Premdor, Inc.v.Safe & Sound, The Child Safety Specialists, Inc.

Trademark Trial and Appeal Board

Mar 28, 2001

No. 91111846 (T.T.A.B. Mar. 28, 2001)

03/28/01 Paper No. 20
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Premdor, Inc.
v.
Safe & Sound, The Child Safety Specialists, Inc.
_____
Opposition No. 111,846 to application Serial No. 75/264,029
filed on March 26, 1997
_____
William O. Ferron, Jr. and David H. Deits of SEED INTELLECTUAL
PROPERTY GROUP PLLC for Premdor, Inc.
Timothy F. Demers of Stevens & Lee for Safe & Sound, The Child
Safety Specialists, Inc.
______
Before Hohein, Holtzman and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Safe & Sound, The Child Safety Specialists, Inc., has
filed an application to register the mark "SAFE & SOUND" for
"anti-scald devices for showers" in International Class 11 and
"non-metallic devices and apparatus designed to prevent injury to
children and mentally or physically impaired persons, namely,
cabinet and drawer restraints, interior gates and indoor door
restraints" in International Class 20.1
1 Ser. No. 75/264,029, filed on March 26, 1997, which alleges dates of
first use of March 20, 1994 for the goods in both classes.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,846
2
Premdor, Inc. has opposed registration on the ground
that applicant's mark, when used in connection with applicant's
goods, so resembles the mark "SAFE'N SOUND," which opposer has
previously used and registered for "non-metal solid doors,"2 as
to be likely to cause confusion, mistake or deception.
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
The record includes the pleadings; the file of the
opposed application; and, as part of opposer's case-in-chief, the
declaration, with exhibits, of its director of marketing, David
Murray, which was submitted pursuant to a stipulation by the
parties. Opposer, as the rest of its case-in-chief, has
submitted a notice of reliance upon (i) a certified copy of its
pleaded registration showing that the registration is subsisting
and owned by opposer; (ii) excerpts from its deposition of
applicant's president, Richard Shandelman;3 (iii) applicant's
answer to opposer's Interrogatory No. 1; and (iv) certain
2 Reg. No. 1,879,770, issued on February 21, 1995, which sets forth
dates of first use of November 1992; combined affidavit §§8 and 15.
3 Although such excerpts fail to set forth clearly by whom the witness
is employed and what his occupation is, it appears from other evidence
in the record that the deponent is applicant's president. Moreover,
while the deposition, which was conducted on October 6, 1999, was
plainly taken outside of the discovery period, which by stipulation
closed on July 25, 1999, opposer has treated the deposition as if it
were a discovery deposition and no objection thereto has been raised
by applicant. Applicant's brief, in fact, confirms that it regards
only the excerpts therefrom as forming part of the record. The
excerpts, therefore, have been considered as part of the record.
Opposition No. 111,846
3
documents produced by applicant in response to opposer's first
set of requests for production of documents.4
Applicant, as its case-in-chief, has filed the
declaration, with an exhibit, of its president, Richard
Shandelman, which was submitted pursuant to a stipulation by the
parties. In rebuttal, opposer has submitted, in accordance with
a stipulation by the parties, the declaration, with exhibits, of
a litigation assistant/paralegal with its counsel's law firm,
Ross Merritt, and the declaration, with exhibits, of a junior law
clerk at a Canadian firm, Jennifer Nahorniak. Briefs have been
filed,5 but an oral hearing was not requested.
Opposer's priority of its "SAFE'N SOUND" mark is not in
issue inasmuch as the certified copy of its registration therefor
4 As a general proposition, documents produced in response to a request
for production thereof are not proper subject matter for a notice of
reliance unless they otherwise meet the requirements of Trademark Rule
2.122(e). See Trademark Rule 2.120(j)(3)(ii) and TBMP §711. However,
since applicant in its brief has treated such evidence as forming part
of the record, it has been so considered.
5 Opposer, with its main brief, has objected to the statements in ¶17
of Mr. Shandelman's declaration which discuss the parties' settlement
negotiations in this matter. Specifically, opposer maintains that
"information concerning settlement negotiations is not admissible as
evidence under ... Fed. Evid. R. 408" and that, "[a]ccordingly, the
statements made ... concerning settlement should not be considered by
the Board in determining the merits of any claim in this proceeding."
While applicant, in its brief, correctly notes that, under Fed. R.
Evid. 408, "such evidence is inadmissible when offered 'to prove
liability for or invalidity of the claim,'" applicant asserts that the
statements concerning the parties' settlement negotiations were
instead "offered in response to the testimony ... (Murray Decl. at ¶9)
... which discussed prior opposition proceedings brought by Opposer
against others." We agree with opposer, however, that as set forth in
its reply brief, "[t]he evidence [of settlement discussions] does not
fit within the exceptions to Rule 408, which involve evidence directed
to bias, prejudice, undue delay, and the like," and that such evidence
is "inadmissible, as it is being offered as evidence that Opposer's
mark is not a strong one, one of the factors considered in
establishing the validity of Opposer's claim" of likelihood of
Opposition No. 111,846
4
shows, as noted previously, that the registration is subsisting
and owned by opposer. See King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974).
Moreover, in both the testimony of its president and in its
brief, applicant admits, as is readily apparent in any event,
that the marks "SAFE'N SOUND" and "SAFE & SOUND" are similar in
sound and appearance. The only real issue to be determined,
therefore, is whether applicant's "SAFE & SOUND" mark, when used
in connection with the goods set forth in its application,
including in particular "anti-scald devices for showers" and
"indoor door restraints," so resembles opposer's "SAFE'N SOUND"
mark for "non-metal solid doors" that confusion is likely as to
the source or sponsorship of the parties' goods.
According to the record, opposer "is a Canadian
corporation engaged in the design, manufacture, marketing and
sale of interior and exterior doors, door frames, and door
components, including its line of interior doors sold under the
mark SAFE'N SOUND." (Murray dec. at ¶3.) Opposer "has been
selling door-related products for more than forty years and is
one of the largest door manufacturers in the world." (Id.) In
particular, since November 1992, it "has continuously used its
SAFE'N SOUND mark in connection with the marketing and sale of
non-metal solid doors," although when such mark was first used in
commerce with the United States has not been clearly indicated.
(Id. at ¶4.) While, since 1994, opposer "has distributed and
confusion. Accordingly, opposer's objection is sustained and the
statements regarding settlement discussions have not been considered.
Opposition No. 111,846
5
sold over $60 million dollars' worth of SAFE'N SOUND products
under the SAFE'N SOUND mark, with annual sales as follows," the
percentage thereof attributable to sales in the United States of
its non-metal solid doors has not been provided:
Year Amount
1994 $5,000,000
1995 $7,500,000
1996 $8,750,000
1997 $12,700,000
1998 $15,150,000
1999 (January to June) $10,400,000
(Id.)
Opposer "has extensively advertised its SAFE'N SOUND
line of doors nationwide in a variety of media, including
television and printed advertisements, product literature and
other promotional material, some of which is made available over
the Internet." (Id. at ¶5.) In this regard, opposer "has
expended substantial amounts of money, time, and effort in
advertising, promoting and popularizing the SAFE'N SOUND mark
throughout the United States." (Id.) Specifically, since 1993,
opposer "has spent over $2.8 million promoting its safety door
products under the SAFE'N SOUND mark, averaging over $400,000 a
year on advertising, as follows:"
Year Amount
1994 $250,000
1995 $750,000
1996 $750,000
1997 $150,000
1998 $250,000
1999 (January to June) $500,000
(Id.) Representative samples of ads and promotional materials
used by opposer during the above years include various product
Opposition No. 111,846
6
brochures and advertisements in such publications as Southern
Living, Home Builder, Home and Builder.
Opposer "sells its SAFE'N SOUND doors to residential
homebuilders, residential home improvement contractors, and
homeowners." (Id. at ¶7.) As to the channels of trade for its
products, Mr. Murray indicates that:
The SAFE'N SOUND doors are distributed
through "one-step" and "two-step" wholesale
millwork distributors and warehouse home
improvement or box store retailers. "One-
step millwork distributors sell directly to
homebuilders and residential home improvement
contractors. "Two-step" wholesale millwork
distributors sell to dealers such as
lumberyards, home center retailers,
superstores, and building supply dealers,
which in turn sell to homebuilders,
residential home improvement contractors, and
homeowners. Box store retailers sell
primarily to homeowners and residential home
improvement contractors.
(Id.)
Opposer's "SAFE'N SOUND" doors are designed for noise
reduction and increased fire resistance." (Id. at ¶8.) In
particular, as to the latter, independent laboratory testing has
verified that opposer's "SAFE'N SOUND doors are more fire-
resistant, and therefore safer, than the standard interior doors
found in the home." (Id.) In its advertising materials, "the
increased fire resistance of the "SAFE'N SOUND doors is
specifically promoted as a feature of the product." (Id.)
Opposer "has been active in policing its SAFE'N SOUND
mark to ensure that there is no customer confusion or dilution
and, where necessary, has opposed the registration of [several]
Opposition No. 111,846
7
marks [considered to be] confusingly similar" to its mark.6 (Id.
at ¶9.) Opposer insists that, as a result of its policing,
together with "its extensive sales, advertising and promotion of
products under the SAFE'N SOUND" mark, such mark "has become
famous in the industry and is widely associated with" opposer and
its "SAFE'N SOUND brand interior doors." (Id. at ¶10.)
Applicant, the record shows, "sells and installs child
safety products, as would be typically used by parents with
infant and toddler aged children to 'childproof' their homes" and
which "could also be used by persons other than parents, such as
nursery schools and day care centers, and any other place where
small children are likely to be present for an extended period."
(Shandelman dec. at ¶1.) According to applicant's president,
"[t]he main purposes of all of Applicant's products is to make
common household items safe for small children, or to prevent
unauthorized use or access of certain objects by small children,
while allowing use and access by adults." (Id.) In addition,
"[m]ost of Applicant's products could ... be used for safety
applications in connection with mentally or physically impaired
6 Specifically, in one opposition, an application to register the mark
"SAFE & SOUND" for manufactured housing, namely, mobile homes, was
abandoned without opposer's written consent thereto. In another
opposition, involving an application to register the mark "SAFE &
SOUND" for audio transmitters and receivers for use in monitoring
sounds made by infants, electrical and dimmer switches, and audio
cassette players in International Class 9 and table lamps, hanging
lamps for cribs, voice activated lamps, and sound emitting lamps in
International Class 11, the proceeding was settled by amendment of the
application, with opposer's consent thereto, to eliminate electrical
and dimmer switches from the list of goods for which registration of
the mark was sought. A third opposition brought by opposer, involving
the mark "SAFE & SOUND" for laminated insulating glass units for
windows "is currently pending before the ... Board." (Murray dec. at
¶9(c).)
Opposition No. 111,846
8
persons, instead of children." (Id. at ¶4.) However, while
applicant "is and will be marketing its products for such
additional applications, ... the sole customer application up to
this time has been child safety." (Id.)
"Applicant has used the mark SAFE & SOUND in connection
with ... the sale of goods since March 1994. The mark symbolizes
the goal of the company's products: to keep customers' children
safe from potential hazards commonly found in the home." (Id. at
¶5.) "Because Applicant is geared specifically towards child
safety, it sells its products through specialized outlets that
are also geared to the market segment of parents with young
children," such as "a child furniture store." (Id. at ¶7.)
Applicant stresses that it does not sell, in general,
safety products, home products or building products, including
doors of any kind. Indeed, according to Mr. Shandelman:
We ... do not consider ourselves to be
in the business of selling door related
products. A very few of the child safety
products that we sell are designed for use
with a door. For example, we sell a ... top
door latch. .... Our top door latch is a
simple device that fits over the top of an
interior door that permits an adult to lock
and unlock an interior door from either side
of the door, without having to use the door
knob lock or a key. Because the latch is
located on the top of the door, it cannot be
reached by a child, as can a door knob. ....
Although this type of latch is physically
attached to a door, we do not consider it to
be a type of typical door hardware, or a type
of door hardware that would be typically sold
in connection with doors generally. This
type of latch is specifically designed for
use with children, as it does not "lock" the
door in the typical sense against intruders,
Opposition No. 111,846
9
etc. It only prevents the door from being
opened, from either side, by children who can
reach and turn a door knob, but who are too
short to reach the latch on the top of the
door. Therefore, we do not believe that ...
our ... top door latch[es] are ... "door
related products," but [instead] ... are
child safety products that happen to be used
in connection with a door.
(Id. at ¶9.) Thus, because applicant regards its goods as child
safety products, such goods are not sold in the same channels of
trade as are opposer's doors.
Applicant "advertises the sale of its products through
child oriented media, such as Parenting magazine." (Id. at ¶11.)
It has never advertised its products in any of the specific trade
or general interest magazines utilized by opposer to advertise
its doors. As noted previously, applicant sells its goods in
children's furniture stores, such as two Bellini outlets located
in New Jersey, and does not sell its products, "and never has,"
through any of the wholesale millwork distributors, warehouse
home improvement retailers or box store retailers utilized by
opposer to sell its doors. (Id. at ¶13.) Furthermore, according
to Mr. Shandelman:
Even if Applicant were to begin selling its
products through box store retailers (which
Applicant understands to be stores such as
Home Depot and Lowes), Applicant believes
that its variety of child safety products
would not be sold in the same area of such a
store as would doors. The undersigned
believes this based on his personal knowledge
of many Home Depot stores throughout the
United States, where he has observed
Opposer's door products for sale in a section
solely relegated to doors, and child safety
products such as cabinet locks ... and anti-
scald devices sold in a completely different
section of the store. Based upon his
Opposition No. 111,846
10
personal observations, the undersigned
believes that none of Applicant's products,
including the top door latch ..., would be
sold in near proximity to Opposer's doors,
but would be sold in a different area of the
store.
With respect to applicant's cabinet and drawer
restraints, and in particular its cabinet door locks, applicant
points out that such goods "are designed for use on kitchen and
bathroom cabinet doors, not on standard structural doors as are
sold by Opposer." (Id. at ¶14.) Therefore, according to
applicant, the respective goods "are not related, [as they] are
not sold in the same channels of commerce." (Id.)
Finally, as to opposer's assertion that its "SAFE'N
SOUND" mark is famous, Mr. Shandelman notes that he "has
personally observed, in the Home Depot store in King of Prussia,
Pennsylvania and in several other locations throughout the
country, the sale of Opposer's doors" and that while such goods
"were strongly identified and sold as the 'Premdor' brand, ...
the 'SAFE'N SOUND' mark was relatively hidden and not at all
prominent." (Id. at ¶15.) Moreover, according to his testimony,
he "has a number of customers and business acquaintances engaged
in the home building and remodeling businesses, principally in
eastern Pennsylvania and New Jersey," and that '[b]ased upon an
informal survey of these people, none of them were familiar with
the Opposer's mark 'SAFE'N SOUND' for doors, although
approximately half of them were familiar with the brand
'Premdor.'" (Id. at ¶16.)
Opposition No. 111,846
11
The only relevant evidence offered by opposer in
rebuttal consists of a point-of-purchase display utilized in a
HomeBase "warehouse-style home improvement store," located in
Renton, Washington, which "sells Premdor SAFE'N SOUND doors but
did not carry them in stock."7 (Merritt dec. at ¶3.) Such
display, as attested to by Mr. Merritt, does in fact feature, "in
part, ... an 'Interior Door Selection Guide' prominently
displaying the mark 'SAFE'N SOUND.'" (Id.)
Turning to the issue of likelihood of confusion, we
find upon consideration of the pertinent factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973), that on this record confusion as to source or
affiliation is likely to occur with respect to contemporaneous
use of the respective marks in connection with applicant's indoor
door restraints and opposer's non-metal solid doors, but it is
not likely to take place from contemporaneous use of such marks
in connection with applicant's anti-scald devices for showers,
cabinet and drawer restraints, and interior gates and opposer's
7 While opposer also submitted evidence, by the declaration of Jennifer
Nahorniak, of its use of its "SAFE'N SOUND" mark in connection with
the retail sale of its doors at a Home Depot home improvement store
located in Toronto, Ontario, Canada, it is well settled that such
foreign use is ineffective to establish trademark rights in the United
States and is thus irrelevant to a determination of likelihood of
confusion here. See, e.g., Hard Rock Cafe Licensing Corp. v. Elsea,
48 USPQ2d 1400, 1405 (TTAB 1998) ["renown of opposer's marks outside
the United States or exposure of the foreign public to opposer's marks
is irrelevant"]; Fruit of the Loom Inc. v. Fruit of the Earth Inc., 3
USPQ2d 1531, 1534 (TTAB 1987) ["[t]rademark activity outside the
United States is ineffective to create rights in this country"]; and
Lever Brothers Co. v. Shaklee Corp., 214 USPQ 654, 657 (TTAB 1982) at
n. 8 [because "any trademark activity outside the United States is
ineffective to create rights within this country," "evidence of such
use is irrelevant to any of the issues in the proceeding before us"].
Opposition No. 111,846
12
non-metal solid doors. As a starting point, it is plain that
applicant's "SAFE & SOUND" mark is substantially similar, if not
virtually identical, to opposer's mark "SAFE'N SOUND" in sound,
appearance, connotation and overall commercial impression. Both
marks begin and end, respectively, with the words "SAFE" and
"SOUND," and the terms separating such words, namely, the
apostrophe/letter "N" combination ("'N") in applicant's mark and
the ampersand ("&") in registrant's mark, signify the conjunction
"AND." Overall, both marks identically suggest the safety
related features or uses of the parties' respective products.
Thus, if the marks at issue were to be used in
connection with closely related goods, confusion as to the origin
or sponsorship thereof would be likely. It is also the case,
however, that due to the highly suggestive nature of the
respective marks, the scope of protection to which they are
entitled, in the absence, for example, of proof of fame of
opposer's mark, is correspondingly less than would generally be
the case for arbitrary or fanciful marks.
Turning, with the above in mind, to consideration of
the respective goods, applicant principally argues that the
parties' goods are not related because its goods are child safety
products, which are typically sold in children's furniture
stores, while opposer's goods, even though they feature some
safety attributes such as increased fire resistance, are
basically building or remodeling materials, which are generally
sold in completely different channels of trade such as millwork
distributors and home improvement retailers. Applicant contends,
Opposition No. 111,846
13
therefore, that "at the present time, there is no possible
overlap in the marketing of Opposer's and Applicant's products
that could lead to confusion."8
In addition, as to opposer's assertion that the
parties' goods could be sold in the same retail channels of
trade, applicant "concedes that this is possible, although not
terribly likely." Applicant specifically insists, however, that:
Even assuming that Applicant's products could
be sold in a large home improvement retail
store that also carries Opposer's doors,
Applicant does not believe that any confusion
would occur. Such stores typically arrange
products in logical categories, such as doors
in one area, door hardware (hinges, knobs,
locks) in another area, and child products in
another. (Shandelman Decl. at ¶13.) ....
Accordingly, the evidence before the Board in
this proceeding shows no likelihood of
confusion between the goods of Opposer and
Applicant.
Where, as here, the goods of the parties on their face
are specifically different, it is incumbent upon opposer, as the
party having the burden of proof, to show that the respective
goods are related in some viable fashion and/or that they are
marketed or promoted under circumstances and conditions that
could bring them to the attention of the same purchasers or
prospective customers in a situation that could cause such
consumers reasonably to assume, because of the virtual identity
8 While, as to another du Pont factor, applicant urges that "neither
Opposer nor Applicant has testified that they are aware of any
instance of actual confusion between their goods by any consumer,"
suffice it to say that absence of such evidence is not evidence of
absence of actual confusion. The length of time and conditions under
which there has been contemporaneous use of the parties' marks without
evidence of actual confusion is accordingly not a relevant du Pont
factor in this proceeding.
Opposition No. 111,846
14
of the parties' marks, that the respective goods share a common
source or sponsorship. See, e.g., Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981). Nevertheless, as
opposer correctly points out, it is settled in this regard that
the registrability of an applicant's mark must be evaluated on
the basis of the identifications of goods and/or services set
forth in the involved application and any pleaded registrations
of record, regardless of what the record may reveal as to the
particular nature of the respective goods and/or services, their
actual channels of trade, or the class of purchasers to which
they are in fact directed and sold. See, e.g., Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) and Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815-16 (Fed. Cir. 1987).
Furthermore, it is well established that, absent any
specific limitations or restrictions in the identifications of
goods and/or services as listed in an applicant's application and
an opposer's registration(s), the issue of likelihood of
confusion must be determined in light of consideration of all
normal and usual channels of trade and methods of distribution
for the respective goods. See, e.g., CBS Inc. v. Morrow, 708
F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and
Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Here, neither applicant's
"anti-scald devices for showers" nor its "non-metallic devices
Opposition No. 111,846
15
and apparatus designed to prevent injury to children and mentally
or physically impaired persons, namely, cabinet and drawer
restraints, interior gates and indoor door restraints" are
specifically limited, either expressly or implicitly, as being
for sale in children's furniture stores or any other retail
outlets which cater primarily to the safety or other needs of
children. Applicant's goods, therefore, must be considered to be
suitable for sale in, for example, at least some of the same
channels of trade, such as warehouse home improvement centers and
box store retailers, as are opposer's non-metal solid doors.
Moreover, and in any event, the testimony of applicant's
president confirms that, based on his personal knowledge of many
Home Depot stores throughout the United States, such stores offer
doors for sale as well as child safety products like cabinet
locks and anti-scald devices.
However, with the sole exception of applicant's "indoor
door restraints," such as its top door latches, which by their
very nature are specifically designed, as applicant admits, for
use in connection with interior doors, none of applicant's goods,
even though suitable for sale in outlets like warehouse home
improvement centers and box store retailers, have been shown,
either on account of their nature or in fact, as being offered
for sale in the same departments as, or otherwise in close
proximity to, opposer's "non-metal solid doors." Notwithstanding
the absence of such proof, and ignoring altogether applicant's
"anti-scald devices for showers," which plainly by their very
nature have nothing to do with doors, opposer argues that its
Opposition No. 111,846
16
goods and those of applicant are in fact closely related in a
commercial sense because the "goods at issue overlap in that they
both pertain to doors and they both pertain to safety."
The fact that opposer, however, sells and promotes its
doors as being safer than, for instance, ordinary hollow-core
interior doors does not, without more, establish that its doors
would be seem as commercially or otherwise closely related to
applicant's "anti-scald devices for showers," "interior gates"
and/or "cabinet and drawer restraints," simply because such
goods, like applicant's "indoor door restraints," are principally
sold and used as safety devices and apparatus. Stated otherwise,
the mere fact that the parties' goods are designed to meet safety
concerns in the home or institutions where they would be used
does not itself establish a viable relationship between the
respective goods. In particular, while goods such as opposer's
"non-metal solid doors" and applicant's "cabinet and drawer
restraints," "interior gates" and, especially, "indoor door
restraints," could broadly be considered, as opposer contends in
its main brief, "door safety products" which would be sold
through the same channels of trade to the same classes of
purchasers, it is settled that simply because a term may be found
which encompasses the parties' products does not mean that
customers will view the goods as related in the sense that they
will assume that they emanate from or are associated with a
common source. See, e.g., General Electric Co. v. Graham
Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977) and Harvey Hubbell
Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975).
Opposition No. 111,846
17
However, as to applicant's "indoor door restraints,"
including its top door latches, and opposer's "non-metal solid
doors," we find that such goods, in light of their intrinsic
nature, would be considered closely related products by
consumers. To state the obvious, even if not sold in near
proximity to indoor doors, applicant's indoor door restraints are
specifically designed for use in connection with such doors,
including those manufactured and sold by opposer. Purchasers and
prospective customers for the parties' goods who are familiar
with the mark "SAFE'N SOUND" for opposer's non-metal solid doors
could reasonably assume, upon encountering the virtually
identical mark "SAFE & SOUND" for applicant's interior door
restraints, that the latter goods are specially made or sponsored
by opposer for use in connection with its products.9
Finally, we note the conclusory opinion of one of
opposer's witnesses that its "SAFE'N SOUND" mark is "has become
famous in the industry and is widely associated with" opposer and
its interior doors. (Murray dec. at ¶10.) As our principal
reviewing court in Kenner Parker Toys Inc. v. Rose Art Industries
9
In this regard, there is simply nothing in the record to show that
buyers of the respective goods would not generally include ordinary,
reasonably prudent consumers. Moreover, even if customers for the
parties' goods could be viewed as knowledgeable and discriminating
consumers when it comes to selecting interior doors and indoor door
restraints, such sophistication and care on the part of buyers "does
not necessarily preclude their mistaking one trademark for another" or
establish that they otherwise are entirely immune from confusion as to
source or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d 261,
132 USPQ 289, 292 (CCPA 1962). See also In re Decombe, 9 USPQ2d 1812,
1814-15 (TTAB 1988); and In re Pellerin Milnor Corp., 221 USPQ 558,
560 (TTAB 1983).
Opposition No. 111,846
18
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992), cert.
denied, 113 S.Ct. 181 (1992), has pointed out:
The fifth duPont factor, fame of the
prior mark, plays a dominant role in cases
featuring a famous or strong mark. Famous or
strong marks enjoy a wide latitude of legal
protection. ....
That the "fame of the prior mark, when present, plays a
'dominant' role in the process of balancing the du Pont factors"
was recently reaffirmed by such court in Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
In the present case, however, we find that opposer has
failed to establish that its "SAFE'N SOUND" mark is indeed famous
for its non-metal solid doors. While opposer has shown, through
Mr. Murray's testimony, that it has been selling door-related
products for more than 40 years and that it is one of the largest
door manufacturers in the world, continuous use of its "SAFE'N
SOUND" mark did not commence until November 1992 in connection
with the marketing and sale of non-metal solid doors. More
significantly, as pointed out earlier, opposer has failed to
indicate clearly the extent of such use of its mark in commerce
with the United States. Although it seems fair to assume, in
light of opposer's having expended, since 1993, an average of
over $400,000 a year on advertising and promoting its "SAFE'N
SOUND" mark throughout the United States, for a total expenditure
of over $2.8 million, that opposer must have had at least some
sales in the United States in order to justify such expenditures,
the record simply does not provide any indication as to the size
of the marketplace as a whole for interior doors. We therefore
Opposition No. 111,846
19
have no way of knowing whether, as a result of opposer's sales
and advertising in the United States, as well as its policing
activities in this country, the "SAFE'N SOUND" mark is regarded
here as a famous mark by consumers, so that they would be likely
to reasonably believe, upon encountering use of the mark "SAFE &
SOUND" in connection with anti-scald devices for showers, cabinet
and drawer restraints, and interior gates, that such diverse
safety products for children and infirm individuals emanate from
or are affiliated with the same source as opposer's non-metal
solid doors.
Decision: The opposition is sustained as to the
"indoor door restraints" in International Class 20 of the
involved application, but is otherwise dismissed.