Richard H. WoodDownload PDFTrademark Trial and Appeal BoardDec 22, 2009No. 77487119 (T.T.A.B. Dec. 22, 2009) Copy Citation Mailed: December 22, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Wood ________ 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 5 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 6 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 7 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 9 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 10 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 11 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 12 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 13 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 14 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 15 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. Copy with citationCopy as parenthetical citation