J. Pace Enterprises, Inc.

Trademark Trial and Appeal Board

Feb 18, 2014

No. 85523071 (T.T.A.B. Feb. 18, 2014)

Mailed: February 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re J. Pace Enterprises, Inc.
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Serial No. 85523071
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Matthew H. Swyers, The Trademark Company, for J. Pace
Enterprises, Inc.

Naakwama S. Ankrah, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Cataldo, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

J. Pace Enterprises, Inc. (“applicant”) filed an
application to register the mark shown below1 for services
identified as “On-line retail store services featuring various
interior design products, and decorative indoor and outdoor
products, furnishings and decorations,” in International Class
35:

1 Serial No. 85523071, filed January 23, 2012, under Section 1(a) of
the Trademark Act, claiming dates of first use and first use in
commerce on October 6, 2011.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85523071
2

The trademark examining attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark
so resembles the registered mark OVERSTOCK.COM, in typed format,2
on the Principal Register for “On-line wholesale and retail
store services featuring general consumer merchandise, namely,
clothing, shoes, bath and body products, jewelry, electronics,
cookware, housewares, appliances, furniture, linens, pillows,
decorative accessories, office furniture and accessories, toys,
games, sporting goods, tools, outdoor lawn and garden equipment,
pet supplies and paper products,”3 in International Class 35,
claiming acquired distinctiveness, and “On-line wholesale and

2 “Prior to November 2, 2003, ‘standard character’ drawings were known
as ‘typed’ drawings. The mark on a typed drawing had to be typed
entirely in capital letters. A typed mark is the legal equivalent of
a standard character mark.” Trademark Manual of Examining Procedure
(“TMEP”) § 807.03(i) (Oct. 2013).

3 Registration No. 2939764, issued April 12, 2005. Sections 8 and 15
accepted and acknowledged.

Serial No. 85523071
3
retail store services featuring general merchandise,”4 also in
International Class 35, on the Supplemental Register, both
registrations owned by the same registrant, that when used on or
in connection with applicant’s identified services, it is likely
to cause confusion or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register under Section 2(d).
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (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”).

4 Registration No. 2503246, issued October 30, 2001. Section 8
accepted. Renewed.
Serial No. 85523071
4
The Services and Channels of Trade

The application identified “on-line retail store services
featuring various interior design products, and decorative
indoor and outdoor products, furnishings and decorations.”
Registration No. 2939764 includes “on-line wholesale and retail
store services featuring” among other things “furniture,”
“decorative accessories,“ and “office furniture and
accessories.” These services clearly overlap, and are in-part
identical. Similarly, Registration No. 2503246 includes “on-
line wholesale and retail store services featuring general
merchandise,” which would encompass furnishings and decorations
as a subset. Accordingly, the services are, with this cited
registration also, in-part identical. Likelihood of confusion
may be found based on any item that comes within the
identification of goods and/or services in the involved
application. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
With regard to channels of trade, despite applicant’s
arguments to the contrary, the only limitation in its
identification is that its services are offered online, the same
limitation specified in the cited registrations. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he authority is
legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods

Serial No. 85523071
5
set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods [or
services], the particular channels of trade or the class of
purchasers to which the sales of goods are directed.” [citations
omitted]). Accordingly, since both applicant and registrant
offer on-line retail store services for some of the same goods,
we find that they offer in-part identical services through
identical channels of trade, and that these du Pont factors
weigh heavily in favor of finding a likelihood of consumer
confusion.
The Marks
Preliminarily, we note that the more similar the goods or
services at issue, the less similar the marks need to be for the
Board to find a likelihood of confusion. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992). We consider and compare the appearance,
sound, connotation and commercial impression of the marks in
their entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005).
In comparing the marks, we are mindful that 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
impression so that confusion as to the source of the goods
and/or services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Serial No. 85523071
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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 unpublished, No. 92-1086 (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. 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).
The mark in the cited registrations consists simply of the
term OVERSTOCK.COM. in typed format. Applicant’s mark
incorporates in full this term. Although we cannot and do not
disregard the remainder of applicant’s mark, it is apparent that
this term is displayed in all caps in applicant’s mark, giving
it a more dominant effect. See In re National Data Corp., 224
USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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 consideration of the marks in their
entireties.”). In this regard, we also note that, while
applicant’s mark has a design element, it does not significantly
change the commercial impression of the mark, since consumers
are likely to refer to the services by their name. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012), citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed.
Cir. 1983); In re Dakin’s Miniatures Inc., 59 UPSQ2d 1593, 1596
(TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553,
1554 (TTAB 1987). This is particularly true since the design
Serial No. 85523071
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element consisting primarily of a stylization of the letters
“DO.com” clearly represents and serves as an abbreviation for
the words below, “DecorOVERSTOCK.com.”
Although there are specific differences in the marks, these
differences are not sufficient to distinguish the services.
Instead, consumers who are aware of the registrant’s
OVERSTOCK.COM mark for online retail store services for the wide
range of products listed in the identification, are likely to
believe, when they see applicant’s mark used in connection with
online retail store services featuring various interior design
products, and decorative indoor and outdoor products,
furnishings and decorations, that this is a variation of the
registrant’s OVERSTOCK.COM mark, adopted to identify its general
online retail store services specializing in decor.
We note applicant’s argument that the shared term
“OVERSTOCK” is descriptive and weak. Applicant submitted over
half a dozen use-based registrations containing the term
“OVERSTOCK,” for “on-line retail” services where either the term
was disclaimed or claimed with acquired distinctiveness on the
Principal Register, or it was registered on the Supplemental
Register. Indeed the cited registrations, Nos. 2503246 and
2939764 are registered on the Supplemental Register and the
Principal Register with acquired distinctiveness, respectively.
However, that the latter was registered on the Principal
Register entitles it to a presumption of validity, and its
issuance pursuant to Section 2(f) shows that the examining
attorney was persuaded that any descriptiveness had been
Serial No. 85523071
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overcome by a showing of acquired distinctiveness. Our
precedent dictates that even weak registrations are entitled to
protection against registration of confusingly similar marks for
legally identical goods or services. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion “is to be avoided as much as between
‘weak’ marks as between ‘strong’ marks, or as between a ‘weak’
mark and a ‘strong’ mark”); and In re The Clorox Co., 578 F.2d
305, 198 USPQ 337 (CCPA 1978) (ERASE for a laundry soil and
stain remover held confusingly similar to STAIN ERASER,
registered on the Supplemental Register, for a stain remover).
Accordingly, we find this du Pont factor to also weigh in
favor of finding a likelihood of consumer confusion.
Level of Consumer Care
Applicant urges us to consider consumer sophistication and
the level of care that consumers would likely exercise in using
its services. In this regard, as with the other du Pont
factors, we are bound by the parties’ respective identifications
of services. Octocom Systems, Inc. v. Houston Computers
Services Inc., 16 USPQ2d at 1787. Applicant’s declarant has
admitted that its services are offered not just to “interior
decorators” but to all “those who are decorating their homes.”
(Pace decl. at para. 3). This includes, of course, the general
public, which belies his conclusion that there is “no overlap”
with those who use registrant’s services. Id. Mr. Pace also
admits that items sold by applicant under its mark cost as
little as “$10.00” while those sold by registrant under its mark
Serial No. 85523071
9
cost as little as “$2.99.” Id. at para. 9. With the online
retail stores selling legally identical items at this price
point, consumers would not be expected to exercise a high degree
of care. Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949
(Fed. Cir. 2000). Accordingly, we find this du Pont factor to
favor finding likelihood of confusion.
Actual Confusion
Applicant argues that there has not been any actual
confusion. We note, however, that the lack of evidence of
“actual confusion” carries little weight, especially in an ex
parte context. In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) Accordingly, we find
this factor to be neutral.
Balancing the Factors
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent
du Pont likelihood of confusion factors. As our precedent
dictates, we resolve doubt in favor of the prior registrant.
See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988). We conclude that with legally identical
services travelling in the same channels of trade, and similar
marks with similar connotations, and with generally
unsophisticated consumers not expected to exercise a high degree
of care, there is a likelihood of confusion between applicant’s
mark for the services for which it seeks registration and the
registered marks OVERSTOCK.com for the legally identical
services.
Serial No. 85523071
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Decision: The refusal to register is affirmed.