MIV, Inc.

Trademark Trial and Appeal Board

Mar 16, 2001

No. 75188385 (T.T.A.B. Mar. 16, 2001)

03/16/01
Paper No. 9
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re MIV, Inc.
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Serial No. 75/188,385
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Kathryn Evans Smith and Kurt A. Summe of Wood, Herron &
Evans, LLP for MIV, Inc.
Josette M. Beverly, Trademark Examining Attorney1, Law
Office 112 (Janice O'Lear, Managing Attorney).
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Before Quinn, Hairston and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
MIV, Inc. has filed an application to register the
mark WORK PLACE, in stylized form, as a service mark in
International Classes 35 and 42 for, respectively,
"business marketing consulting services, and planning and
procurement services, namely, obtaining furniture, all for
wholesale and retail manufacturers and vendors" and "design
1 All examination was completed by Martha Santomartino. Ms.
Beverly briefed the appeal.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75188385
2
and implementation of offices, stores, and showrooms for
use by wholesale and retail furniture manufacturers and
vendors."2
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant's mark, as used in
connection with the identified services, will be likely to
cause confusion or mistake or to deceive, in view of the
prior registration of WORKPLACE, in stylized form, for
"modular industrial furniture, namely--benches, cabinets,
shelving and tables."3 In addition, the Examining Attorney
has refused registration under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the basis that, as
used on or in connection with applicant's services, the
mark is merely descriptive of a significant attribute
thereof.
When the refusals were made final, applicant appealed.4
Both applicant and the Examining Attorney have filed
2 Serial No. 75/188,385, filed October 28, 1996, alleging June 1,
1996 as a date of first use and first use in commerce.
3 Registration No. 868,061, issued April 8, 1969 on the
Supplemental Register, listing May 1, 1967 as date of first use
and first use in commerce.
4 The Examining Attorney also made final a requirement for
further amendment of the identification of applicant's Class 35
services. In its brief, applicant adopted a suggested amendment.
The identification is not an issue on appeal.
Ser. No. 75188385
3
briefs, but an oral hearing was not requested. Applicant,
with its brief, introduced evidence that would usually be
refused consideration as untimely. See Trademark Rule
2.142(d). The Examining Attorney, however, acknowledged
the submissions and considered them in her brief.
Accordingly, the exhibits are considered part of the
record. We review, first, the refusal under Section 2(d).
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. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the
analysis of likelihood of confusion presented by this case,
two key considerations are the similarities of the marks
and the similarities of the services. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
We begin with the marks, which are set forth below.5
5 Registrant's mark, set forth on the right, in actual use is not
surrounded by slight spots and the lettering is more crisp. See
materials submitted as Exhibit D to applicant's brief. The
Office's search system appears to contain a poor illustration of
the mark.
Ser. No. 75188385
4
Applicant argues that each mark is presented in a
different form of stylized lettering and that the
registered mark is presented as one word, while applicant's
mark is presented "in a split, two-line format." We are
not persuaded that these are significant differences. Both
marks are presented in sans serif type; there is no
particular flourish to either. Likewise, applicant's
display of its mark in a format wherein one word is a
reversal set against a dark background is not particularly
unusual. Moreover, we note from the specimens applicant
submitted and the additional exhibits it submitted with its
brief, that both applicant and registrant utilize their
respective marks in more straightforward typed forms, which
undercuts any argument that particular displays make a
significant contribution to commercial impression created
by each of the involved marks.6 See Steelcase Inc. v.
Steelcare Inc., 219 USPQ 433, 436 (TTAB 1983), relying on
Morton Norwich Products, Inc. v. S.C. Johnson & Son, Inc.,
189 USPQ 413 (CCPA 1976) ("It is proper to look to actual
usage for aid in determining the significance and meaning
of marks.").
6 Applicant also changes the solid and reversal-lettering format
when it places its entire mark against a dark background, so that
WORK is in reversal and PLACE is in solid lettering.
Ser. No. 75188385
5
The marks are spelled the same, pronounced the same,
and have the same connotation, when considered in
conjunction with the respective goods and services for
which they are used, which are discussed infra. The visual
differences are insignificant. Overall, then, we find the
marks virtually identical.
Turning to the respective goods and services, we begin
by noting that our analysis of the similarity or
relatedness thereof must be based on the identifications in
the involved application and registration. See Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990), and Canadian
Imperial Bank of Commerce, National Association v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed.
Cir. 1987). Accordingly, applicant's argument that
registrant's industrial furniture is always made of steel,
and its argument that applicant's own furniture is only for
office and not industrial use, both must be disregarded.
Registrant's identified goods are not limited to those made
of steel; nor is the furniture bought and sold through
applicant's services limited to office furniture. In
short, we must read registrant's identification as
inclusive of benches, cabinets, shelving and tables made of
any type of material and we must consider the activities
Ser. No. 75188385
6
involved in rendering applicant's services to involve
office and industrial furniture.
Moreover, we agree with the Examining Attorney's
argument that we must, in our analysis, also consider goods
or services in the registrant's normal fields of expansion.
In this case, we need not hypothesize about what fields
registrant would normally expand into, as applicant has
introduced material which illustrates registrant's
expansion. These goods include, for example, computer
workstations made of steel and laminate, and ergonomic
chairs. Such goods can also be found in applicant's
catalogue.
Registrant's literature states that it manufactures
"biomechanically sound work environments for virtually all
types of national and international markets. …built for a
wide range of customer applications, including colleges,
hospitals, the electronics industry, manufacturers,
government facilities, laboratories, and many others." It
promotes its goods as "[h]andsome enough for the office,
yet rugged enough for the work area…" and claims to have
customers throughout the country.
Applicant explains its business as one that targets
the "middle market" between large "A-grade" office
furniture manufacturers who deal directly with facilities
Ser. No. 75188385
7
managers and "commodity products" vendors who sell "ready-
to-assemble laminate office furniture." Applicant
purchases furniture "through a national network of
wholesale and retail manufacturers and vendors, displaying
the furniture in a central showroom, and then providing
design and implementation services to its customers, along
with the installation of the items into its customers'
offices, stores and showrooms." Finally, applicant notes
that it "promotes its products to companies with 10 to 250
office employees, and also markets to those working out of
home offices."
Based on the involved identifications and additional
material made of record by applicant, we conclude that
there exists a likelihood of confusion or mistake or
deception among consumers. As the Examining Attorney has
observed, applicant could very well purchase furnishings
from registrant for display in its catalogue and showrooms
and for marketing by its network of furniture dealers. In
this regard, we note that applicant's catalogue includes
various types of furniture identified by a wide variety of
trademarks. Were applicant to include registrant's
WORKPLACE furniture in its catalogue, readers might very
well assume that applicant was marketing its own "house
brand" items along with those of the other manufacturers.
Ser. No. 75188385
8
Likewise, the record suggests overlap in potential
customers insofar as applicant's stated target group of
companies with 10 to 250 employees could equally be targets
of registrant. In other words, there is nothing to suggest
that registrant does not also target the "middle market"
that applicant targets.
Applicant argues that any common customers will be
able to distinguish applicant from registrant because
customers are conditioned to distinguish many different
"workplace" or "workplace"-formative marks. The only
support for this argument, however, is applicant's
submission of a list of 92 third party applications and
registrations. We agree with the Examining Attorney that
the applications and registrations have not been properly
introduced, see In re Hub Distributing, Inc., 218 USPQ 284
(TTAB 1983), and, in any case, are not probative on the
question of likelihood of confusion. In fact, applicant's
presentation of the list as one of "92 other 'WORK PLACE'-
containing marks currently subsisting on the Principal
Trademark Register" gravely mischaracterizes the evidence.
Even if we were to consider this evidence, we would
have to discount 54 of the marks on the list, which are
only the subjects of applications (one of which is
applicant's). See Zappia-Paradiso, S.A. v. Cojeva Inc.,
Ser. No. 75188385
9
144 USPQ 101 (TTAB 1964). As to the 38 registrations, 8 do
not involve the term "workplace" at all; 7 of these involve
the phrase "place to work" and another is for the mark THAT
PATCHWORK PLACE. Thus, we are left with only one-third of
the marks on applicant's list. For these, however, we have
no evidence regarding the status of the registrations or
the goods or services for which the marks therein have been
registered. For example, a check of the particulars of the
first registration on the list, no. 2,305,011 for WORKPLACE
ART, reveals that it is not, contrary to applicant's
contention, subsisting on the Principal Register; it is on
the Supplemental Register. Also, a check of the
particulars for the only registration on the list for the
same mark as applicant and registrant, i.e., Registration
No. 1,722,567 for the single word WORKPLACE, reveals that
it covers "vocational education services in the field of
graphic communications," in Class 41.
To the extent applicant relies on the third-party
applications and registrations to establish that the mark
in the cited registration is weak and not entitled to a
broad scope of protection, while we cannot accept the
evidence, we do not disagree with applicant's conclusion.
Moreover, in reaching our conclusion on likelihood of
confusion, we have kept in mind that the cited mark is
Ser. No. 75188385
10
registered on the Supplemental Register. See In re Smith
and Mehaffey, 31 USPQ2d 1531 (TTAB 1994) ("…in most cases
marks are registered on the Supplemental Register because
they are descriptive, [thus] the scope of protection
accorded to them has been consequently narrow, so that
likelihood of confusion has normally been found only where
the marks and goods are substantially similar.").
Nonetheless, even if applicant had properly introduced
evidence of weakness of the cited mark, the registration of
such a mark is still entitled to protection against
registration by a subsequent user of a virtually identical
mark for related goods or services. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439, 442 (TTAB
1976); see also, In re Copytele Inc., 31 USPQ2d 1540, 1542
(TTAB 1994).
Finally, applicant's assertion that it is not aware of
any instances of actual confusion is not persuasive that
there is no likelihood of confusion. Any assertion of no
actual confusion, made by an applicant in an ex parte case,
is of limited value and, in any event, the period of
contemporaneous use of the involved marks has not been
lengthy. See In re Cruising World, Inc., 219 USPQ 757, 758
(TTAB 1983) and Cooper Industries, Inc. v. Repcoparts USA,
Inc., 218 USPQ 81, 85-86 (TTAB 1983).
Ser. No. 75188385
11
The refusal of registration under Section 2(d) of the
Trademark Act is affirmed. Next, we turn to the refusal of
registration based on Section 2(e)(1) of the Trademark Act.
It is well settled that a term is considered merely
descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof, or if it directly conveys information regarding
the nature, function, purpose or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-218 (CCPA 1978); see also In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
It is not necessary that a term describe all of the
attributes of the goods or services in order for it to be
merely descriptive thereof; rather, it is sufficient if the
term describes a significant attribute. Moreover, whether
a term is merely descriptive is determined not in the
abstract, but in relation to the goods or services for
which registration of the term is sought, the context in
which it is being used on or in connection with those goods
or services, and the possible significance that the term
would have to the average purchaser because of the manner
of its use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Consequently, "[w]hether consumers could
Ser. No. 75188385
12
guess what the product is from consideration of the mark
alone is not the test." In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985).
The evidence of record relative to the question of
descriptiveness includes dictionary definitions of
"workplace" as a "place (as a shop or factory) where work
is done" and a "place, such as an office or a factory,
where people are employed." In addition, the Examining
Attorney made of record numerous NEXIS references
establishing the ubiquitous use of the phrase "workplace
design," and variations thereof. The NEXIS evidence also
includes numerous references to "workplace" furniture or
furnishings. Finally, as noted by the Examining Attorney,
applicant's catalogue of furniture products list various
"work areas" for which furniture and accessories are
available through applicant's furniture dealers. These
include, for example, "Executive Workplaces,"
"Administrative Workplaces," "Training in the Workplace,"
and "Home Office Workplaces." Each of these phrases is
clearly used to describe a particular place of work.
We have no doubt that WORK PLACE, as used by
applicant, will immediately, and without need of thought or
imagination, describe a significant feature of applicant's
services, namely, that the furniture obtained in the
Ser. No. 75188385
13
rendering of its Class 35 services is "workplace"
furniture, and that its Class 42 design services involve
"workplace" design and furniture used therein. We find no
merit in applicant's argument that "the words WORK PLACE,
when viewed as an entirety in its [sic] stylized design
format, have no obvious connotation relative to Applicant's
services." (Emphasis by applicant.)
The refusal of registration under Section 2(e)(1) of
the Trademark Act is affirmed.
Decision: The final refusal of registration is
affirmed on both the Section 2(d) and Section 2(e)(1) bases
asserted by the Examining Attorney.