Robert F. Held

Trademark Trial and Appeal Board

Nov 17, 2005

No. 76513336 (T.T.A.B. Nov. 17, 2005)

Mailed: November 17, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Held
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Serial No. 76513336
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Paul M. Denk for Robert F. Held.

Dezmona Mizelle-Howard, Trademark Examining Attorney, Law
Office 110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Hohein, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Robert F. Held has appealed from the final refusal of
the trademark examining attorney to register SPRING BERRIES
(in standard character form) as a trademark for “an air
freshener that applies directly onto an air vent register.”1

1 Application Serial No. 76513336, filed April 28, 2003,
asserting a bona fide intention to use the mark in commerce under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
We note that on January 13, 2005, applicant filed three
separate papers, namely, an appeal, a request for reconsideration
and a statement of use. The record does not reflect that the
examining attorney has acted on the amendment to allege use.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78363598
2
The examining attorney has set forth two grounds for
refusal of the application in the final Office action.
First, the examining attorney has required a disclaimer of
the wording BERRIES pursuant to Section 6 of the Trademark
Act, 15 U.S.C. §1056. Second, the examining attorney has
refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the previously registered
mark SPRING MULBERRIES (in standard character form) for
“scented air fresheners”2 that, as used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive. The cited registration contains a
disclaimer of the exclusive right to use MULBERRIES apart
from the mark in its entirety.
After the refusal was made final, applicant appealed
and filed a request for reconsideration. The request for
reconsideration includes the following:
(a) a proposed amendment to the identification
of goods, namely to “[a]ir freshener that applies
directly to the intake vent of an air vent
register”;

(b) a disclaimer of the exclusive right to use
BERRIES apart from the mark as shown in the
application;

Thus, the application involved in this appeal remains as an
intent-to-use application.
2 Registration No. 2250534, issued June 1, 1999. Section 8 and
15 affidavits accepted and acknowledged.
Serial No. 78363598
3
(c) arguments against the refusal to register
under Section 2(d).

(d) a proposed amendment of the application from
the Principal Register to the Supplemental
Register.

Additionally, applicant filed an amendment to allege use.
See footnote 1, supra.
On March 30, 2005, the examining attorney issued a
denial of the request for reconsideration, stating:
After careful consideration of the law and facts
of the case, the examining attorney must deny the
request for reconsideration and adhere to the
final action as written since no new facts or
reasons have been presented that are significant
and compelling with regard to the point at issue.

Accordingly, applicant’s request for
reconsideration is denied. The time for appeal
runs from the date the final action was mailed.

The examining attorney did not address applicant's
disclaimer of the term BERRIES as the examining attorney
required in the final Office action, or the proposed
amendments to the identification of goods and to the
Supplemental Register.3 In her brief, the examining
attorney mentions these filings but does not state what

3 The Office’s electronic database does not reflect that the
disclaimer, the amended identification of goods or the amendment
to the Supplemental Register have been entered.
Serial No. 78363598
4
action was taken on such filings. She simply states that
the “request for reconsideration was denied by [the]
examining attorney ….”4
After the examining attorney’s denial of the request
for reconsideration, the appeal was resumed. Applicant and
the examining attorney have filed briefs.5 Applicant did
not request an oral hearing.
We affirm the Section 2(d) refusal of registration.
Consideration of the examining attorney’s disclaimer
requirement at this time is therefore moot.
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

4 We note that even if the examining attorney had approved
applicant's disclaimer and allowed applicant's proposed amendment
to the Supplemental Register, the disclaimer and the amendment to
the Supplemental Register would not have overcome the examining
attorney’s Section 2(d) refusal. Applications for registration
on the Supplemental Register may be refused registration under
Section 2(d). See TMEP § 1207.
5 The examining attorney has referred to certain “attachments” in
her brief at p. 7, and, although the record is not entirely
clear, it appears that the examining attorney did not earlier
introduce such “attachments” into the record. The record in the
application should be complete prior to the filing of an appeal,
and the Board will ordinarily not consider additional evidence
filed with the Board by the appellant or by the examiner after
the appeal is filed. See Trademark Rule 2.142(d) and TBMP §
1207.01 (2d ed. rev. 2004). Thus, we have not further considered
either the website evidence regarding air fresheners nor the
third-party registrations which include a disclaimer of the term
BERRY.

Serial No. 78363598
5
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,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We initially turn to the similarities between
registrant's and applicant's goods. Because applicant's
identification of goods does not specify whether
applicant's air fresheners are scented or unscented,
applicant's identification includes scented air fresheners.
Both party’s goods, therefore, are “scented air
fresheners.”6 Although applicant adds in its identification
of goods that its goods are “applie[d] directly onto an air
vent register,” registrant’s identification of goods is not
restricted in terms of the manner of use, and hence, for
purposes of the likelihood of confusion analysis,
encompasses scented air fresheners that are applied

6 Applicant has characterized its goods as scented air
fresheners. See Applicant's Brief at p. 5 (“[T]he freshness
emanates from the vent that conveys the air back into the various
rooms, having picked up the scent from the intake vent, where the
device is applied.”).
Serial No. 78363598
6
directly onto an air vent register or directly to the
intake vent of an air vent register. Thus, applicant's
argument regarding the manner of use of its goods is
irrelevant to our analysis. (“[A]pplicant's product is a
very specific type of air freshener, it is not one that is
sprayed around the room like most air fresheners, it is
more of a device, that is applied directly to the air vent
register, particularly the intake air register, as a
compact small air refreshing device.” Applicant's Brief at
p. 5.) We therefore find that applicant's and registrant’s
goods are legally identical.
We next consider the similarities of the marks. We do
not consider whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In comparing marks in their entireties, it is
completely appropriate to give less weight to a portion of
a mark that is merely descriptive of the relevant goods or
services. In re National Data Corp., 753 F.2d 1056, 224
Serial No. 78363598
7
USPQ 749 (Fed. Cir. 1985). (“That a particular feature is
descriptive … with respect to the relevant goods or
services is one commonly accepted rationale for giving less
weight to a portion of the mark.”).
Both of the two-word marks at issue begin with the
word SPRING. Applicant has not made of record any evidence
whatsoever showing that SPRING is in any way descriptive of
either his goods or registrant’s goods.
The words BERRIES (part of applicant’s mark) and
MULBERRIES (part of registrant’s mark) are merely
descriptive of the goods of applicant and registrant.
Registrant has disclaimed MULBERRIES and applicant has
sought to disclaim BERRIES. Clearly, as applied to air
fresheners, both BERRIES and MULBERRIES describe the scent
of the air freshener.
Not only is the word SPRING the dominant portion of
both marks, but in addition, it is “the first word” in both
marks, an additional factor which makes “the marks
similar.” Palm Bay Imports, Inc. v. Veuve Clicquot, 396
F.3d 1396, 73 USPQ2d 1689 (Fed. Cir. 2005). See also
Presto Products v. Nice-Pak Products, 9 USPQ2d 1895 (TTAB
1998) (“The fact that two marks share the same word is
generally a matter of some importance since it is often the
Serial No. 78363598
8
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered.”)
Finally, it must be remembered that both applicant’s
mark and registrant’s mark are in standard character or
typed form. This means that the two marks are not limited
to being “depicted in any special form,” and hence we are
mandated to “visualize what other forms the mark[s] might
appear in.” Phillips Petroleum Co. v. C. J. Webb Inc., 442
F.2d 1376, 170 USPQ 35 (CCPA 1971). See also INB National
Bank v. Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992). One
reasonable manner of presentation for both marks would be
to depict SPRING in large lettering on one line, and then
depict the subordinate elements (BERRIES or MULBERRIES) in
decidedly smaller lettering on a second line. When so
depicted, the two marks would be extremely similar, and
their use on legally identical goods would result in not a
mere likelihood of confusion, but rather an extremely high
probability of confusion.
Applicant has argued that SPRING “is quite common,
well registered, and [for] all or the same or related
products” as in the present application and cites to
numerous use-based, third-party registrations made of
Serial No. 78363598
9
record with applicant's request for reconsideration.7
Although third-party registrations can be used to show that
a registered mark is weak, see Conde Nast Publications Inc.
v. Miss Quality, Inc., 180 USPQ 149 (TTAB 1973), the mere
presence of the same "weak" term in two marks does not
automatically mean that confusion is not likely. Even weak
marks are entitled to protection against the registration
of a similar mark for identical goods. See Plus Products
v. Pharmavite Pharmaceutical Corp., 221 USPQ 256 (TTAB
1984). See also King Candy Co. v. Eunice King's Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974) (likelihood
of confusion is to be avoided as much between weak marks as
between strong marks). Moreover, as to the marks at issue
herein, the structure and overall impression of applicant's
and registrant’s marks are much more similar than those in
the third-party registrations. Both marks begin with
SPRING and end with BERRIES. Further, as the examining
attorney stated, "while applicant has provided instances

7 We have not considered, however, the applications submitted
with the request for reconsideration because they are probative
only of the fact that they have been filed. Also, we have not
considered the cancelled registrations - cancelled registrations
are not evidence of anything except that they issued. Further,
we have not considered those records for which a registration
number is not apparent because such records are incomplete and
their existence cannot be readily be verified.

Serial No. 78363598
10
where SPRING is included in connection with the same or
similar goods, applicant has not provided evidence that
SPRING in connection with BERRIES or variations of BERRIES
is weak in connection with air fresheners." Thus,
applicant's argument is not well taken.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.8

8 If this case is appealed and our decision herein is reversed,
the application will be returned to the examining attorney for
consideration of (a) the amendment to allege use, (b) the
proposed amendment to the identification of goods, (c) the
disclaimer, and (d) the proposed amendment to the Supplemental
Register.