Joe A. Machiz

Trademark Trial and Appeal Board

Apr 8, 2020

88238871 (T.T.A.B. Apr. 8, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Joe A. Machiz
_____

Serial No. 88238871
_____

James T. Hollin, Jr. of JT Hollin, Attorney at Law, P.C.,
for Joe A. Machiz.
Tiffany Y. Chiang, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Wellington, Shaw, and Dunn,
Administrative Trademark Judges.

Opinion by Dunn, Administrative Trademark Judge:
Joe A. Machiz (Applicant) seeks registration on the Principal Register of the mark1

1 Application Serial No. 88238871 filed on December 21, 2018, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.
Serial No. 88238871
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for “accent furniture; buffets being furniture; custom furniture; patio furniture;
tables” in International Class 20. The application describes the mark as “the
silhouette of a male waiter wearing a bowtie, standing on a pedestal having a fleur
de lis emblem, the waiter balancing an oval-shaped tray horizontally on his left hand
and immediately to the right of the silhouette, the word ‘MONSIEUR’ appears in
large capital letters.”
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, so resembles the registered mark
MONSIEUR MARBLE (standard characters) for “coasters, not of paper or textile;
drinking glasses; flasks; mugs; plates; serving trays; soapstone cubes for chilling
whiskey,” in International Class 21,2 on the Principal Register as to be likely to cause
confusion, to cause mistake, or to deceive.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on
an analysis of all probative facts in the record that are relevant to the likelihood of

2 Registration No. 5531224, issued July 31, 2018.
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confusion factors set forth in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 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 (CCPA 1976). These factors, and the other relevant DuPont
factors now before us, are discussed below. We must consider each relevant DuPont
factor for which there is evidence or argument. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
As a preliminary matter we address Applicant’s contention that an earlier decision
by a different examining attorney should be treated as “prima facie evidence” that
there is no likelihood of confusion here.3 Applicant argues that her prior application
for the similar mark for almost the same goods, later
abandoned, was pending and not cited as a potential bar to registration of the
Registrant’s application, and so, we should not allow Registrant’s registration to bar

3 4 TTABVUE 12-15. Citations in this opinion to the briefs refer to TTABVUE, the Board’s
online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
Specifically, the number preceding TTABVUE corresponds to the docket entry number, and
any numbers following TTABVUE refer to the page number(s) of the docket entry where the
cited materials appear.
Serial No. 88238871
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Applicant’s second, similar application.4 This argument is not persuasive because the
decision of an examining attorney is not a judgment, and is not binding on the Board,
which must decide each case on its own merits. See In re Nett Designs, Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Accord In re Eagle Crest Inc., 96
USPQ2d 1227, 1229 (TTAB 2010); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472
(TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986).
A. Strength of the Registered Mark
The fifth DuPont factor is the “fame” or strength of the prior mark, and the sixth
factor is the number and nature of similar marks in use for similar goods. DuPont,
177 USPQ at 567. In determining the strength of a mark, we consider both inherent
strength, based on the nature of the mark itself, and, if evidence is submitted (which
it was not in this case), commercial strength, based on recognition in the relevant
market. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed.
Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”). “In order to
determine the conceptual strength of the cited mark, we evaluate its intrinsic nature,
that is, where it lies along the generic-descriptive-suggestive-arbitrary (or fanciful)
continuum of words.” In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014).
The Examining Attorney and Applicant do not agree on the strength of the term
MONSIEUR, which the Examining Attorney argues is the dominant feature of the

4 Application Serial No. 86643668 filed May 28, 2015 under Section 1(b) of the Trademark
Act for “furniture; furniture made from wood or substitutes for wood; library furniture; patio
furniture; tables” was abandoned January 21, 2019 for failure to file the statement of use.
Serial No. 88238871
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registered mark.5 The Examining Attorney submitted the dictionary definition for
the term MONSIEUR, which is defined as “a Frenchman of high rank or station —
used as a title equivalent to Mister and prefixed to the name of a Frenchman.”6 An
arbitrary mark is a “known word used in an unexpected or uncommon way.” Nautilus
Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed.
Cir. 2004). See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (an arbitrary term is
“conceptually strong as a trademark”). Because the record shows no connection,
descriptive or otherwise, between the term MONSIEUR and the registered goods
“coasters, not of paper or textile; drinking glasses; flasks; mugs; plates; serving trays;
soapstone cubes for chilling whiskey,” we find that the term MONSIEUR in the mark
is arbitrary, and conceptually strong as applied to the registered goods.
Under the sixth DuPont factor, a mark’s strength may be curtailed by extensive
third party use of similar marks with similar goods or services. Jack Wolfskin
Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1135-1136 (Fed. Cir. 2015); Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015).
Although registrations are not proof of use, third party registrations may indicate
that a mark carries a suggestive or descriptive connotation in the particular industry,

5 6 TTABVUE 6.
6 March 21, 2019 Office Action, TSDR 8 [pdf]. Citations to the application record are to
downloaded pages from the USPTO’s Trademark Status & Document Retrieval (TSDR)
database.
Serial No. 88238871
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and is weak for that reason. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co.,
908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (“The purpose of introducing
evidence of third-party use is “to show that customers have become so conditioned by
a plethora of such similar marks that customers ‘have been educated to distinguish
between different [such] marks on the bases of minute distinctions.’”) (citations
omitted); Juice Generation at 1675, citing Anthony’s Pizza & Pasta Int’l, Inc., 95
USPQ2d 1271, 1278 (TTAB 2009) (“The testimony, third-party registrations, and
telephone listings are sufficient to show that the name ‘Anthony’s’ has been
extensively adopted, registered and used as a trademark for restaurant services, in
particular for Italian restaurants and pizzerias, and therefore that ‘Anthony’s’ has a
significance in this industry. … As a result, a mark comprising, in whole or in part,
the name ‘Anthony’s’ in connection with restaurant services should be given a
restricted scope of protection.”).
Here, Applicant has not submitted evidence that the term MONSIEUR has been
extensively registered in the housewares industry so as to undercut its strength when
applied to Registrant’s goods. Instead, Applicant confuses registrations within a
specific industry with registrations within an international class, and argues that if
a mark is registered more than once within an international class, this is sufficient
to weaken the scope of protection for the mark.7 While each international

7 4 TTABVUE 21-23. Applicant submitted 25 third party MONSIEUR registrations which
Applicant describes as five MONSIEUR registrations for International Class 3 cosmetics,
perfumes, or makeup products; seven MONSIEUR registrations for International Class 35
and 43 restaurant services, or providing of food and drink; five MONSIEUR registrations for
International Class 3 wines, alcoholic beverages, and/or beers; three MONSIEUR
registrations for International Class 25 clothing, pants, shirts, sweaters, dresses, and other
Serial No. 88238871
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classification has a broad heading, there is no factual or legal support for finding that
all items within the class belong to the same industry for the purpose of assessing the
strength of a mark. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 128
USPQ2d at 1694 (“[T]he present analysis [of whether third party use affects the
mark’s scope of protection] only involves goods like those being offered by the parties
to the ‘relevant public,’ while third-party use outside of that relevant market is
meaningless.”); In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed.
Cir. 2017) (“Symbolic has neither introduced evidence, nor provided adequate
explanation to support a determination that the existence of I AM marks for goods in
other classes, e.g., its class 25 registration for clothing, support a finding that
registrants’ marks are weak with respect to the goods identified in their
registrations.”). See also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047,
1051 (Fed. Cir. 2018) (“Classification is solely for the ‘convenience of Patent and
Trademark Office administration,’ and ‘is wholly irrelevant to the issue of
registrability under section 1052(d)’”) (citations omitted).
In assessing the strength of the registered mark MONSIEUR MARBLE, there
little dispute that the term MARBLE has descriptive significance as applied to the
goods. The term MARBLE is defined as “limestone that is more or less crystallized
by metamorphism, that ranges from granular to compact in texture, that is capable

types of clothing; and two MONSIEUR registrations for International Class 9 household
appliances goods, and argues “[b]y analysis of the examples above, it is established that the
frequent use of the word, ‘MONSIEUR’ for marketing a similar, or essentially the same,
product or service within the same specific International Class (IC) by multiple entities, is
permitted by USPTO.”
Serial No. 88238871
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of taking a high polish, and that is used especially in architecture and sculpture.”8
Because the term MARBLE may describe the material composition of the
registered “coasters, not of paper or textile; drinking glasses; flasks; mugs; plates;
serving trays; soapstone cubes for chilling whiskey,” it will be perceived as descriptive
as applied to the goods.9 In fact, in its brief Applicant asserts “the standalone term
‘MONSIEUR MARBLE’ evidently attempts to create the hint that the product is
beverage coasters made of marble.”10 While the term MARBLE is not disclaimed in
the registration, the absence of a disclaimer does not mean that a word or phrase in
a registration is distinctive in the registered mark, so that that part of the mark must
be treated the same as an arbitrary feature. See In re Detroit Athletic Co., 128
USPQ2d at 1050 (“[T]he record evidence shows that, regardless of whether ‘Co.’ and
‘Club’ were disclaimed, they do not serve source-identifying functions); In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985) (“The registration affords
prima facie rights in the mark as a whole, not in any component. Thus, a showing of

8 https://www.merriam-webster.com/dictionary/marble. Merriam-Webster, https://
www.merriam-webster.com/ (3/31/20). The Board may take judicial notice of dictionary
definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP,
110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir.
2016).
9 Because the identification of goods does not specify marble as the material composition of
the registered goods, the Examining Attorney erred in contending that, based on the
specimen in the registration file, “marble clearly is a key feature and primary composition
of Registrant’s goods.” 6 TTABVUE 7. The nature and scope of a party’s goods must be
determined on the basis of the goods recited in the application. In re Detroit Athletic Co.,
128 USPQ2d at 1052 (“The relevant inquiry in an ex parte proceeding focuses on the goods
and services described in the application and registration, and not on real-world
conditions.”).
10 4 TTABVUE 20.
Serial No. 88238871
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descriptiveness or genericness of part of a mark does not constitute an attack on the
registration.”).11
Based on this record, we find that the dominant feature of the mark MONSIEUR
MARBLE for the registered goods is the arbitrary term MONSIEUR. While the
addition of the descriptive term MARBLE creates a more narrow commercial
impression for the mark MONSIEUR MARBLE than the literal term MONSIEUR
standing alone, MONSIEUR MARBLE is arbitrary as applied to Registrant’s
“coasters, not of paper or textile; drinking glasses; flasks; mugs; plates; serving trays;
soapstone cubes for chilling whiskey.” As an arbitrary mark, MONSIEUR MARBLE
is conceptually strong, and there is no record evidence of third party use on similar
goods which warrants narrowing the scope of protection we give to arbitrary marks.
In sum, the fifth and sixth DuPont factors favor a likelihood of confusion.
B. Similarity or Dissimilarity of the Marks
We consider the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation, and commercial impression. See Palm Bay, 73
USPQ2d at 1689. “Similarity in any one of these elements may be sufficient to find
the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746

11 To the extent that Applicant contends in her brief (4 TTABVUE 20-21) that the registered
mark is not in use in commerce with the goods and/or is ornamental as applied to the goods,
we give no consideration to the impermissible collateral attack on the cited registration.
Under Trademark Act Section 7(b), a certificate of registration is prima facie evidence of the
validity of the registration. 15 U.S.C. § 1057(b). If an applicant believes a cited registration
is invalid, those arguments will not be heard in an ex parte proceeding; instead the applicant
must petition to cancel the registration. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997); In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007); Trademark
Manual of Examining Procedure (TMEP) § 716.02(a) (2019).
Serial No. 88238871
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(TTAB 2018), aff’d, Slip Op. No. 18–2236 (Fed. Cir. Sept. 13, 2019) (mem) (quoting In
re Davia, 110 USPQ2d at 1812). The proper focus is on the recollection of the average
purchaser, who retains a general impression of trademarks. In re Bay State Brewing
Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir.
1992)).
In comparing the two marks in their entireties, we find that the identical term
MONSIEUR is the dominant feature in both the registered mark MONSIEUR
MARBLE in standard characters and Applicant’s mark .
In the case of marks, such as Applicant’s, consisting of words and a design, the words
are normally accorded greater weight because they are likely to make a greater
impression upon purchasers, to be remembered by them, and to be used by them to
request the goods. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir
1983)). The verbal portion of a word and design mark “likely will appear alone when
used in text and will be spoken when requested by consumers.” Id. at 1911. In this
case, the commercial impression created by the literal element of the mark is not
diluted but reinforced by the design element. As defined in the record, the term
MONSIEUR designates a French male title indicating high station, and the design
Serial No. 88238871
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incorporating a waiter wearing a tie and bearing a tray on one hand near what could
be a stone or marble pedestal with the fleur-de-lis, portrays household or hospitality
industry service with a French connotation. See In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581, 1586 (TTAB 2007) (“[B]ecause a stars motif is often associated
with the United States, the stars design tends to simply reinforce the component USA
in applicant’s mark, rather than having a separate connotation or making a separate
impression”); In re Wilson, 57 USPQ2d 1863, 1865 (TTAB 2001) (“[T]he illustration
of pine cones merely reinforces the dominance of the arbitrary designation PINE
CONE”); In re N. Am. Free Trade Ass’n, 43 USPQ2d 1282, 1288 (TTAB 1997) (“[T]he
globe design featuring North America …. reinforces that [the literal term] NAFTA is
a reference to the treaty.”).
The stylized lettering of the term MONSIEUR in Applicant’s mark does not create
a strong impression on its own, and it does not alter the dominant impression created
by the term MONSIEUR. Moreover, because the mark MONSIEUR MARBLE is
registered in standard characters, Registrant may employ any font, size, style, or
color when using the mark, including the same font and style used by Applicant. See
In re Viterra Inc., 101 USPQ2d at 1909; In re Davia, 110 USPQ2d at 1814.
The dominant part of each mark thus is identical in spelling, sound, and meaning.
Notwithstanding the addition of the descriptive term MARBLE in Registrant’s mark
and the stylization and design element in Applicant’s mark, the marks create highly
similar commercial impressions: a French man of high station. Our ultimate
conclusion rests upon a comparison of the marks in their entireties. In re Nat’l Data
Serial No. 88238871
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Corp., 224 USPQ at 751 (Fed. Cir. 1985). The similarities outweigh the differences
between the marks, and so we find a high degree of similarity between the marks. As
such, this first DuPont factor weighs in favor of finding a likelihood of confusion.
C. Similarity or Dissimilarity of the Goods and Channels of Trade
We turn to the DuPont factors regarding the similarity or dissimilarity of the
respective goods and channels of trade, including prospective purchasers. The issue
is not whether the goods will be confused with each other, but rather whether the
public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322,
1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are
different from, and thus not related to, one another in kind, the same goods can be
related in the mind of the consuming public as to the origin of the goods.”). It is
sufficient that the goods of the applicant and the registrant are related in some
manner or that the conditions surrounding their marketing are such that they are
likely to be encountered by the same persons under circumstances that, because of
the marks used in connection therewith, would lead to the mistaken belief that they
originate from the same source. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d
1080, 56 USPQ2d 14711, 1476 (Fed. Cir. 2000) (“[A]lthough the services are different,
it is reasonable to believe that the general public would likely assume that the origin
of the services are the same”).
Here, the mark MONSIEUR MARBLE is registered for “coasters, not of paper or
textile; drinking glasses; flasks; mugs; plates; serving trays; soapstone cubes for
Serial No. 88238871
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chilling whiskey.” Applicant seeks to register her mark for
“accent furniture; buffets being furniture; custom furniture; patio furniture; tables.”
In determining whether the goods are related, it is not necessary that we find a
likelihood of confusion between all of the registered goods and all the goods listed in
the application. When we consider the similarity of the parties’ goods, it is sufficient
for a refusal based on likelihood of confusion that relatedness is established for any
item encompassed by the identification of goods in a particular class in the
application. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d at 1409.
“Evidence of relatedness may include news articles or evidence from computer
databases showing that the relevant goods and services are used together or used by
the same purchasers; advertisements showing that the relevant goods and services
are advertised together or sold by the same manufacturer or dealer; or copies of use-
based registrations of the same mark for both the applicant’s services and the goods
listed in the cited registration.” In re Country Oven, Inc., 2019 USPQ2d 443903, *4-5
(TTAB 2019). Here, the Examining Attorney submitted nine registrations, based on
Serial No. 88238871
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use in commerce, to show the same mark being used on goods listed in the application
and goods listed in the registration:12
Registration 1883486 shows the same mark for goods identified as furniture
tables and furniture for house, office and garden in International Class 20, and
coasters not of paper or table linen, plates, and serving trays, in International
Class 21.13

Registration 3690909 shows the same mark for goods identified as tables in
International Class 20, and serving trays, plates, and coasters made of non-
precious metal, plastic, wood, cork, and paper, in International Class 21.14

Registration 5375256 shows the same mark for goods identified as furniture in
International Class 20, and coasters not of paper or textile, in International
Class 21.15

Registration 5579222 shows the same mark for goods identified as furniture,
tables, and custom furniture in International Class 20, and ceramic plates,
copper coasters, and tea drinking glasses, in International Class 21.16

Registration 3047163 shows the same mark for goods identified as furniture
chests in International Class 20, and serving trays not of precious metal and
coasters not of paper or linen, in International Class 21.17

Registration 3021262 shows the same mark for goods identified as household,
garden and patio furniture in International Class 20, and drinking glasses,
mugs, serving trays not of precious metal, and coasters, in International Class
21.18

Registration 3712766 shows the same mark for goods identified as buffets,
bedroom furniture, living room furniture, and tables, in International Class

12 Other registrations submitted by the Examining Attorney have expired or been cancelled,
and are not listed. A cancelled or expired registration is not evidence of any presently existing
rights in the mark shown or that it was ever used. Action Temp. Servs. Inc. v. Labor Force
Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989); Kemi Organics, LLC v. Gupta,
126 USPQ2d 1601, 1606 (TTAB 2018).
13 March 21, 2019 Office Action, TSDR 46-47.
14 Id. at 50-51.
15 Id. at 59.
16 Id. at 65-66.
17 July 10, 2019 Office Action, TSDR 41-42.
18 Id. at 43-44.
Serial No. 88238871
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20, and plastic coasters and coasters not of paper or linen, in International
Class 21.19

Registration 4171679 shows the same mark for goods identified as tables in
International Class 20, and coasters not of paper or linen, dinner plates, buffet
plates, and mugs, in International Class 21.20

Registration 5386470 shows the same mark for goods identified as furniture in
International Class 20, and coasters, not of paper or textile, plastic coasters,
and trays for household purposes, in International Class 21.21

“Third-party registrations which cover a number of differing goods and/or services,
and which are based on use in commerce, although not evidence that the marks
shown therein are in use on a commercial scale or that the public is familiar with
them, may nevertheless have some probative value to the extent that they may serve
to suggest that such goods or services are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988) (unpublished table decision). Accord In re I-Coat Co.,
LLC, 126 USPQ2d 1730, 1737 (TTAB 2018) (third party registrations support finding
“optical lenses, namely, corrective lenses sold through eye care professionals” related
to “spectacles, spectacle cases, spectacle lenses, spectacle settings, spectacle frames,
glasses for sport, protective helmets for sports, binoculars, parts of these goods
included in this class” and “ski glasses, ski goggles, goggles for sports, protective sport
helmets; sunglasses, bags specifically adapted for protective helmets”); In re Sela
Prods., LLC, 107 USPQ2d 1580, 1586 (TTAB 2013) (third party registrations support

19 Id. at 46-47.
20 Id. at 49.
21 Id. at 52.
Serial No. 88238871
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finding “surge protector” related to “audio and video cables and other audio and video
accessories”); In re G.B.I. Tile and Stone, 92 USPQ2d 1366, 1369 (TTAB 2009) (third
party registrations support finding “roofing tiles and trim” related to “stones, ceramic
floor tiles, porcelain floor tiles”); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-1786 (TTAB 1993) (third party registrations support finding “leather sold in
bulk” related to “all-purpose sports bags, luggage, attache cases, portfolio briefcases,
and handbags”).
Here, the evidence of the third party registrations is corroborated by the Internet
evidence that registrant’s coasters, drinking glasses, flasks, mugs, plates, serving
trays, and soapstone cubes, and Applicant’s furniture, are complementary goods that
are available from the same source, and are identified with the same mark. See
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1789
(Fed. Cir. 1990) (“[T]he record supports no other factual findings but that modems
and computer programs are commonly used together in networking, could come from
a single source, and be identified with the same mark”); In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991) (“The [women’s shoes and women’s pants, blouses, shorts
and jackets] sold by applicant and registrant are considered to be complementary
goods. They may be found in the same stores, albeit in different departments.”). The
Examining Attorney submits pages from eight different third party home furnishing
websites (Crate & Barrel, Pottery Barn, West Elm, Magnolia Home, Serena & Lily,
World Market, Howard Miller, and Cyan Design) offering furniture and accessories,
Serial No. 88238871
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such as coasters.22 In addition to listing product categories of furniture and
accessories, or the accessories subcategory “tabletop,” the home furnishing websites
provide various means for choosing furnishings such as plates, coasters, and serving
trays which will complement different styles of furniture. Crate and Barrel offers
software applications to “create a mood board” of furniture and accessories.23 Pottery
Barn advertises rattan outdoor furniture with rattan-covered glassware.24 West Elm
and World Market allow the customer to search by room, by style, or by material,
which produces results from all categories.25 In this way the home furnishing website
pages invite customers to connect the two distinctly different yet complementary
types of products (furniture and tabletop accessories) as the customers choose a
certain look in their homes. As noted above, the question is not whether purchasers
can differentiate the goods themselves but rather whether purchasers are likely to
confuse the source of the goods. The complementary nature of the goods, emphasized
by the way the goods are marketed to consumers, is a factor that weighs in favor of a
finding of likelihood of confusion.
Applicant points out (4 TTABVUE 11) that the website evidence of third-party use
does not include photographs of the goods bearing the mark:
Upon clicking each individual hyperlink sequentially, one is led to color
photographs displaying advertisments of a “priano” coaster, and a cayman
coaster (apparently brand names); (b) night stands and side tables, with none

22 March 21, 2019 Office Action TSDR 9-45 [pdf]; July 10, 2019 Office Action, TSDR 8-40
[pdf].
23 March 21, 2019 Office Action TSDR 15.
24 Id. at 26.
25 Id. at 32; July 10, 2019 TSDR 31.
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of these items bearing a trademark or brand name; (c) a bar cart, with no
trademark or brand name; (d) furniture items bearing no brand name or
trademark; and (e) outdoor furniture, none of these items evidencing a brand
name or trademark.

Applicant contends that a website photograph of the goods with a product mark
(“apparently brand names”) which does not match the mark for the home furnishings
website is evidence that consumers do not associate the website mark with the goods.
We disagree, because there is a recognized commercial practice of employing more
than one mark in connection with goods – typically, one as a house mark, and one to
indicate a particular product line. See In re Andes Candies Inc., 478 F.2d 1264, 178
USPQ 156, 156 (CCPA 1973) (“Appellant's mark [CREME DE MENTHE] is shown in
large, distinct type in a separate line on the boxes in which its laminated chocolate
mint candies are packaged. Its trade name or house mark, ANDES, also appears
prominently on its boxes”); In re Royal Bodycare, Inc., 83 USPQ2d 1564, 1569 (TTAB
2007) (“[T]he evidence shows that the term RBC is used as a house mark [in the mark
RBC’s NANOCEUTICAL]”); Textron Inc. v. Cardinal Eng’g Corp., 164 USPQ 397, 399
(TTAB 1969) (“[I]t is a common practice for manufacturers to apply both a house mark
and a product mark to their various merchandise”).26 Accordingly, we do not find the
Examining Attorney’s evidence that third party “Serena and Lily” is the source of
both furniture and coasters is undermined by the photographs on the Serena and Lily

26 See also Trademark Manual of Examining Procedure (TMEP) § 1402.03(b) (2019) (“House
marks do not identify the particular goods or services – rather, they identify the provider of
a wide variety of goods or services, with such goods or services often themselves identified
by a separate trademark or service mark.”).
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website of “Priano coasters” and “Cayman coasters”, as these terms designate
different product lines carried by Serena and Lily.
Applicant also asserts that photographs of the goods which do not display the
mark on the goods are evidence that consumers do not associate the home furnishings
mark with the goods. There is no requirement that a trademark is used only on the
goods. Trademark Act Section 45 specifies that a mark is in use in commerce with the
goods when “it is placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels affixed thereto, or if the nature of the
goods makes such placement impracticable, then on documents associated with the
goods or their sale.” 15 U.S.C. § 1127. In the final Office Action, the Examining
Attorney also supplied evidence that the home furnishing stores Crate and Barrel
and Pottery Barn place the house mark on coasters, by locating photographs of
coasters bearing the mark on a resale site.27

27 July 10, 2019 Office Action, TSDR 67-68
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In short, we are not persuaded by Applicant’s arguments that the Examining
Attorney’s evidence does not prove that there is a viable relationship between
“coasters, not of paper or textile; drinking glasses; flasks; mugs; plates; serving trays;
soapstone cubes for chilling whiskey” and “accent furniture; buffets being furniture;
custom furniture; patio furniture; tables.”
We find that the second and third DuPont factors also weigh in favor of finding a
likelihood of confusion.
In conclusion, we have considered all of the arguments and evidence of record, and
all relevant DuPont factors. Insofar as each of the DuPont factors discussed above all
weigh in favor of finding a likelihood of confusion, we conclude that confusion is likely
to occur between Applicant’s mark for its goods and Registrant’s
MONSIEUR MARBLE mark for its goods.
II. Decision
The refusal to register Applicant’s mark is affirmed.