Northeast Builders Supply & Home Centers, LLC

Trademark Trial and Appeal Board

Jan 26, 2018

No. 86859588 (T.T.A.B. Jan. 26, 2018)

Mailed: January 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Northeast Builders Supply & Home Centers, LLC
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Serial No. 86859588
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Arthur G. Schaier, Carmody Torrance Sandak & Hennessey LLP,
for Northeast Builders Supply & Home Centers, LLC.
Timothy J. Callery, Trademark Examining Attorney, Law Office 121,
Kevin Mittler, Managing Attorney.
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Before Bergsman, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Northeast Builders Supply & Home Centers, LLC seeks registration on
the Principal Register of the mark WD, in standard characters, for (in relevant part)
the following services in International Class 35, as amended:1
Retail home improvement store services, retail home
improvement center store services and retail store services
featuring goods for building, home improvement, hardware
and lawn and garden care, all the foregoing excluding

1 Application Serial No. 86859588 was filed on December 28, 2015 pursuant to Trademark
Act Section 1(a), 15 U.S.C. § 1051(a), based on Applicant’s allegation of first use and use in
commerce of the Class 35 services as of October 31, 1993.
This Opinion Is Not a
Precedent of the TTAB
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flooring; retail lumber supply store services; retail
building supply store services featuring goods for building,
home improvement, hardware and lawn and garden care,
all the foregoing excluding flooring; retail store
services featuring building materials and tools, plumbing
supplies and tools, roofing materials and tools, home
furnishing materials and tools and items used in home
improvement and commercial building construction, all
the foregoing excluding flooring; retail store services
serving professional builders, developers, contractors,
architects and homeowners featuring goods for lumber
supply, building supply, commercial building construction,
home improvement, hardware, paints and paint supplies,
tools, housewares and lawn and garden care, all the
foregoing excluding flooring; retail store services
featuring windows and doors, fasteners and adhesives,
housewares, lawncare and gardening supplies, building
and lumber supplies, and tools and materials for new
construction, remodeling, home improvement and retro-
fitting, all the foregoing excluding flooring; project
estimation, namely, cost assessment services; project
estimation in the nature of estimating contracting work,
namely, new construction cost, remodeling and materials
cost estimation; showroom services featuring paints,
hardware, windows and doors and other goods for building,
home improvement and remodeling, all the foregoing
excluding flooring.
(emphasis added). The application also recites goods and services in other classes that
are not before us.
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 applied
to the services identified in the application, so resembles the mark

Serial No. 86859588
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registered on the Principal Register with “wholesale direct” and “flooring” disclaimed
for “wholesale store services featuring flooring” in International Class 352 as to be
likely to cause confusion, to cause mistake, or to deceive.
In an effort to circumvent the final refusal, in a Request for Reconsideration filed
June 1, 2017, Applicant amended the identification of services to incorporate the
phrase “all the foregoing excluding flooring” in six places, as shown in bold in the
recitation of services supra. Applicant also appealed to this Board. After
reconsideration was denied, the appeal resumed. We affirm the refusal to register.
I. Reply Brief Not Considered
Applicant’s reply brief is 12 pages long, excluding the cover page and signature
block. 10 TTABVUE. Reply briefs are limited to ten pages. Trademark Rule
2.142(b)(2), 37 C.F.R. § 2.142(b)(2). Therefore, we have given the reply brief no
consideration. See TBMP § 1203.01 (June 2017) (“If an applicant files a brief that
exceeds the twenty-five page limit or a reply brief that exceeds the ten-page limit
without prior leave of the Board, the brief will not be considered.”).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567

2 Registration No. 4505999, issued April 1, 2014. The description of the mark states: “The
mark consists of the words ‘WD FLOORING’ at a diagonal inside a square with the word
‘WHOLESALE’ shown vertically along the left border of the square and the word ‘DIRECT’
shown horizontally across the top border of the square.” Color is not claimed as a feature of
the mark.
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(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the goods
and differences in the marks.”).
A. Similarity of the Marks
We first address the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.’” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
Because the similarity of the marks is determined based on the marks in their
entireties, our analysis is not predicated on dissecting the marks into their various
components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015).
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On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, 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 consideration of
the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The cited mark is with “wholesale direct” and “flooring”
disclaimed. Although we assess each mark in its entirety, wording often is considered
the dominant feature of a mark comprising both literal and design elements because
it is most likely to indicate the source of the services. See Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1134 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016); In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). That is
particularly true for Registrant’s mark; its simple square carrier and wording
running in three directions does not diminish the dominance of the literal elements,
particularly the largest and central term, WD. See In re Dixie Rests. Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (giving little weight to “an ordinary
geometric shape that serves as a background for the word mark”). Moreover, because
“wholesale direct” and “flooring” are descriptive or generic for Registrant’s “wholesale
store services featuring flooring,” the only distinctive verbal element in Registrant’s
mark is WD, which is identical to Applicant’s entire mark. Applicant also could
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display its standard character mark in the same font style as the wording in
Registrant’s mark. See Trademark Rule 2.52(a)(1), 37 C.F.R. § 2.52(a)(1); Viterra, 101
USPQ2d at 1909.
Marks comprising letter combinations can be more susceptible to confusion than
word marks. B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1509 (TTAB
2007). Applicant argues that WD in the cited mark stands for “wholesale direct,” a
phrase that mark comprises. See Appeal Brief at 9, 7 TTABVUE 10. Even so, because
Applicant’s mark consists entirely of WD, it does not signal to consumers the
derivation of that initialism. Furthermore, we have said that the derivations of letter
marks, acronyms, or initialisms are of no particular significance in our analysis under
Section 2(d), even where derived from the mark owner’s name. B.V.D. Licensing,
83 USPQ2d at 1508; see also Edison Bros. Stores, Inc. v. Brutting E.B. Sport-Int’l
GmbH, 230 USPQ 530, 533 (TTAB 1986) (“It should be noted that the lettered marks
in almost all of the cited decisions were, as in the case before us, derived from the
trade or corporate names of the involved parties, but these facts had no negative
influence upon the likelihood of confusion conclusions which were reached.”).
While there is no rule that likelihood of confusion automatically applies where one
mark encompasses another, in this case, the fact that Applicant’s entire mark is a
term in the registered mark also increases the similarity between the two. See, e.g.,
In Re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)
(affirming decision finding applicant’s mark ML similar to registered mark ML
MARK LEES); Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660-61
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(TTAB 2014) (finding applicant’s mark PRECISION confusingly similar to opposer’s
mark PRECISION DISTRIBUTION CONTROL); In re U.S. Shoe Corp., 229 USPQ
707, 709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to
registered mark CREST CAREER IMAGES); see also China Healthways Inst. Inc. v.
Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007) (finding the common
word in CHI and CHI PLUS likely to cause confusion despite differences in the marks’
designs).
In U.S. Shoe, the Board observed that the applicant’s mark “would appear to
prospective purchasers to be a shortened form of registrant’s mark.” 229 USPQ at
709. Here too, we find that consumers are likely to perceive Applicant’s mark WD as
a shortened version of the registered mark. See also Mighty Leaf Tea, 94 USPQ2d at
1260 (affirming Board decision that ML is likely to be perceived as a shortened
version of ML MARK LEES, and noting that “the presence of an additional term in
the mark does not necessarily eliminate the likelihood of confusion if some terms are
identical”).
Although the respective marks differ somewhat visually and aurally, we find them
to be highly similar in meaning and overall commercial impression. The first du Pont
factor thus weighs in favor of a finding that confusion is likely.
B. Similarity of the Services and Channels of Trade
We next consider the second and third du Pont factors, the similarity of the
services and established, likely-to-continue trade channels. The test is not whether
consumers would be likely to confuse the services, but rather whether they would be
Serial No. 86859588
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likely to be confused as to their source. E.g., In re Anderson, 101 USPQ2d 1912, 1919
(TTAB 2012). Therefore, to support a finding of likelihood of confusion, it is not
necessary that the services be identical or even competitive. Rather, it is sufficient
that the services are related in some manner, or that the circumstances surrounding
their marketing are such that they would be encountered by the same persons in
situations that would give rise, because of the marks, to a mistaken belief that they
originate from the same source or that there is an association or connection between
the sources of the services. In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
The Examining Attorney submitted evidence that the services recited in the
application and registration are of a kind that may emanate from a single source
under the same mark. In particular, the record includes the following examples of
flooring services and some of Applicant’s identified services offered under the same
marks through the same websites:
• HomeDepot.com: Flooring and flooring installation services as well as
project estimation (a “flooring estimator”) and retail store services featuring
building materials and tools, roofing materials and tools, lawn care and
gardening supplies, hardware, and tools and materials for remodeling and
home improvement;3
• Lowes.com: Flooring and flooring installation services as well as retail store
services featuring building materials and tools, building and lumber
supplies, lawn care and gardening supplies, and hardware;4 and
• ProSourceWholesale.com: Flooring as well as showroom services featuring
goods (i.e., flooring, cabinets, and countertops) for home improvement.5

3 December 1, 2016 Final Office Action at TSDR 89-113.
4 Id. at TSDR 114-85.
5 Id. at TSDR 59-76.
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Although Applicant has excluded flooring from the identification of its retail store
and showroom services, this evidence shows that many of Applicant’s services are
offered through the same trade channels and under the same marks as store services
featuring flooring.
Applicant distinguishes the respective store services on the basis that Registrant’s
are identified as wholesale, while Applicant’s are retail, arguing: “Because wholesale
markets and retail markets are in different channels of trade, Applicant’s and
Registrant’s marks are not likely to be confused.” Appeal Brief at 11, 7 TTABVUE 12.
We find this to be a distinction without a difference. Applicant’s identified services
include “retail store services serving professional builders, developers,
contractors, architects and homeowners featuring goods for lumber supply,
building supply, commercial building construction, home improvement, hardware,
paints and paint supplies, tools, housewares and lawn and garden care, all the
foregoing excluding flooring.” To the extent that Registrant’s “wholesale store
services featuring flooring” are offered to professional builders, developers,
contractors, and architects, the channels of trade (and classes of customers, discussed
infra) are the same, whether the store services are retail or wholesale.
Based on the record evidence as a whole, we find that the services identified in the
application and cited registration are related and travel through the same channels
of trade to the same customers. In our likelihood of confusion analysis, the second
and third du Pont factors support a finding that confusion is likely.
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C. Degree of Purchaser Care
Finally, Applicant argues that purchasers of flooring services are sophisticated,
and that customers are careful and unlikely to purchase either its or Registrant’s
services on impulse. Appeal Brief at 11-12, 7 TTABVUE 12-13. This argument
concerns du Pont factor four, the “conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” Id., 177 USPQ at 567.
Our determination is based on the services as they are identified in the application
and cited registration, respectively, not on any extrinsic evidence of actual use. In re
i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017); Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014). We do not find the record evidence sufficient to establish that
all of the services identified in the subject application and cited registration are
expensive and purchased by discriminating customers. Precedent requires that we
base our decision on the least sophisticated potential purchasers. Stone Lion, 110
USPQ2d at 1163. Even assuming that some consumers of the identified services are
sophisticated, it is well-settled that careful or sophisticated purchasers are not
immune from source confusion:
That the relevant class of buyers may exercise care does
not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar
goods. “Human memories even of discriminating
purchasers . . . are not infallible.” Sophistication of buyers
and purchaser care are relevant considerations, but are not
controlling on this factual record.
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In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
(quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403,
168 USPQ 110, 112 (CCPA 1970)). For these reasons, we find the fourth du Pont
factor to be neutral.
III. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, as they pertain to the relevant du Pont likelihood of
confusion factors. To the extent that any other du Pont factors for which no evidence
was presented by Applicant or the Examining Attorney may nonetheless be
applicable, we treat them as neutral.
We have found that Applicant’s mark is similar to the cited mark; the services
identified in the subject application and cited registration are related and travel
through the same channels of trade; and the remaining du Pont factors are neutral.
We find that Applicant’s mark is likely to cause confusion with the mark in cited
Registration No. 4505999 when used in association with the Class 35 services recited
in the application.
Decision: The refusal to register Applicant’s mark is affirmed as to the Class 35
services. The application will proceed to publication in due course for the remaining
goods and services.