Masonite Holdings, Inc.

Trademark Trial and Appeal Board

Oct 18, 2006

No. 78413461 (T.T.A.B. Oct. 18, 2006)

Hearing: Mailed:
September 7, 2006 October 18, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Masonite Holdings, Inc.
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Serial No. 78413461
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William C. Schrot of Berenato, White & Stavish, LLC for
Masonite Holdings, Inc.

Dominick J. Salemi, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
_______

Before Seeherman, Kuhlke and Walsh, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Masonite Holdings, Inc. has filed an application to
register the mark SELECT SERIES (in standard character
form) for goods ultimately identified as “non-metal
interior entry doors” in International Class 19.1 In

1 Application Serial No. 78413461, filed May 5, 2004, alleging a
bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act. 15 U.S.C. §1051(b). In its June 13,
2005 response, applicant, in addition to amending its
identification of goods in International Class 19, deleted the
identified goods in International Class 6, namely, “doors
primarily made of metal.”

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 78413461
2
response to a request from the examining attorney,
applicant disclaimed the word SERIES.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used on its identified goods, so
resembles the registered mark SELECT (in typed form) for
“metal clad, wood core, storm and screen doors” in
International Class 6,2 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, and an oral hearing was held. We
affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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 any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper

2 Registration No. 2232512, issued March 16, 1999, Section 8 and
15 combined declaration accepted and acknowledged.
Serial No. 78413461
3
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
As a preliminary matter, applicant attached exhibits
to its brief that contained documents not previously
submitted. Inasmuch as the exhibits are untimely, they
will not be considered except for the print-outs of third-
party registrations which were either previously submitted
or which were not objected to and were substantively
addressed by the examining attorney. See Trademark Rule
2.142(d); and In re Urbano, 51 USPQ2d 1776, 1778 n.4 (TTAB
1999). In addition, we take judicial notice of the
dictionary definition submitted by applicant. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213
USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983).
We turn now to a consideration of the goods identified
in the application and the cited registration. It is well
settled that goods need not be similar or competitive in
nature to support a finding of likelihood of confusion.
The question is not whether purchasers can differentiate
the goods themselves, but rather whether purchasers are
likely to confuse the source of the goods. See Helene
Curtis Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618
Serial No. 78413461
4
(TTAB 1989). Further, we must consider the cited
registrant’s goods as they are described in the
registration and we cannot read limitations into those
goods. See 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). If the cited
registration describes goods or services broadly, and there
is no limitation as to the nature, type, channels of trade
or class of purchasers, it is presumed that the
registration encompasses all goods or services of the type
described, that they move in all channels of trade normal
for these goods, and that they are available to all classes
of purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
Applicant argues that applicant’s and registrant’s
respective doors differ in their specific characteristics
and that registrant’s “metal clad storm and screen doors
would not be used as an interior entry door.” Br. pp. 4-5.
The examining attorney contends that “when all is said and
done, the fact remains that the goods manufactured and sold
by both applicant and registrant are doors,” and takes the
position that “the registration is so broad with respect to
the identification that they could include the type of
Serial No. 78413461
5
doors for which applicant is seeking” and applicant’s goods
are “within registrant’s logical zone of expansion.” Br.
p. 4.
We find that applicant’s and registrant’s goods are
related and that consumers would likely confuse the source
of the goods. While we appreciate applicant’s argument
that these particular doors have different characteristics,
metal clad storm and screen doors versus non-metal interior
entry doors, they both provide the same function in that
they are doors. Moreover, the goods do not need to be
directly competitive to be related. Because a homeowner is
likely to purchase both types of doors, and may seek doors
that are of a similar style, it is likely that consumers
upon encountering applicant’s mark SELECT SERIES for doors
for the interior of the house could believe that these
doors are an extension of registrant’s brand of metal-clad
storm and screen doors. We further note that one of the
third-party registrations submitted by applicant includes
metal and non-metal doors under a single mark, and even
applicant’s application, as originally filed, included
metal doors under the same mark. See In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
With regard to the channels of trade, applicant states
that its products are sold at “various building and home
Serial No. 78413461
6
centers such as Home Depot.” Br. p. 5. These centers are
included in the ordinary channels of trade for registrant’s
goods. In addition, exterior and interior doors, because
they are of the same product category, are likely to be
sold in close vicinity in such a store. Applicant’s
arguments regarding its search of various home center
websites are unavailing because that evidence is untimely,
as discussed supra, and do not address what occurs in the
brick and mortar stores.
In view thereof, the du Pont factors of the similarity
of the goods and the channels of trade favor a finding of
likelihood of confusion as to the cited registration.
Certainly, registrant and applicant would have
overlapping purchasers in terms of either building
contractors or of homeowners repairing or enhancing their
homes. Applicant argues that these goods are relatively
expensive and consumers would exercise care in the purchase
of the respective doors. We agree that doors would not
fall into the category of impulse items and are relatively
expensive items for the house. However, this does not
serve to diminish in any meaningful way the likelihood of
confusion because potential purchasers could include people
of varying sophistication (contractors and homeowners) and
even sophisticated purchasers are not immune from trademark
Serial No. 78413461
7
confusion. In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983).
With regard to applicant’s arguments on the factor of
fame, we agree there is no evidence of record to support a
conclusion that the registered mark is famous. Thus, this
du Pont factor must be considered neutral.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark SELECT SERIES and registrant’s mark SELECT
are similar or dissimilar when compared in their entireties
in terms of appearance, sound, connotation and commercial
impression. It is well settled that marks must be
considered in their entireties, not dissected or split into
component parts and each part compared with other parts.
This is so because it is the entire mark which is perceived
by the purchasing public and, therefore, it is the entire
mark that must be compared to any other mark. It is the
impression created by the involved marks, each considered
as a whole, that is important. See Kangol Ltd. V.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992). Finally, “[w]hen marks would appear on
virtually identical goods or services, the degree of
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 877,
Serial No. 78413461
8
23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert denied, 506
U.S. 1034 (1992).
The examining attorney argues that applicant has
“appropriated the sole component of registrant’s mark and
merely added a generic term to it.” Br. p. 2. Further,
the examining attorney states that “applicant has agreed to
disclaim the word SERIES [and a]lthough a disclaimed
portion of a mark certainly cannot be ignored and the marks
must be compared in their entireties, as applicant notes,
one feature of a mark may be more significant in creating a
commercial impression.” Br. p. 3. The examining attorney
required the disclaimer in the first Office action, noting
that SERIES “is merely descriptive because it tells the
public that applicant produces a product line of doors.”
Office Action p. 2 (December 11, 2004).
In traversing the refusal, applicant argues that the
addition of SERIES to applicant’s mark is sufficient to
distinguish it from registrant’s mark SELECT. Br. p. 3.
Because of this additional word, applicant states that the
marks are different in sound and appearance. As to
connotation, applicant submitted the following dictionary
definition:
SERIES: 1. a group or number of similar or
related things arranged in a row 2. a group or
number of related or similar persons, things, or
Serial No. 78413461
9
events coming one after another; sequence;
succession 3. a number of things produced as a
related group; set, as of books or television
programs, related in subject, format, etc., or
dealing with the same characters.

Webster’s New World Dictionary of American English (3rd
College ed. 1988).
Thus, applicant argues that SERIES creates a different
connotation in applicant’s mark.
We find that applicant’s mark, SELECT SERIES, is
highly similar to the mark, SELECT, in the cited
registration. Applicant’s mark incorporates the entirety
of registrant’s mark, and the addition of the descriptive
term SERIES does not serve to distinguish the marks. In re
Rexel Inc., 223 USPQ 830 (TTAB 1984). In fact, it gives
the impression that applicant’s goods may be part of a
series of door products, which has the effect of creating a
stronger likelihood of confusion with registrant’s one word
SELECT mark. Moreover, the common word SELECT has the same
connotation in each mark. We take judicial notice of the
following relevant dictionary definitions for SELECT: “1.
Singled out in preference; chosen; 2. of special quality or
value.” The American Heritage Dictionary of the English
Language, (4th ed. 2000). The additional element SERIES in
applicant’s mark does not change the identical connotation
derived from the common element, SELECT, in the marks.
Serial No. 78413461
10
Viewing the marks in their entireties, they are similar in
appearance, pronunciation, and connotation, and they convey
a similar commercial impression. Thus, the factor of the
similarity of the marks also favors a finding of likelihood
of confusion.
Applicant’s attempt to characterize the word SELECT as
weak based on the coexistence of third-party registrations
that contain the word SELECT, is not persuasive.3 While
third-party registrations may be relevant to show that a
mark is descriptive, suggestive, or has a commonly
understood meaning such that the public will look to other
elements to distinguish the source of the goods or
services, see, e.g., AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269-70 (CCPA
1973), here applicant has submitted only two active third-
party registrations containing the term SELECT for doors
and that is simply not sufficient. Further, each of the
third-party registrations contain more distinguishing
elements than does applicant’s mark. See Reg. No. 2902043
(CRESTLINE SELECT for non-metal windows and doors and
aluminum clad windows and doors); and Reg. No. 2556954

3 The third-party applications also submitted by applicant have
no probative value other than as evidence that the applications
were filed. In re Phillips-Van Heusen Corp., 63 USPQ2d 1047,
1049 n. 4 (TTAB 2002).

Serial No. 78413461
11
(CONTRACTOR’S SELECT WINDOWS AND DOORS in stylized form for
vinyl windows and doors and parts therefor). While we
acknowledge that the term SELECT does have a somewhat
laudatory quality, even weak marks are deserving of
protection, in particular here where the goods are closely
related and the marks are so similar. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
109 (CCPA 1974); and Hollister Incorporated v. IdentAPet,
Inc., 193 USPQ 439 (TTAB 1976). That is, the scope of
protection to which the cited registration is entitled
certainly extends to prevent the registration of the same
word, SELECT, to which the descriptive word SERIES has been
added, used for the same general type of product, a door.
Finally, applicant contends that there has been no
instance of actual confusion during eight months of
coexistence. We do not accord significant weight to
applicant's contention that there have been no instances of
actual confusion despite contemporaneous use of the
respective marks. The Federal Circuit has addressed the
question of the weight to be given to an assertion of no
actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we
agree with the Board that Majestic's
uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
Serial No. 78413461
12
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, [citation omitted], especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Accordingly, while examples of actual confusion may
point toward a finding of a likelihood of confusion, an
absence of such evidence is not as compelling in support of
a finding of no likelihood of confusion. Moreover, eight
months is very little time upon which to make any
inferences as to the meaning of a lack of actual confusion.
Thus, we cannot conclude from the lack of instances of
actual confusion that confusion is not likely to occur.
In conclusion, we find that because the marks are
similar, the goods are closely related, and the channels of
trade are the same, confusion is likely between applicant’s
mark and the cited registration.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.