Natco Products Corporation

Trademark Trial and Appeal Board

Jan 29, 2013

No. 85435002 (T.T.A.B. Jan. 29, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 29, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Natco Products Corporation
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Serial No. 85435002
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Mark E. Tetreault of Barlow Josephs & Holmes, Ltd.,
for Natco Products Corporation
Karen K. Bush, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney).
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Before Bucher, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Natco Products Corporation (“applicant”) seeks registration on the Principal
Register of the mark PRISM (in standard character format) for “curtain fabric; cur-
tains,” in International Class 24.1
The examining attorney has refused registration of applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that reg-
istration would lead to a likelihood of confusion in view of the goods recited in Reg.

1 Application Serial No. 85435002 was filed on September 29, 2011, based on applicant’s
allegation of a bona fide intention to use the mark in commerce.
Serial No. 85435002

2

No. 3677947 for the mark PRISM: COLOUR FOR LIVING (in standard character
format) for “towels, wash cloths, bed linens, pillow cases, comforters, bed blankets
and duvet covers,” also in International Class 24.2
After the examining attorney made the refusal final, applicant appealed to
this Board. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based upon an analysis of
the probative facts in evidence that are relevant to the factors bearing on a likeli-
hood 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 Ma-
jestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and 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 in-
quiry 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 1098, 192 USPQ 24, 29 (CCPA
1976); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
Applicant has applied to register the mark PRISM. The registered mark is
PRISM: COLOUR FOR LIVING. In comparing the marks, we must consider the
marks in their entireties as to appearance, sound, connotation and commercial im-
pression, to determine the similarity or dissimilarity between them. Palm Bay, 73

2 Registration No. 3677947 issued on September 1, 2009.
Serial No. 85435002

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USPQ2d at 1692. The test, under the first du Pont factor, 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 im-
pression that confusion as to the source of the goods offered under the respective
marks is likely to result. Because the similarity or dissimilarity of the marks is de-
termined based on the marks in their entireties, the analysis cannot be predicated
on dissecting the marks into their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different
features may be analyzed to determine whether the marks are similar. Price Candy
Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268
(CCPA 1955). In fact, there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. In re
National Data Corp., 224 USPQ at 751. The focus is on the recollection of the aver-
age purchaser, who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
As to this critical du Pont factor, applicant and the examining attorney disa-
gree about the impact of the presence in the cited mark of the tagline, “Colour For
Living.” This tagline creates obvious differences in the appearance and sound of the
two marks. We begin by noting that based on the totality of this record, the word
“Prism” appears to be strong both conceptually and commercially for the involved
Serial No. 85435002

4

domestic products. Hence, as contended by the examining attorney, we find the
marks to be more similar than dissimilar in that the distinctive word, “Prism,” is
the totality of applicant’s mark and the first word in the cited composite; consumers
already familiar with the longer registered mark having a tagline are likely to as-
sume that applicant’s PRISM is merely a shortened version of the registered mark
(see In re Mighty Leaf Tea, 94 USPQ2d 1257 (Fed. Cir. 2010); and In re United
States Shoe Corp., 229 USPQ 707 (TTAB 1985)); and the additional wording in the
registered mark is a further play on the word “Prism” rather than creating an en-
tirely new concept or commercial impression. Accordingly, we find that these marks
are quite similar in the context of this du Pont factor.
We next turn our attention to the relationship of the goods as they are identi-
fied in the application and registration. Octocom Systems, Inc. v. Houston Comput-
ers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002). It is settled that it is not necessary that the respective goods be identical
or even competitive in order to find that they are related for purposes of our likeli-
hood of confusion analysis. That is, the issue is not whether consumers would con-
fuse the goods themselves, but rather whether they would be confused as to the
source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods
need only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source. See In re
Serial No. 85435002

5

Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); and In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The goods identified in the application are “curtain fabric; curtains.” The
goods in the cited registration are “towels, wash cloths, bed linens, pillow cases,
comforters, bed blankets and duvet covers.”
As argued by the examining attorney, copies of use-based, third-party regis-
trations may serve to suggest that the goods are of a type which may emanate from
a single source under the same trademark. In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Hence, the
examining attorney introduced into the record the following representative registra-
tions issued during a recent six-month period of time:

for “textiles, namely, bedding, namely, comforters, blan-
kets, shams, bed sheets, pillows, bed spreads, mattress
pads, duvets, mattress covers, and window coverings,
namely, curtains and draperies” in Int. Class 24;3

for “bed sheets, table linens, namely, napkins, placemats,
tablecloths, pillow shams, pillow covers, pillow cases,
curtains, towels” in International Class 24;4
CAMEO for “bed linen; bed sheets; bedspreads; bed blankets; com-
forters; duvet covers; fabric valances; pillow cases; win-
dow curtains; towels; shower curtains; pillow shams;
blanket throws; dust ruffles; curtain tie backs made of
fabric” in International Class 24;5
JP Stevens for “bed sheets, pillow cases, comforters, bedspreads,
quilts, pillow shams, bed dust ruffles, bed skirts, duvet

3 Registration No. 4029640 issued on September 20, 2011.
4 Registration No. 4088687 issued on January 17, 2012.
5 Registration No. 4018923 issued on August 30, 2011.
Serial No. 85435002

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covers, comforter covers, mattress pads, bed blankets,
throw blankets, waterbed sheets and comforters, towels,
bath towels, beach towels, kitchen towels, bath sheets,
wash cloths, fabric shower curtains, textile wall hang-
ings, all of which is primarily made of cotton, table cloth
not of paper, curtain of textile or plastic, fabric window
treatments, namely, curtains, draperies, sheers, swags,
and valances; window treatments in the nature of win-
dow panels of polyester, cotton and wool” in Int. Class
24;6

for, inter alia, “bed sheets; curtains; table cloth of textile”
in International Class 24;7
Madison Park for “bed blankets; bed skirts; bed spreads; bed throws;
blanket throws; blankets for outdoor use; comforters;
contoured mattress covers; fabric window coverings and
treatments, namely, curtains, draperies, sheers, swags
and valances; mattress covers; mattress pads; pillow co-
vers; pillow shams; shams” in International Class 24;8
KAS for “cushion covers; curtains; bed sheets; bed linen; bed
covers, namely, comforter, throws and bed blankets; bed
skirts; quilt sets comprised of pillow cases, bed sheets,
quilt covers and quilts; pillow cases; coverlets in the na-
ture of bed rugs; textile placemats; textile pot holders;
textile oven gloves; textile napkins; towels; tea towels;
unfitted fabric furniture covers; tablecloths not of paper”
in International Class 24;9

Similarly, the examining attorney provided various websites showing that
customers are able routinely to purchase curtains from the same retailers that offer
under the same marks bedding such as sheets and comforters and/or bath items
such as wash cloths and towels:

6 Registration No. 4039857 issued on October 11, 2011.
7 Registration No. 4059406 issued on November 22, 2011.
8 Registration No. 4059986 issued on November 22, 2011.
9 Registration No. 4071740 issued on December 13, 2011.
Serial No. 85435002

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10

[The heading of “TEXTILES & RUGS” in-
cludes, inter alia, “Curtains & Blinds,”
“Bedroom textiles,” and “Bathroom textiles”]11

12
13

10 http://www.sheffieldfurniture.com/
11 http://www.ikea.com/us/en/catalog/categories/departments/Textiles/
12 http://www.bedbathstore.com/
13 http://www.bedbathhome.com/
Serial No. 85435002

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The photos included in these web pages show curtains being marketed alongside
items of bedding. In some cases the curtain fabrics have identical prints to the bed
linens, pillow cases, comforters, bed blankets and/or duvet covers. In other cases,
the respective products are simply coordinated as to color or theme.
Despite applicant’s claims to the contrary, we find from the evidence of record
that the respective goods are closely-related, domestic products that move through
overlapping channels of trade to the same ordinary consumers shopping in the same
retail locations, whether they be brick-and-mortar stores or online merchants. Not
surprisingly, the record shows that these goods have complementary uses, and thus
are often used together or otherwise purchased by the same purchasers for the same
or related purposes. In such cases, the respective goods have generally been found
to be sufficiently related such that confusion would be likely if they are marketed
under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984); Gen. Mills Inc. v. Fage
Dairy Processing Indus., 100 USPQ2d 1584, 1597-98 (TTAB 2012). When prospec-
tive purchasers would encounter highly similar trademarks for the curtains in the
same stores as the towels, wash cloths, bed linens, pillow cases, comforters, bed
blankets and duvet covers being offered, they would mistakenly believe it was part
of an extended line of domestic products offered by a single entity.
Accordingly, these related du Pont factors all weigh in favor of a finding of
likelihood of confusion.
Serial No. 85435002

9

In view of the facts that the respective marks engender similar overall com-
mercial impressions, and that the respective goods are closely-related and comple-
mentary domestic products that move through overlapping trade channels to the
same classes of ordinary consumers, we have no doubt but that applicant’s registra-
tion of the mark PRISM for “curtain fabric; curtains” is likely to cause confusion.
Decision: The refusal under Trademark Act § 2(d) to register applicant’s mark
PRISM is hereby affirmed.