Phoenix Intangibles Holding Co.

Trademark Trial and Appeal Board

Nov 12, 2004

No. 76470576 (T.T.A.B. Nov. 12, 2004)

Mailed: November 12, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Phoenix Intangibles Holding Company
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Serial No. 76470576
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David V. Radack of Eckert Seamans Cherin & Mellott, LLC, for
Phoenix Intangibles Holding Company.
Rebecca A. Smith, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
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Before Hanak, Quinn and Holtzman, Administrative Trademark Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Applicant, Phoenix Intangibles Holding Company, has filed an
application to register the mark BRILLIANCE for goods which were
ultimately amended to "dishwashing detergents."1
The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
1 Serial No. 76470576, filed November 27, 2002, asserting a bona fide
intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 76470576
2
the registered marks shown below, each owned by a different entity,
as to be likely to cause confusion.2
Registration No. 2550158:3
BRILLIANCEGUARD
Chemical products for use in the manufacture of detergents in
the consumer cleaning products industry; descaling detergent
concentrates; water softeners for commercial or industrial
use; protective preparations for the prevention of tarnishing
of glassware, porcelain and earthenware, crockery and other
kitchenware, all aforementioned goods with and without a
disinfectant component. In International Class 1
Bleaching preparations for laundry and dishwashing in solid,
fluid and gel form; laundry preparations for dry cleaners;
polishing preparations for kitchen and glassware; cleaning,
polishing, scouring and abrasive preparations; carpet cleaning
preparations; laundry and dishwashing detergents in solid,
fluid and gel form; soaps for household purposes; declacifying
[sic] and descaling preparations for household purposes;
fabric softeners, laundry additives, namely, stain removing
preparations; all aforementioned goods with and without a
disinfectant component. In International Class 3.
Registration No. 1765476:4
BRILLIANCE
Floor cleaning preparations. In International Class 3.
2 In her first Office action, the examining attorney had also cited a
prior pending application as a possible Section 2(d) reference. The
application subsequently issued into a registration, but because the
registration was thereafter voluntarily cancelled by the registrant, the
reference was withdrawn in the final action.
3 Issued on March 19, 2002 to Reckitt Benckiser N.V..
4 Issued on April 20, 1993 to Ecolab Inc.; renewed.
Ser Nos. 76470576
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When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention to
the factors most relevant to the case at hand, including the
similarities of the marks and the similarities of the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We turn first to consider the question of likelihood of
confusion with respect to Registration No. 2550158 for the mark
BRILLIANCEGUARD. The goods in the application and this
registration are, in part, legally identical, as applicant admits.
Brief, p. 3. The registration includes dishwashing detergents in
solid, fluid and gel form with and without a disinfectant component
which are fully encompassed by the broadly identified dishwashing
detergents in the subject application.
Because these goods are legally identical and there are no
restrictions as to their channels of trade or classes of
purchasers, they must be deemed to be sold in the same channels of
trade, and directed to the same purchasers. Interstate Brands
Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000).
Thus, we turn our attention to the marks, keeping in mind that
when marks would appear on identical goods, the degree of
Ser Nos. 76470576
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similarity between the marks necessary to support a finding of
likely confusion declines. Century 21 Real Estate v. Century Life,
970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant argues that confusion is not likely in view of the
differences in the marks and the "weakness and dilute nature" of
the term "BRILLIANCE." Applicant maintains that the dominant
portion of registrant's mark is the term "GUARD" and that consumers
will focus on that portion of the mark and give less weight to the
shared term "BRILLIANCE." Pointing to the two cited registrations
as well as the existence of a registration for LIQUID BRILLIANCE
for automotive polish, and a cancelled registration for the mark
BRYLLANT for dishwashing detergent, applicant contends that there
are "numerous" registrations containing the term "BRILLIANCE" for
cleaning supplies, and that the term "when applied to the broad
category of cleaning products, is dilute and extremely weak" and
entitled only to a narrow scope of protection.5 Brief, pp. 2-3.
5 Applicant also argues that its mark "is more closely related to the
canceled BRYLLANT mark than it is to the cited registration"; that "it
would be manifestly unfair to block registration of Applicant's mark based
on the cited registration when that cited registration was allowed over
the now-canceled BRYLLANT mark"; and that applicant "should not be singled
out and subjected to inconsistent treatment in this case." Brief, p. 4.
To begin with, we find nothing inconsistent between the prior co-existence
on the register of BRYLLANT and BRILLIANCEGUARD and the refusal of
registration herein. BRYLLANT is not the phonetic equivalent of
"brilliance" or even "brilliant" which in itself could explain why the
examining attorney in that case did not believe there would be likelihood
of confusion. In any event, the Board has often noted that each
application must be decided on its own merits. We are not privy to the
records of the third-party registration files and, moreover, the
determination of registrability of those particular marks by the examining
attorneys cannot control our decision in the case now before us. See In
Ser Nos. 76470576
5
Third-party registrations, although not evidence that the
marks shown therein are in use or that the public is aware of them
may be used to show that a particular mark or element of a mark has
a suggestive or commonly understood meaning in a particular field.6
Conde Nast Publications Inc. v. Miss Quality, Inc., 180 USPQ 149
(TTAB 1973), aff'd, 507 F.2d 1404, 184 USPQ 422 (CCPA 1975). See
also AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268 (CCPA 1973). In this regard, we acknowledge, with or
without the few third-party registrations relied on by applicant,
that the word "BRILLIANCE" has a suggestive meaning in relation to
registrant's goods. However, the mere presence of the same
suggestive, or even "weak" term in two marks does not automatically
mean that confusion is not likely. Even weak marks are entitled to
protection against the registration of a similar mark for identical
goods. See Plus Products v. Pharmavite Pharmaceutical Corporation,
221 USPQ 256 (TTAB 1984). See also King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between weak
marks as between strong marks).
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
("Even if some prior registrations had some characteristics similar to
[applicant’s application], the PTO’s allowance of such prior registrations
does not bind the Board or this court.")
6 On the other hand, a cancelled registration is of no persuasive value.
Ser Nos. 76470576
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In this case, when the marks are compared in their
entireties, we find that applicant's mark BRILLIANCE is similar in
sound, appearance and commercial impression to the cited mark
BRILLIANCEGUARD. The word BRILLIANCE is applicant's entire mark
and is visually and aurally a significant part of the registered
mark. We disagree that "GUARD" is the dominant part of
registrant's mark and that consumers will essentially disregard the
word BRILLIANCE. The word BRILLIANCE is only suggestive of
registrant's goods, not devoid of trademark significance.
Moreover, as the first word purchasers will see or hear when
encountering registrant's mark, it is likely to be remembered by
purchasers when they encounter applicant's mark BRILLIANCE, alone,
on the identical goods at a different time. See Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895 (TTAB 1988).
Further, both marks convey similar suggestive meanings and the
additional word GUARD in registrant's mark does not significantly
change the meaning or commercial impression created by BRILLIANCE
alone. The word BRILLIANCE suggests that applicant's dishwashing
detergent leaves dishes sparkling and the term BRILLIANCEGUARD
suggests that registrant's dishwashing detergent protects this
sparkling finish.
Because the two marks are visually and aurally similar and
convey similar meanings in relation to applicant's and registrant's
directly competitive products, and also keeping in mind that the
Ser Nos. 76470576
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comparison of the marks is not made on a side-by-side basis and
that recall of purchasers is often hazy and imperfect, the
differences in the two marks are not so significant that they are
likely to be remembered by purchasers when seeing these marks at
different times on identical goods. This is particularly true when
we consider that the purchasers of dishwashing detergents are
ordinary members of the general public who, especially considering
the inexpensive nature of these types of products, would not be
expected to exercise a high degree of care and thus would be more
prone to confusion.
Under the circumstances, we find that a likelihood of
confusion exists between BRILLIANCE and BRILLIANCEGUARD for
identical goods.
We turn then to consider the question of likelihood of
confusion with respect to the registered mark BRILLIANCE for floor
cleaning preparations. Here, applicant's mark is identical in all
respects to registrant's mark. When marks are identical it is only
necessary that there be a viable relationship between the goods in
order to support a holding of likelihood of confusion. See In re
Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983). With that in mind, we turn to a consideration of the goods.
Applicant's dishwashing detergent, on the one hand, and
registrant's floor cleaning preparations, on the other, are at
least viably related products. The examining attorney has made of
Ser Nos. 76470576
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record a number of third-party registrations which show, in each
instance, a mark which is registered by the same entity for both
products. These registrations, while not evidence of use of the
marks therein, tend to show that purchasers would expect the types
of products offered by applicant and registrant, if sold under
similar marks, to emanate from the same source. See, e.g., In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
While the specific uses of the products differ, as applicant
notes, they both nonetheless constitute basic household cleaning
preparations which would typically be sold to the same classes of
purchasers in the same types of stores.
Applicant acknowledges that the registration does not contain
any limitations in purchasers or trade channels. At the same time,
however, applicant argues, relying on information obtained from
registrant's website, that registrant appears to service the
professional janitorial market whereas applicant's goods "are
marketed exclusively to retail supermarket customers" and concludes
based thereon that it is unlikely that the respective products
would ever be sold in the same marketing channels. Applicant
further contends that even if the products are sold in the same
retail channels, such as a supermarket, they would be found in
different parts of the retail store.
Ser Nos. 76470576
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By its arguments that the goods are not in same channels of
trade, and are not directed to the same purchasers, applicant has
read impermissible limitations into the application and
registration. As our primary reviewing court has often stated, the
question of likelihood of confusion is determined on the basis of
the identification of goods set forth in the application and
registration, rather than on the basis of what evidence might show
the actual channels of trade or purchasers to be. See J & J Snack
Foods Corp. v. McDonalds' Corp., 932 F.2d 1460, 1464, 18 USPQ2d
1889, 1892 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990); and CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198 (Fed. Cir. 1983).
In the absence of any specific restrictions in the
registration as to the channels of trade or classes of purchasers,
it must be presumed that registrant's floor cleaning preparations
are sold in all the usual outlets for such goods, including
supermarkets, and that the goods are offered to all the usual
purchasers, including ordinary consumer purchasers.
We have no evidence that applicant’s and registrant’s products
typically would be displayed in different aisles or sections of a
Ser Nos. 76470576
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store nor do we find that to be an important consideration since
these products may not even be purchased at the same time.7
Furthermore, applicant's and registrant's cleaning products
are inexpensive items that are likely to be purchased on impulse.
Consumers who are familiar with the registrant's floor cleaning
preparations under the mark BRILLIANCE, notwithstanding its
suggestive meaning, upon later seeing applicant's dishwashing
detergents sold under the identical mark, are unlikely to give the
matter great thought, but will simply assume that the respective
products emanate from the same source.
In view of the foregoing, and because the identical marks
BRILLIANCE are used in connection with at least viably related
goods, we find that there is a likelihood of confusion.
To the extent that there is any doubt on the issue of
likelihood of confusion with respect to either one of the cited
registrations, it is settled that such doubt must be resolved in
favor of the prior registrants. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register as to each registration is
affirmed.

7 In any event, it is reasonable to assume that ordinary household
cleaning products such as dishwashing detergents and floor cleaning
preparations may indeed be sold in proximity to each other in a
supermarket.