Slyder Limited

Trademark Trial and Appeal Board

Aug 14, 2015

No. 85683789 (T.T.A.B. Aug. 14, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 14, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Slyder Limited
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Serial No. 85683789
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Thomas D. Paulius of TD Paulius IP Attorney for Slyder Limited.

Seth A. Rappaport, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
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Before Cataldo, Adlin and Gorowitz,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Slyder Limited (“Applicant”) seeks registration of the mark SLYDER, in
standard characters, for:
Ironmongery in the nature of screws and fixings, namely,
screws of metal; metal brackets for furniture and kitchen
cabinet drawers; metal furniture and kitchen drawer
runners; metal catches for furniture and kitchen cabinet
doors; metal handles for furniture and kitchen cabinet
doors and drawers, metal guides and metal locks for
furniture and kitchen cabinet doors, furniture and kitchen
cabinet drawers and furniture and kitchen cabinet
windows; metal fixings and fittings, namely, hinges,
screws, brackets and mounting plates for furniture and
kitchen cabinet doors, furniture and kitchen cabinet
drawers and furniture and kitchen cabinet windows and
Serial No. 85683789
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pull out and rotating shelves; non powered metal
furniture and kitchen cabinet door and drawer closers;
metallic suspension devices, namely, organizers and
inserts for holding items stored in furniture and kitchen
cabinets, furniture cabinet drawers and furniture and
kitchen cabinet cupboards; bins of metal, in International
Class 6;

Items of non metallic hardware, namely, fixings and
fittings for furniture and kitchen cabinets, namely,
furniture and kitchen cabinet hinges; furniture and
kitchen cabinet drawers; furniture and kitchen drawer
units primarily comprised of drawers; non metal parts of
furniture and kitchen cabinet drawers and furniture and
kitchen cabinet doors, namely, furniture and kitchen
cabinet drawer and furniture and kitchen cabinet door
fronts; parts of furniture and kitchen cabinet drawers,
namely, side panels for furniture cabinet drawers; non
metal furniture cabinet drawer runners; non metal
catches for furniture and kitchen cabinet doors and
furniture and kitchen cabinet drawers; non metal
handles, guides and locks for furniture and kitchen
cabinet doors, furniture and kitchen cabinet drawers and
furniture and kitchen cabinet windows; non metallic
suspension devices, namely, wire inserts, non metal wire
bins and non metal bins for furniture and kitchen cabinet
drawers, furniture and kitchen cabinets and furniture
and kitchen cupboards; Items of metal hardware, namely,
furniture and kitchen cabinet and furniture and kitchen
cabinet drawer dividers and organizers; wire inserts for
furniture and kitchen cupboards, in International Class
20; and

Retail store services featuring furniture, namely, kitchen
cabinets and drawers therefor, furniture and kitchen
cabinet shelves, furniture and kitchen cabinet hinges,
furniture and kitchen cabinet locks, furniture and kitchen
cabinet drawers, furniture and kitchen cabinet doors,
furniture and kitchen cabinet door closers, furniture and
kitchen cabinet drawer closers, furniture and kitchen
cabinet drawer runners, bins, metallic fixings for
furniture and kitchen cabinets, and pull out and rotating
Serial No. 85683789
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shelving units mounted in such kitchen cabinets and
drawers, in International Class 35.1

The Examining Attorney refused registration under Section 2(d) of the Act on the
ground that Applicant’s mark so resembles the registered mark shown below

(with “slider” disclaimed) for “On-line retail store services in the field of door
hardware,”2 that use of Applicant’s mark in connection with Applicant’s goods and
services is likely to cause confusion or mistake or to deceive. After the refusal
became final, Applicant appealed and filed a motion for reconsideration which was
denied. The appeal is fully briefed.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two

1 Application Serial No. 85683789, filed July 23, 2012, under Trademark Act Sections 1(b)
based on an intent to use the mark in commerce and 44(e), with priority claims under
Section 44(d) based on European Community Trademark Registration No. 010583151.
2 Registration No. 4193518, issued August 21, 2012. The registration includes this
description of the mark: “The mark consists of the word ‘SLYDER’, with the ‘Y’ being
stylized as a door roller in the shape of a ‘Y’ with a circle framing the top points of the ‘Y’
(depicting wheels), suspended over a straight line that begins above the ‘S’ and ends above
the ‘R’ in the word.”
Serial No. 85683789
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key considerations are the similarities between the marks and the similarities
between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper 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.”).
Turning first to the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is, we may
not dissect the marks into their various components. In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981).
Here, the marks are similar because Applicant’s mark is identical to the literal
portion of Registrant’s mark. Indeed, where, as here, a mark is comprised of both
words and a design, the words are normally accorded greater weight, because
consumers are likely to remember and use the word(s) to request the goods or
services. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(holding that “if one of the marks comprises 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” and “because applicant’s mark shares with
registrant’s mark that element responsible for creating its overall commercial
impression, the marks are confusingly similar”); see also, In re Viterra Inc., 671 F.2d
Serial No. 85683789
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1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and
design mark likely will be the dominant portion”). Here, this principle is
particularly applicable because the design component of Registrant’s mark is
largely comprised of the letter “Y,” and thus the design further draws consumers’
attention to the literal portion of the mark. In short, notwithstanding the design
element of Registrant’s mark, it looks similar to Applicant’s mark and the two
marks sound identical.
Applicant argues that in Registrant’s mark, “the ‘Y’ element is three times taller
than the other letters used in the composite mark,” with the result being that “the
overall impression is not necessarily one of ‘SLYDER,’ but can be more one of ‘SL-
DER’ as the observer needs to figure out that the ‘Y’ is a design element that is
combined with the remaining letters.” Applicant’s Appeal Brief at 13-14. Even
assuming that Applicant’s measurements are correct, the impression conveyed by
Registrant’s mark remains the word “slyder,” or perhaps “slider,” as the “y” is a “y”
no matter how tall it is; furthermore, the design is of a “door roller” with wheels,
which calls to mind the wheels “sliding” along the door roller, thus further drawing
attention to the literal portion of the mark, which is likely to be pronounced as the
phonetic equivalent of “slider.” Even if the mark is perceived as SL-DER, the marks
would still look and sound similar, differing by only one character in the middle of
the term.
Furthermore, the marks convey similar or identical meanings, as the entire
literal portion of each mark is SLYDER, which is merely a slight misspelling of the
Serial No. 85683789
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word “slider.” See In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505
(CCPA 1980) (QUIK-PRINT merely descriptive of printing services); In re Carlson,
91 USPQ2d 1198, 1200 (TTAB 2009) (URBANHOUZING merely descriptive of real
estate services, stating “[i]n general, a mere misspelling of a word is not sufficient to
change a merely descriptive term into an inherently distinctive trademark); In re
Organik Technologies Inc., 41 USPQ2d 1690, (TTAB 1997) (“applicant’s mark,
ORGANIK, which is the phonetic equivalent of the term ‘organic,’ is deceptive
because it is misdescriptive of 100% cotton textiles or articles of clothing that are
neither from an organically grown plant nor free of chemical processing or
treatment”). In fact, Registrant disclaimed the actual word “slider,” rather than the
slight misspelling of “slider” comprising the literal portion of its mark, “slyder.”
Even if consumers do not perceive SLYDER as a form of the word “slider,” the fact
remains that Applicant’s mark is identical to the literal and dominant component of
Registrant’s mark, and therefore whatever consumers’ perception of the term is, it
will be identical for Applicant’s and Registrant’s marks.
While the word “slider” is disclaimed in Registrant’s mark, we may not ignore it,
and we find this case analogous to cases in which the disclaimed literal portion
which two marks have in common is enough to result in confusing similarity, even
where, as here, one of the two marks also includes a design. For example, in In re
Viterra, our primary reviewing court affirmed the finding that XCEED, in standard
characters, for “agricultural seed” is likely to be confused with the mark shown
below
Serial No. 85683789
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for “agricultural seeds,” even though the X-SEED and Design registration includes
color claims and a disclaimer of SEED. The Court affirmed the finding that the
disclaimed word SEED was the dominant portion of X-SEED and Design, stating:
the design feature of the X-Seed Mark is not entirely
distinct from the literal portion of the mark; rather, the
color and design features are incorporated in the letter
“X” and are covered in part by the “-Seed” portion of the
mark. This is not a case, therefore, where a larger design
is separate and independent from the literal features of
the mark. The design itself is a stylized letter that
overlaps with, and is covered by, other literal portions of
the mark. Accordingly, the Board’s determination that the
entire literal portion “X-Seed” is the dominant portion of
the mark, and not just the stylized “X,” is supported by
substantial evidence … Although Viterra is correct that
the registrant disclaimed exclusive rights to the term “-
Seed”, we previously have found that the dominant
portion of a composite word and design mark is the literal
portion, even where the literal portion has been
disclaimed.

In re Viterra, 101 USPQ2d at 1912 (citations omitted). See also, In re Shell Oil Co.,
992 F.2d 11204, 26 USPQ2d 1687 (Fed. Cir. 1993) (“Shell’s argument that the only
consideration is the ‘design form’ of the words ‘Right-A-Way’, omitting the words
‘right-a-way’ because they were disclaimed, was correctly rejected by the Board.”);
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395
(Fed. Cir. 1983).
Serial No. 85683789
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In short, because the literal portion of the cited mark is identical to Applicant’s
mark, and the marks otherwise look similar, sound identical and convey similar or
identical meanings, this factor weighs in favor of a finding of likelihood of confusion.
To the extent Applicant argues that the cited mark is descriptive of Registrant’s
services, this is an impermissible collateral attack. This is an ex parte proceeding,
and “inasmuch as the cited mark is registered on the Principal Register, we must
assume that it is at least suggestive.” In re Fiesta Palms, 85 USPQ2d 1360, 1363
(TTAB 2007) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-
35 (Fed. Cir. 1997)).
Turning to the goods, services and channels of trade, the cited mark is registered
for “on-line retail store services in the field of door hardware,” without any
limitations on the types of “doors” for which the “door hardware” is intended to be
used. In other words, Registrant’s identification encompasses any type of door
hardware which is intended for any type of door. Applicant’s goods in Class 6
include “metal catches,” “metal handles,” “metal guides,” “metal locks” and “metal
fixings and fittings,” all of which are types of “hardware,” for “kitchen cabinet
doors,” which are a type of “door.” Similarly, Applicant’s goods in Class 20 include
“non metal catches” and “non metal handles, guides and locks,” which are types of
“hardware” for “kitchen cabinet doors,” which are a type of “door.” Applicant’s
services in Class 35 include retail store services featuring “kitchen cabinet door
closers,” a type of “hardware” which is used on a type of “door.” In other words,
Registrant’s retail store services in the field of “door hardware” could encompass the
Serial No. 85683789
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type of (kitchen cabinet) door hardware in connection with which Applicant intends
to use its mark.
Even if Registrant’s services do not encompass Applicant’s goods and services,
there is a relationship between them. Applicant’s goods and services relate to
kitchen cabinet drawers and doors, while Registrant’s services relate to doors, and
these products could easily be used, offered, purchased or delivered together as part
of a home improvement project, such as renovating a kitchen. In fact, a homeowner
may choose which fixtures to purchase as part of a renovation project, such as
hardware for the “door” leading to the kitchen and hardware for the kitchen’s
cabinets. Or, the homeowner’s contractor could be responsible for choosing
hardware to use in connection with kitchen doors and kitchen cabinets, or in
connection with another type of “door” installed at the same time as kitchen
fixtures, as part of the same renovation project. As we stated in finding identical
marks confusingly similar for doors on the one hand and furniture on the other,
“[wooden] doors are frequently purchased to harmonize with or to complement the
furnishings of a room.” Cal-Wood Manufacturing Co., Inc. v. California Wood
Products, Inc., 148 USPQ 21 (TTAB 1965); see also, Drexel Enterprises, Inc. v. H.J.
Scheirich Co., 167 USPQ 125 (TTAB 1970) (finding identical marks confusingly
similar for kitchen cabinets on the one hand and furniture and house furniture on
the other).
Furthermore, the Examining Attorney has introduced evidence establishing that
Applicant’s goods and services and Registrant’s services are offered by the same
Serial No. 85683789
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sources under the same marks, and that Applicant’s goods and services and
Registrant’s services travel in the same channels of trade. For example:
SECOND USE, in standard characters (Reg. No.
3590278), is registered for “Reclaimed cabinets and
vanities; non-metal hardware, namely, latches, hinges,
escutcheons, and wood and plastic knobs” and “Reclaimed
building materials, namely, metal doors … metal
hardware in the nature of knobs, latches, hinges ….”

REJUVENATION (Stylized) (Reg. No. 3917139) is
registered for “Metal hardware for use in home building,
namely, interior door hardware, namely mortise locks,
tube latches, surface bolts …;” “metal hardware for use in
home building, namely cabinet hardware …;” and “Retail
store services, online retail store services, and mail order
catalog services all featuring … doors … cabinets …
cabinet hardware ….”

The Lowe’s website offers, on the same webpage, “door
hardware” and “cabinet hardware,” which are displayed
right next to each other.

The Home Depot website offers, on the same webpage,
“door knobs and hardware” and “cabinet and furniture
hardware,” which are displayed right next to each other.

Office Actions of June 10, 2014, May 22, 2013.
Applicant argues and relies on evidence that Registrant in fact offers hardware
for interior barn doors, rather than standard home interior doors or kitchen cabinet
doors. This is irrelevant, however, because we are bound to consider Registrant’s
identification of goods, which is not so limited, and covers online store services in
the field of door hardware, without any limitation on the type of door. Indeed,
where, as here, Registrant’s identification contains no limitations with respect to
the type of door hardware offered, we must presume that it encompasses hardware
Serial No. 85683789
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for all types of doors, including even kitchen cabinet doors, and Registrant’s online
retail services featuring door hardware are presumed to move in all normal
channels of trade and be available to all classes of consumers. Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed.
Cir. 2014) (“An application with ‘no restriction on trade channels’ cannot be
‘narrowed by testimony that the applicant’s use is, in fact, restricted to a particular
class of purchasers.’”); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). We are
bound by Applicant’s and Registrant’s’ identifications and we simply cannot limit
the goods, channels of trade or classes of customers to what Applicant’s evidence
shows them to be. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB
1986) (“It is well settled that in a proceeding such as this, the question of likelihood
of confusion must be determined by an analysis of the marks as applied to the goods
identified in the application vis-à-vis the goods recited in the registration, rather
than what extrinsic evidence shows those goods to be.”); see also, Tuxedo Monopoly,
209 USPQ at 988; In re Thor Tech Inc., 90 USPQ2d 1634, 1637-38 (TTAB 2009) (“we
must also analyze the similarity or dissimilarity and nature of the goods based on
the description of the goods set forth in the application and the registration at issue
… we may not limit or restrict the [goods] listed in the cited registration based on
extrinsic evidence”).3

3 There is no “uncertainty” in Registrant’s identification of services -- it covers “door
hardware” generally, without respect to the type of door. While this is arguably a broad
Serial No. 85683789
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In short, because Applicant and Registrant offer hardware for types of “doors,”
and because interior doors or hardware therefor may be purchased at the same time
as kitchen cabinets or in connection with the same renovation project, there is at
the very least a relationship between the goods and services. Applicant’s
identification of goods and services includes no limitations with respect to channels
of trade, which could therefore include online retail sales, and the evidence
establishes that Applicant’s and Registrant’s goods and services move in the same
channels of trade. “Even if the goods and services in question are not identical, the
consuming public may perceive them as related enough to cause confusion about the
source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press
Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Recot, Inc. v. Becton,
214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“even if the goods in
question are different from, and thus not related to, one another in kind, the same
goods can be related in the mind of the consuming public as to the origin of the
goods”). These factors also weigh in favor of a finding of likelihood of confusion.
Finally, Applicant argues that Registrant’s goods are expensive, and not likely to
be purchased on impulse. However, neither Applicant’s nor Registrant’s
identification of goods and services restricts them by cost or customers. Therefore,
the identified goods and services must be presumed to encompass inexpensive and
expensive varieties of the identified goods and services providing them, and the

identification, it is neither unclear nor technical, and we therefore do not require extrinsic
evidence to understand it.

Serial No. 85683789
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goods and services are presumed to be offered to all types of customers for the
identified goods and services. See e.g., Stone Lion Capital, 110 USPQ2d at 1162-63
(“Stone Lion effectively asks this court to disregard the broad scope of services
recited in its application, and to instead rely on the parties’ current investment
practices … the Board properly considered all potential investors for the recited
services, including ordinary consumers seeking to invest in services with no
minimum investment requirement.”) (emphasis in original). In any event, even if we
accept that consumers of door and kitchen cabinet and drawer/door hardware are
sophisticated, it is settled that even sophisticated purchasers are not immune from
source confusion. This is especially true where, as here, they are faced with highly
similar marks. See, In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970); In re Decombe, 9 USPQ2d 1812, 1814-15
(TTAB 1988); see also, HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d
1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh
sophisticated purchasers, careful purchasing decision, and expensive goods). In
short, even assuming that this factor weighs against a finding of likelihood of
confusion, it is outweighed by the similarities between the involved and cited
marks, the relatedness of the goods and services and the overlapping channels of
trade and classes of consumers.
Serial No. 85683789
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Conclusion
Applicant’s and Registrant’s marks are quite similar as their dominant, literal
element is identical, and at the very least the goods and services as identified in the
application and cited registration are related and move in the same channels of
trade.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.