Richard H. Wood

Trademark Trial and Appeal Board

Dec 22, 2009

No. 77487119 (T.T.A.B. Dec. 22, 2009)

Mailed: December 22, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wood
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Serial No. 77487119
_______

William H. Dietrich of Munsch Hardt Kopf & Harr, P.C. for
Richard H. Wood.

Lindsey H. Rubin, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application was filed by Richard H. Wood to
register the mark AMERISTAR (standard character format) for
goods ultimately identified as:
metal window and door screens, metal window
frames, metal patio door frames in International
Class 6;

non-metal window and door screens, non-metal
window frames, non-metal patio door frames,
window glass in International Class 19;

mirrors and wardrobe doors, window blinds and
window coverings, namely, vertical and horizontal
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77487119
2
louvers, Venetian blinds, mini window blinds,
wooden window blinds, pleated window shades,
cellular window shades, and interior window
shutters made of wood or polymer in International
Class 20; and

repair, replacement installation, and
installation services of window blinds and window
coverings; repair, replacement installation, and
installation services of window glass, mirrors,
wardrobe doors; repair, replacement installation,
and installation services of metal and non-metal
window and door screens, window frames, and patio
door frames” in International Class 37.1

The trademark examining attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when used in connection with applicant’s goods and
services, so resembles the previously registered mark
AMERISTAR for “metal fences and gates and parts therefor,”2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
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 bearing

1 Application Serial No. 77487119, filed on May 30, 2008. With
respect to certain of the goods and services, applicant asserts a
bona fide intent to use the mark in commerce; with respect to
other goods and services, applicant alleges first use of the mark
anywhere on August 30, 1994 and first use of the mark in commerce
on October 28, 1999.
2 Registration No. 1782393, issued on July 20, 1993, renewed.
Serial No. 77487119
3
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 Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Regarding the similarities in the marks, it is clear
that the marks are identical. Both marks are for the
identical term, AMERISTAR, in standard character form.
We now consider whether the applicant’s goods and
services and registrant’s goods are related. It is not
necessary that the goods and/or services be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods and/or services are related in some manner, or that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
Serial No. 77487119
4
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods and/or services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); In re International
Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
Furthermore, in making our determination as to the
relatedness of the goods and services, we look to the goods
and services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1990); see also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods [and services].”).
The examining attorney maintains that applicant’s
Class 6, 19 and 20 goods and registrant’s metal fences and
gates and parts therefor are all “common building materials
that would travel in the same channels of trade and be
marketed to the same consumers.” (Brief, unnumbered p. 6).
The examining attorney contends that it would not be
unusual for a consumer to contemporaneously purchase
applicant’s goods and registrant’s goods, and to encounter
Serial No. 77487119
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the respective goods at Home Depot and Lowe’s stores. In
support of his position that the respective goods are made
by some of the same manufacturers and may be sold under the
same marks, the examining attorney submitted the following
use-based, third-party registrations: Registration No.
3037170 for the mark PANTO for, inter alia, “metal gates,”
“metal window casements,” “metal window frames,” “fences of
metal,” “non-metal windows,” “non-metal window shutters,”
“window blinds,” and “window shades”; Registration No.
3328228 for the mark HEROAL for, inter alia, “metal
profiles for windows,” “milled or molded window and door
components of metal, namely frames, trim and casings,”
“windows and doors made of metal and their parts,” and
“rolling gates or rolling blinds made of metal and their
parts”; Registration No. 3083442 for the mark F FANGDA and
design for, inter alia, “metal gates,” “metal door frames,”
and “metal fences”; Registration No. 3293721 for the mark
GOLDEN GATE IRON for, inter alia, “metal gates, fences,”
“metal … door frames”; Registration No. 3222070 for the
mark THE REAL DOOR for, inter alia, “metal goods, namely
wrought iron doors, metal gates and railings for fences”;
Registration No. 3193714 for the mark ALUMINUM. YOU BET
YOUR LIFE ON IT. for “metal doors and gates”; Registration
No. 3193716 for the mark SECURITY. IT’S A BEAUTIFUL THING.
Serial No. 77487119
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for “metal doors and gates”; Registration No. 3193718 for
the mark ALWAYS SECURE-ALWAYS BEAUTIFUL-ALWAYS UNIQUE for
“metal doors and gates”; Registration No. 3241891 for the
mark PROTEK for, inter alia, “metallic construction
building materials, namely, window sashes, windows, door
casings, doors, … fences, gates … shutters … window
frames”; Registration No. 2935304 for the mark ARCELOR for,
inter alia, “coated and non-coated metal fences,” and
“metal door frames”; and Registration No. 3083442 for the
mark F FANGDA for, inter alia, “metal doors,” “metal
gates,” “metal windows,” and “metal door frames.” The
examining attorney also submitted printouts from two third-
party websites that sell fences, gates and doors.
Insofar as applicant’s Class 37 services and
registrant’s goods are concerned, the examining attorney
argues that confusion is likely to occur from the use of
the same mark, AMERISTAR, for goods, on the one hand, and
for services involving those goods, on the other.
Applicant, in urging reversal of the refusal to
register, argues that the respective goods and services are
not related. Specifically, applicant contends that:
The Cited Mark appears to be used in connection
with goods typically exterior and/or surrounding
the premises of a building or property, namely
fences and gates. On the other hand, Applicant’s
Serial No. 77487119
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goods and services focus on different portions of
the actual building or property on the premises.

(Brief, p. 6).
Applicant also maintains that purchasers of the
respective goods and services are discriminating and
exercise care in their purchasing decisions, that there
have been no instances of actual confusion, and that it did
not intend to trade upon the goodwill of registrant.
Finally, applicant argues that the examining attorney’s
reliance on third-party registrations is misplaced.
Applicant contends that there are many third-party
registrations of marks that do not cover applicant’s goods
and services, on the one hand, and registrant’s goods, on
the other. Applicant submitted a list of third-party
registrations of marks that cover a single product, e.g.,
metal fences or door frames.3
After careful consideration of all of the evidence of
record and the arguments of applicant and the examining
attorney, we affirm the refusal to register as to

3 The examining attorney, for the first time in his brief,
objected to the listing of third-party registrations as being
unsupported by copies thereof. The objection is considered
waived. Although applicant had relied on the listing in its
response to the initial Office action, the examining attorney did
not object to the form of the evidence in his final refusal, and
explain to applicant the proper means for making such
registrations of record. Accordingly, the listing will be
considered for whatever probative value it may have.
Serial No. 77487119
8
applicant’s Class 6 goods, and reverse the refusal to
register as to applicant’s Class 19, 20 and 37
goods and services.
We turn first to a consideration of applicant’s Class
6 goods and registrant’s goods. Applicant’s Class 6 goods
are identified as metal window and door screens, metal
window frames, metal patio door frames. Registrant’s goods
are identified as metal fences and gates and parts
therefor. Obviously, all of these goods are made of metal.
Furthermore, although the third-party registrations
submitted by the examining attorney are not evidence that
the marks shown therein are in commercial use, or that the
public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that
such goods are of a type which may emanate from a single
source under a single mark. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988). We find
that at least seven of the third-party registrations (i.e.,
Registration Nos. 2935394, 3037170, 3328228, 3083442,
3293721, 3241891, and 3083442) sufficient to establish that
one or more of applicant’s Class 6 goods and registrant’s
goods are related. Where as here, the applicant’s mark is
identical to the cited registered mark, the degree of
Serial No. 77487119
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relatedness between the respective goods that is necessary
to support a finding that the goods are related under the
second du Pont likelihood of confusion factor is less than
it would be if the marks were not identical; there need be
only a viable relationship between the respective goods.
See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001); and In re Concordia International Forwarding Corp.,
222 USPQ 355 (TTAB 1983). We add that contrary to
applicant’s contention, the third-party registrations that
it submitted covering a single item do not establish that
the goods are not related. In short, we find that the
requisite relation between applicant’s Class 6 goods and
registrant’s goods exists.
With regard to the channels of trade and class of
purchasers, inasmuch as there are no limitations in the
cited registration or the application and the goods are
related, we must presume that applicant’s and registrant’s
goods will be sold in some of the same channels of trade
and will be bought by some of the same classes of
purchasers. See Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1983). In this case, the ordinary channels of trade
and purchasers for the goods overlap inasmuch as the goods
Serial No. 77487119
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would be sold in home improvement stores and purchased by
home building and remodeling contractors and do-it-yourself
homeowners.
Insofar as the conditions of purchase are concerned,
even assuming arguendo that purchases of applicant’s and
registrant’s goods would involve a deliberate decision,
this does not mean that the purchasers are immune from
confusion as to the origin of the respective goods,
especially when we consider the identity of the marks and
relatedness of the goods. See In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). [“[E]ven careful
purchasers are not immune from source confusion.”].
With regard to applicant’s assertion that it is aware
of no instances of actual confusion as a result of the
contemporaneous use of the marks of applicant and
registrant, we note that, while a factor to be considered,
the absence of actual confusion is of little probative
value where we have little evidence pertaining to the
nature and extent of the use by applicant and registrant.
See In re Majestic Distilling Co., Inc., supra, 65 USPQ2d
at 1205. [“uncorroborated statements of no known instances
of actual confusion are of little evidentiary value.”].
As noted, applicant also contends that it did not
adopt its mark in a bad faith attempt to trade on
Serial No. 77487119
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registrant’s mark. Good faith adoption, however, is
expected of applicants and the mere absence of “evidence of
intent to trade on the goodwill of another” typically does
not aid an applicant attempting to establish no likelihood
of confusion. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir.
1991).
In view of the foregoing, we conclude that purchasers
aware of registrant’s AMERISTAR mark for metal fences and
gates and parts therefor, who then encounter applicant’s
AMERISTAR mark for metal window and door screens, metal
window frames, and/or metal patio doors, are likely to
believe that these goods are made by the same manufacturer
or are sponsored by the same entity. To the extent that
any doubts might exist as the correctness of our likelihood
of confusion determination, we resolve such doubts, as we
must, against applicant. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993); and In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988).
We turn next to a consideration of applicant’s Class
19 and 20 goods and registrant’s metal fences and gates and
parts therefor. Applicant’s Class 19 and 20 goods are
identified as follows:
Serial No. 77487119
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non-metal window and door screens, non-metal
window frames, non-metal patio door frames,
window glass in International Class 19;

mirrors and wardrobe doors, window blinds and
window coverings, namely, vertical and horizontal
louvers, Venetian blinds, mini window blinds,
wooden window blinds, pleated window shades,
cellular window shades, and interior window
shutters made of wood or polymer in International
Class 20.

We agree with the examining attorney’s contention that the
foregoing goods are related to the extent that, broadly
speaking, they are building or home improvement materials.
“However, to demonstrate that goods are related, it is not
sufficient that a particular term may be found which may
broadly describe the goods.” In re W.W. Henry Co., 82
USPQ2d 1213, 1215 (TTAB 2007).
In this case, the evidence submitted by the examining
attorney fails to establish a specific commercial
relationship between applicant’s Class 19 and 20 goods and
registrant’s goods. Only one of the third-party
registrations submitted by the examining attorney covers
non-metal products such as those listed in applicant’s
Class 19 goods, and only two of the registrations cover
window blinds, shades or shutters which are listed in
applicant’s Class 20 goods. This limited evidence is not
persuasive to show that purchasers would expect a common
Serial No. 77487119
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source for applicant’s Class 19 and 20 goods and
registrant’s goods.
The printouts from the two third-party websites
submitted by the examining attorney are also of limited
probative value in this regard. One appears to be the
website of a company which sells a wide variety of home
décor items made of metal and wrought iron. The second
website shows that a company called The Fencing Pro lists
among its offerings “wood fences, wood gates, wood doors,
wrought iron fences.” Apart from the fact that the second
website does not appear to offer any of applicant’s Class
19 and 20 goods, the mere fact that the goods may be found
at the same websites does not make such goods related.
We turn next to a consideration of applicant’s Class
37 services and registrant’s metal fences and gates and
parts therefor. Applicant’s Class 37 services are
identified as follows:
repair, replacement installation, and
installation services of window blinds and window
coverings; repair, replacement installation, and
installation services of window glass, mirrors,
wardrobe doors; repair, replacement installation,
and installation services of metal and non-metal
window and door screens, window frames, and patio
door frames.”

It is well recognized that confusion is likely to occur
from the use of the same mark for goods, on the one hand,
Serial No. 77487119
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and for services involving those goods, on the other hand.
In this case, the problem with the examining attorney’s
argument is that applicant’s Class 37 services do not
involve registrant’s goods. In other words, applicant’s
repair, replacement installation, and installation services
do not involve metal fences and gates and parts therefor.
Under the circumstances, and in the absence of any evidence
demonstrating that purchasers would expect a common source
for applicant’s Class 37 services and registrant’s goods,
we find that the record does not establish that such goods
and services are related.
Finally, to the extent that the examining attorney
argues that applicant’s Class 19, 20 and 37 goods and
services are within registrant’s natural zone of expansion,
there is no evidence in the record to support this
argument. Moreover, we do not find the listed goods in the
registration to be such a broad product line that
registrant could naturally expand to such diverse goods and
services as, for example, non-metal window screens,
Venetian blinds, and installation of window blinds.
In sum, despite the identity of applicant’s mark and
registrant’s mark, the examining attorney has not
established that the contemporaneous use of AMERISTAR on
applicant’s Class 19, 20 and 37 goods and services and
Serial No. 77487119
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registrant’s goods is likely to cause confusion as to
source or sponsorship.
Decision: The refusal to register under Section 2(d)
is affirmed as to the Class 6 goods, and reversed as to the
Class 19, 20 and 37 goods and services.