R.L. Anderson, Inc.

Trademark Trial and Appeal Board

Sep 30, 2011

No. 77812670 (T.T.A.B. Sep. 30, 2011)

Mailed: September 30, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re R. L. Anderson, Inc.
________

Serial No. 77812670
_______

Doron Henkin of Law Offices of Doron Henkin for R. L.
Anderson, Inc.

Jordan A. Baker, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney)
_______

Before Kuhlke, Bergsman and Lykos, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, R. L. Anderson, Inc., seeks registration on
the Principal Register of the mark shown below for services
identified as “installation, maintenance, service and
repair of heating and air conditioning systems and of
plumbing and electrical systems” in International Class 37.1

1 Application Serial No. 77812670, filed on August 25, 2009,
based on allegations of first use and first use in commerce on
March 2, 1998, under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77812670
2

The application includes the following color claim and
description of the mark:
Color(s) Claimed: The color(s) red, white, blue
and black is/are claimed as a feature of the
mark.

Description of Mark: The mark consists of the
following: the top of the mark features stripes
that are red on the left and blue on the right,
with the top stem of the letter “d” dividing red
from blue between the red and blue areas; the
stripes are above the stylized black text
“ANdERSON” in which all letters other than “d”
are upper case and the “d” is in an oversized
lower case, with stem rising to divide the
stripes; The wording “Service for Home &
Business” appears below in black; the background
color is white which is claimed as a distinctive
feature of the mark.

Also, applicant disclaimed the exclusive right to use the
term “Service For Home & Business.”
Registration has been refused 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 the
identified services, so resembles the registered mark
ANDERSEN in typed form for “installation, maintenance and
repair of heating systems and air conditioning systems” in
Serial No. 77812670
3
Class 372 and “electrical and plumbing construction and
repair services; household appliance repair” in Class 37,3
as to be likely to cause confusion, mistake or deception.
Andersen Services of the Carolinas, Inc. is the listed
owner for both of the cited registrations.
As a preliminary matter, the examining attorney
objects to the evidence attached to applicant’s brief.
Trademark Rule 2.142(d) provides:
The record in the application should be complete
prior to the filing of an appeal. The Trademark
Trial and Appeal Board will ordinarily not
consider additional evidence filed with the Board
by the appellant or by the examiner after the
appeal is filed. After an appeal is filed, if
the appellant or the examiner desires to
introduce additional evidence, the appellant or
the examiner may request the Board to suspend the
appeal and to remand the application for further
examination.

Exhibits 1 and 2 are printouts of corporation and
fictitious name listings from the Florida Department of
State, which were submitted in applicant’s response to the
first Office Action. Exhibit 3 is a copy of the search
results conducted by the examining attorney and Exhibit 10
is a copy of the drawing of applicant’s mark submitted with
its application. Attaching evidence to the brief that is

2 Registration No. 1958370 issued February 27, 1996, renewed.

3 Registration No. 2211595 issued December 15, 1998, renewed.

Serial No. 77812670
4
already of record is unnecessary and inappropriate. See
ITC Entertainment Group Ltd. v. Nintendo of America, Inc.,
45 USPQ2d 2021, 2022-23 (TTAB 1998) (submission of
duplicative papers is a waste of time and resources, and it
is a burden upon the Board). The printouts attached as
Exhibits 6-9 were not of record and are untimely;
therefore, they have not been considered.4
Applicant’s request that we take judicial notice of
the 2000 United States Census results in Exhibits 4 and 5,
retrieved from the United States Census Bureau website at
www.census.gov/genealogy, is granted. In re Tokutake
Industry Co., 87 USPQ2d 1697, 1699 n.1 (TTAB 2008); In re
Spirits International N.V., 86 USPQ2d 1078, 1081 n.4 (TTAB
2008).
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 set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the

4 We hasten to add that consideration of those exhibits would not
change the result herein.
Serial No. 77812670
5
marks and the similarities between the services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the services
identified in the application and the cited registrations.
Applicant’s identified services encompass and are identical
to registrant’s services set out separately in its
registrations. Applicant does not argue otherwise.
Further, inasmuch as the services are identical, we must
presume that they will be offered in the same channels of
trade and will be bought by the same classes of purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the
above, the du Pont factors of the similarity of the
services and the channels of trade favor a finding of
likelihood of confusion as to the cited registrations.
Applicant’s arguments regarding the parties’ actual
trade channels are not relevant to our determination for
registration. We must make our determination based on the
services as they are identified in the application and
registrations and not based on evidence of their actual
use. Octocom Systems Inc. v. Houston Computer Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1987)
Serial No. 77812670
6
(“[T]he question of registrability of an applicant’s mark
must be decided on the basis of the identification of goods
[or services] set forth in the application regardless of
what the record may reveal as to the particular nature of
an applicant’s goods [or services], the particular channels
of trade or the class of purchasers to which sales of the
goods [or services] are directed”). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d
1001 (Fed. Cir. 2002).
As explained by the examining attorney, “Trademark Act
Section 7(b), 15 U.S.C. §1057(b), provides that a
certificate of registration on the Principal Register is
prima facie evidence of the validity of the registration,
of the registrant’s ownership of the mark, and of the
registrant’s exclusive right to use the mark in commerce on
or in connection with the goods and/or services specified
in the certificate [and] the owner of a registration
without specified limitations enjoys a presumption of
exclusive right to nationwide use of the registered mark
... regardless of its actual extent of use.” Br. p. 7.
The fact that registrant’s and applicant’s use of their
respective marks is geographically distinct does not factor
into our analysis for purposes of registration for a
geographically unrestricted application. Geographic
Serial No. 77812670
7
differences are only relevant in the context of a
concurrent use proceeding, where an applicant is seeking a
geographically limited, or concurrent use, registration.
See TMEP § 1207.04 (7th ed. 2010) and TBMP Chapter 1100 (3d
ed. 2011).
Turning to a consideration of the marks, it is well
settled that marks must be considered in their entireties,
not dissected or split into component parts and each part
compared with other parts. It is the impression created by
the involved marks, each considered as a whole, that is
important. See Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). However,
“[t]hat a particular feature is descriptive [or otherwise
lacking in distinctiveness] ... with respect to the
involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark...”
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
The examining attorney argues that ANDERSON is the
dominant element in applicant’s mark and applicant does not
argue to the contrary. See App. Br. p. 6 n.2 (“The
Examining Officer was probably correct that in finding that
‘Andersen’/’Anderson’ is the most important single part of
the mark...). Rather, applicant argues that ANDERSON and
Serial No. 77812670
8
ANDERSEN are surnames and, as such, are weak and any
similarity is “overcome by Applicant’s additional words and
phrasing and distinctive design.” Id.
We find that the dominant element in applicant’s mark
is the word ANDERSON. We further find that both ANDERSON
and ANDERSEN would, at a minimum, be perceived as surnames.5
We note the cited registration issued under Section 2(f)
based on a showing of acquired distinctiveness. However,
merely because a mark began as a surname does not per se
relegate it to a narrow scope of protection. The record
here does not support a finding that ANDERSON and ANDERSEN
are so weak in this field that registrant’s mark should be
afforded such narrow protection that no likely confusion
would result from another ANDERSON mark for identical
services. In view thereof, this factor does not weigh in
favor of applicant.
The cases relied on by applicant present different
facts, in large part because they are infringement actions
that include evidence of how the marks are actually used in
commerce. For example in Freedom Savings and Loan Ass. v.
Way, 757 F.2d 1176, 226 USPQ 123 (11th Cir. 1985), both

5 Anderson is listed as the 12th most common surname and Andersen
is listed as the 956th most common surname. See
www.census.gov/genealogy.

Serial No. 77812670
9
marks included additional matter, Freedom Savings (red and
white banner design) and Freedom Realty (red, white and
blue eagle and shield design), and the services were found
to be dissimilar. In our case, only applicant’s mark
contains additional matter.
In Chase Federal Savings and Loan Assoc. v. Chase
Manhattan Financial Services, Inc., 681 F.Supp. 771, 788
(S.D.Fla. 1987), the court stated that “a common surname is
an inherently weak mark deserving only a narrow range of
protection in the absence of a showing of secondary meaning
[and] [n]either plaintiff nor defendant(s) has acquired as
against the other the exclusive right to the name ‘Chase’
through common usage sufficient to obtain ownership of a
secondary meaning in the name or mark ‘Chase.’” (citations
omitted). Here, registrant is accorded the Section 7(b)
presumptions. Further, the court in Chase explained that
because the marks were weak the differences in the
“corporate appellations, if emphasized by different logos,
can prevent consumer confusion.” Again, in this case both
marks contained additional material and the court set out
how each party may use its mark to avoid confusion. See
also Sun Banks of Florida, Inc. v. Sun Federal Sav. and
Loan Ass’n, 651 F.2d 311, 318 (5th Cir. 1981) (“We consider
significant the fact that neither party has ever used the
Serial No. 77812670
10
name ‘Sun’ alone in its advertising; in every instance the
word ‘Banks’ or ‘Federal’ was included and afforded like
emphasis.”)
Finally, even if we were to find registrant’s mark to
be weak, such marks are also afforded protection against
the registration of a similar mark for closely related
services. King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Here, applicant’s mark incorporates the entirety of
registrant’s mark but for the E in registrant’s mark and
the O applicant’s mark. The additional descriptive wording
in applicant’s mark is not sufficient to distinguish it
from registrant’s ANDERSON mark, in particular because it
is just as appropriate as a description for registrant’s
identified services. Further, the simple background design
of red and blue lines, which may serve to evoke the United
States flag, is not sufficient to distinguish the marks.
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Finally, because registrant’s mark is in standard
characters, its mark is not limited to any particular
depiction. The rights associated with a mark in standard
characters reside in the wording and not in any particular
display. In re RSI Systems, LLC, 88 USPQ2d 1445 (TTAB
2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
Serial No. 77812670
11
2015 (TTAB 1988); TMEP 1207.01(c)(iii) (7th ed. rev. 2010).
Thus, the minimal stylization in applicant’s mark cannot
serve to distinguish the marks, inasmuch as we must
consider registrant’s mark “regardless of font style, size,
or color.” Citigroup Inc. v. Capital City Bank Group Inc.,
98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011).
As to connotation, the marks share the surname meaning
and to that extent present the same commercial impression.
Again, the addition of the descriptive wording does not
distinguish it from registrant’s mark, in particular, when
potential consumers would encounter registrant’s mark in
the provision of “services for home and business.”
Thus, viewing the marks in their entireties,
applicant’s mark is very similar in sound, appearance,
connotation and commercial impression to registrant’s mark.
Applicant argues that these types of services are not
“‘impulse’ purchases, tending instead to come from
recommendations, relationships, and other longer-term
considerations.” While there is no evidence of record on
this point, clearly these are not impulse purchases;
however, in this case, the potential purchasers include the
general public and the facts here are distinguished from
circumstances where the goods or services are complex and
extremely expensive, e.g., scientific or medical equipment,
Serial No. 77812670
12
and the overlapping potential purchasers are limited to
very knowledgeable purchasers in the particular field. In
short, there is nothing in the record to support a finding
that the services and purchasing process are of such a
nature that purchasers would exercise unusual care or
otherwise would distinguish similar marks for related
services. See, e.g., Electronic Design & Sales, Inc. v.
Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992) (record confirms that opposer’s services
are expensive and are purchased only by experienced
corporate officials after significant study and contractual
negotiation and that the evaluation process used in
selecting applicant’s products requires significant
knowledge and scrutiny). Thus, we find that the level of
care taken by the average, let alone least sophisticated,
consumer of the identified services does not serve to avoid
likely confusion. Moreover, as is frequently stated, even
if consumers are knowledgeable in a particular field that
does not necessarily mean that they are immune from source
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Thus, to the extent this factor weighs in applicant’s favor
it is not sufficient to outweigh the other du Pont factors.
Further, applicant states that “there is no suggestion
or evidence of actual confusion ... even though [applicant]
Serial No. 77812670
13
has been in the heating and air conditioning business as R.
L. Anderson, Inc. for 50 years.” Br. p. 13. First, the
inquiry here is likelihood of confusion, not actual
confusion. HRL Associates Inc. v. Weiss Associates Inc.,
12 USPQ2d 1819, 1824 (TTAB 1989) aff’d, 14 USPQ2d 1840
(Fed. Cir. 1990). The Court of Appeals for the Federal
Circuit has observed, “A showing of actual confusion would
of course be highly probative, if not conclusive, of a high
likelihood of confusion. The opposite is not true,
however. The lack of evidence of actual confusion carries
little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.” In re Majestic Distilling Co., Inc.,
65 USPQ2d at 1205. Thus, regardless of the evidence, an ex
parte proceeding is ill equipped for a fair determination
inasmuch as the registrant does not have an opportunity to
defend its registration. Moreover, based on applicant’s
statements that the registrant and applicant do not offer
their services in the same geographic location, it appears
that there has not been a meaningful opportunity for
confusion to occur.
After considering applicant’s arguments and evidence
and the relevant du Pont factors, including those not
specifically discussed above, we find that because the
Serial No. 77812670
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marks are similar, the services are identical, and the
channels of trade and consumers are presumed to overlap,
confusion is likely between applicant’s ANDERSON and design
mark and registrant’s ANDERSEN mark.
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.