Kaemark, Inc.

Trademark Trial and Appeal Board

Nov 28, 2008

No. 77091033 (T.T.A.B. Nov. 28, 2008)

Mailed:
November 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re KAEMARK, Inc.
________

Serial No. 77091033
_______

David W. Carstens of Carstens & Cahoon, L.L.P. for KAEMARK,
Inc.

James Ringle, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

KAEMARK, Inc. has appealed from the final refusal of
the Trademark Examining Attorney to register LUXE, in
standard character form, as a trademark for “salon
furniture.”1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s mark so resembles the mark

1 Application Serial No. 77091033, filed January 25, 2007, based
on Section 1(b) of the Trademark Act (intent-to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77091033
2
LUXE, previously registered in standard character format
for “furniture,”2 that, if used in connection with
applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Our determination of the issue of likelihood of
confusion 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, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning first to the goods, the registrant’s goods are
broadly described as “furniture.” As a result, the
Examining Attorney takes the position that this
identification encompasses the more specific “salon
furniture” identified in applicant’s application, and
therefore applicant’s goods must be deemed legally

2 Registration No. 3159521, issued October 17, 2006.
Ser No. 77091033
3
identical to the registrant’s goods. However, we cannot
agree. Although the USPTO Identification of Goods and
Services Manual lists “furniture” as an acceptable
identification, so that an applicant need not list each
item of furniture that it may sell under a particular mark,
we do not consider that the term should be read so broadly
that it will encompass every possible item that can be used
to furnish any possible type of business or industry.
Applicant has explained that “salon furniture”
comprises items that are specific to use in a beauty salon.
For example, one of the goods used
under the LUXE mark includes salon
chairs used to cut hair. These
“barber-shop” like chairs are
adjustable and typically stationary to
allow the hair designer to easily cut
the patient’s [sic] hair. The chairs
are adjustable from the rear[,] meaning
the occupant of the chair cannot adjust
the chair but must rely on a person
standing behind them to so adjust the
chair. This highlights the fact that
this chair will have little utility
outside of a salon environment.
Similarly, another good offered under
the LUXE mark includes a “dryer chair”
whereby a user places their head inside
an overhanging dryer which dries the
occupants [sic] hair. These are goods
only used in a salon. Outside of a
salon, these and other goods under the
LUXE mark typically have no utility.
Further, while called furniture because
they are used like furniture, the goods
are more akin to equipment. Again, the
highly specialized “furniture” is
designed to be used solely in a salon
Ser No. 77091033
4
environment and typically have little
or no utility outside of a salon.

Request for reconsideration, filed May 19, 2008.
Because of the specialized nature of “salon furniture”
which, as applicant points out, is more in the nature of
equipment, we do not consider applicant’s goods to be
encompassed by the identification of “furniture” in the
cited registration.
Further, “salon furniture” will be sold to those in
the beauty-related industry, such as owners and operators
of beauty salons. Although applicant has not specifically
limited its channels of trade to such consumers, by the
very identification of its goods it is clear that salon
furniture is not sold to the general public. Thus, we
consider the channels of trade to be different.
We recognize that there is one area of overlap between
applicant’s and the registrant’s goods. Beauty salon
operators and the like may purchase both the specialized
salon furniture discussed above and general types of
furniture, such as couches or chairs, for their salon
waiting rooms. However, we think that there is only a
remote possibility that confusion could arise from this
circumstance, rather than a likelihood of confusion, for
the following reasons. And the Trademark Act prohibits the
Ser No. 77091033
5
registration of marks only where confusion is likely to be
caused, not where there is merely a theoretical possibility
of confusion.
First, there is no evidence that salon furniture and
the more general furniture that is found in salon waiting
rooms are sold in the same channels of trade, and therefore
we cannot assume that beauty salon operators would
encounter them together. More importantly, the
registrant’s mark, LUXE, cannot be considered a strong
mark. The word “luxe” means “something luxurious, a
luxury.”3 Thus, although applicant’s mark and the
registrant’s mark are identical, because LUXE has a
laudatorily suggestive meaning, the relevant consumers here
are not likely to assume that specialized salon furniture
and general purpose furniture have the same source merely
because they bear this same mark.
Adding to our conclusion that confusion is not likely
is the du Pont factor of the conditions of purchase. The
purchasers of salon furniture, as noted, are owners and

3 The American Heritage Dictionary of the English Language, 4th
ed., © 2000. The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). We also note that, during the course of
examination the Examining Attorney had cited a second registration for
LUXE SPA for towels, and three pending applications for LUXE marks,
VERA WANG LUXE for towels, SHANGHAI LUXE for decorative home
furnishings, and LUXE in stylized form for hair care accessories.
Ser No. 77091033
6
operators of beauty salons. They must be considered
discriminating and careful purchasers. Because of their
knowledge of the beauty industry, they are not likely to
assume that any items that may be used in a beauty salon
will emanate from a single source, even if they are sold
under the same mark. In this connection, we note that the
Examining Attorney has not submitted any evidence that
manufacturers of salon furniture also sell furniture that
is used by the general public, such as couches and coffee
tables that may be found in a salon waiting area.
We recognize that under established case law the goods
of applicant and the registrant need not be similar or
competitive, or even move in the same channels of trade, to
support a holding of likelihood of confusion. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). We also recognize the principle that
where the applicant's mark is identical to the registrant's
mark there need be only a viable relationship between the
respective goods or services in order to find that a
likelihood of confusion exists. See In re Opus One Inc.,
60 USPQ2d 1812, 1815 (TTAB 2001). We do not suggest that
in all circumstances there can be no likelihood of
confusion when an identical mark is used for products that
can be purchased by the same individuals, including for use
Ser No. 77091033
7
in the same enterprise. However, in the particular
circumstances of this case, including the specialized
nature of applicant’s goods, the sophistication of the
purchasers, and the laudatorily suggestive nature of the
marks, we find that confusion is not likely.
Decision: The refusal of registration is reversed.