Sam Hedaya Corp.

Trademark Trial and Appeal Board

Mar 10, 2010

No. 76672163 (T.T.A.B. Mar. 10, 2010)

Mailed:
March 10, 2010
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sam Hedaya Corp.
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Serial No. 76672163
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Joseph Sutton, Esq. of Ezra Sutton P.A. for Sam Hedaya Corp.

Priscilla W. Milton, Trademark Examining Attorney, Law
Office 110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Zervas, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Sam Hedaya Corp. (applicant) has applied to register
the mark shown here on the Principal Register for goods
identified now as “potholders, oven mitts, kitchen towels,
table cloths, placemats, napkins and table runners, all of
the foregoing goods made of textile, and not sold in
furniture stores” in International Class 34.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76672163
2

During prosecution of the application applicant deleted
several items from its identification of goods,
specifically, window curtains, shower curtains, chair pad,
chair covers and bedding, and applicant inserted the
wording, “not sold in furniture stores.”
The application is based on applicant’s statement that
it first used the mark anywhere and first used the mark in
commerce in September 1995. The application also includes
the following statement: “Color is not claimed as a feature
of the mark.”
The Examining Attorney has issued a final refusal under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the
grounds that applicant’s mark is likely to be confused with
the marks in the following two registrations on the
Principal Register owned by different parties:
1. Registration No. 2541032 for the mark shown
here for goods identified as “furniture, namely
sofas, sleeper sofas, extendible sofas, chairs,
armchairs, love seats, ottomans” in International
Class 20.

Serial No. 76672163
3

The registration issued on February 19, 2002, and
it is active.

and

2. Registration No. 2116646 for the mark 525
HOMEWEAR in typed form for goods identified as
“blankets (bed) and throws” in International Class
24. The registration issued on November 25, 1997,
and it has been renewed.

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm the refusal as to
both cited registrations.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to be
likely, when used on or in connection with the goods of the
applicant, to cause confusion….” 15 U.S.C. § 1052(d). The
opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the factors
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the similarity
of the marks and the similarity of the goods in the
application and the cited registrations. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
Serial No. 76672163
4
29 (CCPA 1976) (“The fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
With regard to the marks, in our comparisons we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
As to the goods, the goods in the application and the
cited registrations need not be identical to find a
likelihood of confusion under Section 2(d). They need only
be related in such a way that the circumstances surrounding
their marketing would result in relevant purchasers
mistakenly believing that the goods originate from the same
source. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels of
trade for those goods we must consider the goods as
identified in the application and registration. See 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 set forth in the application
Serial No. 76672163
5
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”).
Registration No. 2541032
First, with regard to Registration No. 2541032, we find
applicant’s mark highly similar to the mark in that
registration. Both marks include HOME WEAR as the only word
element, and both marks include a simple drawing of a house
above those words as the only design element. Thus, the
marks are highly similar in appearance and identical in
sound. The marks are also identical in connotation and
commercial impression. HOME WEAR connotes and projects the
impression that the goods will “dress up” the home. For the
record, we reject applicant’s argument that HOME WEAR is
highly suggestive, and therefore weak. Applicant submitted
no evidence to support this contention. Though HOME WEAR
may be suggestive, it is also both clever and distinctive.
Therefore, we conclude that the marks are highly
similar. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975) (“… it is well established that the test to
be applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-by-
side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
Serial No. 76672163
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necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
of trademarks.”) (internal citations omitted).
As to the goods, we conclude that the respective goods
are related. Applicant’s goods are “potholders, oven mitts,
kitchen towels, table cloths, placemats, napkins and table
runners, all of the foregoing goods made of textile, and not
sold in furniture stores.” The goods in the cited
registration are “furniture, namely sofas, sleeper sofas,
extendible sofas, chairs, armchairs, love seats, ottomans.”
The Examining Attorney has provided copies of numerous
use-based, third-party registrations which cover both types
of goods, including the following:
Registration No. 2981228 for the mark ST. JOHN
HOME for “armchairs, bed frames, bedroom
furniture, bed, benches, furniture cabinets, wood
carvings, chairs, furniture chests, couches,
cushions, divans, embroidery frames, figures,
figurines made of bone, ivory, plastic, plaster,
wood and wax, lawn furniture, living room
furniture, jewelry boxes not of metal, jewelry
cases not of metal, love seats, magazine racks,
non-metal boxes, furniture mirrors, non-metal
money boxes, picture frame moldings, magazine
racks, sculptures as wall decorations, sideboards,
sofas, statuettes made of bone ivory, plastic,
plaster, wood and wax; stools, storage racks,
tables, venetian blinds, waterbeds, window shades”
in International Class 20 and “bath linens, table
linens, bed blankets, bed canopies, bed sheets,
bed spreads, pillow cases, pillow shams, cloth
doilies, cloth labels, table cloths not of paper,
comforters, cotton fabric, unfitted fabric
Serial No. 76672163
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furniture covers, curtains, dish cloths,
draperies, flannel, glass cloths, handkerchiefs,
kitchen towels, quilts, fabric table runners, sail
cloths, tapestries of textile, fabric bath mats,
textile place mats, textile wall hangings, tea
towels, upholstery fabrics, washcloths, window
curtains, window treatments, namely, puffs, poufs,
swags, and valances; and woolen fabrics” in
International Class 24;

Registration No. 2315476 for the mark SHABBY CHIC
BY RACHEL ASHWELL for “furniture, namely, chairs,
sofas, ottomans, couches, pillows, love seats,
tables, room divider screens, fire place screens,
wall cabinets, dressers and fitted fabric slip
covers for furniture” in International Class 20
and “fabrics, linens and textiles, namely, fabric
table runners, table linen coasters, table linen
napkins, table linen placemats, tapestries of
textile, textile bathmats, textile napkins,
textile placemats, textile wallhangings, unfitted
fabric, textile and linen furniture covers, and
window curtains” in International Class 24;

Registration No. 3149870 for the mark JUAN CARLOS
for “home furnishings, namely furniture, chairs,
beds, cabinets, cushions and pillows” in
International Class 20 and “home accessories,
namely towels, dish cloths, washcloths, pillow
covers, covers for cushions, table linens, bath
linens, bed linens, textile napkins, cloth
coasters, window curtains, placemats of textile
materials, fabric flags, and throws” in
International Class 24;

Registration No. 3217614 for the mark 3D RANCH BY
KATHY DIACON for “pillows, furniture, room
dividers, sofas, chairs, and foot stools” in
International Class 20 and “dining linen, table
cloths, cloth napkins, cloth placemats and table
runners, window curtains, textile wall hangings,
bed linen, bed blankets, blanket throws,
children's blankets, receiving blankets, bed
spreads, diaper changing pads not of paper, burp
cloths not of paper” in International Class 24;

Registration No. 2992998 for the mark TODD OLDHAM
HOME (ROOM) for “fitted fabric furniture covers;
furniture, namely, bedroom furniture, dining room
furniture, lawn furniture, entertainment centers;
Serial No. 76672163
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sofas, namely, upholstered sofas; chairs, namely,
reclining chairs, stationary chairs; tables,
namely, dining room tables, end tables, coffee
tables; mirrors; clothing and coat hangers; non
metal tool boxes; plastic boxes, wood boxes; pet
cushions and portable beds for pets” in
International Class 20 and “bed blankets, bed
linen, bed pads, bed sheets, bed spreads;
curtains, fabric tabletop and tableware items,
namely, fabric table runners, fabric table
toppers, fabric table cloths, table linen, table
mats not of paper; fabric, namely, unfitted fabric
furniture covers and upholstery fabric; towels and
pet towels” in International Class 24; and

Registration No. 2845194 for the mark LAUREN RALPH
LAUREN for “furniture, namely chairs, sofas,
ottomans pillows” in International Class 20 and
“bed sheets, comforters, blankets, dust ruffles,
duvet covers, pillow cases, pillow shams, bed
shams, bed spreads, shower curtains, towels,
fabric bath mats, napkins, fabric placemats and
fabric tablecloths” in International Class 24.

These third-party registrations provide evidence that the
goods identified in the application and the cited
registration are the types of goods which may emanate from
the same source. In re TSI Brands Inc., 67 USPQ2d 1657,
1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993). On the basis of this evidence,
we conclude that the goods identified in the application are
related to the goods identified in the cited registration.
Furthermore, we reject applicant’s argument that the
restriction in its identification of goods stating “…and not
sold in furniture stores” would preclude confusion. The
fact remains that the respective types of goods are the
types of goods which could be sold under the same mark.
Serial No. 76672163
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Accordingly, a potential purchaser may associate both types
of goods with the same source even though the purchaser may
encounter them in different settings, that is, in different
types of store or in different departments within the same
store.
Furthermore, we reject applicant’s unsupported
assertion that “… the normal channel of trade for furniture
items is furniture stores or online furniture stores.”
Applicant’s Brief at 3 (underlining provided by applicant).
Department stores, for example, sell both types of goods.
Therefore, we reject applicant’s argument that the
restriction in its application would preclude confusion.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any not
specifically discussed here, we conclude that there is a
likelihood of confusion between Applicant’s HOME WEAR and
Design mark when used in connection with “potholders, oven
mitts, kitchen towels, table cloths, placemats, napkins and
table runners, all of the foregoing goods made of textile,
and not sold in furniture stores” and the cited HOME WEAR
and Design mark when used in connection with “furniture,
namely sofas, sleeper sofas, extendible sofas, chairs,
armchairs, love seats, ottomans.”
Serial No. 76672163
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Registration No. 2116646
With regard to Registration No. 2116646, we also find
applicant’s mark similar to the mark in that registration,
525 HOMEWEAR. Both marks include HOME WEAR/HOMEWEAR as the
only word element. The presence of the space in applicant’s
mark is not a significant distinction. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ at 108 (“… it is well established
that the test to be applied in determining likelihood of
confusion is not whether marks are distinguishable on the
basis of a side-by-side comparison….”) (internal citations
omitted).
Furthermore, we find the numeral “525” insufficient to
distinguish the literal elements of the marks because, it is
HOME WEAR which has meaning and which serves to project both
the connotation and commercial impression in both marks.
Under these circumstances, the fact that 525 appears as the
first element in the cited mark is not controlling.
We likewise find the design element in applicant’s mark
insufficient to distinguish the marks. If a mark includes
both a word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987).
Serial No. 76672163
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While there are differences in the appearance and sound
between the marks, we find that the strong similarity in
connotation and commercial impression overrides these
differences. As we noted above, HOME WEAR connotes and
projects the impression that the goods will “dress up” the
home. This connotation and commercial impression is what is
most memorable and distinctive about both marks. Therefore
we conclude that the marks are similar.
As to the goods, we conclude that the respective goods
are related. Applicant’s goods are “potholders, oven mitts,
kitchen towels, table cloths, placemats, napkins and table
runners, all of the foregoing goods made of textile, and not
sold in furniture stores.” The goods in the cited
registration are “blankets (bed) and throws.”
Here also, the Examining Attorney has provided copies
of numerous use-based, third-party registrations which
include both types of goods, including the following:
Registration No. 2548383 for the mark READY-TO-BED
for “bedding, namely, duvet covers, shams,
bedskirts, throw blankets, bed curtains, table
linens, textile napkins, fabric table runners,
fabric place mats, window curtains, bed sheets,
pillow cases” in International Class 24;

Registration No. 2349358 for the mark DAKOTAH for
“table covers, draperies, curtains, bath mats,
bedding, namely, duvet covers, sheets, shams and
coverlets; blankets; bed skirts, comforters;
bedspreads; crib bumper pads; mantel scarves;
blankets and pillows packaged and sold as a unit;
table linens, namely, placemats, table rounds and
runners; throws; textile tapestries; window
treatments, namely pole pockets and valances;
Serial No. 76672163
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mattress pads; sweater knit throws; outdoor slip
covers; and sweater knit bedding” in International
Class 24;

Registration No. 2514043 for the mark CANNON
CLASSIC CASUALS for “towels and toweling, table
cloths not of paper, placemats and cloth napkins,
decorative and drapery fabrics, bathroom shower
curtains, bathroom hand and face towels and
material for same, textile fabrics of cotton,
wool, rayon and synthetic materials and mixtures
of the same, fabric toilet seat covers,
washcloths, household utility cloths, pot holders,
bedding namely, blankets, bed sheets and sheeting,
pillow cases, cloth pillow protectors, mattress
pads, mattress covers, dust ruffles, duvet covers,
bedspreads, coverlets and throws, comforters,
drapes, curtains and fabric valances” in
International Class 24;

Registration No. 3298430 for the mark ECO-
ORDINATES and Design for “comforters; blanket
throws; afghans; coverlets; bed sheets; pillow
cases; duvets; shams; dust ruffles; unfitted
fabric furniture covers; shower curtains; window
treatments, namely draperies, curtains, fabric
valences, curtain panels and tiebacks; table
linens, namely placemats made of fabric and
napkins made of fabric; kitchen towels; pot
holders; and oven mits” in International Class 24;
and

Registration No. 2966761 for the mark SQUEEZYS for
“pillow cases, pillow shams, bed sheets,
comforters, bedspreads, quilts, blankets, throws,
duvet covers, dust ruffles, mattress pads,
curtains, draperies, tapestry textile wall
hanging, tablecloths not made out of paper,
textile napkins, textile pot holders, textile oven
mitts, kitchen towels, bath towels, beach towels,
facecloths, and shower curtains” in International
Class 24.

We note that at filing, applicant claimed use on both
the goods currently listed in the application and bedding
and that both types of goods are textile home furnishings.
Serial No. 76672163
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Based on the evidence of record, we have no hesitation in
finding that the goods identified in the application and the
cited registration are related.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any not
specifically discussed here, we conclude that there is a
likelihood of confusion between Applicant’s HOME WEAR and
Design mark when used in connection with “potholders, oven
mitts, kitchen towels, table cloths, placemats, napkins and
table runners, all of the foregoing goods made of textile,
and not sold in furniture stores” and the cited 525 HOMEWEAR
mark when used in connection with “blankets (bed) and
throws.”
Decision: We affirm the refusal under Trademark Act
Section 2(d) as to both cited registrations.