Kathryn M. Ireland, Inc.

Trademark Trial and Appeal Board

Mar 7, 2005

No. 76976356 (T.T.A.B. Mar. 7, 2005)

Mailed:
7 March 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kathryn M. Ireland, Inc.
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Serial No. 76976356
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Anthony M. Keats of Keats McFarland & Wilson LLP for
Kathryn M. Ireland, Inc.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______

Before Seeherman, Walters, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

This appeal involves a divisional application (Serial
No. 76976356) for the mark KATHRYN IRELAND (typed) for
“interior decorating services and interior decoration
consultation services” in Class 42. The parent application
(Serial No. 76230879) was filed on March 26, 2001, and is
now abandoned. The goods in the parent application at the
time of the request for division were “lamp shades” in
Class 11, “fitted fabric furniture covers, furniture,
namely, living room and bedroom” in Class 20, and “printed
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76976356
2
fabrics, namely, cotton, hemp linen, ramie and silk;
draperies and curtains, upholstery fabrics, pillow cases,
shams, table cloths, not of paper, table linen, table mats
not of paper, table runners, fabric, unfitted fabric
furniture covers” in Class 24. The parent and child
applications contain an allegation of a date of first use
and first use in commerce of September 1997.
The examining attorney refused to register applicant’s
mark on the ground that when the mark is used in connection
with the identified services, it so resembles the
registered mark, KATHY IRELAND HOME (typed), for the
following goods as to be likely to cause confusion, to
cause mistake or to deceive.1 15 U.S.C. § 1052(d).
Electric lighting fixtures and lamps in Class 11.

Furniture, namely, dining room, living room, kitchen,
bedroom, occasional, casual, and upholstered
furniture; wall units in Class 20.

Tapestries of textiles, bed linen, fabrics for the
manufacture of home furnishings, textile wall
coverings and table linen in Class 24.

Rugs, carpets, wall hangings not of textile, wallpaper
and mats, namely, textile floor mats for use in the
home in Class 27.

1 Registration No. 2,686,945 issued February 11, 2003.
Ser No. 76976356
3
The registration also contains a disclaimer of the word
“Home”2 and it identifies “Kathy Ireland” as a living
individual whose consent to register is of record.
The examining attorney’s position (Brief at 3) is that
“Applicant’s mark, KATHRYN IRELAND, has the same surname
that appears in registrant’s mark, IRELAND, and [the] first
name shown in applicant’s mark, KATHRYN, has the same KATH
prefix as the name shown in registrant’s mark, KATHY,
making them both look and sound alike.” The examining
attorney also submits that interior decoration services and
home furnishings goods that serve to decorate the house are
related.3
Applicant’s position is that “Applicant is a famous
interior designer who designs homes for movie stars and
other distinguished clientele. Registrant is a famous
supermodel who provides affordable ‘solution oriented
furniture’ for ‘families, especially busy moms.’” Appeal

2 Actually, Office records indicate that registrant has
disclaimed the words “Home Collection.” Registrant’s mark, which
was first cited as a pending application, was originally for the
mark KATHY IRELAND HOME COLLECTION and the application contained
a disclaimer of the term “Home Collection.” The registration
subsequently issued with the mark listed as KATHY IRELAND HOME.
3With his brief, the examining attorney has submitted a
dictionary definition of “interior decoration” as the “painting
and execution of the layout, decoration and furnishing of an
architectural interior. Also called interior design.” We take
judicial notice of this definition. University of Notre Dame du
Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 76976356
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Brief at 2-3, quoting, registrant’s website, which is of
record. Applicant further argues that the examining
attorney “failed to consider and give proper weight to the
word HOME in the cited mark and the obvious differences
between KATHRYN and KATHY.” Regarding the relationship of
the goods and services, applicant maintains (Brief at 6)
that “it is highly unlikely that one providing goods to the
general public will also provide services to select
clientele.”
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In most likelihood of
confusion cases, “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [or services] and
differences in the marks.” Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin our analysis by comparing the marks, which in
this case are KATHRYN IRELAND and KATHY IRELAND HOME.
Ser No. 76976356
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Obviously, both marks have the identical word IRELAND. The
first word in both marks begins with the identical four
letters “Kath” and they are both first names, KATHRYN and
KATHY. While these names are not identical, they would be
easily recognized as first names that look and sound
similar.4 Furthermore, since KATHY and KATHRYN are similar
first names and Kathy can be a shortened form of Kathryn,
the names would have similar meanings and commercial
impressions.
We are mindful of the fact that registrant’s mark is
not limited to the name KATHY IRELAND, rather that the mark
is KATHY IRELAND HOME. It is the entire mark that we must
compare to applicant’s mark in determining whether the
marks are similar. We note that, while registrant has
included the word “Home” in its mark, it has disclaimed the
term. Furthermore, inasmuch as registrant’s goods include
“floor mats for the home,” “fabrics for the manufacturing
of home furnishings,” and furniture for the home, e.g.,
“dining room, living room, kitchen, [and] bathroom”
furniture, the term obviously has a descriptive connotation
and it is less likely to be relied upon by prospective

4 Indeed, in its Reply Brief (p. 3), applicant points out that
they are variations of the name “Katherine.” We will take
judicial notice of applicant’s dictionary definition that
indicates the root of the name “Katherine” and its variations.
Ser No. 76976356
6
purchasers to distinguish the sources of the goods and
services. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir.
1985) (“Regarding descriptive terms, this court has noted
that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of
confusion.’”). See also In re Code Consultants Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (“Disclaimed matter is often
“less significant in creating the mark’s commercial
impression”). In the mark KATHY IRELAND HOME, the term
“Home” merely indicates that the goods are oriented toward
use in the home.
Regarding the names in the marks, applicant argues
(Brief at 2-3) that applicant “is a famous interior
designer [and] Registrant is a famous supermodel.”5
Applicant has included evidence that shows the recognition
that the named individuals have received. Applicant
apparently argues that the fame of the two individuals is a
factor that makes confusion unlikely. However, to the

5 We note that in fact applicant and registrant appear to be
corporations established by the named individuals. We too will
refer to the individual and the corporation interchangeably.
Ser No. 76976356
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extent that Kathy Ireland has achieved fame, such fame does
not make confusion less likely.
The Board erred in discounting the import of Kenner's
famous prior mark. The Board acknowledged “the renown
of opposer's mark with respect to modeling compound.”
Indeed, Rose Art conceded this fame. Yet the Board
treated that fame as a liability in assessing
likelihood of confusion. Reasoning that consumers
might more easily recognize variances from a famous
mark, the Board concluded that the fame of Kenner's
mark permitted greater, rather than less, legal
tolerance for similar marks.

Kenner Parker Toys Inc. v. Rose Art Industries, 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
When we compare the marks in their entireties, we find
that the differences pale by comparison with their
similarities. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (There “is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of the
mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties”). See also
In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997) (Court held that the addition of
“The,” “Cafe” and a diamond-shaped design to registrant’s
DELTA mark still resulted in a likelihood of confusion).
The differences in the first names, KATHRYN and KATHY, may
not even be noticed by some purchasers. Those that do
Ser No. 76976356
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notice the difference may simply assume that the marks
still identify the same individual. We also keep in mind
that human memories are not infallible and that consumers
will not necessarily be viewing the marks in a side-by-side
comparison. See In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) and Grandpa Pigeon’s
of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ
573, 574 (CCPA 1973). We must focus on the general
recollection reasonably produced by applicant’s and
registrant’s marks. Johann Maria Farina Gegenuber Dem
Julichs-Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385, 176
USPQ 199, 200 (CCPA 1972).
Looked at in this way, we determine that the marks
KATHY IRELAND HOME and KATHRYN IRELAND are similar in
sound, appearance, meaning, and commercial impression such
that, if the goods and services are related and other
factors are not dispositive, there would be a likelihood of
confusion.
The next factor we consider is the relationship
between applicant’s services and registrant’s goods. “In
order to find that there is a likelihood of confusion, it
is not necessary that the goods on which or services in
connection with which the marks are used be identical or
even competitive. It is enough if there is a relationship
Ser No. 76976356
9
between them such that persons encountering them under
their respective marks are likely to assume that they
originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Applicant argues (Reply Brief at 4, emphasis in
original) that the examining attorney “failed to consider
the unique and extraordinary services provide by Applicant…
purchasers of Applicant’s services are sophisticated,
wealthy, select clientele. Applicant provides her services
to her customers on an individual basis by referral,
tailoring her unique services to each of her [clients]
according to their discriminating tastes.” However,
applicant has identified its services as interior
decorating services and interior decoration consultation
services without any limitations. To the extent that
applicant is arguing that these factors are limitations of
its services, it is clear that we must consider the
services as they are identified in the application and
registration. Paula Payne Products v. Johnson Publishing
Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark
cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of
Ser No. 76976356
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goods”); Dixie Restaurants, 41 USPQ2d at 1534 (punctuation
in original), quoting, Canadian Imperial Bank of Commerce
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816
(Fed. Cir. 1987) (“‘Likelihood of confusion must be
determined based on an analysis of the mark applied to the
… services recited in applicant’s application vis-à-vis the
… services recited in [a] … registration, rather than what
the evidence shows the … services to be’”). Similarly, we
do not limit registrant’s goods to “ordinary and
inexpensive home furnishings sold by Applicant.” Reply
Brief at 5. We cannot read limitations into the
registration so that the identified goods are limited to
the actual goods on which registrant is currently using the
mark. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983)(“There is no specific limitation and
nothing in the inherent nature of Squirtco’s mark or goods
that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The Board, thus, improperly read
limitations into the registration”). Therefore, we must
assume that registrant is using its mark on all types of
furniture, lighting fixtures, tapestries, and rugs
including those that would be sold to or by interior
Ser No. 76976356
11
decorators.6 In addition, applicant’s services as
identified can be rendered by anyone authorized to use the
mark by applicant corporation. Although, as applicant
argues, Ms. Ireland may currently be providing her services
to her customers on an individual basis, the identification
of services is not restricted in this manner.
Furthermore, the examining attorney has provided
evidence in the form of use-based registrations that
suggest that applicant’s services and registrant’s goods
may originate from the same source. See Registration Nos.
1,183,017 (interior decorating services and custom design
of household linens and table cloths, napkins, and cloth
placements); 1,340,749 (interior decorating services and
furniture); 1,367,331 (interior decorating services and
upholstered and wood furniture); 1,514,646 (interior
decorating services and textile fabrics for use in

6 To the extent that applicant is arguing that it is a provider
of services and registrant uses its mark on goods, we do not see
this fact as significant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (“The only aspect
of this case which is unusual is that the marks sought to be
registered are for services while the prior registration on which
their registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their principal use in
connection with selling the goods and (b) that the applicant's
services are general merchandising -- that is to say selling --
services, we find this aspect of the case to be of little or no
legal significance”).
Ser No. 76976356
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upholstery and window treatment); and 1,801,318 (interior
decorating services and electric lamps and household
furniture).
These registrations provide at least some support for
the examining attorney’s argument that there is a
relationship between applicant’s goods and services. See
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988) (Although third-party registrations “are not evidence
that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, [they] may
have some probative value to the extent that they may serve
to suggest that such goods or services are the type which
may emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). We
also note that applicant itself appears to agree (Brief at
6) that “it appears to be true that a few interior
decorators or designers will offer goods under their
respective marks.”7
The record supports the examining attorney’s position
that interior decorating services and furniture and fabrics
for home furnishings, and other home furnishings are

7 Applicant itself originally filed a use-based application that
included, in addition to the interior decorating services, lamp
shades, furniture, and printed fabrics.
Ser No. 76976356
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related. In addition, applicant’s services also include
interior decoration consultation services. Thus, a
purchaser familiar with registrant’s furniture, fabrics,
rugs, and similar products would likely believe that there
is some association or relationship when a similar mark is
used in association with interior decorating and interior
decoration consultation services.
While applicant also argues (Brief at 4) that
“consumers of Applicant’s services are wealthy and exercise
a high degree of care,” this fact does not point to a lack
of confusion. First, as indicated previously, applicant’s
services are not limited to wealthy purchasers. While
wealthy individuals are consumers of interior decorating
services, there is no evidence that interior decorating
services as well as interior decoration consultation
services are only purchased by wealthy purchasers. Second,
there is certainly no evidence that purchasers of lighting
fixtures, furniture, rugs, and similar goods are
necessarily careful. Third, even if we were to find that
the customers of applicant’s services are careful
purchasers, this would not mean there would be no
likelihood of confusion when marks as similar and goods and
services as related as those in this case are involved.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
Ser No. 76976356
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1690 (Fed. Cir. 1987) (“[T]his court held that even
sophisticated purchasers can be confused by very similar
marks); In re Hester Industries, Inc., 231 USPQ 881, 883
(TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”).
In conclusion, when the marks KATHRYN IRELAND and
KATHY IRELAND HOME are used on the identified goods and
services, confusion is likely.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.