Minka Lighting, Inc.v.Ambiance Imports, Inc.

Trademark Trial and Appeal Board

Aug 6, 2004

No. 91125325 (T.T.A.B. Aug. 6, 2004)

Mailed: August 6, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Minka Lighting, Inc.
v.
Ambiance Imports, Inc.
_____
Opposition No. 91125325
to application Serial No. 75519110
filed on July 15, 1998
_____
Lisa H. Meyerhoff, Susan E Powley and Timothy G. Ackermann
of Jenkens & Gilchrist for Minka Lighting, Inc.
James E. Davis and Robert McCutcheon of Davis Munck, P.C.
for Ambiance Imports, Inc.
______
Before Quinn, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Minka Lighting, Inc. (opposer) has opposed the
application of Ambiance Imports, Inc. (applicant) to
register the mark AMBIANCE IMPORTS for “wholesale
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91125325
2
distributorships featuring furniture; [and] import agency
services featuring furniture.”1
As grounds for opposition, opposer has alleged that
since prior to the filing date of applicant’s application,
opposer has been engaged in the business of importing,
distributing and selling a wide variety of products,
including electric lighting fixtures, lamps, and home
decorative items, including furniture, mirrors, wall art and
accessories; that it is the owner of Registration No.
2,225,601 (issued February 23, 1999) for the mark AMBIENCE
for “electric lighting fixtures and lamps;” that it is the
owner of application Serial No. 75698326 filed May 5, 1999
for the mark AMBIENCE for “furniture, mirrors, wall art and
accessories, namely carvings, decorative figures, figurines
and sculptures made of foam, wood and resins and decorative
furniture corbels and sculpture reliefs made of foam, wood
and resin;” that opposer acquired the above registration and
application by assignment from L. D. Kichler Co. (Kichler)
on July 31, 2001; and that applicant’s mark, when used in
connection with its services, is likely to cause confusion,
or to cause mistake or deceive.
1 Application Serial No. 75519110, filed July 15, 1998, and
asserting first use and first use in commerce on February 28,
1995.
Opposition No. 91125325
3
Applicant, in its answer, has denied the salient
allegations of the notice of opposition. In addition, as
“affirmative defenses”, applicant has asserted that opposer
and its predecessor-in-interest knew of applicant’s use of
the mark AMBIANCE IMPORTS and that “[o]pposer is guilty of
acquiescence, estoppel, laches and unclean hands;” and that
opposer has used the phrase AMBIENCE LIGHTING, not AMBIENCE
per se, and thus opposer’s registration for the mark
AMBIENCE is a mutilation.
PRELIMINARY MATTERS
Before turning to the record and the merits of the
case, there are several preliminary matters, including
evidentiary objections, we must discuss.
At the outset, we note that applicant did not pursue at
trial its affirmative defenses of acquiescence, estoppel,
laches and unclean hands. Thus, we have given no
consideration to these defenses.
We note that accompanying applicant’s brief is a
“Documentary Appendix” that consists of six documents
produced by applicant in response to opposer’s discovery
requests. Materials attached to a party’s brief on the case
can be given no consideration unless they were properly made
of record during the time for taking testimony. See
TBMP §704.05 (2d ed. rev. 2004). Since these documents were
not previously made of record during applicant’s testimony
Opposition No. 91125325
4
period, they are not properly of record and we have given
them no consideration in reaching our decision herein.
Applicant has filed a motion for leave to file a
surreply brief along with a surreply brief. Opposer has
filed a brief in opposition to applicant’s motion. There is
no provision in the Trademark Rules of Practice for filing a
reply brief by a party in the position of defendant. See
TBMP §801.02 (2d ed. rev. 2004). Applicant’s motion is
accordingly denied and its surreply brief will be given no
consideration.
On February 4, 2004, applicant filed a paper styled
“Applicant’s Objections to Opposer’s Trial Evidence,”
wherein applicant moves to strike the testimony depositions
of opposer’s witnesses Marguerite Capozzi, Harvey Salgado,
and Dee Moss in their entireties; and to strike portions of
each of these testimony depositions and the testimony
depositions of opposer’s witnesses Roy Minoff and Tom Kubek.
As grounds for the motion to strike the testimony
depositions of Capozzi, Salgado and Moss in their
entireties, applicant argues that pursuant to a consented
motion for an extension of time, opposer’s testimony period
was extended until May 13, 2003 for the limited purpose of
taking the testimony depositions of opposer and its
predecessor-in-interest Kichler; that during this extension
opposer took the testimony depositions of Capozzi, Salgado,
Opposition No. 91125325
5
and Moss who are “independent contractors” and not
representatives of opposer or Kichler; and that since
opposer was not entitled to take the testimony of these
“non-party” witnesses during the extension, the testimony
depositions should be stricken in their entireties.
Opposer, on the other hand, contends that although
Capozzi, Salgado and Moss are not officers or employees of
opposer or Kichler, opposer designated the witnesses to
testify on its behalf as corporate representatives of
opposer; and that the witnesses are independent sales
representatives who appeared voluntarily.
A review of the agreed-upon extension reveals that it
was for the purpose of “conducting additional depositions of
Minka Lighting, Inc. and Kichler Lighting … .” We do not
view this extension as limiting opposer to taking the
depositions of officers or employees of opposer or Kichler.
Moreover, it does not appear that applicant raised this
objection at the time of the depositions. In fact,
applicant’s counsel cross-examined each of the witnesses.
Under the circumstances, applicant’s motion to strike the
Capozzi, Salgado and Moss depositions in their entireties on
this basis is denied. Thus, we consider the depositions to
be properly of record.
As noted above, applicant also has objected to
specific portions of the testimony of opposer’s witnesses.
Opposition No. 91125325
6
The objections are simply too numerous to allow individual
rulings thereon. In reading the record, we have considered
the testimony and exhibits in light of applicant’s
objections. Where we have relied on testimony or evidence
to which applicant raised an objection, it should be
apparent to the parties that in doing so we implicitly have
deemed the material to be admissible.
There are, however, several objections we specifically
address here. Applicant has objected to the testimony of
Ms. Capozzi regarding the purchase of Ambience Lighting &
Accessories by Kichler and the transfer of the rights to the
AMBIENCE mark on the ground that the testimony violates Fed.
R. Evid. 1002 because the actual purchase agreement was not
produced.
We do not find applicant’s objection to the testimony
based on Fed. R. Evid. 1002 to be well-taken. This rule
provides as follows:
To prove the content of a writing, recording,
or photograph, the original writing, recording,
or photograph is required, except as otherwise
provided in these rules or by an Act of Congress.
None of Ms. Capozzi’s testimony purported to recite the
content of the written agreement between Ambience Lighting &
Accessories and Kichler. In any event, as noted in the
Advisory Committee Notes with respect to Fed. R. Evid. 1002,
“an event may be proved by nondocumentary evidence, even
though a written record of it was made.”
Opposition No. 91125325
7
Applicant also has objected to the testimony of Roy
Minoff concerning the transfer of the assets of Ambience
Lighting & Accessories to Kichler and from Kichler to
opposer. Applicant complains that Mr. Minoff lacks personal
knowledge concerning the actual negotiations between the
parties and that his testimony likewise violates Fed. R.
Evid. 1002. Mr. Minoff did not testify about the content of
any particular document, rather he testified to the fact
that the transfer of assets and records from Ambience
Lighting & Accessories to Kichler and from Kichler to
opposer occurred. For the reasons stated above, we find
that the testimony does not violate Fed. R. Evid. 1002.
Also, as Kichler’s Chief Administrative Officer, Mr. Minoff
was certainly in a position to have the requisite knowledge
of the transfers. Thus, applicant’s objection to Mr.
Minoff’s testimony on the ground of lack of personal
knowledge is not well taken.
Further, applicant objects to the testimony of
opposer’s witnesses Minoff, Moss, Salgado, and Kubek
concerning purported instances of actual confusion.
Applicant’s objections are based on hearsay and are
discussed infra in our likelihood of confusion analysis.
We note that Exhibit 4 to opposer’s notice of reliance
consists of two of opposer’s invoices. Invoices generally
are not proper subject matter for a notice of reliance and
Opposition No. 91125325
8
thus we have not considered them in reaching our decision
herein. See Trademark Rule 2.122(e).
THE RECORD
The record thus consists of the file of the involved
application; and opposer’s first notice of reliance on
applicant’s responses to certain of opposer’s
interrogatories and request for production of documents, and
the discovery deposition of the president and owner of
applicant, George Moussa. In addition, opposer submitted
the testimony depositions of its witnesses Roy Minoff, Ron
Rotenberg, Marguerite Capozzi, Tom Kubek, Dee Moss, and
Harvey Salgado (with exhibits).
Applicant did not take testimony. The only evidence
properly made of record by applicant is a notice of reliance
on its certificate of incorporation and copies of notices
issued by the Department of Treasury advising applicant that
it has been assigned an employee identification number and
accepted as an “S” corporation.
Both parties filed briefs on the case, but an oral
hearing was not requested.
PRIORITY
We turn first to the question of priority. Opposer’s
witness Marguerite Capozzi, a designer and manufacturer of
home accessories, testified that she began working for
Ambience Lighting & Accessories in 1986. In 1988 she and
Opposition No. 91125325
9
Zoltan Kovacs became co-owners of Ambience Lighting &
Accessories. The company, which was headquartered in
California, subsequently incorporated in 1994, with Mr.
Kovacs and Ms. Capozzi each owning 50% of the stock. Ms.
Capozzi testified that during her association with Ambience
Lighting & Accessories, the company continuously used the
mark AMBIENCE in connection with lighting, home accessories
and furniture. In particular, the AMBIENCE mark appeared on
hang tags for furniture, on boxes in which products were
shipped, in catalogs, on invoices, and on signs in the
windows of the Ambience Lighting & Accessories showrooms.
The company did business throughout the United States and
had wholesale showrooms in both Dallas, Texas and High
Point, North Carolina.
Ms. Capozzi testified that in late 1997 Kichler
purchased Ambience Lighting & Accessories. The sale
included the entire AMBIENCE product line as well as the
rights to the AMBIENCE mark.
Ron Rotenberg was General Manager of Kichler at the
time of Kichler’s purchase of Ambience Lighting &
Accessories. Mr. Rotenberg testified that Kichler continued
to sell many of the products that Ambience Lighting &
Accessories had sold under the AMBIENCE mark. In
particular, Kichler used the AMBIENCE mark on lamps,
chandeliers, home accessories, statues, mirrors and
Opposition No. 91125325
10
furniture such as benches, tables, end tables, and accent
tables. In addition, Kichler used independent sales
representatives to market its products and continued to do
business with many of the same customers. Mr. Rotenberg
testified that Kichler used the AMBIENCE mark in catalogs
distributed nationwide to lighting and furniture showrooms,
on hang tags and cartons in which products were sold, and on
invoices and other business documents.2
Roy Minoff is the Chief Administrative Officer of
Kichler. Mr. Minoff testified that Kichler used independent
sales representatives to sell its products and that such
products were sold throughout the United States. Kichler’s
customers included furniture retailers of all sizes and
lighting showrooms. In July 2001, Kichler sold the AMBIENCE
product line, including all rights to the AMBIENCE mark to
opposer.
Tom Kubek is vice president of sales and marketing for
the Ambience Division of opposer, Minka Lighting, Inc.
Opposer is headquartered in Corona, California and opposer
conducts business throughout the United States. Opposer
itself first used the AMBIENCE mark in September 2001 after
it acquired the AMBIENCE product line and mark from Kichler.
Opposer primarily uses independent sales representatives to
2 The sales and advertising figures of Kichler were submitted
under seal.
Opposition No. 91125325
11
sell its AMBIENCE products which include lighting fixtures,
chandeliers, fans, furniture, decorative accessories and
mirrors.
Opposer sells its AMBIENCE products through independent
sales representatives to retail furniture stores, lighting
showrooms, designers and interior decorators. Opposer
advertises its AMBIENCE products in trade magazines, through
invitations to retailers to visit opposer’s product
showrooms, and at its wholesale showrooms where the products
are displayed.3 The AMBIENCE mark appears on hangtags,
packaging, on signs at the showrooms, and in opposer’s
catalogs. Opposer also promotes its products through
attendance at trade shows in Dallas, Texas and High Point,
North Carolina.
The information we have about applicant comes from the
discovery deposition of its president and owner, George
Moussa, and applicant’s responses to opposer’s
interrogatories. Applicant is headquartered in Dallas,
Texas and is an importer/wholesaler of furniture. Applicant
sells furniture to furniture retailers, designers and design
studios throughout the continental United States. Applicant
uses independent sales representatives to market its
3 Opposer’s sales and advertising figures also were submitted
under seal.
Opposition No. 91125325
12
products. Applicant presently markets its goods and
services through its showroom in Dallas, Texas, and by way
of catalogs, attendance at trade shows and advertisements in
trade publications.
For purposes of priority, opposer claims that it and
its predecessors in interest have used the AMBIENCE mark
since as early as 1986 for furniture and the services of
distributing furniture. In particular, opposer claims
“[t]he record evidence establishes an unbroken chain of use
of the “AMBIENCE” mark in connection with furniture products
and the distribution of furniture products starting with
Ambience Lighting & Accessories (from 1986-1997); continuing
with Kichler (from 1997-2001); and continuing with Minka
(from 2001 through the present).” Brief at 8.4
With respect to applicant, it claims that it first used
the mark AMBIANCE IMPORTS in February 1995. Further,
applicant argues that the earliest date of first use on
which opposer may rely is 1997, the date on which Kichler
4 We note that in discussing priority in its brief, opposer
includes a reference to its pleaded Registration No. 2,225,601:
“Minka also owns the federal ‘601 Registration for “AMBIENCE” for
“electric lighting fixtures and lamps.” (Brief, p. 29). Opposer
attached a plain copy of the registration to the notice of
opposition. However, opposer failed to make the registration
properly of record during its testimony period. That is, opposer
did not submit a status and title copy of the registration under
notice of reliance, and although a plain copy of the registration
is part of opposer’s exhibit 17, opposer did not offer evidence
that the registration is still subsisting and owned by opposer.
See TBMP §704.03(b)(1)(A) (2d ed. rev. 2004). Under the
circumstances, opposer may not rely on this registration for
Opposition No. 91125325
13
began use of the AMBIENCE mark. Applicant argues that
opposer may not rely on any use of AMBIENCE by Ambience
Lighting & Accessories because opposer did not make of
record the assignment of the AMBIENCE mark from Ambience
Lighting & Accessories to Kichler. Moreover, applicant
argues that there is no evidence that Ambience Lighting &
Accessories used the mark AMBIENCE per se. Rather,
according to applicant, the record shows that Ambience
Lighting & Accessories only used the mark “Ambience Lighting
& Accessories” which is not the legal equivalent of
AMBIENCE; and thus opposer may not tack Ambience Lighting &
Accessories to AMBIENCE.
Contrary to applicant’s contention, the record
establishes that Ambience Lighting & Accessories did use
AMBIENCE per se in a trademark manner. In this regard, we
note the following use of AMBIENCE in Ambience Lighting &
Accessories’ 1989 catalog:
Dear Ambience Customer:
It is our pleasure to present our 1989 Catalogue.
Each lamp and accessory has been created for
Ambience by the Capozzi Kovacs Design Firm,
carefully crafted and hand finished in our studio.
Our aim is to provide you with the best Quality,
Design, Service and Selection.
The results are beautifully appealing. Make
Ambience the pride of your store and for your
purposes of priority, but rather must rely on its common law
rights in the AMBIENCE mark.
Opposition No. 91125325
14
customer.
We look forward to serving you.
Thank you.
Marguerite Capozzi
Also, reproduced below is an example of a hangtag which
was placed on furniture, lighting and accessories that
Ambience Lighting & Accessories sold from 1986 through 1997.
As used on these hangtags, AMBIENCE projects a separate and
distinct commercial impression from “Ambience Lighting
Accessories”.
With respect to the assignment of the AMBIENCE mark
from Ambience Lighting & Accessories to Kichler, we observe
that “[a]n assignment in writing, however, is not necessary
to pass common law rights to trademarks.” Gaylord Bros. v.
Strobel Products Co., 149 USPQ 72, 74 (TTAB 1963). See also
Hi-Lo Manufacturing Corp. v. Winegard Co., 167 USPQ 295, 296
Opposition No. 91125325
15
(TTAB 1970). In the event that there is no written
assignment:
[A]n assignment or transfer of interest in a
trade designation may be established by clear
and uncontradicted testimony by a person or
persons in a position to have knowledge of the
transactions affecting said designations; and
the common law rights in a mark will be
presumed to have passed, absent contrary
evidence, with the sale and transfer of the
business with which the mark has been
identified.
Sun Valley Co. v. Sun Valley Manufacturing Co., 167
USPQ 304, 309 (TTAB 1970).
In this case, the testimony of opposer’s witnesses is
sufficient to establish that Ambience Lighting & Accessories
assigned the AMBIENCE mark to Kichler. In this regard,
Marguerite Capozzi testified as follows:
Q. Okay. So in 1997 you and Mr. Kovacs sold the
company to Kichler and you sold the assets of the
company to them?
A. Yes.
Q. And you also sold the Ambience mark and the
goodwill associated with that mark to Kichler?
A. Yes.
(Dep., p. 31).
Also, in this regard, Roy Minoff testified as follows:
Q. Who did Kichler acquire the Ambience product line
from in the 1997-98 time frame?
A. We bought the assets from two individuals, I
believe. I don’t think there was a corporate
entity there. Marguerite Kapozi [sic] and
Zoltan Kovacs.
Q. At the time Kichler acquired the mark and product
Opposition No. 91125325
16
line from those two individuals, did they, in
fact, transfer all of their rights in the mark to
Kichler.
A. Yes, I believe so.
(Dep., pp. 11-12).5
Further, there is no dispute and the record establishes
that Kichler assigned its rights in the AMBIENCE mark to
opposer. In this regard, we note the following testimony of
Mr. Minoff:
Q. Up to a certain point in time, did Kichler have
a product line that it offered and sold under the
mark Ambience?
A. Yes, it did.
Q. And was that up to the time of approximately
July 2001?
A. Yes.
Q. I’d like to focus our remaining questions on
Kichler’s Ambience product line. Did you
sell that product line, including the mark to
Minka?
A. Yes, we did.
Q. In July of 2001.
A. Yes, we did. Approximately late in 2001.
I’m not sure of the exact date, maybe July,
might be a few months later.
5 Mr. Minoff’s belief that the assets and mark were purchased
from Capozzi and Kovacs rather than the corporate entity Ambience
Lighting & Accessories is understandable inasmuch as these two
individuals were the sole stockholders of the corporation.
Opposition No. 91125325
17
Q. To your understanding, did Kichler transfer all
of its rights in the Ambience mark to Minka
in connection with that asset sale?
A. That is my understanding.
(Dep., pp. 10-11).
In view of the foregoing, we find that Ambience
Lighting & Accessories used the mark AMBIENCE at least as
early as 1986 in connection with furniture and distributing
furniture. Further, the record establishes that Ambience
Lighting & Accessories assigned the mark to Kichler in 1997
and that Kichler assigned the mark to opposer in 2001.
Moreover, there is no dispute and the record establishes
that since 2001 opposer has continuously used the mark
AMBIENCE in connection with furniture and distributing
furniture. Thus, for purposes of priority, opposer in
entitled to rely on use of the mark AMBIENCE in connection
with furniture and distributing furniture at least as early
as 1986.
In the absence of any testimony or evidence, the
earliest date of use upon which an applicant may rely is the
filing date of its application. See, e.g., Lone Star Mfg.
Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368,
369 (CCPA 1974) and Chicago Corp. v. North America Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). As previously noted,
applicant did not take testimony herein nor did it properly
make any other evidence of record concerning its claimed
Opposition No. 91125325
18
date of first use. The only evidence of record concerning
applicant’s claimed date of first use, namely, February 28,
1995, comes from the discovery deposition of applicant’s
president George Moussa. When asked about its first use of
the AMBIANCE IMPORTS mark, Mr. Moussa testified as follows:
Q. And you first offered goods and services under
the mark for sale in October of ’95, correct?
A. We traveled in the Philippines in February of ’95,
so that’s when we first started marketing our name
of Ambiance Imports. We did not actually have any
product to sell until October of ’95 when we
present--when we showed at the High Point Furniture
Show.
Q. So February ’95 was the first date of use of
Ambiance Imports mark?
A. Yes, you could say that.
(Moussa discovery dep., pp. 30-31).
This testimony, however, is conclusory and it is
unclear as to the services in connection with which the
AMBIANCE IMPORTS mark was purportedly used. Thus, the
earliest date of use upon which applicant may rely for
purposes of priority is July 15, 1998.
Opposer, therefore, clearly has priority in this
proceeding.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the likelihood of confusion
factors set forth in In re E. I. du Pont de Nemours and Co.,
Opposition No. 91125325
19
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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 the differences in the essential
characteristics of the goods [and services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
First, we turn to a determination of whether
applicant’s mark and opposer’s mark, when compared in their
entireties in terms of appearance, sound, and connotation,
are such that they create similar overall commercial
impressions. The 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 that confusion
as to the source of the goods and services offered under the
respective marks is likely to result. See Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Opposer contends that its AMBIENCE mark and applicant’s
AMBIANCE IMPORTS mark are highly similar in commercial
impression.
Applicant, on the other hand, argues that the inclusion
of the word IMPORTS in its mark serves to distinguish the
parties’ marks. Further, applicant contends that opposer’s
AMBIENCE mark is “a commonly-used, generic word and as such,
Opposition No. 91125325
20
it is a very weak mark that is entitled to little
protection.” Brief, at 12.
Based on the evidence in this record, we cannot agree
with applicant that opposer’s AMBIENCE mark is weak. There
is no credible evidence of third-party use or registration
of similar marks and there is no evidence suggesting that
AMBIENCE is generic in connection with furniture and the
services of distributing furniture. Rather, the evidence
establishes that opposer and its predecessors in interest
have used the AMBIENCE mark for over ten years; that a good
amount of money has been spent over the years on advertising
and promotion; and that sales under the mark are fairly
significant. Thus, opposer’s AMBIENCE mark is entitled to
the normal scope of protection in opposer’s field.
We find that opposer’s AMBIENCE mark and applicant’s
AMBIANCE IMPORTS mark are highly similar in sound,
appearance, meaning and overall commercial impression. In
considering opposer’s mark vis-à-vis applicant’s mark, we
recognize that the highly descriptive, if not generic, (and
disclaimed) IMPORTS portion of applicant’s mark cannot be
ignored. Giant Food, Inc. v. National Food Service, Inc.,
710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1993). However,
although we have resolved the issue of likelihood of
confusion by a consideration of the marks in their
entireties, there is nothing improper in giving more weight,
Opposition No. 91125325
21
for rational reasons, to a particular feature of a mark. In
this case, we have given more weight to the AMBIANCE portion
of applicant’s mark which is virtually identical to the
entirety of opposer’s AMBIENCE mark.6 This is so because of
the highly descriptive, if not generic, nature of the
disclaimed word IMPORTS. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). See also
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2 1842,
1845 (Fed. Cir. 2000) [Court held that the addition of the
descriptive word “swing” to registrant’s LASER mark still
resulted in a likelihood of confusion].
We turn then to the parties’ goods and services.
Opposer argues that its goods and services, namely,
furniture and distributing furniture are identical and
otherwise closely related to the services identified in
applicant’s application, namely “wholesale distributorships
featuring furniture” and “import agency services featuring
furniture.”
Applicant, on the other hand, argues that:
Moreover, Applicant and Opposer deal in
substantially different types of goods, with only
minimal overlap. Specifically, applicant deals
mainly in large furniture or “case goods”, such as
6 We take judicial notice that “ambience” is an alternative
spelling of “ambiance” and that “ambiance” is defined as “[t]he
atmosphere surrounding one; environment.” The American Heritage
Dictionary of the English Language (1976). The Board may take
judicial notice of dictionary entries. See, e.g., University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983).
Opposition No. 91125325
22
armoires, chests of drawers, vanities and
fireplace mantles and does not sell lighting and
decorative accessories, whereas, in contrast,
Minka sells primarily lighting and decorative
accessories and does not sell large furniture or
“case goods.”
(Brief, p. 12)
It is well settled that the issue of likelihood of
confusion in a proceeding such as this must be determined on
the basis of the goods or services specified in the subject
application vis-à-vis those set forth in opposer’s
registration and/or those to which opposer has proved prior
use of its pleaded mark. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); CTS Corp. v.
Cronstoms Manufacturing, Inc., 514 F.2d 780, 185 USPQ 773
(CCPA 1975); and Tony Lama Co., Inc. v. Anthony Di Stefano,
206 USPQ 176 (TTAB 1980).
In the present case, opposer has proved prior use of
its AMBIENCE mark in connection with furniture and the
distribution of furniture. The recitation of services in
applicant’s application reads: “wholesale distributorships
featuring furniture; [and] import agency services featuring
furniture”, without any restrictions as to the type of
furniture which applicant features. Thus, we must presume
that applicant’s services include the distribution and
importation of all kinds of furniture, including the types
Opposition No. 91125325
23
of furniture marketed and sold by opposer, e.g., occasional
tables and end tables.
Moreover, the record shows that opposer and applicant
market their goods and services in the same manner, namely
by way of independent sales representatives and showrooms.
Also, the parties offer their goods and services to the some
of the same classes of customers, namely retail furniture
stores and interior designers.
There is no question that opposer’s services consisting
of distributing furniture are virtually identical to
applicant’s wholesale distributorships featuring furniture
and otherwise closely related to applicant’s import agency
services featuring furniture. Further, we find that
opposer’s furniture itself is closely related to applicant’s
identified services.
We recognize that owners of retail furniture stores and
interior designers would exercise a degree of care in their
purchasing decisions. However, because of the substantial
similarity in the marks and the virtual identity/close
relationship of the parties’ goods and services, even
careful purchasers are likely to be confused.
Opposer points to many instances of what it contends is
actual confusion. One instance involves Harvey Salgado,
opposer’s northern California and northern Nevada sales
representative. Mr. Salgado testified that when he visited
Opposition No. 91125325
24
his customer Ellie Berman in her showroom, she took out her
AMBIENCE catalog binder to update opposer’s product line
catalog. Upon inspecting the binder, Mr. Salgado found that
it contained not only opposer’s catalogs but one of
applicant’s catalogs as well. When Mr. Salgado asked Ms.
Berman why applicant’s catalog was in the binder with
opposer’s catalog, she indicated that she thought they were
the same.
Dee Moss, another one of opposer’s sales
representatives, testified that when she made a sales call
on one of her customer’s shops and stated that she was an
AMBIENCE representative, the customer told her that there
was a damaged piece of furniture to show her. Upon
inspection, Ms. Moss recognized that the damaged piece of
furniture was not part of opposer’s AMBIENCE line, but
rather was a piece from applicant’s line of furniture.
In addition, Ms. Moss testified that a furniture
retailer in High Point, North Carolina called her asking
whether she had a particular piece of AMBIANCE furniture
available. Mr. Moss advised him that the piece was not one
of opposer’s products. According to Ms. Moss, he indicated
that he obviously was confused.
Further, opposer’s vice president of sales and
marketing Tom Kubek testified that three individuals came
into opposer’s AMBIENCE showroom at the High Point, North
Opposition No. 91125325
25
Carolina furniture show in 2002 thinking that they were in
applicant’s AMBIANCE IMPORTS showroom. Additionally, Mr.
Kubek testified that he has had sales representatives ask
him if Ambiance Imports was another company that Kichler had
purchased and why there were two Ambiences.
The weight of the testimony tends to suggest that there
has been some actual confusion. In any event, actual
confusion is but one factor in a likelihood of confusion
analysis and an opposer is not required to prove actual
confusion in order to prevail in an inter partes proceeding.
We would find a likelihood of confusion in this case
independent of alleged actual confusion.
We conclude that in view of the substantial similarity
in the sound, appearance, meaning and overall commercial
impression of applicant’s mark and opposer’s mark, their
contemporaneous use on the virtually identical and closely
related goods and services in this case is likely to cause
confusion as to the source or sponsorship of such goods and
services.
Decision: The opposition is sustained.