Panline U.S.A., Inc.

Trademark Trial and Appeal Board

Nov 8, 2000

No. 75298924 (T.T.A.B. Nov. 8, 2000)

Paper No. 14
Bottorff
11/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Panline U.S.A., Inc.
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Serial No. 75/298,924
_______
Jonathan E. Grant of Grant Patent Services for Panline
U.S.A., Inc.
Craig D. Taylor, Managing Attorney, Law Office 111
_______
Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark FANTASTIC FRAMES for “hobby craft kits
comprising shimmer stones, beads, charms, puff stars, and
hearts to decorate picture frames.”1 Registration was
refused under Trademark Act Section 2(d), 15 U.S.C.

1 Serial No. 75/298,924, filed May 27, 1997. The application is
based on use in commerce under Trademark Act Section 1(a), and
applicant alleges March 1, 1994 as the date of first use of its
mark anywhere and the date of first use of the mark in commerce.
Applicant has disclaimed the exclusive right to use FRAMES apart
from the mark as shown.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/298,924
2
§1052(d), on the ground that applicant’s mark, as applied
to the identified goods, so resembles the mark FANTASTIC
FRAMES, registered for “picture frames, namely, display
devices for photographs and other items composed of glossy
coated cardboard imprinted with various thematic
characters,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. When the refusal was made final,
applicant filed this appeal.
Applicant and the Trademark Managing Attorney filed
main briefs on appeal. Applicant did not file a reply
brief, nor did applicant request an oral hearing. We
affirm the refusal to register.
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
considering the evidence of record on these factors, we
keep in mind that “[t]he fundamental inquiry mandated by
§2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in

2 Registration No. 2,191,362, issued September 22, 1998.
Ser. No. 75/298,924
3
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We find that applicant’s mark is identical to the
cited registered mark in terms of appearance, sound and
connotation, and that applicant’s mark and the cited
registered mark present identical overall commercial
impressions. Contrary to applicant’s arguments,
applicant’s trade dress, the lettering style in which
applicant’s mark appears on the goods, and applicant’s
asserted use of its house mark ALEX in close proximity to
the mark sought to be registered are all immaterial to our
determination. Applicant seeks to register the mark
FANTASTIC FRAMES, in typed form, and that is the mark which
must be compared to the cited registered mark for purposes
of our likelihood of confusion analysis. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 842
(Fed. Cir. 2000); In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, n.4 (Fed. Cir. 1993); Vornado, Inc. v. Breuer
Electric Mfg. Co., 156 USPQ 340 (CCPA 1968); Interstate
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000); National Football League v. Jasper Alliance Corp.,
16 USPQ2d 1212 (TTAB 1990).
We turn next to the issue of the similarity between
applicant’s goods and the goods identified in the cited
Ser. No. 75/298,924
4
registration. It is not necessary that these respective
goods be identical or even competitive in order to support
a finding of likelihood of confusion. Rather, it is
sufficient that the goods are related in some manner or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
producer or that there is an association or connection
between the producers of the respective goods. See In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Essentially, applicant’s goods and registrant’s goods
are both novelty-type picture frame products. This basic
underlying similarity between the products outweighs their
superficial differences, e.g., the fact that applicant’s
picture frames are part of a kit which allows them to be
decorated by the purchaser while registrant’s picture
frames are pre-decorated with “various thematic
characters.” We find that applicant’s goods and
registrant’s goods are sufficiently closely related that
Ser. No. 75/298,924
5
source confusion is likely to result if both products are
sold under the identical mark FANTASTIC FRAMES.
Moreover, in view of the close commercial relationship
between applicant’s and registrant’s goods, and in the
absence of any restrictions or limitations in either
applicant’s or registrant’s identification of goods, we
presume that applicant’s goods and registrant’s goods move
in the same trade channels and are marketed to the same
classes of customers. See In re Elbaum, 211 USPQ 639 (TTAB
1981). In particular, we find that applicant’s goods and
registrant’s goods are likely to be sold in the same types
of retail outlets, i.e., toy stores, as applicant itself
has acknowledged. We also find that the purchasers of the
respective goods are likely to have varying levels of
sophistication, and that because the goods are relatively
inexpensive items likely to be purchased on impulse,
purchasers will not necessarily exercise a great degree of
care in making their purchasing decisions.
Based on these findings with respect to the relevant
du Pont evidentiary factors, especially as to the identical
marks and the highly similar and otherwise closely related
goods, we conclude that a likelihood of confusion exists,
and that registration of applicant’s mark is barred under
Trademark Act Section 2(d).
Ser. No. 75/298,924
6
Decision: The refusal to register is affirmed.3
E. J. Seeherman
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board

3 Applicant’s assertions that it is the prior user of the mark
and that “there are serious questions as to the declaration”
signed by the registrant constitute impermissible collateral
attacks on the validity of the registration which are immaterial
to and unavailing in this ex parte appeal, and we have given them
no consideration. See, e.g., In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997); TMEP section
1207.01(c)(v).