Sloane Construction Inc.

Trademark Trial and Appeal Board

Aug 10, 2015

No. 86441206 (T.T.A.B. Aug. 10, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sloane Construction Inc.
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Serial No. 86441206
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Gene Bolmarcich, Esq.
for Sloane Construction Inc.
Betty Chang, Trademark Examining Attorney, Law Office 115,
John Lincoski, Managing Attorney.
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Before Quinn, Lykos and Kuczma,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Sloane Construction Inc., doing business as Sloane Painting (“Applicant”), seeks
registration on the Principal Register of the mark THE TANNERY (in standard
characters) for “tanning salons and skin tanning services for humans for cosmetic
purposes” in International Class 44.1
The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when

1 Application Serial No. 86441206, filed October 31, 2014, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere and first use in commerce
on March 23, 2012.
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used in connection with Applicant’s services, so resembles the previously registered
mark CELSIUS TANNERY (in typed letters) for “tanning salon services” in
International Class 42,2 as to be likely to cause confusion.3
When the Examining Attorney made the refusal final, Applicant appealed.
Applicant and the Examining Attorney filed briefs. We reverse the refusal.
Applicant claims that the merely descriptive or suggestive nature of the shared
term “TANNERY” in the marks, coupled with the presence of the additional
arbitrary term “CELSIUS” in the cited registration, render the marks not
confusingly similar. According to Applicant, the marks, when considered as a whole,
are dissimilar. Applicant submitted a dictionary definition of the word “tannery.”
The Examining Attorney maintains that the marks are similar, both sharing
the term “TANNERY.” Further, the Examining Attorney finds the additional term
“CELSIUS” in Registrant’s mark to be insufficient to distinguish the marks when
they are used in connection with identical services. In support of the refusal, the
Examining Attorney submitted a dictionary definition of “tannery.”
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or

2 Registration No. 2558494, issued April 9, 2002; renewed.
3 Prior to November 2, 2003, “standard character” drawings were known as ““typed”
drawings. A typed mark is the legal equivalent of a standard character mark. TMEP
§ 807.03(i) (2015).
Application Serial No. 86441206

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services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
We initially consider the second du Pont factor regarding the
similarity/dissimilarity between Applicant’s and Registrant’s services. In making
our determination regarding the relatedness of the services, we must look to the
services as identified in the application and the cited registration. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). Both Applicant and Registrant render tanning
salon services under their respective marks. Thus, we find the services to be
identical, and Applicant does not contend otherwise.
Inasmuch as the services identified in the application and the cited registration
are identical, we must presume that the channels of trade and classes of purchasers
are the same. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723
(CCPA 1968) (where there are legally identical goods, the channels of trade and
classes of purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of
trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion). The services are rendered
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through tanning salons to the same classes of purchasers, including ordinary
consumers.
The identity between Applicant’s and Registrant’s services, the identical trade
channels, and the overlap in purchasers are factors that weigh in favor of a finding
of likelihood of confusion.
The crux of the refusal centers on the similarity between the marks, and
Applicant and the Examining Attorney have focused their attention on this first du
Pont factor. With respect to the marks, we must compare the marks in their
entireties as to appearance, sound, connotation and commercial impression to
determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is
on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC,
110 USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). In comparing the marks when used in connection with
Applicant’s and Registrant’s services, we are mindful that where, as here, the
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services are identical, the degree of similarity between the marks necessary to find
likelihood of confusion need not be as great as where there is a recognizable
disparity between the services. Coach Servs., Inc. v. Triumph Learning LLC, 101
USPQ2d at 1721; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Applicant relied upon a dictionary definition of the word “tannery”: “a place or
building where skins and hides are tanned; a place where tanning is carried on.”
(www.thefreedictionary.com). The Examining Attorney, with her brief, submitted a
definition of “tannery” showing it defined as “a place where animal skins are made
into leather.” (www.macmillandictionary.com).4 We take judicial notice of these
additional definitions:
Tanning: the act or process of darkening your skin by
exposing it to the bright light of the sun or a special type
of lamp; the act or process by which a skin is tanned.

Tan: to cause (skin) to become darker especially from
being exposed to the sun’s rays; to change (the skin of an
animal) into leather by a chemical process.

-ery: suffix; place of doing, keeping, producing or selling
(the thing specified) .

Celsius: relating to, conforming to, or having the
international thermometric scale on which the interval
between the triple point of water and the boiling point of
water is divided into 99.99 degrees with 0.01°
representing the triple point and 100° the boiling point.

4 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or
have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). See
In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.1 (TTAB 2013).
Application Serial No. 86441206

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The: a unique member of its class; to designate one of a
class as the best or most worth singling out.

(www.merriam-webster.com).
Applicant argues in its reply brief as follows:
Although the examining attorney purports to consider the
marks as a whole while also giving appropriate weight to
the shared portion, Applicant believes that undue weight
has been given to the term “tannery” in the marks.
Despite the definition of the word “tannery” that relates
to animal hides, in this case, the nature of the word
moves it down the spectrum of distinctiveness to a point
that is just above the descriptive/suggestive line. This is
because the word actually includes the formative “tann”
(as in “tanning salon”) and it is a common form “XYZery,”
a word that describes places that offer “XYZ.” Examples
include “creamery,” “bakery,” “brewery,” “millinery” (as in
“millinery shop” or a hat shop), “winery,” and “nunnery.”
Consumers are accustomed to seeing words in this form
where the prefix is the focus of the word and describes the
essence of the thing defined by the word. To many
consumers of tanning services, the connection between
the word tannery and a place that tans animal hides
would be lost or at least overshadowed by the descriptive
portion of the word (i.e. “tan”).
(7 TTABVUE 2-3)

The word “tannery” has an established meaning relative to the tanning of
animal skins and changing the skins into leather. A more contemporary meaning
relative to tanning salons is much less certain, and at worst, the word “tannery” is
suggestive for tanning salons. Based on the record before us, especially the lack of
other uses in the trade, we conclude that the word “tannery” is not merely
descriptive for tanning salon services, but rather falls within the range of
suggestive to highly suggestive. As is apparent from the above, the evidence before
us is extremely sparse, comprising only dictionary definitions. Further, the record is
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devoid of evidence of any third-party uses or registrations of similar marks utilizing
the word “tannery” for tanning salon services. In this connection, the Examining
Attorney stated “[the subject marks] are the only live marks in the Office’s X-Search
database that include the word ‘TANNERY’ for tanning salon services” (6
TTABVUE 5); and that “[her] internet research has not revealed any use of the term
[“tannery”] that is unrelated to registrant’s services.” (6 TTABVUE 8). Applicant did
not dispute this characterization of the record and, indeed, there is no evidence
showing that third-party tanning salons have adopted the word “tannery” or that
the word has a commonly understood or recognized meaning for tanning salons.
Nevertheless, we are inclined to agree with Applicant that consumers, being
familiar with similarly constructed words like “brewery” and “bakery,” will perceive
“tannery” as a combination of “tann” (as in “tanning”) and the suffix “-ery.” As such,
consumers are likely to view the word “tannery” as suggestive when used for
tanning salons.
With respect to Registrant’s mark, it is settled that one feature of a mark may
be more significant than another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression created by the mark.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)
(“There is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on consideration of the marks in their entireties. Indeed, this type of analysis
appears to be unavoidable.”). In the cited mark, the word “CELSIUS” would appear
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to be arbitrary, and is the dominant portion when compared to the suggestive word
“TANNERY.” See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997) (“DELTA,” not the disclaimed generic term “CAFE,” is the
dominant portion of the mark THE DELTA CAFE). Moreover, purchasers in
general are inclined to focus on the first word or portion in a trademark; in
Registrant’s mark, “CELSIUS” is the first portion. Presto Products, Inc. v. Nice-Pak
Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a
mark which is likely to be impressed upon the mind of a purchaser and
remembered”). See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1692.
In addition to a difference in appearance between THE TANNERY and
CELSIUS TANNERY, the presence of “CELSIUS” in the cited mark results in a
mark that sounds differently from Applicant’s mark. As to meaning, we find that
Applicant’s mark suggests that it is “the” or best tanning salon,5 while Registrant’s
mark suggests a connection between heat and getting a tan. In sum, we find that
the differences between the marks outweigh the similarities, and that the marks,
when considered in their entireties, engender sufficiently different commercial
impressions that consumers are not likely to be confused by the marks. In
comparing the marks in their entireties, THE TANNERY versus CELSIUS
TANNERY, the common element is the suggestive term “TANNERY”; we find that

5 This connotation is contrasted with the usual situation wherein the presence of “THE” in
a mark is unlikely to play a role in how consumers are likely to perceive the mark. See In re
Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (WAVE and THE WAVE are “virtually
identical” and likely to be confused).
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the presence of the additional arbitrary word “CELSIUS” in the cited registration is
enough to distinguish the marks. See, e.g., Citigroup Inc. v. Capital City Bank
Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Shen
Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1245, 73 USPQ2d 1350, 1356-57 (Fed.
Cir. 2004); Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1044-45 (TTAB 2010);
Bass Pro Trademarks, L.L.C. v. Sportsman’s Warehouse, Inc., 89 USPQ2d 1844,
1857-58 (TTAB 2008).
Decision: The refusal to register is reversed.