LF, LLC

Trademark Trial and Appeal Board

Feb 23, 2011

No. 77570227 (T.T.A.B. Feb. 23, 2011)

Mailed: February 23, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

LF, LLC
________

Serial No. 77570227
Filed: September 15, 2008
_______

Trevor P. Schmidt of Moore & Van Allen PLLC for LF, LLC.

John M. Gartner, Trademark Examining Attorney, Law Office
102, Karen M. Strzyz, Managing Attorney.
_______

Before Quinn, Mermelstein, and Bergsman, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration of the mark SINK2GO (in
standard characters) for “sinks” in International Class 11.1
The examining attorney has refused registration, having
determined that registration of applicant’s mark would lead
to a likelihood of confusion in view of the prior
registration of the mark BATHROOM-TO-GO (in standard
characters) for “bathroom fixtures, namely, toilets, sinks,
lavatories and bath tubs,”2 and the mark PEDESTAL-TO-GO “for

1 Based on the allegation of a bona fide intent to use the mark
in commerce, pursuant to Trademark Act § 1(b), 15 U.S.C.
§ 1051(b).
2 Registration No. 2411066, issued December 5, 2000; affidavits
under Trademark Act §§ 8 & 15 accepted and acknowledged.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77570227
2
“sinks,”3 pursuant to Trademark Act § 2(d); 15 U.S.C.
§ 1052(d). Applicant appeals from the examining attorney’s
final refusal.
We affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that
“[t]he fundamental inquiry mandated by Section 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

3 Registration No. 2840445, issued May 11, 2004; affidavits under
Trademark Act §§ 8 & 15 accepted and acknowledged. Both cited
registrations are owned by AS IP Holdco, LLC. In addition, the
examining attorney also made of record (but did not cite) two
additional registrations owned by the same registrant: TOILET-TO-
GO for “vitreous china water closets” (Reg. No. 2365531); and
SHOWER-TO-GO for “shower bases” (Reg. No. 2591802).
Serial No. 77570227
3
1098, 192 USPQ 24, 29 (CCPA 1976); In re Azteca Rest.
Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
II. Discussion
A. Similarity of the Goods; Channels of Trade and
Class of Consumers

Applicant’s goods are identified as “sinks.” The
goods in the cited registrations are “bathroom fixtures,
namely, toilets, sinks, lavatories and bath tubs” (‘066
Registration) and “sinks” (‘445 Registration). As is
obvious on the face of the identified goods, applicant’s
“sinks” are identical to goods in both4 of the cited
registrations. Applicant does not contend otherwise, and
indeed, it does not even mention this du Pont factor in its
arguments on appeal.
With respect to the channels of trade and class of
consumers for the identified “sinks,” we start with the
principle that goods are presumed to move in all channels
of trade normal for such items, and that they are purchased
by all of the usual consumers for such goods. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981) (citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958)). The

4 While the additional goods in the ‘066 Registration also appear
related to applicant’s “sinks,” further analysis of the
relationship is unnecessary. Tuxedo Monopoly, Inc. v. Gen. Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 987 (CCPA 1981)
(registration properly denied when likelihood of confusion is
established as to any of the goods described in the application).
Serial No. 77570227
4
fact that the goods are identical means that we must assume
that their purchasers and channels of trade are also
identical. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”). Again, applicant makes no argument that its
channels of trade or classes of consumers differ from those
of the cited registrant.
We conclude that applicant and the cited registrant
share identical goods, and that those goods are sold in
identical channels of trade to the same classes of
consumers. These du Pont factors strongly favor the
finding of a likelihood of confusion.
B. The Similarity or Dissimilarity of the Marks in
Their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
Serial No. 77570227
5
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he test 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 impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result.” H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008). In
comparing the marks, we keep in mind that “[w]hen marks
would appear on virtually identical goods..., as is the
case here, the degree of similarity necessary to support a
conclusion of likely confusion declines.” In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010)
(citing Century 21 Real Estate Corp. v. Century Life of
Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)).
The mark in the application on appeal is SINK2GO,
while the mark in the registrations cited by the examining
attorney are BATHROOM-TO-GO and PEDESTAL-TO-GO. The crux
of applicant’s argument on appeal is that the cited
registrations are highly suggestive, and are
distinguishable from applicant’s mark:
While it is true that a highly suggestive mark is
still entitled to some protection, the Board and
various courts have repeatedly found that a
junior user can avoid confusion if its mark
features non-shared literal elements that differ
Serial No. 77570227
6
in sight and sound from the existing mark, even
if the non-shared elements are also highly
suggestive or descriptive and are connotatively
similar to the existing mark and the marks are
intended for use on identical goods.

App. Br. at 3-4.
In this regard, applicant contends that the cited
marks both consist of an initial descriptive term (BATHROOM
in the ‘066 Registration and PEDESTAL in the ‘445
Registration), together with the “wording TO-GO[, which] is
a common idiom meaning packaged to take with the consumer
and when used in connection with specific goods, implies
that these goods include everything needed to utilize the
goods.” App. Br. at 6. “Customers will require little or
no imagination to understand the nature of the goods on
which [registrant] is using its marks, and consequently,
the marks are highly suggestive,” and are “entitled to only
a narrow scope of protection.” Id. at 7.
On the other hand, the examining attorney argues that
dictionary evidence provided by applicant suggests that the
phrase “to go” is used descriptively only in the context of
food, Ex. Att. Br. at 4-5, and that the registrant is the
only user of “TO-GO” formative marks in connection with
bathroom fixtures. He concludes that “TO-GO” is a strong
term because it is incongruous, and used exclusively by the
registrant with respect to bathroom fixtures. Id. at 5.
Serial No. 77570227
7
Although admitting that the terms are “connotatively
similar,” applicant contends that its use of the numeral
“2” in its mark (“2GO”) visually distinguishes it from the
word “to” as used in the cited registrations (“TO-GO”),
Reply Br. at 6. With respect to the other portions of the
marks at issue (SINK-, BATHROOM-, and PEDESTAL-), the
examining attorney contends that although the terms are
obviously different, they present the similar overall
impression of bathrooms or the fixtures installed in them.
Ex. Att. Br. at 8.
We begin with the obvious observation that the terms
SINK-, BATHROOM-, and PEDESTAL-, are at least descriptive
of the sinks5 and bathroom fixtures identified in their
respective applications and registrations. While our
ultimate conclusion rests on consideration of the marks as
a whole, it is often appropriate to accord greater
importance to the more distinctive elements in the marks.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“Indeed, this type of analysis appears to
be unavoidable.”). And as a general matter, “the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”

5 The dictionary evidence of record reflects that “pedestal” is a
type of sink.
Serial No. 77570227
8
Cunningham, 55 USPQ2d at 1846 (quoting In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
We thus give little weight to the descriptive terms in
these marks and find that the dominant portions of the
marks at issue here are “TO-GO” and “2GO.”
Here, aplicant admits that “2GO” in its mark and
“TO-GO” in the cited registration are “connotatively
similar.” In fact, we think that the similarity in meaning
with respect to this portion of the marks is virtually
identical, and that prospective purchasers of the goods at
issue will immediately equate the numeral “2” in
applicant’s mark with the word “to,” as used in the cited
registrant’s marks. We therefore conclude that “2GO” and
“TO-GO” are essentially identical in sound and meaning.
And while they differ a bit in appearance, that difference
is minimized when the marks are considered as a whole, and
in any event is overcome by their identity in sound and
meaning.
Applicant and the examining attorney differ on the
strength of the term “to-go” in the context of the goods at
issue. Although we largely agree with the examining
attorney to the extent that the dictionary evidence of
record suggests that the term is used primarily in
Serial No. 77570227
9
connection with food,6 this does not appear to be invariably
true. For instance, applicant cites a dictionary which
defines “to go” as “[of a number or an amount] remaining;
yet to be dealt with.” Reply Br. at 3; MCGRAW-HILL DICTIONARY
OF AMERICAN IDIOMS AND PHRASAL VERBS (2002)(second sense),
although applicant does not explain how this meaning would
apply to sinks or bathroom fixtures. Moreover, there is no
evidence that “TO-GO” is descriptive, and we must, of
course, view the registrations as a whole to be valid (and
therefore not descriptive), Trademark Act § 7(b); 15 U.S.C.
§ 1057(c). Considering the evidence of record,7 we conclude
that the term “to go” as relevant here is at most mildly
suggestive, and not subject to a significantly narrowed

6 We grant applicant’s request to take judicial notice of the
definition submitted with its opening brief. Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Red
Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006) (online sources).
7 Applicant also submitted a number of third-party “TO GO”
formative registrations covering a variety of goods unrelated to
food, restaurant services, or bathroom fixtures. However, third-
party registrations cannot be given any weight in determining the
strength of a registration. Olde Tyme Foods Inc. v. Roundy's
Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992). While
the number and nature of similar marks in use on similar goods
may be considered on the ultimate question of likelihood of
confusion, du Pont, 177 USPQ at 567, third-party registrations
are not evidence that such marks are in use or that consumers are
familiar with them. AMF Inc. v. Am. Leisure Prods., Inc., 474
F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973). But even if we
considered applicant’s proffered registrations, we would reach
the same conclusion, as they tend to show – at most – only that
“to go” is somewhat suggestive, as we have otherwise concluded.

Serial No. 77570227
10
scope of protection.
Here, the marks in their entireties consist of a
descriptive term (BATHROOM, PEDESTAL, or SINK) combined
with highly similar, arguably suggestive, terms (TO-GO or
2GO). While the first part of each mark differs, each
initial term is (at least) descriptive of the identified
goods. We accordingly give the initial terms little weight
in our analysis because they are descriptive and have
little source-identifying capacity. To do otherwise would
essentially limit the scope of protection accorded to the
prior registrant’s marks to protection against registration
of little more than an identical mark. In this case, the
substitution of a descriptive or generic term in the
registrant’s marks with a similar descriptive or generic
term in applicant’s mark provides little basis on which to
distinguish them.
We find that the similarity of the marks in their
entireties favors a finding of likelihood of confusion.
Finally, we note that applicant cites a number of
cases, arguing that they mandate reversal of the examining
attorney’s refusal. We have considered the cited cases,
but we disagree with applicant’s analysis. It is axiomatic
that each case must be judged on the particular facts
developed in the record, and that such facts are often
Serial No. 77570227
11
highly specific to each case. See In re Servel, Inc., 181
F.2d 192, 85 USPQ 257, 260-61 (CCPA 1950). Applying prior
precedent is not a mechanical or formulaic exercise, such
that one can easily apply the generalization that “the
Board and various courts have repeatedly found that a
junior user can avoid confusion if its mark features non-
shared literal elements that differ in sight and sound from
the existing mark, even if the non-shared elements are also
highly suggestive or descriptive and are connotatively
similar to the existing mark and the marks are intended for
use on identical goods.” App. Br. at 3-4. We instead must
examine the marks at hand in light of the application, the
cited registration, and the record developed during
examination, and consider whether, in light of the record,
confusion is likely. We find in this case that it is.
III. Conclusion
We have carefully considered the entire record and the
arguments of applicant and the examining attorney. To the
extent we have any doubt as to our conclusion, we must
resolve such doubt in favor of the prior registrant. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
We conclude, in light of the identical goods at issue,
Serial No. 77570227
12
the similar marks, and the identical customers and channels
of trade, that use of applicant’s mark on or in connection
with the identified goods is likely to cause confusion with
the mark in the cited prior registration.

Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.