Porcelain Metals Corp.

Trademark Trial and Appeal Board

Sep 10, 1999

No. 75091534 (T.T.A.B. Sep. 10, 1999)

Oral Hearing: Paper No. 14
January 28, 1999 GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Porcelain Metals Corporation
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Serial No. 75/091,534
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Amy B. Berge and Laura D. Robertson of Middleton & Reutlinger for
Porcelain Metals Corporation.
Richard G. Cole, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
An application has been filed by Porcelain Metals
Corporation to register the configuration shown below
Ser. No. 75/091,534
2
as a trademark for "barbecue grills".1 Such mark, which is
sought to be registered on the basis of a claim of acquired
distinctiveness pursuant to the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f), is described in the
application as follows:
The mark consists of the three
dimensional configuration of a portion of
Applicant's barbecue grills consisting of an
oval, egg-shaped kettle and an attached ash
catcher.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark so resembles both of the marks, reproduced side
by side below,
which are registered, by the same registrant, for "barbeque

1 Ser. No. 75/091,534, filed on April 19, 1996, which alleges dates of
first use of March 31, 1989 and states that "[t]he broken lines ...
indicate the location of the mark in relation to the remaining portion
of one model of Applicant’s goods."
Ser. No. 75/091,534
3
grills,"2 as to be likely to cause confusion, mistake or
deception. The marks, which in each instance were registered
pursuant to a claim of acquired distinctiveness under Section
2(f) of the statute, are respectively described in the cited
registrations as follows:3
The trademark consists of a three-
dimensional pictorial representation of the
distinctive configuration of the kettle
portion of applicant’s barbecue grills. The
kettle portion includes a bottom of generally
semi-spherical shape having a top of
generally semi-ellipsoid shape.
The trademark consists of a three-
dimensional pictorial representation of the
distinctive configuration of the kettle and
leg portions of applicant’s barbecue grills.
The kettle portion includes a bottom of
generally semi-spherical shape having a top
of generally semi-ellipsoid shape and
supported by three downwardly and outwardly
extending legs projecting from the bottom of
the bottom portion.
Applicant has appealed. Briefs have been filed4 and an
oral hearing was held. We affirm the refusal to register.

2 Reg. Nos. 1,478,530 and 1,481,521, issued respectively on March 1,
1988 and March 22, 1988, and which set forth dates of first use of
April 1955; combined affidavit §§8 and 15 accepted as to each
registration.
3 In view of the different spellings set forth in the registrations,
and inasmuch as applicant's application uses the more commonly
accepted spelling of "barbecue" rather than "barbeque," registrant's
and applicant's goods will subsequently be referred to in this opinion
as either "barbecue grills" or "charcoal grills".
4 The Examining Attorney, citing Trademark Rule 2.142(d), has objected
in his brief to consideration of the nine exhibits attached to
applicant's initial brief, arguing, among other things, that "the
insertion into the record of (partial) copies of design patents," as
well as various "photographs and exhibits attached thereto," "should
not be considered a part of the record since they were not placed
therein until after the Appeal was filed". Although the first of such
exhibits is simply a color copy of the brochure applicant originally
submitted with its response to the initial Office action, and thus
clearly is of record, the Examining Attorney plainly is correct that
Ser. No. 75/091,534
4
Preliminarily, and since applicant’s and registrant’s
goods are identical in legal contemplation, we concur with the
view of both applicant and the Examining Attorney that, inasmuch
as the respective marks are product configurations and hence,
like pure design marks, cannot be pronounced, the issue of
likelihood of confusion must be decided primarily on the basis of
the overall visual similarity of the marks. Cf. In re ATV
Network Ltd., 522 F.2d 925, 193 USPQ 331, 332 (CCPA 1977); In re
Burndy Corp., 300 F.2d 938, 133 USPQ 196, 197 (CCPA 1962); and
Daimler-Benz AG v. Chrysler Corp., 169 USPQ 686, 688 (TTAB 1971).
Such an "eyeball analysis," as applicant terms it in its initial
brief, is of course an inherently subjective test, see, e.g.,
Daimler-Benz AG v. Ford Motor Co., 143 USPQ 453, 456 (TTAB 1964),
but it is still subject to the familiar rule that a side-by-side
comparison of the marks is improper. See, e.g., Diamond Alkali

the remaining eight exhibits are untimely under Trademark Rule
2.142(d), which provides that evidence submitted after an appeal has
been filed will ordinarily not be considered by the Board. Applicant,
in its reply brief, has offered no reason why it failed to furnish
such exhibits prior to its filing of the appeal. Accordingly, while
all but the first of the exhibits will not be considered further, we
note in any event that even if such evidence had been timely
submitted, it would make no difference in the outcome of this appeal
inasmuch as resolution of the issue of likelihood of confusion must be
based upon the marks and any descriptions thereof as set forth in the
application and cited registrations. See, e.g., Cities Service Co. v.
WMF of America, Inc., 199 USPQ 493, 494 (TTAB 1978) at n. 3 ["question
of likelihood of confusion must be determined on the basis of
applicant’s mark sought to be registered rather than on the basis of
the manner in which the mark is actually used"]; In re U.S. Plywood-
Champion Papers Inc., 171 USPQ 762, 763 (TTAB 1971) ["Board’s
determination of the question of likelihood of confusion must be based
on a consideration of the mark sought to be registered rather than on
the basis of the manner in which the mark is used"; likewise, "the
presumptions afforded a registration ... manifestly can extend only to
the registered mark"]; and Martha White, Inc. v. American Bakeries
Co., 157 USPQ 215, 217 (TTAB 1968) at n. 6 ["question of likelihood of
confusion must be predicated on the basis of the mark applied for and
not the mark as actually used"].
Ser. No. 75/091,534
5
Co. v. Dundee Cement Co., 343 F.2d 781, 145 USPQ 211, 213 (CCPA
1965). Instead, because consumers ordinarily will not be exposed
to the respective marks in such a manner, it is the similarity of
the general overall commercial impression engendered by the
appearance of each of the marks which must determine, due to the
fallibility of memory and the consequent lack of perfect recall,
whether confusion as to source or sponsorship is likely. The
proper emphasis is thus on the recollection of the average
purchaser, who normally retains a general, rather than a
specific, impression of trademarks or service marks. See, e.g.,
In re United Service Distributors, Inc., 229 USPQ 237, 239 (TTAB
1986); and In re Solar Energy Corp., 217 USPQ 743, 745 (TTAB
1983). Moreover, while product configuration marks, unlike most
other design marks, are three dimensional rather than two
dimensional, it is still the case that, for purposes of
determining whether there is a likelihood of confusion, it is the
perspective views shown by the reproductions of the marks in the
application and cited registration(s) which must be considered.
See, e.g., Daimler-Benz AG v. Ford Motor Co., supra at 455 [marks
used as three-dimensional hood ornaments and/or insignias on
automobiles].
Applicant argues that, in terms of appearance, its
"mark has a shape unlike any other charcoal grill" in that "it
consists of a football shaped kettle with a mug shaped ash
catcher attached to its underside." Registrant’s marks, by
contrast, "resemble an acorn," according to applicant. Thus,
when encountered in the marketplace, applicant maintains that
Ser. No. 75/091,534
6
because "these different shapes give consumers different overall
visual impressions," there is no likelihood of confusion. In
this regard, applicant additionally contends that the
descriptions of the marks highlight the differences in the
respective product configurations, noting that:
Applicant has described its mark as an
"oval, egg-shaped kettle and an attached ash
catcher" while [registrant] Weber has
described its grill as a kettle including "a
bottom of generally semi-ellipsoid shape."
When these descriptions are analyzed in
connection with the grills themselves, it is
obvious that the two marks create distinctly
different commercial impressions. For
example, Applicant’s grill kettle has
symmetrical halves. The top is as deep as
the bottom, and each is a mirror image of the
other. The Weber grill, on the other hand,
has asymmetrical portions. The bottom of the
Weber grill is much deeper than its top and
its top looks like the capped top of an acorn
sitting on its conical shaped bottom.
Although the Examiner tried to justify
his conclusion of visual similarity by
drawing attention to the semantical
similarity of each mark’s description, he
failed to evaluate the overall appearance of
the grills themselves. These marks are three
dimensional products, and in the three
dimensional world, these marks are different.
Applicant also insists that the Examining Attorney
failed to give consideration to the fact that, as set forth in
the declaration of its vice president of sales and marketing,
John Waugh, the respective products have co-existed in the
marketplace for nearly ten years without any reported incidents
of actual confusion. Specifically, in addition to noting that
applicant has continuously used "the applied-for design mark
since 1989, Mr. Waugh declares, among other things, that since
such time, applicant has spent "well over $100,000" in
Ser. No. 75/091,534
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advertising and promotion of the products bearing the mark; that
"[h]undreds of thousands of Applicant’s goods bearing the mark
have been sold" "through a wide variety of stores, including
discount department stores, specialty hardware stores and home
improvement stores"; that such stores "enjoy high consumer
traffic"; that, in consequence thereof, "literally millions of
customers and potential customers have had the opportunity to see
Applicant’s mark on the goods and associate it as an indication
of origin"; that sales growth has been "continuous and steady,"
with the product line having been expanded from one to four
models; that applicant "is the only source in the industry for a
charcoal grill with an oval kettle"; that applicant’s competitors
"use rectangular or circular shapes for grills"; and that "[f]rom
discussions with dealers and retailers, Declarant is informed and
believes that ... customers rely on the mark in selecting the
goods of Applicant from among goods of Applicant’s competitors."
Thus, according to applicant, "t]here is no evidence that
consumers faced with the competing products of Applicant and
Weber have experienced any confusion."
Finally, applicant urges that because barbecue or
charcoal grills are "large and relatively expensive" items,
consumers will exercise discriminating care in their purchasing
decisions. In particular, applicant contends that:
Consumers of Applicant’s and Weber’s grills
will inspect these items more closely than
they would if they were smaller and less
costly, and they will take note of
differences between the two. In short,
purchases of the grills in question here will
be studied purchases. A finding of
Ser. No. 75/091,534
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likelihood of confusion is simply not
possible.
The Examining Attorney, while conceding at the oral
hearing that he has no proof of the asserted fame of registrant’s
charcoal grills, argues in his brief that "[a] subjective, visual
observation of the respective configurations clearly indicates to
the average consumer that the goods would have a common source,
especially when considering only those aspects which are claimed
as ... feature[s] of each design, and which are shown in the
drawings [of the marks] by solid lining only." Specifically, and
citing a definition which he made of record from The Random House
College Dictionary (rev. ed.), which defines the term "oval" as
an adjective meaning "1. having the general form, shape, or
outline of an egg; egg-shaped. 2. ellipsoidal or elliptical,"
the Examining Attorney asserts that, as set forth in the final
refusal (emphasis in original):
While it is well-settled ... that the
proper test of confusing similarity is never
a "side-by-side" comparison, in this
particular instance, even under those
circumstances it is conceivable that
confusion would result. When the ...
drawings of the respective grill
configurations are compared juxtaposed, the
overall similarities between the kettle
portions are strikingly similar. In this
respect, applicant has emphasized that it’s
[sic] grill configuration is "oval" shaped,
while the registrant’s grill ..., as can be
seen in the description of registrant’s mark,
... refers to a "semi-spherical" bottom half
shape and a "semi-ellipsoid top half shape.
It is very interesting to note in this
respect that the definition of "oval" refers
to "ellipsoidal" as an equivalent term. ....
In other words, it is apparent that the
slight differences in the overall shape of
the respective kettles is simply too subtle
Ser. No. 75/091,534
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for the average prospective purchaser to
remember in any given store setting (unless
the parties[’] goods are displayed therein in
a side-by-side setting. However, it is ...
not unreasonable to assume that in such a
setting[,] while the grills would appear to
have some differences, it would be quite
likely that said prospective purchasers would
STILL assume that they emanate from the same
source, and are merely a variation of the
[registrant] manufacturer’s line of grills).
Although applicant, in its reply brief, asserts that
"the consumer recognition afforded the Weber grill weighs heavily
against a finding of confusing similarity" between registrant’s
"acorn-shaped grill" and applicant’s "football-shaped grill," we
are constrained to agree with the Examining Attorney that, when
viewed in the perspectives presented by the application and the
cited registrations, applicant’s barbecue grill configuration and
registrant’s charcoal grill configurations are so substantially
similar in their overall visual appearance that confusion is
likely as to source or sponsorship. Moreover, while we concur
with applicant that the semantic similarities in the descriptions
of the prominent kettle portions of the respective designs are
not dispositive, it nevertheless appears to us that the "oval,
egg-shaped kettle" and mirror-image top of applicant’s barbecue
grill configuration, when seen as a unit, look very much like
registrant’s charcoal grill configurations when the "generally
semi-spherical shape" of the bottom portion of the kettle and the
"generally semi-ellipsoid shape" of the top portion thereof are
likewise view together as a single unit. Taking into proper
account the fallibility of the average consumer’s memory, and the
fact that a side-by-side comparison of the respective designs may
Ser. No. 75/091,534
10
not necessarily occur, we find that the overall commercial
impression engendered by the barbecue grill designs at issue is
substantially the same, especially when seen from the angles or
viewpoints depicted in the application and cited registrations.
We emphasize that this is the same perspective that prospective
purchasers or users would view such products when standing in
front of them.
As to applicant’s contentions that there have been no
incidents of actual confusion during a period of nearly ten years
of contemporaneous use of the respective designs, suffice it to
say that the Waugh declaration does not provide evidence that
consumers faced with the competing products are able to readily
distinguish between applicant’s and registrant’s charcoal grill
configurations, or even that registrant’s goods have in fact
shared the same retail outlets over such time period. Moreover,
while the purchase of a barbecue or charcoal grill of the kinds
offered by applicant and registrant would not be the type of
impulsive decision associated with relatively low cost,
frequently replaced items, we disagree with applicant’s assertion
that the purchase of a grill for outdoor barbecuing or other
cooking is such a painstaking and deliberate process that a great
deal of care and discrimination would usually exercised by
purchasers in making the decision to buy. The primary purchasers
of applicant’s and registrant’s grills are members of the general
public, who are simply looking for barbecue grills that they find
pleasing and easy to use, and the features of such grills appear
to be fairly standard and comparable. Thus, any discrimination
Ser. No. 75/091,534
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would relate principally to the price or cost of the goods rather
than to their specific configuration.
Finally, we observe that even if consumers were to note
the relatively inconsequential differences between the overall
design of applicant’s barbecue grills and the design of those
offered by registrant, it would still be the case that, due to
the substantial visual similarity between the configurations as
they appear in the application and in the cited registrations,
consumers familiar with registrant’s goods would be likely, upon
encountering applicant’s goods, to regard applicant’s goods as a
new product or model line which emanates from or is sponsored by
registrant.
Decision: The refusal under Section 2(d) is affirmed.
R. F. Cissel
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board