Plunk Desk LLC

Trademark Trial and Appeal Board

Nov 4, 2016

No. 86642479 (T.T.A.B. Nov. 4, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 4, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Plunk Desk LLC

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Serial No. 86642479

James R. Gourley of Carstens & Cahoon, LLP
for Plunk Desk LLC.
Elissa Garber Kon, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
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Before Taylor, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Plunk Desk LLC (“Applicant”) seek registration on the Principal Register of the mark
for “portable desks,” in International Class 16.1

1 Application Serial No. 86642479 was filed on May 27, 2015, based upon Applicant’s
allegations of first use of the mark on May 20, 2013 and first use of the mark in commerce on
October 15, 2013, under Section 1(a) of the Trademark Act.
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The application includes the following description: “The mark consists of the stylized
word ‘PLUNKDESK’ written vertically up the left side of an upper case ‘D’ with an
upper case ‘P’ nestled inside of it.”
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the mark PLUNK COLLECTION (in standard
characters) for “furniture; furniture for house, office and garden; wall fixtures,
namely, plastic or wood or plaster two or three dimensional designs to be attached to
household walls”2 as to be likely to cause confusion, mistake or deception.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed and filed a request for reconsideration. When the request for
reconsideration was denied, the appeal resumed. We affirm the refusal to register.
I. Discussion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA

2 Registration No. 4669668 issued January 13, 2015. The registration also includes Class 42
services. However, because the Examining Attorney did not base her refusal on these
services, they will not be further discussed.
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1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
A. Similarity or dissimilarity of the goods, the channels of trade and the
class of customers.
We start our analysis with the second and third du Pont factors, the similarity of
the goods, the channels of trade and the class of customers. When determining the
relationship between the goods,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014).
Applicant’s goods are identified as “portable desks,” and the goods in the cited
registration are “furniture; furniture for house, office and garden; wall fixtures,
namely, plastic or wood or plaster two or three dimensional designs to be attached to
household walls.” A “desk is “a piece of furniture with a flat or sloped surface and
typically with drawers, at which one can read, write, or do other work.3 Thus,
Applicant’s portable desks are a type of furniture, and encompassed by and legally
identical to Registrant’s identified goods. Moreover, if we find there is a likelihood of

3 Oxford Dictionaries, www.oxforddictionarys.com/us/definition/American English/desk,
Exhibit to Denial of Request for Reconsideration dated May 2, 2016, TSDR p. 8.
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confusion as to these goods, it is not necessary to consider likelihood of confusion with
respect to the rest of the goods in the application. See, e.g., Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (If there
is a likelihood of confusion involving any of the goods set forth in the application and
cited registration, the refusal applies to all of the goods in the same class).
Applicant argues that “the Patent and Trademark Office has allowed registration
of identical trademarks to be used and associated with a variety of different products
or services moving in different channels of trade.” Appeal Brief 8 TTABVUE 14. We
agree. However, this is irrelevant here because the goods are legally identical. “[I]t is
well established that, absent restrictions in the application and registration,
[identical] goods and services are presumed to travel in the same channels of trade to
the same class of purchasers.” In re Viterra 101 USPQ2d at 1908 quoting Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002).
Accordingly, the second and third du Pont factors strongly favor a finding of
likelihood of confusion.
B. Sophisticated customers.
Applicant contends that “purchasers of PLUNK COLLECTION goods and services
would be highly discriminating purchasers who would not be confused regarding the
origin of those goods and services”4 and that “consumers of the PD PLUNKDESK

4 Appeal Brief, 8 TTABVUE 14.
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products would also be discriminating purchasers.”5 While some purchasers of
furniture, including portable desks, may be discriminating, there is no evidence that
all such consumers are discriminating. In the absence of limitations regarding classes
of consumers in the identifications of goods, we must consider all potential purchasers
including ordinary consumers. See Stone Lion Capital, 110 USPQ2d at 1162-63
(“Stone Lion effectively asks this court to disregard the broad scope of services recited
in its application, and to instead rely on the parties’ current investment practices …
the Board properly considered all potential investors for the recited services,
including ordinary consumers seeking to invest in services with no minimum
investment requirement.”) (emphasis in original).
Moreover, the fact that “the relevant class of purchasers may exercise care does
not necessarily impose on that class the responsibility of distinguishing between
similar marks for similar [goods and] services. Human memories even of
discriminating purchasers are not infallible.” Id., quoting In re Research and Trading
Corp., 793 F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
C. Similarity or dissimilarity of the marks.
We next determine the similarity or dissimilarity of the marks in their entireties,
keeping in mind that “[w]hen marks appear on virtually identical goods or services,
the degree of similarity necessary to support a conclusion of likelihood of confusion

5 Id., at 15.
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declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992).
The marks at issue are: and PLUNK COLLECTION. In comparing
the marks we must consider their appearance, sound, connotation and commercial
impression. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1691, quoting du Pont, 177 USPQ at 567. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). “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) (citation omitted).
Moreover, the emphasis must be on the recollection of the average purchaser who
normally retains a general, rather than specific, impression of trademarks. In re
Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
While “the similarity or dissimilarity of the marks is determined based on the
marks in their entireties … 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
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the ultimate conclusion rests on a consideration of the marks in their entireties.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
In this case, Applicant’s mark is a composite of a verbal or literal portion and a
design, which consists of an abstract rendering of “an upper case ‘D’ with an upper
case ‘P’ nestled inside of it”; the design being so fanciful that consumers may not
perceive the particular letters. When evaluating a composite mark containing both
words and designs, the verbal portion of the mark is typically the one most likely to
indicate the origin of the goods to which it is affixed because it is the portion of the
mark that consumers would use to refer to or request the goods. In re Viterra Inc.,
671 F.3 1358, 101 USPQ2d 1905, 1908 and 1911 (Fed. Cir. 2012)6 See also, In re
Dakin's Miniatures Inc., 59 USPQ2d 1593, 1593-95 (TTAB 1999).7

6 XCEED for plant seeds likely to cause confusion with .
7 for young and teen-age figurine collectibles, namely, wooden miniature
horse stalls, barns and farm-yard related accessories and supplies likely to cause
confusion with DAKIN for a line of toys, for plush stuffed toys, and
for infant toys, namely stuffed toy animals, balls, stars, rings and squares. Same holding in
application for the mark for the same goods.

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Here too the source-indicating portion of Applicant’s mark is PLUNK DESK. This
finding is confirmed by Applicant’s use of PLUNK DESK on its website:
What is Plunk Desk?

Denial of Request for Reconsideration dated May 2, 2016, TSDR p. 5.
Further, PLUNK is the dominant term in the literal portion of Applicant’s mark.
since “DESK” is generic for Applicant’s goods. Similarly, PLUNK is the dominant
portion of the cited mark, PLUNK COLLECTION, since “COLLECTION” has been
disclaimed as descriptive. It is well-settled that disclaimed matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National
Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that
the descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion”); In re Dixie Rests. Inc., 41 USPQ2d at 1533-
34; In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed

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matter is often “less significant in creating the mark’s commercial impression”).
Moreover, when analyzing literal marks, “[i]t is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser and remembered.” Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(Likelihood of confusion found between KIDWIPES and KID STUFF for pre-
moistened disposable towelettes). Thus, the word PLUNK is the dominant word in
both marks.
When we compare the literal portions of the marks PD PLUNKDESK and
PLUNK COLLECTION in their entireties, and give greater weight to the dominant
elements, we conclude that the marks are similar in appearance, sound, meaning and
overall commercial impression. See Palm Bay Imports, 73 USPQ2d at 1692 (affirming
the Board’s holding that contemporaneous use of appellant’s mark, VEUVE
ROYALE, for sparkling wine, and appellee’s marks, VEUVE CLICQUOT and
VEUVE CLICQUOT PONSARDIN, for champagne, is likely to cause confusion,
noting that the presence of the “strong distinctive term [VEUVE] as the first word in
both parties’ marks renders the marks similar, especially in light of the largely
laudatory (and hence non-source identifying) significance of the word ROYALE”); In
re Chatam Int’l Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)
(“Viewed in their entireties with non-dominant features appropriately discounted,
the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila]
become nearly identical.”); and Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 1266, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (finding that even though
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applicant’s mark PACKARD TECHNOLOGIES (with TECHNOLOGIES disclaimed)
does not incorporate every feature of [O]pposer’s HEWLETT PACKARD marks, a
similar overall commercial impression is created).
Accordingly, we find that the first du Pont factor strongly favors a finding of
likelihood of confusion.
D. Conclusion.
Having considered all the evidence and arguments on the relevant du Pont
factors, we find that Applicant’s mark for portable desks is likely
to cause confusion with the cited mark PLUNK COLLECTION, in standard
characters, for “furniture; furniture for house, office and garden; wall fixtures,
namely, plastic or wood or plaster two or three dimensional designs to be attached to
household walls.”
Decision: The refusal to register Applicant’s mark is affirmed.