Kohler Co.v.Kohler Homes Kohler Co. v. Kohler Associates Architects

Trademark Trial and Appeal Board

Nov 4, 2008

No. 91152287 (T.T.A.B. Nov. 4, 2008)

Hearing: Mailed:
July 15, 2008 November 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
__________________________

Opposition No. 91152287
_____

Kohler Co.

v.

Kohler Homes
____________________________

Opposition No. 91152290
_____

Kohler Co.

v.

Kohler Associates Architects
_____

Raymond I. Geraldson, Jr., Bradley L. Cohn and Kristen S.
Knecht of Pattishall, McAuliffe, Newbury, Hilliard &
Geraldson LLP for Kohler Co.

Lawrence E. Laubscher, Jr. of Laubscher & Laubscher, P.C.
for Kohler Homes and for Kohler Associates Architects.
______

Before Grendel, Drost and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Opposition Nos. 91152287 and 91152290
2
On May 8, 2001, Kohler Homes filed an application
(Serial No. 76252765) for registration of the mark KOHLER
HOMES (in standard character form) for “custom construction
of homes” and Kohler Associates Architects filed an
application (Serial No. 76252766) for registration of KOHLER
ASSOCIATES ARCHITECTS (in standard character form) for
“architectural design.” Both applications seek registration
on the Principal Register and recite February 13, 2001 as
the date of first use anywhere and first use in commerce.
Kohler Homes has disclaimed the term HOMES in its
application and Kohler Associates Architects has disclaimed
the term ASSOCIATES ARCHITECTS in its application. We refer
to both applicants collectively as “applicant.”
Opposer, Kohler Co., filed timely notices of opposition
to registration of both of applicant's marks. In both
notices of opposition, opposer pleaded that it is the owner
and user of the following marks and registrations:
1. Registration No. 1137310 for the mark THE BOLD
LOOK OF KOHLER in typed form for “plumbing
fixtures and fittings for use with plumbing
fixtures, and parts therefor” in International
Class 11 (renewed January 24, 2001);

2. Registration No. 0577392 for the mark KOHLER
in typed form for “plumbing fittings-namely, bath
and shower fittings, bath fittings and valves,
bath drains, showers, mixing valves, shower heads,
combination lavatory fittings and faucets,
drinking fountain fittings, supply pipes, sink,
lavatory and urinal strainers, traps and
continuous drains, flush pipes, closet and urinal
fittings, bidet fittings, sink faucets, laundry
tray faucets, lawn faucets, and bath and shower
Opposition Nos. 91152287 and 91152290
3
accessories consisting of soap dishes, robe hooks,
towel bars, and wall grip rails” in International
Class 13 (thrice renewed September 30, 2003); and

3. Registration No. 0094999 for the mark KOHLER
in typed form for “bath-tubs, lavatories, sinks,
water-closets, closet-tanks, urinals, slop-sinks,
traps, sitz-baths, receptors for use in connection
with showers, lavatory bowls, drain-boards,
closet-bowls and closet-tanks” in International
Class 13 (fifth renewal March 16, 2004).1

We refer to these three registered marks as “Opposer’s
Marks.” Additionally, opposer claims priority and
likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d); and that “Opposer’s name Kohler
Co. has acquired distinctiveness as a trade name for

1 Opposer has also pleaded that it is the owner and user of the
following marks and now-cancelled registrations:

1. Registration No. 0592927 for the mark
for “plumbing fixtures-namely, bath
tubs, sitz baths, shower receptors, lavatories,
wash sinks, drinking fountains, kitchen sinks,
sink and trays, laundry trays, service sinks,
service sumps, closet tanks, urinal tanks,
laboratory sinks”; and
2. Registration No. 2349436 for the mark for
“plumbing fixtures being part of sanitary
installations, namely, bath tubs, lavatories,
bidets, sitz baths, shower receptors, wash sinks,
drinking fountains, kitchen sinks, combination
sink and trays, service sinks, water closets,
urinals, closet tanks, urinal tanks, and
laboratory sinks.”

Because they have been cancelled, we do not give further
consideration to Registration Nos. 0592927 and 2349436. Also, as
for opposer's asserted common law rights to these marks, we need
not consider them in view of our disposition of the oppositions.
Opposition Nos. 91152287 and 91152290
4
Opposer's goods and services and is now a famous, well-known
name and mark throughout the United States.” Notices of
opposition at ¶ 5. Opposer has also pleaded dilution of its
“name and mark” under Section 43(c) of the Trademark Act, 15
U.S.C. §1125(c). Id. at ¶ 13.
Applicant has denied the salient allegations of the
notices of opposition. On January 15, 2005, the Board
consolidated the oppositions. The parties have fully
briefed this case, and the Board conducted an oral hearing
on July 15, 2008.
The Record
Of course, the record includes the pleadings and the
files of the two opposed applications. Additionally, the
record includes opposer's two notices of reliance on
(i) certified status and title copies of Registration Nos.
0094999 (KOHLER), 0577392 (KOHLER), 0590052 (KOHLER) and
1137310 (THE BOLD LOOK OF KOHLER); (ii) applicant's
responses to opposer's first set of requests for admissions;
and (iii) applicant's response to opposer's Interrogatory
no. 19(2). The record also includes (i) the testimony
deposition of applicant’s principal Mark A. Kohler with
exhibits; and (ii) the declarations of several individuals
submitted pursuant to an agreement between the parties to
submit testimony by sworn declaration. Specifically,
opposer has submitted the declarations of (i) Douglas
Opposition Nos. 91152287 and 91152290
5
Bocchini, opposer's director of fixtures merchandising; (ii)
John Engberg, opposer's manager for global media and web
development, with exhibits; (iii) Peter Fetterer, opposer's
part-time corporate archivist, with exhibits; (iv) Cynthia
Howley, opposer's design center, services and events
manager, with exhibits; (v) Jason Keller, opposer's manager,
global power group communications, with exhibits; (vi) Todd
Weber, opposer's manager of kitchen and bath public
relations, with an exhibit; (vii) George Mantis, opposer's
expert witness, along with his expert opinion and an
exhibit; and (viii) Diana Koppang, opposer's attorney’s
information resources coordinator, with exhibits. Applicant
has submitted the declarations of (i) Karl E. Kohler, a
founding member of applicant's predecessor-in-interest, with
exhibits; (ii) Mark Kohler, with exhibits; (iii) Thomas
Flach, vice-president of Kohler Homes and an associate of
Kohler Associates Architects, with an exhibit; (iv) Linette
Bernstein, applicant's director of accounting and
administration, with exhibits; (v) George Stafford, CEO of
Fairmont Studios which produced applicant's web site, with
an exhibit; (vi) Marianne Smith, applicant's attorney’s
paralegal, with exhibits; and (vii) various individuals who
testified to a lack of actual confusion, namely, Jay Alls,
Brian Downs, Dee David and Robert Gallagher.
Opposition Nos. 91152287 and 91152290
6
Evidentiary Objection
Ms. Smith, a paralegal in applicant's attorney’s law
firm, testified through her declaration that she searched
corporation division databases for all 50 states for
registered corporations with “Kohler” as all or part of a
registered name, conducted Google searches for the names of
the entities identified in the corporation division
searches, and placed phone calls to the entities found as a
result of the Google searches to verify that the businesses
are still operating under the “Kohler” name and/or providing
services under the “Kohler” mark.” Smith dec. ¶ 2. She
submitted a chart with her declaration that identifies the
entity she located, its “Industry” and phone number, whether
she contacted anyone at the entity’s office, the name of the
person she contacted, and an Internet address for a “web
link” for the entity. Ms. Smith also provided webpages for
the “web link” which identify the entity or which comprise
pages from its website.
Opposer objects to Ms. Smith’s declaration and exhibits
to the extent that she relies on conversations with
individuals who answered the phone at certain third-party
businesses on the grounds of hearsay and lack of personal
knowledge, and on the chart which allegedly includes
information learned in her conversations. Additionally,
opposer objects to webpages which accompany her declaration
Opposition Nos. 91152287 and 91152290
7
on the ground of hearsay to the extent that applicants rely
on any statements made in the webpages. Applicant responds
by arguing that Ms. Smith’s declaration is based on first
hand knowledge of third party use as a result of her
investigation and is not hearsay; and that the exhibits to
her declaration were obtained directly by her as a result of
her investigation and confirm the uses set forth in her
chart.
We have considered opposer's objections, but also the
fact that the parties have agreed that “the parties’
testimony may be introduced by affidavit or sworn
declaration with witnesses available for cross-examination
by deposition if necessary.” Opposer's notice of reliance,
ex. E. The record does not indicate that opposer sought to
cross-examine Ms. Smith or that opposer raised any objection
to Ms. Smith’s declaration in any paper filed prior to its
brief. We therefore consider her declaration and exhibits,
but only for the purpose of demonstrating that there are
businesses in operation which have the term KOHLER in their
trade names and that these businesses have active websites.
See discussion infra.
Standing/Priority
Opposer has made status and title copies of Opposer’s
Marks, showing that they are in full force and effect and
are owned by opposer Kohler Co. Because opposer has made
Opposition Nos. 91152287 and 91152290
8
these registrations properly of record, opposer has
established its standing to oppose registration of
applicant's mark and priority is not in issue.2 See King
Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. 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 considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Fame
The first du Pont factor we consider is the factor of
fame. The fame of the prior mark plays a dominant role in
likelihood of confusion cases featuring a famous mark. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d

2 Applicant has not contested opposer’s standing.
Opposition Nos. 91152287 and 91152290
9
1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); Kenner Parker Toys,
Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992). Fame for likelihood of confusion
purposes arises “as long as a significant portion of the
relevant consuming public … recognizes the mark as a source
indicator.” Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1694 (Fed. Cir. 2005). That is, we look to the class
of customers and potential customers of a product or
service, and not the general public. In this case, as
further discussed infra, the relevant public for opposer's
goods and applicant's architectural design services are
homeowners, commercial building owners, contractors and
builders, and the relevant public for opposer's goods and
applicant's custom construction of homes services are
current or future homeowners.
Opposer has sold over $18 billion worth of KOHLER
kitchen and bath products in the United States and has spent
over $150 million in advertising its KOHLER kitchen and bath
products in the United States through national and local
magazines, trade journals, newspapers, television, radio,
trade shows, billboards and the Internet. Bocchini dec. at
¶ 2, Engberg dec. at ¶ 6. Further, opposer's distributors,
dealers, designers and builders operate a network of nearly
Opposition Nos. 91152287 and 91152290
10
six hundred showrooms throughout the United States as a way
to showcase and promote opposer’s products. Id. at ¶ 7.
Opposer has been selling a number of its products for over
seventy years, and has sold some of its products, including
sinks and bathtubs, for over 100 years. Id. at ¶¶ 2 and 4,
ex. 1; Fetterer dec. at ¶ 16, ex. 3.
Opposer's products have been the subject of special
recognition or awards. Opposer’s products have won awards
from Home Builder Executive, Builder News, Professional
Builder, Professional Remodeler, Building Products,
Architecture, Architectural Record, BusinessWeek, the
National Society of Professional Engineers, the National
Association of Home Builders Senior Housing Council and the
Industrial Design Society of America. Weber dec. ¶ 2 and
ex. 1. In addition, a number of KOHLER-branded products
have been rated a Consumer’s Reports “Best Buy” and/or a
Consumers Digest “Best Buy.” Id. at ¶ 4. KOHLER bath
products are featured at “the House of Innoventions” at Walt
Disney’s EPCOT Center. Id.
Also, opposer and its KOHLER products have been the
subject of newspaper and magazine articles and feature
pieces across the United States, including in The New York
Times, The Washington Post, The Chicago Tribune, The Wall
Street Journal, Forbes, Advertising Age, and Builder.
Opposition Nos. 91152287 and 91152290
11
Fetterer dec. ¶ 14, ex., 1; Koppang dec. ¶¶ 3 – 21 and exs.
1 – 19.
Applicant has recognized in its statement of facts that
“[a]s a consequence of its sale and advertising of bath
products, Opposer is known as the undisputed king of the
America bathroom,” citing ¶ 23 of Mr. Fetterer’s
declaration. Brief at p. 3. Also, applicant has conceded
that KOHLER is a strong mark, “but only as applied to
plumbing fixtures and fittings ….” Brief at p. 12 (emphasis
in original). Additionally, Mr. Kohler has acknowledged
that KOHLER is a well-known brand for bathroom fixtures.
Kohler dep. p. 21.
On this record, we find that opposer's KOHLER mark is
famous in connection with bathroom fixtures and within the
home construction industry generally for purposes of our
likelihood of confusion analysis, and is entitled to broad
protection. Bose, 63 USPQ2d at 1305.
The factor of fame weighs heavily in favor of finding a
likelihood of confusion.
The Marks
In considering the similarity between Opposer’s Marks
and applicant's mark, we determine whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports, 73 USPQ2d at 1692.
Opposition Nos. 91152287 and 91152290
12
Applicant's two marks, KOHLER HOMES and KOHLER
ASSOCIATES ARCHITECTS, contain the term KOHLER and the
merely descriptive terms HOMES and ASSOCIATES ARCHITECTS.
HOMES identifies what applicant builds and ASSOCIATES
ARCHITECTS identifies those persons providing applicant's
architectural services. Additionally, applicant has
disclaimed both HOMES and ASSOCIATES ARCHITECTS. Disclaimed
matter is often “less significant in creating the mark’s
commercial impression.” In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001). See also Quaker State Oil
Refining Corp. v. Quaker Oil Corp., 453 F.2d 1296, 172 USPQ
361, 363 (CCPA 1972).
The Federal Circuit has recognized that there is
nothing improper in giving more weight, for rational
reasons, to a particular portion or feature of a mark. See
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). The Court has also stated that “the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data
Corp., 224 USPQ at 752. See also M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006) (“When comparing the similarity of marks, a
Opposition Nos. 91152287 and 91152290
13
disclaimed term, here ‘COMMUNICATIONS,’ may be given little
weight, but it may not be ignored”).
We therefore find that the dominant portion of both of
applicant's marks is the term KOHLER, which is identical to
two of opposer's pleaded registered marks.
Further, with regard to the two pleaded marks for
KOHLER, the dominant component of applicant's marks is
identical to opposer’s marks, and the remaining wording in
applicant's marks is merely descriptive. Also, when an
opposer's mark is famous such as is the case here, the
degree of similarity between the marks need not be as great
as when the opposer's mark is obscure or weak. Kenner
Parker Toys, 22 USPQ2d at 1456. See also Specialty Brands,
Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223
USPQ 1281, 1284 (Fed. Cir. 1984) (“less care may be taken in
purchasing a product under a famous name”). We therefore
find that we find that the marks in their entireties are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports, supra. See also, e.g., In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997) (likelihood of confusion with addition of the words
“The” and “Café” and a diamond-shaped design to registrant's
DELTA mark); and In re Denisi, 225 USPQ 624, 624 (TTAB 1985)
(if “the dominant portion of both marks is the same, then
confusion may be likely notwithstanding peripheral
Opposition Nos. 91152287 and 91152290
14
differences.”) Any differences due to the additional
wording in applicant's marks are outweighed by the
similarity due to the shared term KOHLER.
Turning now to opposer's THE BOLD LOOK OF KOHLER mark,
we find that KOHLER figures prominently in creating the
commercial impression of this mark as it identifies what has
the “bold look.” In other words, the mark makes a statement
about KOHLER products. Indeed, as used on opposer's
website, the mark emphasizes KOHLER:

Howley dec. ex. 2. Because applicant's marks have KOHLER as
their dominant terms, we find that applicant's marks and
opposer's THE BOLD LOOK OF KOHLER mark are similar in
meaning and commercial impression, both focusing the
consumer on KOHLER as the source indicator. To the extent
that opposer's mark and applicant's marks include the term
KOHLER, we find them to be more similar than dissimilar in
appearance and sound, and find that any differences in
appearance and sound due to the additional wording are
outweighed by the similarities due to the shared term
KOHLER. Thus, we find that applicant's marks are similar to
opposer's THE BOLD LOOK OF KOHLER mark.
The du Pont factor regarding the similarity of the
marks is resolved in opposer’s favor.
Opposition Nos. 91152287 and 91152290
15
Goods, Services, Trade Channels and Classes of Purchasers
We now consider the similarity or dissimilarity of
applicant's “custom construction of homes” and
“architectural design” services and the goods of Opposer’s
Marks which are primarily plumbing fixtures and fittings for
use with plumbing fixtures. We also consider the
similarity or dissimilarity of the trade channels and
classes of consumers.
It is well established that the goods of the parties
need not be similar or competitive, or even offered through
the same channels of trade, to support a holding of
likelihood of confusion. Rather, it is sufficient that the
respective goods of the parties be related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). Additionally, inasmuch as there are no
restrictions in the registrations and the applications, we
must presume that opposer's goods and applicant's services
would be sold in all appropriate channels of trade. See
Opposition Nos. 91152287 and 91152290
16
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1987).
Certainly, both opposer and applicant have current or
future homeowners as customers. See Engbert dec. ¶¶ 5 and
6; Kohler dep. p. 71. Additionally, business owners,
contractors and builders may take advantage of applicant's
architectural services and also purchase fixtures. See,
e.g., applicant’s admission of opposer's request for
admissions no. 14, “[t]he construction of homes encompasses
working with homeowners who select fixtures to place into
dwellings”. Thus, the relevant public for opposer's goods
and applicant's architectural design services are
homeowners, commercial building owners, contractors and
builders, and the relevant public for opposer's goods and
applicant's custom construction of homes services are
current or future homeowners.3 The classes of consumers
hence overlap.
As far as promotional efforts, both parties promote
their goods or services in home design magazines and
journals as well as newspapers. Kohler dep. pp. 23, 27 and

3 Others may also participate in purchasing decisions; Mr.
Engberg has testified that builders, designers, and architects
often guide and assist their clients in selecting new fixtures.
Id. at ¶ 5.

Opposition Nos. 91152287 and 91152290
17
38 - 40; applicant's response to request for admissions
no. 18; Engberg dec. ¶ 8. Both parties have advertised in
Southern Living magazine and The Washington Post.
Opposer has established too that in connection with the
marketing of its kitchen and bath fixtures, it provides
builders, architects, designers and homeowners with support,
educational programs and design tools. By doing so, opposer
is closely associated with the home construction, renovation
and remodeling industry and has established itself as more
than merely a seller of, for example, a fixture for a home.
Specifically, opposer annually attends the
International Builders’ Show (“IBS”) and the Kitchen/Bath
Industry Show, and spends millions of dollars on the booths
and marketing support for these trade shows. Enberg dec. ¶¶
10 – 11. Opposer holds programs and events around the
country to inform designers and architects about opposer's
new products. For the last seven years, opposer hosted
dozens of builders at the “Kohler Builders Symposium” in
Wisconsin where builders are informed of trends in the home
building industry. Opposer has provided nationwide
assistance to builders installing KOHLER products, with over
1,000 home builders enrolled in a program wherein opposer
provides builders with training and educational support as
well as marketing assistance and literature on opposer's
products to share with their clients. Bocchini dec. ¶¶ 3 –
Opposition Nos. 91152287 and 91152290
18
6. Builders also visit the Kohler Design Center, which
attracts over 150,000 homeowners, builders, architects and
designers each year. The Kohler Design Center is a 36,000
square-foot facility in which opposer displays its kitchen
and bath products and offers educational seminars featuring
speakers who inform consumers on how to make their homes
more attractive, comfortable and practical, including home
repairs and modeling projects. Opposer also provides home
design services through personal design consultation, and
online design assistance though, inter alia, articles on
kitchen and bath design, floor plan options and virtual
room-planning software. Howley dec. at ¶¶ 2 – 8. Indeed,
printouts from opposer's website offer a “Virtual Bath
Planner” which allows a homeowner to create a virtual
bathroom from his or her own floor plan. Howely dec. ex. 2.
Applicant, of course, provides design services as part
of its architectural services. It also assists its
customers in choosing and installing fixtures for bathrooms
or kitchens as part of its custom construction of homes and
architectural design services. See applicant’s admission of
opposer's request for admissions no. 11 - “The construction
of homes encompasses the selection of fixtures to be used in
the rooms of a home.” In fact, applicant has installed
opposer's fixtures for its customers. Kohler dep. p. 21.
Thus, opposer, as part of the marketing of its fixtures,
Opposition Nos. 91152287 and 91152290
19
provides design services and assists with the selection of
fixtures and applicant, as part of its architectural and
custom home construction services, also provides design
services and assistance with the selection of fixtures.
When a famous mark is part of the equation in
determining the issue of likelihood of confusion, “special
care is necessary to appreciate that products [and services]
not closely related may nonetheless be confused as to source
by the consumer because of the fame of the mark.” Bose, 63
USPQ2d at 1310. Therefore, and in view of the similarity of
the marks, we find that the conditions and activities
surrounding the marketing of the goods are such that they
could be encountered by the same persons under circumstances
that could give rise to the mistaken belief that they
originate from or are in some way associated with the same
producer, because of the similarity of the marks used
therewith.
The du Pont factors regarding the similarity of the
goods and services, channels of trade and classes of
consumers favor a finding of likelihood of confusion in both
applications.
Actual Confusion
Opposer maintains that there is evidence of actual
confusion between opposer's goods and applicant's services
in the record. Opposer relies on Mr. Kohler’s testimony
Opposition Nos. 91152287 and 91152290
20
regarding (i) an encounter at the IBS trade show when
Mr. Kohler was asked by a presenter, who saw Mr. Kohler’s
name card, whether he was connected to opposer; and (ii)
occasions when applicant's customers or potential customers
asked in meeting with Mr. Kohler, if applicant is connected
with opposer. Because Mr. Kohler’s last name is the same as
opposer’s mark, we find that this testimony is not
conclusive as to whether actual confusion has occurred.
Mr. Kohler has also testified that when he initially
meets a prospective customer, he “always tr[ies to] make it
clear that we’re not associated with [opposer] so we don’t
have that confusion in the very beginning of sales.” Kohler
dep. p. 79. Opposer relies on Conopco, Inc. v. May Dept.
Stores Co., 784 F.Supp. 684, 24 USPQ2d 1721 (E.D. Mo. 1992),
for the proposition that a voluntary disclaimer is
recognized as evidence that the junior user anticipates
actual confusion. However, because Mr. Kohler is involved
in these meetings, and because his last name is the same as
opposer's mark, we similarly discount any significance to
his testimony in this regard and do not find that Mr.
Kohler’s practice is evidence that applicant anticipates
confusion.
Opposition Nos. 91152287 and 91152290
21
The du Pont factor regarding actual confusion is
neutral in the likelihood of confusion analysis.4
Survey
Opposer commissioned a likelihood of confusion survey,
which first tested the mark KOHLER HOMES and second tested
the mark KOHLER ASSOCIATES ARCHITECTS. The two surveys
followed a standard, mall-intercept format. Qualified
persons were persons 25 years of age or older who were
planning to or recently had (i) a new home built for them
designed by an architect or based on plans and
specifications they provided, or (ii) renovations or
additions made to their home designed by an architect or
based on plans and specifications they provided. 34.1
percent of respondents mistakenly believed that custom home
construction services provided under the KOHLER HOMES mark
were provided by opposer or that applicant was connected,
authorized by, or affiliated with opposer. 37.4 percent of
respondents mistakenly believed that architectural design
services provided under the KOHLER ASSOCIATES ARCHITECTS
mark were provided by opposer or that Kohler Associates
Architects was connected to, authorized by, or affiliated
with opposer. Opposer also relies on the testimony of
George Mantis, applicant's expert witness who conducted the

4 Actual confusion is not necessary for a finding of likelihood
of confusion. Herbko International Inc. v. Kappa Books Inc., 308
F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002).
Opposition Nos. 91152287 and 91152290
22
survey, for an explanation of the survey and his conclusions
regarding the survey.
“A mall intercept survey, while clearly admissible and
a recognized survey method, is entitled to limited probative
weight because it is not based on a random sample and the
results cannot be projected to the entire universe of
relevant purchasers.” In re Spirits International N.V., 86
USPQ2d 1078, 1089 (TTAB 2008), citing Frank Brunckhorst Co.
v. G. Heileman Brewing Co., 875 F.Supp. 966, 35 USPQ2d 1102
(E.D.N.Y. 1994); Calvin Klein Co. v. Farah Manufacturing
Co., (not reported in F.Supp.), 229 USPQ 795 (S.D.N.Y.
1985); and R. J. Reynolds Tobacco Co. v. Loew's Theatres,
Inc., 511 F. Supp. 867, 210 USPQ 291 (S.D.N.Y. 1980). Thus,
we cannot infer that the views allegedly reflected in this
survey represent the views of the consumers and potential
consumers at large.
In addition, the number of actual respondents to the
KOHLER HOMES and KOHLER ASSOCIATES ARCHITECTS surveys is
small, i.e., 164 and 163, respectively. We cannot
determine, and cannot assume, from this limited number of
survey participants, that opposer included persons who had
constructed or planned to construct homes or additions, or
renovated or planned to renovate their homes, such homes and
additions spanning the full spectrum in terms of cost and
size. Additionally, builders and contractors, who we have
Opposition Nos. 91152287 and 91152290
23
identified as potential purchasers of applicant's
architectural services, were not identified as participants
in the survey. Neither were designers, which Mr. Engberg
has testified assist clients in selecting new fixtures.
Engberg dec. ¶ 5.
Accordingly, we give limited weight to the survey,
finding only that the survey reinforces opposer's position
that there is a likelihood of confusion between opposer's
and applicant's marks.
Conditions of Sale
Applicant has argued that confusion is not likely
because its customers are discriminating, relying on Mr.
Flach’s testimony regarding how purchases of applicant's
services are made. Brief at pp. 15 - 16. Specifically, Mr.
Flach has testified that applicant's customers
tend to interview multiple architectural firms and
multiple home builders and view the prior work of
these firms. Before making a final decision to
work with us, a typical customer will visit our
offices to become familiar with our processes and
practices. They will also talk with several
previous customers about our work. The typical
cost for providing architectural drawings for one
of our custom homes is 8% of the construction cost
and the average price to construct one of our
custom houses is $1,400,000.00.

First, applicant's services are not limited to projects
which have a particular cost. Thus, Mr. Flach’s testimony
is only probative regarding purchasing conditions for
similarly priced projects and not for all architectural
Opposition Nos. 91152287 and 91152290
24
services or custom construction of homes services.
Applicant has introduced no evidence regarding purchasing
conditions for less expensive services such as the custom
construction of an inexpensive home or for architectural
services for the addition of a simple deck. Second, even if
purchases are made as Mr. Flach has described, we find that
the similarity of the marks and the goods and services
outweigh any purchaser sophistication. In re Decombe, 9
USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221
USPQ 558 (TTAB 1983). See also HRL Associates, Inc. v.
Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff'd,
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods
and marks outweighed sophisticated purchasers, involved
purchasing decision, and expensive goods). Moreover, the
fact that purchasers are sophisticated in a particular field
does not necessarily mean that they are knowledgeable in the
field of trademarks or immune from source confusion.
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Total Quality Group Inc., 51
USPQ2d 1474 (TTAB 1999); and 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,
Opposition Nos. 91152287 and 91152290
25
substantially identical marks are applied to related
products.”)
The du Pont factor regarding the conditions of sale is
also neutral in the likelihood of confusion analysis.
Third Party Marks

In connection with the du Pont factor regarding the
number and nature of similar marks in use on similar goods
or services, applicant contends that there are numerous
third party uses of KOHLER; and that such uses establish
that “KOHLER is not a particularly strong mark and is being
used by others for goods and services related to those
provided by Opposer under the KOHLER mark.” Brief at p. 20.
Applicant relies on Ms. Smith’s declaration and exhibits
thereto, including listings from state corporation division
databases, webpages and trademark registrations taken from
the United States Patent and Trademark Office TARR database.
Ms. Smith’s declaration, her chart and her exhibits are
of limited probative value. Many of the goods and services
identified in the various trade names containing “Kohler”
are goods or services that are not similar to opposer's
goods. See, e.g., Kohler City Hardoos Sawmill, ex. 6;
Kohler Direct Marketing, Inc., ex. 11; W. Kohler Lamp &
Shade Co., ex. 20; Kohler Farm Supply, ex. 26; Kohler
Machine Products, Inc., ex. 27; Kohler Mortgage Inc., ex.
28; Kohler Lawn & Outdoor, Inc., ex. 29; Kohler Sprinklers
Opposition Nos. 91152287 and 91152290
26
and Backflow L.L.C., ex., 38; and Kohler Print Group, LLC,
ex. 39. Also, we cannot determine what businesses several
entities are involved in from the information provided.
See, e.g., Kohler/Dorman Enterprises, Inc. ex. 10; and
Kohler of France #1, Inc., ex. 11. Similarly, for several
entities with “Construction” in its name, we do not know
what type of construction services they provide.
Further, with regard to the webpages Ms. Smith has
submitted, there is no information on the extent to which
purchasers and prospective purchasers are exposed to them or
their familiarity with them. See Sports Authority Michigan
Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB 2001). The
trademark registrations are not helpful either because
registrations are not evidence of use of the marks shown
therein. They are not proof that consumers are familiar
with such marks so as to be accustomed to the existence of
the same or similar marks in the marketplace. See Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ
462 (CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint
Corp., 216 USPQ 989 (TTAB 1982). Additionally, such
registrations recite goods (musical instruments) and
services (printing services) unrelated to opposer’s goods.
Thus, the third-party evidence fails to establish that
“Kohler” is commonly used in connection with goods similar
Opposition Nos. 91152287 and 91152290
27
to those of opposer.
Conclusion
After weighing each of the relevant du Pont factors,
and considering the marks in their entireties, we find that
applicant's marks for “custom construction of homes” and
architectural design” services are likely to be confused
with opposer’s marks for the goods recited in the
registrations for such marks. Opposer has established that
its KOHLER marks are famous for purposes of our likelihood
of confusion analysis, the marks are sufficiently similar,
that there is a sufficient relationship among the goods and
services, and that the classes of consumers and trade
channels overlap, so that confusion as to source is likely
to occur. Accordingly, the opposition under Section 2(d) is
sustained.
Dilution
Because we have found for opposer in connection with
its likelihood of confusion claim, we do not reach its claim
of dilution.
DECISION: The oppositions on the ground of likelihood
of confusion are sustained and registration to applicant of
both of its marks is refused.