Pure & Natural Company

Trademark Trial and Appeal Board

Aug 30, 2010

No. 77153360 (T.T.A.B. Aug. 30, 2010)

Mailed: August 30, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pure & Natural Company
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Serial No. 77153360
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A Kate Huffman, Esq. for Pure & Natural Company.

David C. I, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
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Before Walters, Holtzman and Cataldo, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Pure & Natural Company has filed an application to
register the standard character mark FIRESIDE GLOW on the
Principal Register for “air fresheners, air deodorizer, car
deodorizer, carpet deodorizer, household deodorizer, room
deodorizer, room freshener, carpet fresheners and odor
eliminators, all purpose disinfecting and deodorizing
preparations, garbage disposer fresheners, odor neutralizing
preparations for use on carpets, textiles, and in the air;
aromatic preparations and substances for freshening the air;
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
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perfumed air freshening preparations; air purifying
preparations,” in International Class 5.1 The application
includes a disclaimer of FIRESIDE apart from the mark as a
whole.
The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the standard character mark FIRESIDE WARMTH, previously
registered for the goods shown below2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Registration No. 3405321:
“Bleaching preparations and other substances for
laundry use, namely, laundry bleach and laundry
detergents; laundry preparations for dry cleaners,
namely, dry cleaning fluids and starch; polishing
preparations for kitchen and glassware; cleaning,
polishing, scouring and abrasive preparations for
domestic purposes; carpet cleaners; shampoo
detergents; soaps; decalcifying and descaling
preparations for domestic purposes; laundry
additives, namely, fabric softeners, laundry
bluing laundry pre-soaks; stain removing
preparations; perfuming preparations for the
atmosphere, namely sachets; potpourri; incense;
perfume oils; scented oils, essential oils for
domestic use,” in International Class 3; and

“Sanitary sterilizing preparations; all purpose
disinfectants; disinfectant preparations for
sanitary purposes; all purpose disinfectant
solutions for use in wiping surfaces;

1 Serial No. 77153360, filed April 10, 2007, based on an allegation of a
bona fide intention to use the mark in commerce.

2 Registration No. 3405321, issued April 1, 2008, to Reckitt Benckiser
Inc.

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disinfectants for domestic use or for hygiene and
sanitary purposes; all purpose disinfecting agents
and preparations having disinfecting properties;
anti-bacterial cleaning preparations; fungicides
for domestic use; air freshening preparations,
namely, air fresheners; air purifying
preparations, namely air deodorizers; room air
fresheners; preparations for perfuming or
fragrancing the air, namely air deodorants;
preparations for neutralizing odors in households,
namely, air fresheners; deodorants for household
use,” in International Class 5.
(Emphasis added)

Applicant has appealed. Both applicant and the
examining attorney have filed briefs.
The Section 44 Basis of the Cited Registration
Before beginning our discussion of the refusal herein,
we must address applicant’s argument that, because the cited
registration was filed and registered under Section 44 of
the Trademark Act, the registration should be afforded a
more narrow scope of protection than a use-based
registration in the context of a Section 2(d) likelihood of
confusion analysis. Applicant reasons that the scope of the
cited registration should be limited because the mark was
registered without a showing of use and, thus, the statute
and underlying treaty obligation, give a foreign national an
“unfair” advantage over U.S. applicants and registrants.
Applicant admits that the cases it cites in support of
its position, discussed below, do not pertain to likelihood
of confusion, but argues that the reasoning therein is
applicable in this case. In fact, these cases pertain to
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Board construction and interpretation of issues related to
the basis for filing an application under the provisions of
Section 44. None of the cases, as discussed below, sets
legal limitations on a Section 44 application or
registration based on any notion of “fairness” and it would
be inaccurate to read such a factor into the Trademark Act.
In Societe D’Exploitation de la Marque Le Fouquet’s, 67
USPQ2d 1784 (TTAB 2003), the Board, noting that it was
construing Section 44 narrowly, held that the language in
Section 44, “… a mark duly registered in a country of origin
of a foreign national may be registered …,” requires that
the foreign registration forming the basis of the U.S.
application must be valid at the time the U.S. registration
issues.
The relevant issue in Marmark, Ltd. v. Nutrespa, SA, 12
USPQ2d 1843 (TTAB 1989), was whether the Board could
interpret broadly the identification of goods in the Spanish
registration serving as the basis for registration in the
United States. The Board found that the goods were limited
to the items following the term “namely” in the
identification and that to find otherwise would render the
identification meaningless. This finding is a matter of
sentence construction as opposed to a “narrow” construction
of Section 44.
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In United Rum v. Distiller’s Corp., 9 USPQ2d 1481 (TTAB
1988), the Board held that the trademark in a U.S.
application must be “materially the same” as, but not
“identical” to, the trademark in the foreign registration
forming the basis, under Section 44, of the U.S.
application. The Board characterized this as a “narrow”
construction of Section 44 to prevent the anomalous
situation where a foreign national might register a
trademark in the United States to which the applicant was
not entitled in its country of origin. However, the drawing
standard adopted is the same as the standard applied to the
required correlation between the applied-for mark and the
mark on the specimens in a use-based application.
Applicant also argues that any doubt regarding
likelihood of confusion should not be resolved in favor of a
registration based on Section 44 because of the inherent
unfairness of permitting registration without a showing of
use. There is absolutely no basis in law or precedent for
this argument and we have not considered it further.
Therefore, we reject applicant’s arguments pertaining
to Section 44 and we have made our determination herein
based on established trademark law and precedent, regardless
of the Section 44 basis of the cited registration.
Applicant has also attacked the validity of the cited
registration, alleging that the registrant of record is a
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domestic corporation who improperly asserted Section 44 to
obtain its registration; and that the owner of the cited
registration impermissibly differs from the owner of the
U.K. registration that formed the basis, under Section 44,
of the registration in the United States. As the examining
attorney correctly stated, the validity of the cited
registration is not at issue in the context of this ex parte
proceeding, which determines only the registrability of the
mark in this application. Thus, applicant’s arguments in
this regard have not been considered. Rather, one proper
forum for applicant’s concerns about the validity of the
cited registration is in the context of a cancellation
proceeding.
Likelihood of Confusion
Turning now to the Section 2(d) refusal that is the
basis for this appeal, we note that our determination 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).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
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Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
The Goods
We consider, first, the goods involved in this case,
noting that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence may show the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Moreover, likelihood of confusion must be found if
there is likely to be confusion with respect to any item
that comes within the identification of goods in the
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application, see Tuxedo Monopoly, Inc. v. General Mills Fun
Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The
Office need show only that at least one of the identified
goods in the application is related to the goods identified
in the cited registration. We will focus our comments on
the issue of likelihood of confusion with respect to the
goods in the cited registration shown in bold typeface above
and repeated below, since these are the recited goods that
are the most similar to those recited in the application:
“perfuming preparations for the atmosphere, namely
sachets; potpourri; incense; perfume oils; scented
oils, essential oils for domestic use,” in
International Class 3; and

“air freshening preparations, namely, air
fresheners; air purifying preparations, namely air
deodorizers; room air fresheners; preparations for
perfuming or fragrancing the air, namely air
deodorants; preparations for neutralizing odors in
households, namely, air fresheners; deodorants for
household use,” in International Class 5.

The goods identified in the application are also repeated
below:
“air fresheners, air deodorizer, car deodorizer,
carpet deodorizer, household deodorizer, room
deodorizer, room freshener, carpet fresheners and
odor eliminators, all purpose disinfecting and
deodorizing preparations, garbage disposer
fresheners, odor neutralizing preparations for use
on carpets, textiles, and in the air; aromatic
preparations and substances for freshening the
air; perfumed air freshening preparations; air
purifying preparations,” in International Class 5.

The examining attorney presented no evidence regarding
the relationship between the goods, therefore we base our
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finding on the plain meanings of the words used in the
identifications of goods. Clearly, both the cited
registration and the application include the identical
goods, “air fresheners” and “air deodorizers.” The
remaining items listed in both identifications of goods in
International Class 5 are closely related and expressly
perform the similar and related functions of freshening,
deodorizing and neutralizing the air and/or the smell of
household items. The goods identified in International
Class 3 of the cited registration are also related to
applicant’s identified goods because they are items that are
used in freshening, deodorizing and neutralizing the air.
In particular, applicant’s goods are very similar to the
“aromatic preparations and substances for freshening the
air” and “perfumed air freshening preparations” identified
in International Class 3 of the cited registration. Thus,
we find that applicant’s goods are the same as and/or
closely related to those of registrant.
This du Pont factor weighs in favor of a finding of a
likelihood of confusion.
Channels of Trade/Purchasers
Although some of the goods in both the application and
the cited registration are limited to specific uses, there
are no limitations on trade channels and, thus, we presume
that the goods would be offered in all ordinary trade
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channels for these goods and to all usual classes of
purchasers, including consumers of each others’ goods. See
In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). In other
words, the trade channels are the same or, at least,
overlapping.
Regarding the buyers to whom sales are made, we note
that because there are no restrictions in this regard in the
identifications of goods, both applicant's and registrant’s
goods may be purchased by members of the general public, who
will likely exercise only ordinary care in purchasing these
common items.
These du Pont factors weigh in favor of a finding of
likelihood of confusion.
The Marks
We consider, now, whether applicant’s mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression.
Applicant contends that the term FIRESIDE is merely
descriptive in both marks in connection with the identified
goods because it is recognized as a fragrance name that is
commonly used in connection with the same and related goods.
In this regard, applicant submitted excerpts from
twenty-nine unrelated websites showing the use of the term
“fireside” to identify a fragrance. Of these excerpts,
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eight sites showed air fresheners or sprays with a
“fireside” scent; seven sites showed essential oils and
scents with a “fireside” fragrance; ten sites showed candles
with a “fireside” scent; and four sites showed perfumes with
a “fireside” fragrance. Examples of other fragrances listed
on these sites include “peppermint,” “allspice,” “grass,”
“autumn,” “green tea,” “musk,” “rose,” “peach,” and
“seabreeze.”
Applicant contends that, because of the descriptive
significance of “fireside” in connection with its goods and
those of registrant, it is a weak term in both marks; and
that its mark is distinguishable from the registered mark by
the differing second terms, i.e., “glow” in its mark versus
“warmth” in the registered mark. Applicant argues that
these are obvious differences visually and aurally and that
the connotations differ in that “glow” suggests light, which
is a quality that appeals to the sense of sight; whereas
“warmth” appeals to the sense of feel.
The examining attorney contends that both marks are
arbitrary. To establish this, he asks us to take judicial
notice of the definitions of the terms “fireside,” “glow,”
and “warmth,” but makes no mention of the evidence submitted
by applicant. We decline to take judicial notice and note
that, regardless of the dictionary definition of “fireside,”
applicant has provided a substantial amount of evidence that
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the term describes a fragrance in connection with
applicant’s and registrant’s goods. Applicant does not
dispute that “glow” and “warmth” are arbitrary terms in the
context of the goods.
The examining attorney makes the following statement in
the Office Action of April 9, 2009, and repeats these
sentiments in his brief: “There is only one registered
trademark with the term ‘fireside’ used in connection with
air fresheners. It is irrelevant if every manufacturer in
the industry uses the term ‘fireside’ to represent their air
freshening scents if they have not registered a trademark
for the same.” The examining attorney’s position is
incorrect in so many ways. First, the cited registration is
not evidence that the term “fireside” is in use in
connection with the identified goods. On the other hand,
the Internet website excerpts submitted by applicant are
evidence that the term “fireside” is used as a scent name in
connection with the same and related goods. This is strong
evidence of its descriptive significance. Second, it is
very relevant that numerous third-parties in the industry
use the term “fireside” to describe a scent. It is
precisely because of this evidence that we find “fireside”
is merely descriptive, if not generic, of a scent for air
fresheners and related goods. Finally, there is absolutely
no requirement that a business register its trademark in
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order to have legally enforceable rights in that mark.
Additionally, a business cannot, in general, register a
merely descriptive term.
Having found that “fireside” is a merely descriptive
term in connection with the respectively identified goods,
we now consider the marks in their entireties. Both are
two-word marks that begin with the merely descriptive term
“fireside.” Both second terms, “glow” and “warmth” suggest
features of a fire, as described by applicant. While
neither term directly modifies the term “fireside” in the
respective marks, both “glow” and “warmth” suggest different
aspects of the experience of sitting at a fireside. At the
same time, the terms “glow” and “warmth” have no
significance in the context of the respectively identified
goods in this case and, therefore, are clearly the dominant
terms in the marks. Therefore, we find that applicant’s
mark, FIRESIDE GLOW, is sufficiently distinguished from the
cited registered mark, FIRESIDE WARMTH, by the second term
in each mark.
Conclusion
When we consider the record and the relevant likelihood
of confusion factors, and all of applicant's arguments
relating thereto, including those arguments not specifically
addressed herein, we conclude that the weakness of the
registered mark and differences between the two marks
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outweighs the similarities in the goods, trade channels and
purchasers so that confusion as to source is unlikely.
Decision: The refusal under Section 2(d) of the Act is
reversed.