Office Furniture Concierge, LLC

Trademark Trial and Appeal Board

Jan 16, 2013

No. 85263144 (T.T.A.B. Jan. 16, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 16, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
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In re Office Furniture Concierge, LLC
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Serial No. 85263144
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Matthew L. Grell of Balser & Grell IP Law for Office Furniture Concierge, LLC.

Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
_____

Before Grendel, Taylor, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Office Furniture Concierge, LLC filed an application to register on the
Principal Register the mark set forth below:1

1 Application Serial No. 85263144, filed under Trademark Act § 1(a), 15 U.S.C. §1051(a), on
March 10, 2011, with a claim of first use and first use in commerce of November 4, 2009.
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Registration of the mark is sought for the following services:
Retail services by direct solicitation by sales agents in the
field of office furniture, in International Class 35.
Applicant makes no claim to the exclusive right to use OFFICE FURNITURE and
DESKS CHAIRS TABLES FILE CABINETS WORKSTATIONS ERGONOMIC
TOOLS apart from the mark as shown.
The trademark examining attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, as used in
connection with applicant’s services, so resembles the mark CONCIERGE
COLLECTION, which is registered on the Principal Register in standard character
form for “furniture,”2 as to be likely to cause confusion, or to cause mistake, or to
deceive. When the refusal was made final, applicant filed a request for
reconsideration, which was denied. Applicant then appealed. Applicant and the
examining attorney have filed their respective appeal briefs and applicant has filed
a reply brief.
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and

2 Reg. No. 3819625, issued on July 13, 2010.
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the examining attorney have also submitted evidence and arguments regarding
channels of trade, conditions under which sales are made, classes of customers,
absence of actual confusion, duration of concurrent use, the right to exclude others
from use, and the extent of potential confusion.
We address first the respective services and goods of applicant and
registrant, to determine whether they are sufficiently related to give rise to
potential confusion. Applicant seeks registration of its mark for “Retail services by
direct solicitation by sales agents in the field of office furniture.” Applicant’s
specimens of use are excerpts from its website, stating the following:
…call upon a local provider with over 25 years industry
experience that will provide personal service for your
office furniture project. Have your phone calls answered,
your emails returned, and work with a project manager
that appears in person until the project is completed to
your satisfaction….
Office Furniture Concierge is a full-service office furniture
dealership….
…
We can visit you in your office and respond with a project
proposal consisting of estimates, photos & brochures or
we can pick you up and bring you to one of our Atlanta
area warehouses or showrooms to view new and used
furniture offerings in person.
The specimens also show that customers may view applicant’s “inventories and
deals” on applicant’s website; and that applicant accepts online inquiries from
customers through its website. While we assume that applicant’s service, as
identified in the application, involves substantial contact between customers and
sales representatives of applicant, the specimens show that such direct contacts do
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not constitute the exclusive commercial contexts in which applicant and its
customers interact. Applicant and its customers may also interact by means of e-
mails, written proposals, brochures, on the phone, and in warehouses and
showrooms.
The cited mark is registered for “furniture.” We must presume that the
registrant’s goods encompass all goods of the nature and type identified in the
registration, including office furniture. In re Jump Designs, 80 USPQ2d 1370, 1374
(TTAB 2006).
It has often been recognized that likelihood of confusion may arise where
confusingly similar marks are used on goods, on the one hand, and in connection
with sales of such goods, on the other. See In re Wet Seal, Inc. v. FD Management,
Inc., 82 USPQ2d 1629, 1640 (TTAB 2006); J. Thomas McCarthy, Trademarks and
Unfair Competition (4th ed.) § 24:25. As our principal reviewing court has noted,
“trademarks for goods find their principal use in connection with selling the goods”
and accordingly marks for goods and marks for the service of selling such goods will
have their impact on the purchasing public in the same marketplace. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
The examining attorney has provided ample evidence to show that full-
service furniture dealerships sell the furniture of others and that third-party
trademarks pertaining to such furniture products appear on the dealers’ websites.3

3 This evidence shows, for example, that Peartree Office Furniture sets forth on its website
a list of dozens of furniture trademarks; and that Sun Turtle Office Furniture’s website
refers to a “Select Line of Manufacturers,” identifying them by the trademarks HON, Paulo,
DMI, High Line, Mayline, Safco Products and HON Basyx. We note also similar web
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The record lacks evidence to show that such dealerships offer furniture that is
marked with the dealerships’ own trademarks. However, it is clear from the record
that customers who seek office furniture through a dealership service such as that
of applicant will be exposed to trademarks for furniture products. As applicant’s
specimen of use demonstrates, such exposure could happen by means of a
recommendation made by a sales representative in a face-to-face meeting, through
an e-mail communication or telephone call, through a written proposal, through a
brochure supplied to the customer by the sales representative, or through the
customer’s own browsing through inventories and deals offered on the applicant’s
web site. Under such circumstances, the use of similar marks in connection with
the furniture and the furniture dealership could give rise to the mistaken belief that
such goods and services originate from or are in some way associated with the same
producer. Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399. 1410
(TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB
1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854
(TTAB 1978). Accordingly, we find that applicant’s services and registrant’s goods
are closely related. This du Pont factor weighs heavily in favor of a finding of
likelihood of confusion.
We turn next to the similarity or dissimilarity of the marks as to appearance,
sound, connotation and commercial impression. Du Pont, 177 USPQ at 567.

advertisements of Argyle Office Solutions, Contract Furniture Options, Inc., Caddo
Solutions, MOI, Total Office Furniture, Office Furniture Expo, Furniture Plus Design, and
Mod Design, all of which make reference to numerous third-party furniture brands. See
evidence submitted with the Office actions of July 20, 2011 and November 29, 2011.
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Applicant’s mark consists of a representation of “a Concierge with a bow tie
holding up a platter.”4 The wording OFFICE FURNITURE CONCIERGE appears
to rest upon the platter. The concierge figure is headless; in place of the head are
generic words designating various items of furniture.5 “[T]he head is represented
by [this] stylized text….”6
We consider the marks at issue in their entireties in reaching our ultimate
conclusion, but there is nothing improper in giving more or less weight to a
particular feature of a mark, for rational reasons. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The dominant portion of applicant’s
mark is the wording OFFICE FURNITURE CONCIERGE. In the case of marks
consisting of words and a design, the words are normally given greater weight
because they would be used by consumers to request the goods or services. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co.,
2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill
Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc.
v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). The
other wording in applicant’s mark is generic, with no source-indicating function; it
is also too voluminous to conveniently serve as a means of calling for the goods.
While the position of this additional wording is unusual (inasmuch as it appears in

4 Application, p. 1, description of the mark.
5 “DESKS CHAIRS TABLES FILE CABINETS WORKSTATIONS ERGONOMIC TOOLS.”
6 Application, p. 1, description of the mark.
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the place where one would expect to see the depicted concierge’s head), this graphic
feature is unlikely to be used by customers in identifying applicant or calling for
applicant’s services. Our perception of OFFICE FURNITURE CONCIERGE as the
dominant portion of the mark is supported by the fact that applicant’s corporate
name is Office Furniture Concierge, LLC, and by applicant’s statement that “Our
filing was initiated so no other office furniture dealership or other entity starts a
business with the name Office Furniture Concierge….”7 In addition, the wording
OFFICE FURNITURE CONCIERGE would most likely be used in text in order to
identify applicant’s services. See In re Viterra, 101 USPQ2d at 1911; In re Dakin’s
Miniatures, Inc., 59 USPQ2d at 1596; CBS Inc. v. Morrow, 708 F.2d 1579, 1582, 218
USPQ 198, 200 (Fed. Cir. 1983).
Applicant argues that the concierge design is the dominant portion of the
mark and should be given greater weight than the remainder of the mark. The
cases cited by applicant do not squarely support this contention. In In re Computer
Communications, Inc., 484 F.2d 1392, 179 USPQ 51 (CCPA 1973), the mark
contained, besides the design, only generic wording having little or no source-
indicating power. However, applicant’s mark includes the distinctive term
CONCIERGE. In Columbia Steel Tank Company v. Union Tank and Supply
Company, 277 F.2d 192, 125 USPQ 406 (CCPA 1960), the court gave equal weight,
not greater weight, to the design element. 125 USPQ at 409. Massey Junior
College, Inc. v. Fashion Institute of Technology, 492 F.2d 1399, 181 USPQ 272

7 Applicant’s response filed June 27, 2011.
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(CCPA 1974) indicates only that it is improper to ignore the design element. We do
not believe the design elements of applicant’s mark would be the primary feature
whereby customers would identify applicant and its services.
Comparing applicant’s mark OFFICE FURNITURE CONCIERGE (and
design) in its entirety with the registered mark CONCIERGE COLLECTION, we
find that they convey substantially similar, although not identical, commercial
impressions. In each case, the most distinctive element is the word CONCIERGE,
which is arbitrary with respect to the relevant goods and services.8 OFFICE
FURNITURE and COLLECTION are generic and have little, if any, source
indicating function. In each case, the designation CONCIERGE is most likely to be
recalled by customers, who retain a general rather than specific impression of
marks seen in the marketplace. See Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975). Although the marks are not identical in meaning,
appearance or sound, it is likely that customers would perceive a connection
between a selection of furniture called the CONCIERGE COLLECTION and a
furniture dealership called OFFICE FURNITURE CONCIERGE.
Applicant compares the present case to Kellogg Co. v. Pack’em Enterprises,
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991), in which the mark FROOTEE

8 The word “concierge” means “a member of a hotel staff in charge of special services for
guests….” THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (2nd ed. 1987), p.
423. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
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ICE with elephant design was found dissimilar to the word mark FROOT LOOPS.
However, in that case, “the marks share[d] no common words.” 21 USPQ2d at 1144.
In the case before us, both marks do indeed share a common word, which is the
distinctive designation CONCIERGE.
Applicant emphasizes the difference between its mark, which includes a
graphic design, and the cited registered mark which “merely contains two
words….”9 However, the standard character form of the cited registration does not
limit the registrant’s right to display its mark in graphic form. The rights
associated with a mark in standard characters reside in the wording and not in any
particular display. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed.
Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re
Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
Having considered applicant’s mark in its entirety, and all of applicant’s
arguments regarding the distinctions between the marks, we find that the
substantial similarities between the marks weigh in favor of a finding of likelihood
of confusion.
With respect to the trade channels for the respective services and goods, the
examining attorney’s evidence relating to full-service furniture dealerships,
discussed above, demonstrates that services similar to those of applicant are a
suitable channel of trade through which furniture is marketed, such that customers
dealing with applicant are likely to be exposed to the trademarks of companies

9 Applicant’s brief at 9.
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similar to registrant. This du Pont factor weighs in favor of a finding of likelihood
of confusion.
As to the nature of applicant’s customers, applicant argues that purchasers of
office furniture “are sophisticated and knowledgeable business-people” who “are not
impulse buyers because of the typically high cost of office furniture.”10 However,
business persons who are sophisticated in their own fields are not necessarily
sophisticated in the field of office furniture. Moreover, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
involving similar marks and closely related goods and services. See In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
112 (CCPA 1970). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). In the
present case, we find that the similarities between the marks and the high degree of
relationship between applicant’s services and registrant’s goods outweigh the
alleged sophistication of applicant’s customers. See HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of
goods and marks outweigh sophisticated purchasers, careful purchasing decision,
and expensive goods). Thus, this factor is neutral.
On the basis of the dates of use set forth in the application and the
registration, applicant notes that the marks at issue have both been in use since at

10 Applicant’s brief at 14.
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least January 15, 2010, and that applicant is not aware of any actual confusion
during that time.11 This statement is unsupported by probative evidence.
Applicant’s uncorroborated statement as to an absence of actual confusion is
entitled to little weight. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1205 (Fed. Cir. 2003. See also In re Bisset-Berman Corp., 476 F.2d
640, 177 USPQ 528, 529 (CCPA 1973). This is particularly true in an ex parte
context, where we have no input from the registrant. Moreover, the record contains
no evidence relating to the extent of use of applicant’s and registrant’s marks and,
thus, whether there have been meaningful opportunities for instances of actual
confusion to have occurred in the marketplace. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette Canada
Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont
factor of the length of time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is considered neutral.
Applicant argues that there is no market interface between applicant and
registrant, because applicant provides sales services while registrant provides
goods. Although there may have been no actual dealings between applicant and
registrant, the evidence discussed above shows that applicant’s services are a type
of usual trade channel for registrant’s goods. This potential for market interface
weighs in favor of a finding of likelihood of confusion.

11 Id. at 15.
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Applicant has submitted no evidence of its “right to exclude others from use
of its mark,” other than applicant’s unsupported statement that “Applicant was the
first to use the mark for furniture related serv[ices].”12 To the extent that applicant
is alleging priority, such allegation cannot be considered. During ex parte
prosecution, including an ex parte appeal, an applicant will not be heard on matters
that constitute a collateral attack on the cited registration (e.g., applicant's claim of
priority over the cited mark). In re Dixie Restaurants, Inc., 105 F.3d 1405, 1408, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797
n.5 (TTAB 1992). See TMEP §1207.01(d)(iv) (8th ed. 2012). Accordingly, no
consideration has been given to applicant's arguments in this regard.
Finally, applicant argues (without support) that “any potential confusion
would be de minimis” because applicant’s sophisticated buyers can be expected to
carefully review their business-related purchases.13 This argument is redundant of
applicant’s argument regarding the sophistication of its customers, which was dealt
with above.
Having considered the evidence of record and all relevant du Pont factors,
including those not specifically discussed herein, we find that applicant’s mark, as
applied to applicant’s services, so closely resembles the registered mark
CONCIERGE COLLECTION for furniture as to be likely to cause confusion,
mistake or deception as to the source of applicant’s services.
Decision: The refusal to register is affirmed.

12 Id. at 16.
13 Id.