Examining Attorney, show that "paneling and wallpaper...[are
used] as a complement to one another" and that the respective
goods travel in the same channels of trade to the same
purchasers. While noting that applicant's identification of
goods is restricted to professional purchasers and commercial
channels of trade, the Examining Attorney points out that there
are no such limitations in either of the cited registrations and
contends that although such purchasers may be knowledgeable in a
particular field, they are not necessarily knowledgeable about
trademarks.
Applicant argues, based on the market and purchaser
limitations in its identification of goods, that registrants'
respective products, wall paneling and wallpaper, are different
goods in different classes than applicant's "decorative vertical
Ser No. 75/783,289
4
textiles; namely, acoustical panels for vertical surfaces for
buildings sold to the commercial interiors market...". Applicant
maintains that the differences in the goods "are such that these
knowledgeable professionals" in the relevant field "would
recognize that the respective goods come from different sources."
To begin with, the question is not whether purchasers can
differentiate the goods themselves, but rather whether purchasers
are likely to confuse the source of the goods. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
Thus, it is not necessary that the goods be identical or even
competitive to support a finding of likelihood of confusion. It
is sufficient if the respective goods are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Nevertheless, in this case, registrant's broadly described
wall paneling offered under the BEDFORD VILLAGE mark must be
deemed to encompass applicant's wall coverings described as
"decorative vertical textiles, namely acoustical panels" for
walls (or specifically "vertical surfaces for buildings"). Thus,
Ser No. 75/783,289
5
these goods must be considered legally identical, directly
competitive products.5
Moreover, applicant's "decorative vertical textiles; namely,
acoustical panels for vertical surfaces for buildings" and the
wallpaper offered under the BEDFORD PARK mark are at least
closely related products. Despite different wording, the
respective identifications describe goods which have overlapping,
if not interchangeable, functions and purposes. Applicant's
products are essentially wall coverings consisting of decorative
and sound insulated fabric panels.6 Wallpaper may be constructed
of the same fabric materials as applicant's wall coverings and,
like those wall coverings, may provide a sound-insulating as well
as decorative function.7 For example, a NEXIS article from The
Connecticut Law Tribune (February 4, 1991) refers to this type of
utilitarian function in the context of office design: "...a
common problem in office design is too-thin walls. An interior
5 We would also point out that the classification of goods is an
administrative matter and is not significant in determining whether
goods are related.
6 The Board takes judicial notice of the definition of "textile" as
"[a] cloth, especially one manufactured by weaving or knitting; a
fabric." (The American Heritage Dictionary of The English Language (4th
ed. 2000).
7 Wallpaper is defined in The Random House Dictionary of the English
Language (Second ed. Unabridged 1987) as "any fabric, foil, vinyl
material, etc., used as a wall or ceiling covering." In The New
Encyclopaedia Britannica (15th ed. Vol. 12), "wallpaper" is described as
an "ornamental and utilitarian covering for walls...." The Board takes
judicial notice of these reference works.
Ser No. 75/783,289
6
designer might recommend acoustical panels or wallpaper and
acoustical ceiling tiles that would contain the sound...".8
We note that applicant's identification of goods is
restricted to professional purchasers in commercial markets.
However, in the absence of any restriction in either of the cited
registrations, we must assume that registrants' wall coverings
may be sold, not only through the consumer marketplace, but also
through the same commercial markets as applicant's and to the
same commercial buyers such as hotels, office buildings and
restaurants.
We agree with applicant that the overlapping customers for
the respective goods would be relatively careful and
knowledgeable professionals. However, even knowledgeable buyers
of commercial goods are not immune from source confusion,
particularly under circumstances where those purchasers are
buying directly competitive products under similar marks. See,
8 In determining that the respective products are related, however, the
remaining NEXIS references, for the most part, are not particularly
useful in that they do not refer to the types of goods applicant
provides under its mark (for example, applicant provides wall coverings
not ceiling coverings) or they do not reflect the relevant, commercial
market and purchasers for the goods. Nor did we find the three third-
party registrations made of record by the Examining Attorney to be
persuasive. Only one of the registrations tends to support a claim
that fabric wall coverings and acoustic panels are related. One other
registration is not based on use, and a third registration does not
include the goods identified in the application.
Ser No. 75/783,289
7
e.g., Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1547, 14 USPQ2d 1840 (Fed. Cir. 1990).
Thus we turn our attention to the marks, keeping in mind
that when marks would appear on identical or closely related
goods, the degree of similarity between the marks necessary to
support a finding of likelihood of confusion declines. Century
21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
Applicant refers to the "evident differences" in the marks
noting specifically that "the registered marks contain VILLAGE
and PARK, respectively, whereas applicant's mark does not."
Applicant also points to the coexistence of these two
registrations reasoning that "if these two marks have been ruled
by the Patent and Trademark Office not confusingly similar to
each other for the goods designated in the registrations owned by
different entities, a fortiori neither is confusingly similar to
BEDFORD for [the identified goods]."
When compared in their entireties, applicant's mark BEDFORD
is similar in sound, appearance and commercial impression to the
cited marks BEDFORD VILLAGE and BEDFORD PARK. The word BEDFORD
is applicant's entire mark and is visually and aurally a
significant part of each registered mark. As the first word
purchasers will see or hear when encountering registrants' marks,
BEDFORD creates a strong impression and is likely to be
Ser No. 75/783,289
8
remembered by purchasers when they encounter applicant's mark
BEDFORD on very similar goods at a different time.
Moreover, the addition of the word VILLAGE or the word PARK
to BEDFORD does not significantly change the meaning or
commercial impression created by the word BEDFORD alone.
Applicant's mark BEDFORD and the mark BEDFORD VILLAGE or BEDFORD
PARK connote variations of the same geographic place. Because
these geographic terms convey a similar and, in each case,
arbitrary meaning in relation to these closely related or
directly competitive goods, purchasers are likely to assume that
BEDFORD identifies a different line of registrants' wall
coverings rather than a different source for those products.
The fact that the two cited marks coexist on the register is
irrelevant to our determination. The similarity of the cited
marks to each other is not in issue and, in any event, the mark
applicant is seeking to register, the word BEDFORD alone without
any additional wording, is more similar to each of the cited
marks than they are to each other.9
9 With its brief, applicant submitted a printout from the TESS database
showing a list of third-party applications and registrations for marks
containing the term "Bedford." The Examining Attorney objected to this
submission as untimely. In response, applicant, in its reply brief,
argued that it is entitled to rely on Office records to support its
case and requested that the Board remand the application to the
Examining Attorney for consideration of the evidence. The evidence is
untimely under Trademark Rule 2.142(d) and applicant has not shown good
cause to remand the application to the Examining Attorney. See TBMP §
1207.02. Therefore, the request to remand is denied, and the evidence
will not be considered. In any event, the Board does not take judicial
Ser No. 75/783,289
9
Decision: The refusal to register is affirmed.
notice of applications or registrations residing in the Office and a
mere listing of them, unsupported by copies, is not sufficient to make
them of record. See In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
Moreover, a list of marks alone, apart from the goods or services on
which the marks are used, is of no probative value.