Roll-A-Cover, LLCv.James D. Cohen

Trademark Trial and Appeal Board

Jan 11, 2011

No. 91182364 (T.T.A.B. Jan. 11, 2011)

Mailed: January 11, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Roll-A-Cover, LLC
v.
James D. Cohen
_____

Opposition No. 91182364
For Application Serial No. 77121414
_____

Joseph L. Rini, Esq. for Roll-A-Cover, LLC.

Joseph D. Cohen in pro per.
_____

Before Walters, Holtzman, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On March 2, 2007, applicant, James D. Cohen,
applied to register the mark MAGIC SUNROOMS, in standard
character format, for “constructing sunrooms,” in
International Class 37.1
On February 10, 2008, opposer, Roll-A-Cover, LLC
opposed the registration of applicant’s mark on various
grounds, including that applicant’s mark is likely to cause
confusion with opposer’s mark ROLL-A-COVER in violation of
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91182364
2
2(d) of the Lanham Act.2 On brief, opposer stated the
following in support of its likelihood of confusion claim:
Defendant-Applicant’s products are likely to be
confused with Plaintiff-Opposer’s products based
on the use of the many components and design,
[sic] engineering that are property of Plaintiff-
Opposer. Defendant-Applicant is attempting to
register a trademark covering products that are
similar to Plaintiff-Opposer’s products, i.e.,
tracked and trackless retractable telescopic
enclosures and sunrooms.
(Appl’s brief at 5-6).
Applicant denied the salient allegations. Both parties
filed briefs, and opposer filed a reply brief.
The Record
The record consists of the pleadings; the file of the
involved application; and opposer’s testimonial deposition
of its Managing Member, Michael P. Morris, dated November
23, 2009, together with the exhibits thereto. Applicant did
not submit any testimony or evidence.
Priority and Standing
Standing is a threshold issue that must be proven in
every inter partes case. See Lipton Industries, Inc. v.

1 Serial No. 77121414, based on a first use date of January 3,
2007, and first use in commerce on February 2, 2007.
2 The transmittal sheet attached to opposer’s notice of
opposition mentioned several other causes of action, including
2(a) claims of deceptiveness and false suggestion of a
connection; 2(e)(1) claims of misdesriptiveness; and fraud.
However these were not pursued at trial or in opposer’s brief,
and we deem them to be waived. Furthermore, claims discussed in
the briefs that may be construed as unfair competition or theft
of trade secret are not within the jurisdiction of the Board and,
thus, the Board has not considered these claims. Accordingly,
the only claim properly pleaded and tried, and discussed herein,
is the Section 2(d) claim.
Opposition No. 91182364
3
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982) ("The facts regarding standing . . . must be
affirmatively proved. Accordingly, [plaintiff] is not
entitled to standing solely because of the allegations in
its [pleading]."). To establish standing in an opposition,
opposer must show both “a real interest in the proceedings
as well as a ‘reasonable’ basis for his belief of damage.”
See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999).
Opposer submitted a TARR printout of its ROLL-A-COVER
registration (No. 3056950) as an exhibit to the Morris
deposition, and the witness attested to its validity. See
Morris depo. at 13, and Ex. 11. The registration was
properly made of record. See Trademark Rule 2.122(d)(2); 37
CFR 2.122(d)(2); Research In Motion Ltd. v. NBOR Corp., 92
USPQ2d 1926, 1928 (TTAB 2009). Accordingly, opposer has
established its standing as well as its priority in this
proceeding. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy
Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974).
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
Opposition No. 91182364
4
de Nemours & 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
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). In any likelihood of confusion analysis, 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 Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks”).
The Services and Channels of Trade
Opposer’s Registration No. 3056950 covers, among other
things, “retail store services featuring retractable
enclosures, namely retractable enclosures for porches,
patios, pools, spas, lounge areas, dining areas, and
recreation areas, and retactable enclosures for use as
greenhouses and golf shelters; retail store services
featuring retractable wall structures for enclosing covered
Opposition No. 91182364
5
porches, covered patios, covered decks, covered lounge
areas, covered dining areas, and covered recreation areas,”3
Applicant’s mark is for “constructing sunrooms.” These
services are highly similar and overlapping.
Absent any restrictions in their respective
identifications of services, we presume that opposer’s and
applicant’s sunroom retail and/or construction services are
sold in all normal channels of trade to all usual purchasers
for services of the type identified. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In other words, to the extent that the services are
overlapping, we conclude that the channels of trade and
classes of purchasers of the parties’ services overlap as
well. These du Pont factors favor finding a likelihood of
confusion.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Preliminarily, we note that
the more similar the services at issue, the less similar the
marks need to be for the Board to find a likelihood of

3 In International Class 35, asserting dates of first use and
first use in commerce of December 31, 2002.
Opposition No. 91182364
6
confusion. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). In
comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the
services offered under the respective marks is likely to
result. San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). The proper focus is on the recollection of
the average customer, who retains a general rather than
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
In this case, however, each element of the respective
marks differs significantly. There is no overlap between
them whatsoever, nor does opposer claim to the contrary.
Indeed, opposer’s claim of likelihood of confusion does not
address the marks at all.
Opposer’s mark ROLL-A-COVER does not look or sound
anything like applicant’s mark MAGIC SUNROOMS. As for
Opposition No. 91182364
7
connotation and commercial impression, opposer’s mark
connotes a rolling cover, whereas applicant’s mark connotes
a type of sunroom. The marks are completely dissimilar in
both connotation and in commercial impression.
We find that when applicant’s and opposer’s marks are
considered in their entireties, the marks differ
significantly in appearance, sound, connotation and
commercial impression. The first du Pont factor weighs
heavily against a finding of likelihood of confusion.
Balancing the Factors
Having considered the evidence of record as it pertains
to the relevant du Pont factors, we find that confusion is
unlikely to result from the contemporaneous use of opposer’s
mark ROLL-A-COVER and applicant’s MAGIC SUNROOMS, even when
the marks are used on identical services and marketed in the
same channels of trade to the same purchasers. We find that
the dissimilarity of the marks, under the first du Pont
factor, is the dispositive factor in this case - it strongly
outweighs the evidence as to the other factors favoring
opposer’s case. See e.g., Kellogg Co. v. Pack-Em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“we know of no reason why, in a particular case,
a single du Pont factor may not be dispositive.”).
DECISION: The opposition is dismissed.