Salton, Inc.

Trademark Trial and Appeal Board

Apr 27, 2006

No. 78197989 (T.T.A.B. Apr. 27, 2006)

Mailed:
27 April 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Salton, Inc.
________

Serial No. 78197989
_______

Samuel Fifer of Sonnenschein Nath & Rosenthal, LLP for
Salton, Inc.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Walters, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 26, 2002, applicant Salton, Inc. filed an
intent-to-use application (No. 78197989) to register the
mark BEYOND, in standard character or typed form, on the
Principal Register for the following goods:
Electric household kitchen appliances, namely, ovens,
microwave ovens, convection ovens, toaster ovens,
toasters, grills, electric slow cookers, roasters,
coffee makers and bread makers; hand held electric
hair dryers, commercial and stationary hair dryers;
whirlpool baths for feet; heat and steam facial
saunas; portable electric water heaters and aerators
for washing and refreshing feet for domestic use;
parts and replacement parts therefor in International
Class 11.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78197989
2
The examining attorney has refused to register
applicant’s mark on the ground that the mark, if it were
used on or in connection with the identified goods, so
resembles the registered mark BEYOND as shown below:

for “retail store services in the field of linen products,
housewares, and home furnishings” as to be likely to cause
confusion, to cause mistake or to deceive. 15 U.S.C.
§ 1052(d).1
When the refusal was made final, applicant filed a
notice of appeal.
The examining attorney submitted a definition of the
term “furnishings” as “the furniture, appliances, and other
movable articles in a home or other building.” The
examining attorney also submitted evidence from what is
apparently registrant’s website that shows that the
retailer Bed Bath & Beyond sells toasters, toaster ovens,
slow cookers,2 grills, coffee makers, bread makers, and hair

1 Registration No. 2,003,965 issued October 1, 1996, renewed.
The current owner is identified as Bed Bath & Beyond Procurement
Co., Inc.
2 We note that one of the slow cookers is a “Salton Rice Cooker.”
Ser No. 78197989
3
dryers. These goods are identical to the goods for which
applicant seeks registration. The examining attorney
concludes that the “combination of the evidence and the
dictionary definitions shows that the goods involved with
registrant’s retail services are clearly identical to the
goods identified under Applicant’s mark.” Brief at 5.
Furthermore, the examining attorney argues that the marks
“are essentially identical” (Brief at 4) inasmuch as they
are for the same word and the mark in applicant’s drawing
is not limited to any particular stylization.
Applicant submits that since “the term ‘BEYOND’ is
weak, the cited mark deserves only a narrow scope of
protection” (Brief at 3) and its “goods are sufficiently
distinct from the services under the cited mark to preclude
any realistic likelihood of confusion” (Brief at 6).
Preliminary Matters
Before we begin our analysis of the likelihood of
confusion issue, it is necessary that we address several
evidentiary matters. With its Reply Brief, applicant
submitted numerous exhibits. Among the exhibits was a list
of over one thousand applications and registrations
containing the word “Beyond.” The examining attorney
“objects to any additional evidence because the record must
be complete prior to the Appeal.” Brief at 3. We agree.
Ser No. 78197989
4
It is too late at the appeal stage to submit additional
evidence and, contrary to applicant’s suggestion, we do not
take judicial notice of USPTO registrations during an
appeal. TBMP § 1208.04 (2d ed. rev. 2004). See also In re
First Draft Inc., 76 USPQ2d 1183, 1192 (TTAB 2005)
(“Submission of the TARR printout with its appeal brief,
however, is an untimely submission of this evidence”) and
In re Carolina Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB
1998) (“The Board does not take judicial notice of third-
party registrations, and the mere listing of them is
insufficient to make them of record”). Therefore, we will
not consider any new registrations submitted with
applicant’s brief. However, we note that with its response
dated December 19, 2003, applicant submitted a list of over
900 records containing the word “Beyond.” Obviously, this
list was submitted long prior to the appeal. Normally,
applicant or the examining attorney must submit copies of
the registrations and not just a list in order for the
registrations to be considered. In re Duofold, Inc., 184
USPQ 638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record”).
However, if an applicant submitted a list of registrations
earlier in the prosecution and the examining attorney did
not advise the applicant that a mere list was insufficient,
Ser No. 78197989
5
“the examining attorney will be deemed to have stipulated
the registrations into the record.” TBMP § 1208.02 (2d ed.
rev. 2004). See also In re Hayes, 62 USPQ2d 1443, 1445 n.3
(TTAB 2003); In re Broyhill Furniture Industries Inc., 60
USPQ2d 1511, 1513 n.3 (TTAB 2001). In this case, applicant
specifically mentioned the goods and services in several
registrations and the examining attorney discussed them.
Office Action dated February 10, 2004 at 3. Therefore, the
earlier list of registrations that consists of the serial
and registration number, the mark, and the “Live/Dead”
status as well as the goods and services specified for the
registrations discussed by the examining attorney and
applicant are deemed to be of record. In re Total Quality
Group, Inc., 51 USPQ2d 1474, 1477 n.6 (TTAB 1999) (“In the
present case, however, the Examining Attorney did not raise
any such objection, but rather considered the registrations
as if they were properly made of record”).3
Likelihood of Confusion
Under our long-established case law, when we have an
issue of whether there is a likelihood of confusion under
Section 2(d), we analyze the facts as they relate to the

3 We note that applicant’s list includes trademark applications
and these “applications, as opposed to registrations, have no
probative value other than as evidence that the applications were
filed.” TBMP § 1208.02 (2d ed. rev. 2004).
Ser No. 78197989
6
relevant factors set out in In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See
also In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973); and Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods [and services]
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by looking at the similarities or
dissimilarities of the marks. Here, the marks are for the
same word BEYOND. The only difference between the marks is
that registrant’s mark is shown in a stylized form.
However, applicant’s mark is not limited to any particular
display. “[T]he argument concerning a difference in type
style is not viable where one party asserts rights in no
particular display. By presenting its mark merely in a
typed drawing, a difference cannot legally be asserted by
that party. Tomy asserts rights in SQUIRT SQUAD regardless
of type styles, proportions, or other possible variations.
Thus, apart from the background design, the displays must
Ser No. 78197989
7
be considered the same.” Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 939 (Fed. Cir. 1983). Therefore, the
marks BEYOND and BEYOND (stylized) must be considered the
same and these marks are legally identical in sound,
appearance, meaning, and commercial impression.4 In
addition, we note that even if the stylization is
considered, it is a minor feature of the registered mark
and the word is clearly dominant. Accord CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
(“[M]inor design features do not necessarily obviate
likelihood of confusion arising from consideration of the
marks in their entireties. Moreover, in a composite mark
comprising a design and words, the verbal portion of the
mark is the one most likely to indicate the origin of the
goods to which it is affixed”).
Next, we consider whether applicant’s goods and
registrant’s services are related. Applicant’s goods
include: ovens, microwave ovens, convection ovens, toaster
ovens, toasters, grills, electric slow cookers, roasters,

4 Applicant also argues (Brief at 7) that “any use of the word
BEYOND in connection with BB&B would be instantly recognized as a
shortened version of the mark BED BATH & BEYOND … with the
consumer filling in the remainder.” However, we do not read
limitations into the cited registration and we will not assume
that purchasers would understand that there are additional words
associated with the cited mark. Accord Squirtco v. Tomy Corp.,
216 USPQ at 940.
Ser No. 78197989
8
coffee makers, bread makers, hair dryers, whirlpool baths
for feet, heat and steam facial saunas, and portable
electric water heaters and aerators for washing and
refreshing feet for domestic use. The registered mark is
used in association with retail store services in the field
of linen products, housewares, and home furnishings. As
indicated earlier, the examining attorney has included a
definition of the term “furnishings” as “the furniture,
appliances, and other movable articles in a home or other
building.” This definition would include many of the items
that are set out in the application. In addition to this
evidence, the examining attorney has also submitted
evidence that registrant does sell numerous articles that
are identical or virtually identical to the goods in the
subject application. Thus, at least in part, registrant’s
services involve selling items that are identical or
virtually identical to applicant’s.
Thus, the question in this case is whether the goods
and retail services involving the sale of the same goods
are related. The Federal Circuit has addressed this issue
in a similar case.
The only aspect of this case which is unusual is that
the marks sought to be registered are for services
while the prior registration on which their
registration is refused is for wares. Considering the
facts (a) that trademarks for goods find their
Ser No. 78197989
9
principal use in connection with selling the goods and
(b) that the applicant's services are general
merchandising -- that is to say selling -- services,
we find this aspect of the case to be of little or no
legal significance. The respective marks will have
their only impact on the purchasing public in the same
marketplace.

In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d
1025, 1026 (Fed. Cir. 1988) (emphasis in original).
The services in the Hyper Shoppes case involved
general merchandise store services. In the present case,
registrant’s retail store services are more directly
related to applicant’s goods than broad general merchandise
services. Registrant’s services specifically include the
sale of housewares and home furnishings. Housewares and
home furnishings would include many of the items in
applicant’s identification of goods.
When we consider the question of whether registrant’s
services and applicant’s goods are related, it “has often
been said that goods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that goods
or services are related in some manner or that
circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used thereon, to a mistaken belief that they originate from
Ser No. 78197989
10
or are in some way associated with the same producer or
that there is an association between the producers of each
parties' goods or services.” In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB
2002).
Here, the question is whether prospective purchasers,
when they encounter the same mark on coffee makers, slow
cookers, toaster ovens, and similar products and on stores
selling the same items, will assume that there is some
association or relationship between the source of the goods
and services. In this case, it is highly likely that many
of these purchasers will assume that there is some
relationship between the sources of these goods and
services. Therefore, we determine that these goods and
services are related.
At this point, we emphasize that we must compare the
goods and services as they are identified in the
application and registration. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the 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
Ser No. 78197989
11
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 the sales of
goods [or services] are directed”). 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” or services). While
applicant asserts that “the kitchen and personal care
appliances described in Applicant’s application will be
sold in conjunction with Applicant’s sophisticated,
cutting-edge BEYOND home network” (Reply Brief at 6),
applicant’s goods are not limited in this way. Therefore,
we must consider applicant’s goods to include all types of
toaster ovens, coffee makers, slow cookers, and similar
products.5
Applicant also argues (Reply Brief at 3) that “[s]ince
the term ‘BEYOND’ is weak, the cited mark deserves only a

5 In its Reply Brief (p. 9), applicant, in the alternative,
requested a remand to consider a new identification of goods. In
his brief (p. 6), the examining attorney observed that he had
“recommended that Applicant amend the identification of goods[.]
Applicant made no attempt to distinguish the goods in the
identification by amendment other than to delete the wording
‘household,’ which was an impermissible expansion of the scope of
the goods.” We deny applicant’s belated request to remand the
application. Not only is the request in the Reply Brief late, it
is not clear if it would obviate the refusal. TBMP §§ 1205.01
and 1209.04 (2d ed. rev. 2004).
Ser No. 78197989
12
narrow scope of protection that does not reach applicant’s
mark.” Applicant goes on to argue (Reply Brief at 4) that
it has “submitted evidence to the Examining Attorney
demonstrating that BEYOND is used in connection with a
multitude of goods and services, and hence, the term is too
weak and common to warrant a wide scope of protection.”
However, applicant’s evidence consists primarily of a list
of applications and registrations with only the mark
specified. This list is entitled to little probative
weight since the goods and services are not even
identified.6 Secondly, even if the actual registrations
were included, “third-party registrations may be used to
demonstrate that a portion of a mark is suggestive or
descriptive, they cannot be used to justify the
registration of another confusingly similar mark.” In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). See
also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200,
22 USPQ2d 1742, 1745 (Fed. Cir. 1992):
As to strength of a mark, however, registration
evidence may not be given any weight. AMF Inc. v.
American Leisure Prods., Inc., 474 F.2d 1403, 1406,
177 USPQ 268, 269 (CCPA 1973) (CCPA 1973) ("The

6 Moreover, for those registrations where the goods and services
are identified in this record, such goods and services are not as
similar to the services in the cited registration as are
applicant’s goods. See Response dated December 19, 2003 at 4-5
(vegetable oils, live musical performances, pre-recorded magnetic
media, skin lotions, and retail store services involving AV and
electronic equipment and laptops).
Ser No. 78197989
13
existence of [third party] registrations is not
evidence of what happens in the market place or that
customers are familiar with them….”) (citations
omitted).

Similarly, applicant’s list of marks cannot be used to
demonstrate that the registered mark is weak. We also add
that even if the term “Beyond” was not entitled to a broad
scope of protection, the scope of protection in this case
is not broad. Applicant seeks registration for its mark
for various appliances and it has been refused
registration because of a cited registration for services
that include selling those same items.
Applicant also points out that one of its applications
“for BEYOND (‘vacuum cleaners, carpet cleaning machines,
floor cleaning machines’) would also be covered by the
Examining Attorney’s all-encompassing definition of
‘furnishings’ – yet that application was allowed by the
PTO.” Reply Brief at 8. We fail to see the significance
of this information. Each case must be decided on its own
merits. In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB
1994) (“ Suffice it to say that each case must be decided on
its own merits based on the evidence of record. We
obviously are not privy to the record in the files of the
registered marks and, in any event, the issuance of a
registration(s) by an Examining Attorney cannot control the
Ser No. 78197989
14
result of another case”). Finally, the application (Serial
No. 78197974) is now apparently abandoned.
When we consider the record, we conclude that when the
marks BEYOND and BEYOND (stylized) would be used on or in
association with the identified goods and services,
confusion would be likely. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993) (“[E]ven when
goods or services are not competitive or intrinsically
related, the use of identical marks can lead to an
assumption that there is a common source”).
Decision: The examining attorney’s refusal to
register applicant’s mark BEYOND for the identified goods
on the ground that it is likely to cause confusion with the
cited registered mark is affirmed.