O’Sullivan Industries, Inc.

Trademark Trial and Appeal Board

Apr 30, 2001

No. 75566625 (T.T.A.B. Apr. 30, 2001)

4/30/01
Paper No. 11
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re O'Sullivan Industries, Inc.
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Serial No. 75/566,625
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Andrew B. Mayfield of Armstrong Teasdale LLP for O'Sullivan
Industries, Inc.
Mark Sparacino, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney).
_______
Before Simms, Seeherman and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
O'Sullivan Industries, Inc. has filed an application
to register the mark XPRESSIONS in International Class 20
for goods identified as "furniture."1 The Examining
Attorney refused registration of applicant's mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
1 Application No. 75/566,625, filed October 7, 1998, based on
applicant's allegation of first use and first use in commerce as
of July 10, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/566,625
2
because of the prior registration of EXPRESSIONS, in class
37 for "manufacture of upholstered furniture to the order
and/or specifications of others" and in class 42 for
"retail furniture store services."2
When the Examining Attorney made the refusal of
registration final, applicant appealed. Both applicant and
the Examining Attorney have filed briefs, but an oral
argument was not requested. We affirm the refusal.
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,
key considerations are the virtually identical nature of
the marks, the related nature of the goods and services,
and the presumptively similar classes of consumers for
these goods and services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
2 Registration No. 1,499,910, issued August 9, 1988, based on
claimed dates of first use for both classes of October 9, 1986.
Section 8 & 15 affidavits accepted and acknowledged,
respectively.
Ser. No. 75/566,625
3
The marks are pronounced the same and have the same
connotation or meaning. Indeed, applicant concedes that
they are phonetically identical and makes no argument that
the marks have different meanings. Applicant does attempt
to distinguish the marks based on asserted differences in
visual appearance. The involved marks, however, are both
in typed form. Thus, there are no design elements or forms
of lettering which serve to distinguish the marks3; although
the cited mark begins with the letter "E" and this letter
is omitted from applicant's mark, we consider them as
having very similar appearances.
Turning to consideration of the involved goods and
services, applicant argues that its furniture is not
custom-manufactured or upholstered. Instead, applicant
explains, its goods are "ready-to-assemble desks and other
office-type furniture." It is well settled, however, that
our consideration of the question of likelihood of
3 Though applicant's specimens show use of its mark with a large,
stylized X, the drawing in the application is in typed form.
When an applicant seeks registration of its mark in typed form, a
"necessary premise in [the] evaluation of the registrability … is
that the mark … may be displayed in any form or style of
lettering, or in any color…." Sunnen Products Co. v. Sunex
International Inc. 1 USPQ2d 1744, 1747 (TTAB 1987), citing
Kimberly-Clark Corp. v. H. Douglas Enterprises, 774 F.2d 1144,
227 USPQ 541, 543 (Fed. Cir. 1985). Thus, not only must we
disregard the stylized form in which applicant uses its mark, we
also must presume that applicant might set forth its mark in the
same form of lettering as any used by the registrant.
Ser. No. 75/566,625
4
confusion 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, we consider applicant's goods to include all
types of furniture, and we must consider registrant's
retail furniture store services to involve sale of all
types of furniture. As a result, there is little probative
value to the evidence applicant has introduced regarding
the more limited types of furniture advertised on
registrant's web site. Moreover, we note both that
applicant's specimens of use show use of its mark on
packaging for an entertainment center and that the reprints
from registrant's web site reveal that registrant sells
entertainment centers in its stores.
There is, of course, no question that the use of
similar marks for goods on the one hand and related
services involving those goods on the other may, in
appropriate cases, be likely to result in confusion in
trade. See, e.g., Steelcase Inc. v. Steelcare Inc., 219
USPQ 438, 435 (TTAB 1983) (STEELCARE for refinishing of
furniture and office equipment held likely to be confused
Ser. No. 75/566,625
5
with STEELCASE for office furniture and accessories). See
also, Safety-Kleen Corp. v. Dresser Industries, Inc., 518
F.2d 1399, 186 USPQ 476, 480 (CCPA 1975).
Applicant argues that its furniture is not sold
through custom furniture manufacturers or retailers but is
sold "primarily through mass market consumer and office
products stores." There are, however, no restrictions as
to channels of trade or classes of consumers in applicant's
identification of goods or in either of the recitations of
registrant's services. Thus, in this case, by virtue of
the involved identifications, we must consider that both
applicant and registrant would target all types of
consumers of furniture. Moreover, even if we accept
applicant's contention that the channels of trade are
different, consumers exposed to the involved marks in
separate settings are still likely to assume a relationship
between the goods available in registrant's retail
establishments and the goods of applicant. In particular,
consumers familiar with custom-upholstered furniture
offered under a particular mark are likely to assume, when
later exposed to a nearly identical mark for ready-to-
assemble furniture, that they emanate from a single source.
In this portion of our analyis, we are mindful that
the test for likelihood of confusion does not involve a
Ser. No. 75/566,625
6
side-by-side comparison of the marks, a comparison which a
consumer may not be able to make, but rather, must be based
on the similarity of the general overall impressions
engendered by the marks. See Puma-Sportschuhfabriken
Rudolf Dassler KG v. Roller Derby Skate Corporation, 206
USPQ 255, 259 (TTAB 1980). Moreover, consumers normally
retain a general, rather than a specific, impression of
trademarks and the fallibility of purchaser memory must be
considered in our analysis. See Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd
unpub'd, Fed. Cir. June 5, 1992, and Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
In view of the presumptive similarity of the marks in
appearance and their identical sound and connotation, and
in view of the relatedness of the goods and services and
lack of restrictions as to channels of trade or classes of
consumers, we find there to exist a likelihood of confusion
or mistake by consumers.
Decision: The refusal of registration under Section
2(d) is affirmed.