Kohler Co.v.Masco Corporation of Indiana

Trademark Trial and Appeal Board

Sep 23, 2013

No. 92053940 (T.T.A.B. Sep. 23, 2013)

Mailed: September 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Kohler Co.
v.
Masco Corporation of Indiana
_____

Cancellation No. 92053940
to Registration No. 3870953

_____

Bradley L. Cohn, Brett A. August, Kristen S. Knecht and Jasmine R. Davis of
Pattishall, McAuliffe, Newbury, Hillard and Geraldson LLP for Kohler Co.

Robert C.J. Tuttle, Chanille Carswell, Leon E. Redman, and Elizabeth F. Janda of
Brooks Kushman PC for Masco Corporation of Indiana.
______

Before Holtzman, Cataldo and Lykos, Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

On April 27, 2011, Kohler Co. (“petitioner”) filed a petition to cancel Masco
Corporation of Indiana’s (“respondent”) registration on the Principal Register for
the mark ADDISION, in standard character form, for “[p]lumbing products, namely,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92053940
2
[f]aucets” in International Class 11.1 Petitioner seeks to cancel respondent’s
registration on the ground that respondent’s mark ADDISON for respondent's goods
so resembles petitioner’s previously used mark ADDISON that it is likely to cause
confusion, mistake, or deception of prospective consumers under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d).
In the petition to cancel, petitioner alleges that “since 1936, [it] has
continually used the trademark ADDISON in connection with plumbing fixtures,
namely, sinks;” that such use “clearly predates the August 12, 2008 filing date
relied on by [respondent];” and that by virtue of its sales, advertising and
promotional efforts, petitioner’s ADDISON mark “has become well known” for
sinks. Petition to Cancel, ¶¶ 3-5. Respondent, in its answer, denied the salient
allegations in the petition for cancellation and asserted various affirmative and
putative defenses, including laches, acquiescence and abandonment.2 Insofar as
respondent neither presented evidence regarding these affirmative defenses at trial
nor argued the defenses in its brief, they are deemed waived. See Cerveceria India
Inc. v. Cerveceria Centroamericana, S.A., 10 USPQ2d 1064, 1066, n.3 (TTAB 1989),
aff'd, 892 F.2d 1021, 13 USPQ2d 1307 (Fed. Cir. 1989) (affirmative defenses
waived).

1 Registration No. 3870953, registered on November 2, 2010, pursuant to Section 1(a) of the Trademark
Act. The registration alleges June 2010 as the date of first use anywhere and in commerce. The filing
date of the underlying application which matured into registration was August 12, 2008.

2 In addition, respondent asserted the affirmative defense of failure to state a claim upon which relief
may be granted. Insofar as respondent neither filed a formal motion to dismiss pursuant to Fed R. Civ.
P. 12(b)(6) during the interlocutory phase of this proceeding, nor argued this asserted affirmative
defense in its brief, it is hereby deemed waived. See Alcatraz Media Inc. v. Chesapeake Marine Tours
Inc., 107 USPQ2d 1750, 1752 n.6 (TTAB 2013).
Cancellation No. 92053940
3
I. The Record
The record includes the pleadings, and pursuant to Trademark Rule 2.122(b),
respondent's registration file. In addition, the parties introduced the following:3
A. Petitioner’s Evidence
During its main testimony period, petitioner filed a notice of reliance on December 28,
2012 comprised of the following:
1. Declaration of Adam Horwitz, petitioner’s Director of Marketing and
Development, Kitchens and Cast Iron, with exhibits attached thereto;

2. Declaration of Angela Miller, petitioner’s Senior Communication Specialist –
Corporate Archives, with exhibits attached thereto;

3. Declaration of Jillene Olson, petitioner’s Supervisor – Customer Service, with
exhibits attached thereto;

4. Excerpts from third-party websites offering for sale petitioner’s ADDISON
sink;

5. Printouts of third-party registrations obtained from the USPTO database for
marks covering both sinks and faucets;

6. Excerpts from the discovery deposition transcript of Jessica Egerton, Brand
Manager and Advertising Manager for Delta Faucet Company;

7. Excerpts from third-party websites offering for sale respondent’s faucets;

8. Respondent’s Response to Interrogatory No. 6 of Petitioner’s First Set of
Interrogatories; and

9. Respondent’s Supplemental Responses to Request No 20 to Petitioner’s First
Set of Requests for Documents and Things.

3 The parties’ stipulation to submit testimony of its trial witnesses by declaration in lieu of taking
testimony depositions is hereby approved. Trademark Rule 2.121. See also TBMP § 705 and authorities
cited therein. The Board commends the parties for agreeing to this alternative method for introducing
trial testimony which presumably saved time and expenses for both parties.
Cancellation No. 92053940
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During its rebuttal testimony period, petitioner filed a notice of reliance on May 13,
2013 comprised of the following:
1. Declaration of Barbara Schmid, research librarian for counsel for petitioner,
and accompanying exhibits; and

2. Excerpts from the discovery deposition transcript of Adam Horwitz.

B. Respondent’s Evidence

During its main testimony period, respondent filed a notice of reliance on March 26,
2013 comprised of the following:
1. Declaration of Jessica Egerton, Brand Manager and Advertising
Manager for Delta Faucet Company, and accompanying exhibits;

2. Declaration of Melissa Tate, Brand Manager and Advertising Manager
for Delta Faucet Company, and accompanying exhibits;

3. Declaration of Leon Redman, Corporate Counsel – Intellectual
Property for respondent, and accompanying exhibits;

4. Excerpts from the discovery deposition transcript of Adam Horwitz;

5. Petitioner’s Responses to Respondent’s First Set of Requests for
Admissions, Admission Nos. 1-5, 7, 13, and 17;

6. Petitioner’s Responses to Respondent’s First Set of Interrogatories,
Interrogatory Nos. 1-2;

7. Print-outs from third-party web sites offering for sale respondent’s
ADDISON faucet and accessories; and

8. Print-outs from third-party web sites offering for sale petitioner’s
ADDISON sink.

The case is fully briefed.4

4 Portions of the record are designated confidential. Respondent submitted a redacted version of its
appeal brief for public view. Accordingly, we have refrained from referring to evidence designated as
confidential in this opinion.
Cancellation No. 92053940
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II. The Parties
Petitioner, founded in 1873, manufactures and sells kitchen and bath
plumbing products. Horwitz Decl. ¶3. Petitioner sells “hundreds of different kinds
and styles” of such items, including “sinks, faucets, bathtubs, plumbing valves,
lavatory pedestals, toilets, toilet seats, urinals, bidets, vanities, console tables,
showers, shower heads, shower doors, shower trays, sink strainers, hot water
dispensers, towel bars, toilet tissue holders, soap dishes, robe hooks, mirrors, glass
shelves, and lighting fixtures.” Id. Petitioner has used the mark ADDISON in
connection with “bar sinks” or “entertainment sinks” -- sinks which are “used in
homes in wet bars, dens, and basement entertainment areas” or as “supplementary
sinks in the kitchen area for food preparation.” Id. at ¶4.
Respondent, a manufacturer of kitchen and bath products, operates under
the name Delta Faucet Company. Respondent’s Notice of Reliance, Ex. 3; Tate Decl.
¶ 1-2. Since 1954, respondent has been selling plumbing fixtures, including faucets,
under the brand name DELTA. Egerton Decl. ¶4; Respondent’s Notice of Reliance,
Ex. 2. However, certain styles of faucets are marketed under different product
names. Id. at ¶6; Tate Decl. ¶3. In 2008, respondent selected the mark ADDISION
as a product name to identify a new particular type of faucet. Egerton Decl. ¶10.
Respondent currently sells not only kitchen and bath faucets, but also showerheads
and related accessories under the ADDISON brand name. Tate Decl. ¶4.
III. Standing
As explained in detail in the discussion below regarding priority, petitioner,
Cancellation No. 92053940
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through its testimony and documentary evidence, has established that since 1936 it
has used and continues to use the mark ADDISON in connection with specialty bar
or prep sinks. See Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1022 (TTAB
2009) (common-law use sufficient to establish standing). Petitioner has asserted a
plausible likelihood of confusion claim against respondent’s identical mark for
faucets. Thus, petitioner has demonstrated that it possesses a real interest in this
proceeding beyond that of a mere intermeddler, and a reasonable basis for its belief
of damage. See Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023 (Fed. Cir.
1999). See also Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). We find, therefore, that petitioner has proven its standing
to bring the instant cancellation proceeding.
IV. Section 2(d) Claim
We now turn to petitioner’s Section 2(d) claim.
A. Priority
Respondent does not dispute petitioner’s prior use. Nonetheless, in order for
petitioner to prevail on its Section 2(d) claim, it must prove by a preponderance of
the evidence that it has a proprietary interest its pleaded ADDISON word mark for
sinks and that it obtained that interest prior to the actual or constructive first use
by respondent. Herbko International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1378 (Fed. Cir. 2002); Otto Roth & Co., Inc. v. Universal Corp., 640
F.2d 1317, 209 USPQ 40, 43 (CCPA 1981. The earliest date upon which respondent
is entitled to rely upon, given the absence of evidence of any earlier use, is August
Cancellation No. 92053940
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12, 2008 -- the filing date of the application which eventually matured into the
involved registration.
Petitioner’s corporate representative testified that petitioner has been
continuously selling “a bar sink” under the mark ADDISON since 1936. Horwitz
Decl. ¶4. Oral testimony, even of a single witness, if “sufficiently probative,” may be
sufficient to prove priority. Powermatics, Inc. v. Glebe Roofing Products Co., 341
F.2d 127, 144 USPQ 430, 432 (CCPA 1965); see also 4U Co. of America, Inc. v. Naas
Foods, Inc., 175 UPSQ 251, 253 (TTAB 1972). In addition, the testimony is
corroborated by statements made by petitioner’s corporate archivist along with
excerpts from price lists and product catalogs for select years dating from 1936–
2012 offering for sale “sinks” under the ADDISON brand name. Miller Decl. ¶2; Ex.
1. Petitioner also testified that between 1998-2012, it sold over 20,000 sinks bearing
the ADDISON mark with sales approximating $2 million. Horwitz Decl. ¶13.
We find that petitioner, through the statements of its witnesses, coupled with
the above documentary evidence, has demonstrated by a preponderance of the
evidence use of the mark ADDISON in connection with sinks prior to August 12,
2008, respondent’s constructive date of first use.
B. Likelihood of Confusion
Petitioner must also establish that there is a likelihood of confusion by a
preponderance of the evidence. We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing on a likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
Cancellation No. 92053940
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(CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We will now analyze the relevant du Pont
factors presented in this case, keeping in mind that our determination is based on
the goods as listed in the involved registration. See Cunningham v. Laser Golf
Corp., 55 USPQ2d at 1846. See also Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
1. The Marks
We begin our analysis with the first du Pont factor, a comparison of the
parties’ marks. Respondent contends that confusion is lessened in this case because
both parties consistently use their marks in conjunction with their own well-known
house marks. More specifically, respondent argues that confusion is unlikely
because petitioner “always” uses its ADDISON mark “in immediate proximity” to its
KOHLER house mark while respondent “always” uses its ADDISON mark in
conjunction with its DELTA house mark in its packaging, advertising, catalogs,
price books and on the www.deltafaucet.com website. Respondent’s Brief, p. 16.
Respondent points to evidence that on-line retailers advertise faucets displaying
ADDISION as a secondary mark as well as the “ubiquitous” presence on each
party’s web site of their respective KOHLER and DELTA house marks.
Much of the evidence of record regarding petitioner’s use of its ADDISON
mark, however, shows the contrary. For example, according to the packaging labels,
petitioner’s ADDISON mark serves as a separate source indicator to identify
specialty bar and prep sinks. Horwitz Decl. Ex. 3 (packaging label bearing the
Cancellation No. 92053940
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ADDISON mark in typed font for “self-rimming entertainment sink”). We
acknowledge that in some instances the KOHLER house mark appears on the same
catalog page, packaging label, or product specification sheet as the ADDISON mark.
See e.g., Miller Decl. Ex. 1; Redman Decl. Ex. B; Horwitz Decl. Ex. 4. See also
Respondent’s Brief, pp. 8-9. We disagree though with respondent’s characterization
that the ADDISON mark appears in close proximity to respondent’s house mark
such that consumers would not perceive ADDISON as a separate indicator of
source.
Moreover, whether respondent uses its ADDISON mark in conjunction with
its DELTA house mark is irrelevant. See Interstate Brands Corp. v. McKee Foods
Corp., 53 USPQ2d 1910, 1914-15 (TTAB 2000) (use of parties’ house marks in close
proximity to trademarks at issue irrelevant). Respondent’s registration is for the
stand-alone term ADDISON, without more. Thus, the basis for our comparison is
the mark ADDISON, not DELTA ADDISON.
We further note that respondent's mark ADDISON is registered in standard
character form. Petitioner's common law mark, as actually used, is displayed in a
similar typed form.
Thus, based on the evidence before us, the parties’ marks are identical in
sound, appearance, meaning and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). We therefore find that this first du Pont factor
weighs in favor of finding a likelihood of confusion.
Cancellation No. 92053940
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2. The Goods
Next, we turn to a comparison of the parties’ respective goods keeping in
mind that where identical marks are involved, as is the case here, the degree of
similarity between respondent's goods and petitioner's goods that is required to
support a finding of likelihood of confusion declines. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1688-1689 (Fed. Cir. 1993).
Respondent argues that because the goods are distinct and do not overlap, there
is no competition in the marketplace. As respondent contends, petitioner’s product is a
specialty sink and respondent’s registration is limited to “faucets.” Respondent further
points to evidence in the record that respondent does not sell sinks under the
ADDISON brand name. Egerton Decl. ¶9.
Respondent’s argument is unconvincing. It is well established that the respective
goods do not have to be identical or even competitive in order to determine that there is
a likelihood of confusion; rather, it is sufficient that the respective goods are related in
some manner, or the conditions surrounding their marketing must be such that the
goods will be encountered by the same purchasers under circumstances that would give
rise to the mistaken belief that they originate from the same source. See, e.g., On-line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000);
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984). We acknowledge that the parties are providing different goods. Nonetheless, the
record shows that petitioner’s specialty sinks and respondent’s faucets are
complementary products advertised and used together. As explained by petitioner’s
Cancellation No. 92053940
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director of marketing and development and corroborated by excerpts obtained from
petitioner’s web site:
Bar sinks are used with faucets. These faucets are sometimes called
bar/prep faucets. For example, in the picture of the ADDISON sink on
Kohler’s web site, the sink is shown with a bar/prep faucet. Kohler not
only sells bar sinks, like ADDISION, but also sells bar/prep faucets.

Horwitz Decl. ¶5, Ex. 2. Because respondent’s registration is not limited as to any
particular type of faucet, we must presume it includes more specialized types of faucets
suitable for use with petitioner’s specialty bar and prep sink. See Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
In addition, the record shows that petitioner markets suites of related products
under the same trademark to eliminate the difficulty of matching individual pieces of
merchandise for the consumer. Horwitz Decl. ¶14. For example, petitioner sells both
sinks and faucets under a single trademark such as BANCROFT, DEVONSHIRE,
KELSTON, MEMOIRS, and REVIVAL. Id. at ¶15. Thus, consumers are accustomed to
seeing both sinks and faucets marketed and sold under the same trademark. As such,
this du Pont factor also favors a likelihood of confusion.
3. Trade Channels
Next we turn to the du Pont factor regarding the similarity or dissimilarity as
established, likely-to-continue trade channels and purchasing conditions. As we have
often stated, the issue of likelihood of confusion must be determined on the basis of
respondent's goods as they are set forth in the involved registration, rather than in
light of what the goods actually are as shown by any extrinsic evidence. See, e.g.,
Cancellation No. 92053940
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Octocom Systems Inc., 16 USPQ2d at 1787; Canadian Imperial Bank of Commerce,
N.A., 1 USPQ2d at 1815-16; CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); and Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983). Thus, where the goods in an involved registration are broadly identified as
to their nature and type, such that there is an absence of any restrictions as to the
channels of trade and no limitation as to the classes of purchasers, it is presumed that
in scope the identification of goods encompasses all the goods of the nature and type
described therein, that the identified goods are offered in all channels of trade which
would be normal therefor, and that they would be purchased by all potential buyers
thereof. Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
Because the trade channels and classes of purchasers in respondent’s
registration are unrestricted, we must presume that respondent’s goods are offered
in all channels of trade and provided to all purchasers as are normal for the
respective goods. Id. The normal trade channels for faucets are wholesalers, retail
stores or online web site sold to the average consumer. This is corroborated by the
testimony of respondent that its ADDISON faucets are sold through plumbing
wholesalers, online retailers, and big box retail stores such as Lowes and The Home
Depot. Tate Decl. ¶¶8, 11. In addition, consumers frequently special order
respondent’s items via these big box stores. Id. at 10. The trade channels for
petitioner’s goods, as reflected in the record, are plumbing wholesalers and
Cancellation No. 92053940
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distributors, e-commerce merchants, and countertop fabricators. Horwitz Decl. ¶9.
Petitioner’s sinks are also sold via The Home Depot online web site as well as by
Home Depot in store specialty order catalog. Id. As such, both petitioner’s and
respondent’s goods are sold in overlapping trade channels and to the same
purchasers. This factor favors a likelihood of confusion.
4. Conditions of Purchase
Regarding the conditions of sale, respondent contends that because both
parties’ products are relatively expensive and generally purchased through special
order, both knowledgeable wholesaler and retail consumers can be expected to
exercise a high degree of care in making their purchasing decisions. As the record
shows, petitioner’s specialty bar and prep sink retails for $233-$391 and
respondent’s ADDISON faucets retail for $60-$400. Respondent’s Notice of Reliance
Exs. 9-10.
The record does not, however, reflect that the parties’ respective goods are
sold exclusively or even predominantly to a professional class of purchasers. Rather,
as both parties have stated, their goods are sold online to the average consumers as
well as in big box stores such as The Home Depot and Lowes. Furthermore,
respondent’s registration is not limited to expensive faucets. We must therefore
assume that the registration covers inexpensive faucets as well. As such, we must
assume that purchasers will exercise ordinary care in their purchasing decision. We
therefore find that in this particular case, the price and conditions of sale favor a
likelihood of confusion.
Cancellation No. 92053940
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5. Scope of Protection/Fame
As respondent correctly notes, petitioner has not argued that its mark is
famous. Instead, petitioner argues that its mark ADDISON, as an arbitrary mark,
is “conceptually strong.” Petitioner’s Brief, p. 10. Petitioner also contends that its
mark has acquired “commercial strength” based on 75 years of use with 20,000
units of sale at a value of $2 million over the past 14 years. Petitioner also points to
its sales in big box stores such as The Home Depot, e-commerce merchants and
participation at annual trade shows.
Petitioner is correct that the mark ADDISON is arbitrary in relation to
petitioner’s goods, and it is therefore entitled to a broader scope of protection than a
less distinctive mark. Nonetheless, “commercial strength” is not the same as fame,
and the evidence is insufficient to establish the level of fame as required under the
fifth du Pont factor. This factor is therefore neutral.
6. Actual Confusion and Contemporaneous Use
Respondent contends that despite contemporaneous use of the marks since
2009, there is no evidence of actual confusion. As respondent argues, both parties
have advertised and sold their respective products through the same big box and
online retailers, both parties presented their products at the same industry trade
show, and both parties have targeted the same category of consumers without any
instances, to both parties’ knowledge, of actual confusion.
A showing of actual confusion would of course be highly probative, if not
conclusive, of a likelihood of confusion. The opposite is not true, however. The lack
Cancellation No. 92053940
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of evidence of actual confusion carries little weight. J.C. Hall Co., 144 USPQ at
438. The issue before us is the likelihood of confusion, not actual confusion. Herbko
Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir.
2002) (actual confusion not required). The absence of actual confusion is not
probative unless it is accompanied by evidence demonstrating that in light of the
parties’ actual business activities, confusion, if likely, would have occurred. See
Cunningham, 55 USPQ2d at 1847. Given the relatively short period of
contemporaneous use, we cannot conclude that the absence of evidence of actual
confusion supports respondent’s argument that confusion is not likely. Since there
is neither evidence of actual confusion nor significant evidence of its absence, these
factors are neutral.
7. Balancing the Factors
In the present case, the identical nature of the marks, relatedness of the
goods, and overlapping trade channels and consumers favor a finding of likelihood
of confusion. Accordingly, we find that petitioner has proved its case by a
preponderance of the evidence.
DECISION: The petition for cancellation is granted, and Registration No.
3870953 will be cancelled in due course.