Krueger International, Inc.v.Okamura Corporation

Trademark Trial and Appeal Board

Jun 25, 2010

No. 91174281 (T.T.A.B. Jun. 25, 2010)

Mailed: June 25, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Krueger International, Inc.
v.
Okamura Corporation
_____

Opposition No. 91174281
_____

Charles S. Blumenfield of Blumenfield & Shereff, LLP for Krueger
International, Inc.

George W. Lewis of Jacobson Holman PLLC for Okamura Corporation.
______

Before Walters, Holtzman and Wellington, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Okamura Corporation (applicant), has filed an application to
register the standard character mark on the Principal
Register for the following goods:1
Furniture, namely, office furniture, school
furniture, furniture for house, chairs, armchairs,
desks, tables, lockers, index cabinets, filing
cabinets, shelves for filing-cabinets, racks, display
racks, screens, shelves for storage, stools, sofas,
seats, benches, sideboards, chests of drawers,
showcases, sales and display counters, furniture

1 Serial No. 76639102, filed May 20, 2005, based on an allegation of a
bona fide intent to use the mark in commerce.
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91174281
2
partitions, furniture of metal, in Class 20.

Krueger International, Inc. (opposer), filed a notice of
opposition on the ground of priority and likelihood of confusion.
Opposer alleges that applicant's mark, when applied to
applicant's goods, so resembles opposer's previously used mark
BARRON for tables and other office furniture and its previously
registered mark BARRON on the Supplemental Register (Registration
No. 1921282) for "tables," as to be likely to cause confusion.
Applicant filed an answer denying the salient allegations in
the notice of opposition.
The record consists of the pleadings and the file of the
involved application; opposer's testimony, with exhibits, of Leo
G. Welter, opposer's senior product manager, and Nathan A. Jeske,
opposer's product manager for contract and powered tables; and
opposer's notice of reliance on materials including a status and
title copy of its pleaded registration on the Supplemental
Register for the typed mark BARRON for "tables" in Class 20.2
Applicant did not attend the depositions of opposer's
witnesses; nor did applicant submit any testimony or other
evidence in its own behalf. Only opposer filed a brief.
Standing
Opposer's registration of the mark BARRON on the
Supplemental Register for "tables" is sufficient to establish
opposer's direct commercial interest in its mark and its standing

2 Issued September 19, 1995; renewed.
Opposition No. 91174281
3
to oppose registration of applicant's mark. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000). Cf. In re Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA
1978) (a "mark" that has not become distinctive but that has been
registered on the Supplemental Register can be used as a basis
for refusing registration to another mark under Section 2(d)).
Opposer's standing also is established as indicated below by its
common law rights in the BARRON mark.
Priority
Priority is not in issue in an opposition if opposer
establishes that it is the owner of a subsisting registration on
the Principal Register. However, a registration issued on the
Supplemental Register is not afforded any statutory presumptions
under Section 7(b) of the Trademark Act and is therefore
incompetent as evidence to establish priority of use. See In re
Federated Department Stores Inc., 3 USPQ2d 1541, 1543 (TTAB 1987)
("a Supplemental Register registration is evidence of nothing
more than the fact that the registration issued on the date
printed thereon. ... It is entitled to no presumptions of
validity, ownership, use or priority."); Aloe Creme Laboratories,
Inc. v. Johnson Products Co., Inc., 183 USPQ 447, 447 (TTAB
1974). Therefore, priority is in issue in this case. Cf.
Section 7(c) of the Trademark Act (providing that an application
for registration on the Principal Register constitutes
constructive use for priority purposes).
Opposition No. 91174281
4
Under Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40, 43 (CCPA 1981), a plaintiff relying on an
unregistered mark cannot prevail on a likelihood of confusion
claim unless it shows that its term is distinctive of its goods
or services, "whether inherently or through the acquisition of
secondary meaning or through whatever other type of use may have
developed a trade identity." Here, however, the mark is
registered, albeit on the Supplemental Register. Moreover, the
Court in Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
1039, 1042 (Fed. Cir. 1990), cited as an exception to the general
rule set forth in Otto Roth the situation where a plaintiff
alleging likelihood of confusion owns a Supplemental Register
registration. The Court stated that "likelihood of confusion can
be found even if a term is merely descriptive and does not
identify source: Registration on the Supplemental Register is
sufficient, and a showing of trade identity rights in the form of
secondary meaning is unnecessary." Towers, id., citing In re
Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978) and In re
Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49 (Fed. Cir.
1986). See also Perma Ceram Enterprises Inc. v. Preco Industries
Ltd., 23 USPQ2d 1134, 1138 n.12 (TTAB 1992).
Thus, in view of opposer's registration on the Supplemental
Register, opposer is not required to prove, in addition to prior
use, that its mark was distinctive of its goods prior to
applicant's first use of its mark.
Opposition No. 91174281
5
We turn then to the question of priority of use. The
testimony of Mr. Welter and the supporting documentation,
including opposer's sales figures, are sufficient to establish
that opposer first began producing and selling a line of
"contract" tables3 under the mark BARRON at least as early as
1989. Welter Test., pp. 10, 28-29, 40, 55; Exh. 16. This date
is long prior to the May 20, 2005 filing date of the involved
application which, in view of the absence of evidence of any
earlier use, is the earliest date on which applicant is entitled
to rely.
Likelihood of confusion
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).

3 We take judicial notice of the definition of "contract furniture" as
meaning "furniture designed and manufactured for commercial
installation, as in offices, waiting rooms, or lobbies. Random House
Unabridged Dictionary (1997), retrieved from infoplease.com. The Board
may take judicial notice of online reference works which exist in
printed form. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791
n.3 (TTAB 2002).
Opposition No. 91174281
6
Goods/Trade channels/Purchasers
In our evaluation of these du Pont factors, we are bound by
the goods as identified in the involved application. In the
absence of any restrictions or limitations in the application, we
must assume the goods are sold through all the normal and usual
trade channels for such goods to all the usual purchasers of such
goods. See Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1987).
Opposer is a contract manufacturer of furniture for
institutional customers, including government agencies,
educational institutions, business and financial organizations
and healthcare facilities. Jeske Test., p. 25-26; Welter Test.,
pp. 13, 34. Opposer's lines of furniture include desks, chairs,
tables, storage units and wall systems. The particular items of
furniture offered under the BARRON mark are contract tables.
Applicant's goods are identified as "furniture, namely,
office furniture, school furniture, furniture for house, chairs,
armchairs, desks, tables, lockers, index cabinets, filing
cabinets, shelves for filing-cabinets, racks, display racks,
screens, shelves for storage, stools, sofas, seats, benches,
sideboards, chests of drawers, showcases, sales and display
counters, furniture partitions, furniture of metal."
Opposition No. 91174281
7
The parties' respective goods are in part identical or
legally identical. Applicant's broadly worded "office
furniture," "school furniture" and "tables" would encompass the
contract tables or tables for institutional use produced by
opposer. Furthermore, opposer's tables are complementary or
otherwise closely related to the chairs, desks, wall units and
other items of furniture identified in the application. Opposer
itself manufacturers some of these other types of furniture and,
according to Mr. Jeske, it has become typical in the furniture
industry, particularly over the past 15 years, for companies to
produce collections of different furniture pieces and market them
under the same mark. Jeske Test., p. 32. He cites, as examples,
a collection of tables and storage units offered by a company
called Izzy under the mark DEWEY; and a line of flipping/nesting
chairs and tables offered by All Steel under the mark GET-SET.
Because the goods are in part identical and otherwise
closely related, and there are no restrictions in the
application, we must presume the channels of trade and purchasers
for the products would at least overlap, and that the
organizations and agencies who would be the customers of
opposer's tables would also be prospective purchasers of
applicant's furniture, including tables. Further, the channels
of trade for these products actually do overlap. Both applicant
and opposer maintain a permanent show space at the location of
the NeoCon industry show in Chicago, considered to be the premier
Opposition No. 91174281
8
trade show for contract furniture, and the furniture of both
parties was displayed at that show in June 2009. Welter Test.,
p. 40, 49; Exh. 28; Jeske Test., p. 40.
Strength of opposer's mark
In determining the strength of a mark we may consider both
its inherent strength based on the nature of the mark itself and
its market strength. See Tea Board of India v. Republic of Tea
Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). There is no evidence in
the record as to the significance of the term BARRON. We take
judicial notice that "Barron" is a surname as well as the name of
a geographic location in Wisconsin.4 Whichever meaning actually
applies in this case, we must consider that opposer's
registration of BARRON on the Supplemental Register is an
admission by opposer that the term was not distinctive, at least
at the time of registration. See Quaker State Oil Refining
Corporation v. Quaker Oil Corporation, 453 F.2d 1296, 172 USPQ
361, 363 (CCPA 1972). Nevertheless, the record shows that the
mark has acquired distinctiveness.5
Opposer has used the mark BARRON in connection with its line
of contract tables for more than 20 years, and such use has been
substantially exclusive to opposer during that time. Welter
Test., p. 39. The mark is prominently displayed on "stickers"

4 Census.gov/genealogy/data/2000surnames; Columbia Gazetteer of the
World Online (2010) (columbiagazetteer.org).
5 A registration on the Supplemental Register is not an admission that
the mark has not acquired distinctiveness. See Section 27 of the
Trademark Act.
Opposition No. 91174281
9
applied to the tables, on a separate segment of opposer's website
(ki.com) dedicated to the BARRON product line and on all of its
promotional materials for the tables. Exhs. 4-15, 17-25. More
than 100 different varieties of tables are available in the
BARRON product line. Jeske Test. p. 24.
Opposer's BARRON tables are sold throughout the United
States, and opposer has submitted evidence of its sales and
promotional expenditures for the 19-year period from 1989 to
2008, as well as testimony regarding opposer's market share for
that period. Welter Test., pp. 28-29, 43; Exh. 16. Although the
specific information is confidential, the figures indicate that
the BARRON line of tables has been successful for opposer and
that its ranking in terms of market share for that segment of the
industry is significant.
The evidence of record is sufficient to show that the mark
BARRON has achieved at least some degree of strength and
recognition in the marketplace, and that it functions as a
significant indicator of source. We also note that there is no
evidence of any third-party use or registration of the same or
similar marks in the industry. Accordingly, we find that the
mark is entitled to a broader, rather than a narrower, scope of
protection.
The marks
We turn to a comparison of applicant's mark BARON with
opposer's mark BARRON and a consideration of similarity or
Opposition No. 91174281
10
dissimilarity of the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
The test under this du Pont factor is not whether the marks
can be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to the
source of the goods offered under the respective marks is likely
to result. The focus is on the recollection of the average
purchaser, who normally retains a general, rather than a
specific, impression of trademarks. See In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1468 (TTAB 1988); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
We find that the overall commercial impressions created by
BARON and BARRON are essentially the same. The marks are
identical in sound. Similarity in sound alone has been held
sufficient to support a finding of likelihood of confusion. See
Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526
(CCPA 1968). The marks are also virtually identical in
appearance. The difference in spelling between BARON and BARRON
is visually insignificant, and is not likely to be noted or
remembered by purchasers when seeing these marks at separate
times on identical goods.
Opposition No. 91174281
11
As to meaning, the term BARRON may easily be perceived as
simply a slight misspelling of the recognized word BARON, if the
difference in spelling is noticed at all, and in that case the
meanings of the two marks would be the same. However, to the
extent that there is any difference in meaning, it is greatly
outweighed by the identity or near identity between the marks in
sound, appearance and commercial impression.
Conditions of Purchase
It is reasonable to assume that the overlapping purchasers
for applicant's and opposer's commercial tables and other
furniture would be more sophisticated and discriminating than the
general public. We note that opposer's tables are relatively
expensive, ranging in price from $600 to $2,000 depending on the
configuration and selected options for the tables. Jeske Test.,
p. 11. However, even knowledgeable and careful purchasers can be
confused as to source where, as here, virtually identical marks
are used in connection with identical and closely related goods.
See Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities in
marks and products overshadowed sophistication of purchasers,
expensive goods and careful purchasing decision); In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
("Human memories even of discriminating purchasers...are not
infallible.").

Opposition No. 91174281
12
Conclusion
In view of the foregoing, and because nearly identical marks
are or will be used in connection with identical and closely
related goods, we find that there is a likelihood of confusion.

Decision: The opposition is sustained, and registration to
applicant is refused.