Milliken & Co.

Trademark Trial and Appeal Board

Dec 2, 2003

No. 78097676 (T.T.A.B. Dec. 2, 2003)

Mailed: December 2, 2003
Paper No. 7
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Milliken & Company
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Serial No. 78097676
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Thomas L. Moses, Esq. of Milliken & Company.
Elissa Garber Kon, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Milliken & Company (applicant), a Delaware
corporation, has appealed from the final refusal of the
Trademark Examining Attorney to register the mark SOFTEX
for “fabrics for use in the manufacture of automotive
upholstery.”1 The Examining Attorney has refused
registration under Section 2(d) of the Act, 15 USC

1 Application Serial No. 78097676, filed December 11, 2001, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78097676
2
§1052(d), on the basis of Registration No. 2,182,981,
issued August 18, 1998, of the mark SOFTEC for “brocade,
calico, cheese cloth, crepe cloth, felt cloth, flax cloth,
hemp cloth, sail cloth, silk cloth, woolen cloth, cotton
fabric, curtain fabric, nylon fabric, polyester fabric,
rayon fabric, woolen fabric, fabric for boots and shoes,
silk fabric for printing patterns, fiberglass fabric for
textile use, fabric table runners, flannel, frieze,
taffeta, textile linings for garments, jersey material,
linen, textile used as lining for clothing, sackcloth,
tulle, and velvet,” arguing that applicant’s mark so
resembles the registered mark for the respective goods as
to be likely to cause confusion, to cause mistake or to
deceive. Applicant and the Examining Attorney have
submitted briefs, but no oral argument was requested.
The Examining Attorney argues that the marks SOFTEX
and SOFTEC are essentially phonetic equivalents, with
“SOFT” suggesting something soft to the touch, while
applicant’s suffix “-TEX”, which is similar to “-TEC”,
sounds like or could be a fanciful spelling of the plural
of “TEC”. The Examining Attorney argues that the
differences in the marks are not sufficient to avoid the
likelihood of confusion.
Serial No. 78097676
3
With respect to the goods, the Examining Attorney
argues that the goods are identical in part and otherwise
closely related. In this regard, the Examining Attorney
maintains that some of registrant’s goods are broadly
described and could encompass applicant’s fabrics for
automotive upholstery. That is to say, while the uses of
some of registrant’s goods are specified, in some cases no
end use is indicated for the specific fabric listed. When
no end use is stated, the Examining Attorney argues, one
can presume that there may be any use for that fabric which
is typical for that product, and that that fabric may be
sold in all normal channels of trade for that product.
Thus, registrant’s broadly described “fabrics” may include
fabric intended for use in the manufacture of automotive
upholstery. In this regard, the Examining Attorney has
made of record evidence that some of the fabrics listed in
registrant’s description of goods may be used in the
manufacture of automotive upholstery. For example, the
Examining Attorney has introduced evidence that automotive
upholstery may be made from cotton, wool, polyester, nylon
and other textiles, and that fiberglass is used as a
substrate in the automotive industry. The Examining
Attorney has also made of record some evidence indicating
that manufacturers produce textiles and fabrics for a wide
Serial No. 78097676
4
range of uses including apparel, home furnishings,
furniture upholstery and automotive upholstery. While the
Examining Attorney concedes that fabrics for the
manufacture of automotive upholstery are not impulse
purchase items directed to consumers at large, the
Examining Attorney maintains that even sophisticated
purchasers are not immune to confusion as to source. The
Examining Attorney also asks us to resolve any doubt in
favor of registrant.
Applicant, on the other hand, argues that the
respective marks are spelled and pronounced differently and
convey different commercial impressions, applicant’s mark
suggesting a relationship with textiles (“-TEX”), while
registrant’s mark may suggest a relationship to technology
(“-TEC”). Applicant argues that “-TEX” is not a fanciful
spelling of the plural of “-TEC”, but rather is a shortened
version of “textile.”
With respect to the goods, it is applicant’s position
that the price of its fabrics, which counsel says are sold
in bulk to other companies for resale under their own brand
names, as well as the sophistication and professional
nature of the purchasers of applicant’s goods militate
against a finding of likelihood of confusion. Applicant
also argues that there is no evidence that fiberglass
Serial No. 78097676
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fabric for textile use is used in the manufacture of
automotive upholstery.
Our determination under Section 2(d) of the Act 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. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003); and In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key
considerations are the marks and the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The 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.”).
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely.
Turning first to the marks, the marks SOFTEX and
SOFTEC have obvious similarities in sound and appearance.
While it is possible that, after some thought, one may
glean different suggestive meanings from these two marks,
these possible differences in suggestive connotation are
Serial No. 78097676
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not that important when weighed with the similarities of
the marks in sound and appearance.
Concerning the goods, it is well settled that the
issue of likelihood of confusion must be determined on the
basis of the goods as they are set forth in the involved
application and the cited registration, and not in light of
what such goods are shown or asserted to actually be. See
Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc.
v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973). Thus, where registrant's goods are broadly
described as to their nature and type, or are set forth
without limitation, it is presumed in each instance that the
registration encompasses not only all goods of the nature
and type described, but also that the identified goods may
move in all channels of trade which would be normal for
those goods, and that they would be purchased by all
potential buyers thereof. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981). There is no limitation in registrant’s
identification of goods as to the channels of trade or
classes of purchasers of some of its fabrics. Therefore, we
must presume that registrant’s nylon, wool and polyester
Serial No. 78097676
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fabrics may be sold to the automotive industry for use in
the manufacture of automotive upholstery.
As noted above, the Examining Attorney has introduced
evidence that such fabrics as nylon, wool and polyester,
which are all fabrics listed in registrant’s identification
of goods, can be used in making automotive upholstery. It
is possible, therefore, that registrant’s SOFTEC polyester,
nylon or wool fabric, for example, could be sold for the
manufacture of automotive upholstery. Also, there is
evidence of record that fabric and textiles are produced by
manufacturers for a wide variety of uses including use as
automotive upholstery.
Although purchasers of fabric for use in making
automotive upholstery must be considered somewhat
sophisticated, even sophisticated purchasers may confuse
SOFTEX upholstery fabric and SOFTEC fabric that may be used
for the same purpose.
Finally, as the Examining Attorney notes, to the
extent we have doubt as to the presence of likelihood of
confusion, we resolve that doubt against the newcomer
(applicant) and in favor of the prior user and registrant.
See In re Pneumatiques, Caoutchouc Manufacture, 487 F.2d
918, 179 USPQ 729, 729 (CCPA 1973)(“If there be doubt on
the issue of likelihood of confusion, the familiar rule in
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trademark cases, which this court has consistently applied
since its creation in 1929, is that it must be resolved
against the newcomer or in favor of the prior user or
registrant.”). See also In re Hyper Shoppes, 837 F.2d 840,
6 USPQ2d 1025, 1026 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290-1291 (Fed. Cir. 1984).
Accordingly, in the absence of some limitation in the
channels of trade or classes of purchasers of registrant’s
goods, we conclude that confusion is likely.
Decision: The refusal of registration is affirmed.