Specialty Retailers, Inc.

Trademark Trial and Appeal Board

Mar 30, 2009

No. 77146777 (T.T.A.B. Mar. 30, 2009)

Mailed: March 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Specialty Retailers, Inc.
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Serial No. 77146777
_______

Jennifer B. Rader of McAfee & Taft for Specialty Retailers,
Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Hairston, Kuhlke and Ritchie, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Specialty Retailers, Inc. seeks registration on the
Principal Register of the mark MISTLETOE MOUNTAIN (standard
character form) for goods identified as “candles” in
International Class 4.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so

1 Application Serial No. 77146777, filed April 2, 2007, alleging
a bona fide intention to use the mark in commerce under Section
1(b) of the Trademark Act, 15 U.S.C. §1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77146777
2
resembles the registered mark MISTLETOE (in standard
character form) for “candles,” in International Class 4, as
to be likely to cause confusion, mistake or deception.2
Applicant has appealed the final refusal and the
appeal is fully briefed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of the goods
identified in the application and the cited registration.
The goods identified in both the application and the
registration are candles and, as such, are identical.
Applicant does not argue otherwise. Further, we must
presume that they will be sold in the same channels of

2 Registration No. 3140500, issued September 5, 2006.
Serial No. 77146777
3
trade and will be bought by the same classes of purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the
above, the du Pont factors of the similarity of the goods,
the channels of trade and class of purchasers strongly
weigh in favor of a likelihood of confusion as to the cited
registration.
Turning to a consideration of the marks, it is well
settled that marks must be considered in their entireties,
not dissected or split into component parts and each part
compared with other parts. This is so because it is the
entire mark which is perceived by the purchasing public
and, therefore, it is the entire mark that must be compared
to any other mark. It is the impression created by the
involved marks, each considered as a whole, that is
important. See Kangol Ltd. V. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Further,
“[w]hen marks would appear on virtually identical goods or
services, the degree of similarity [between the marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 877, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert denied, 506 U.S. 1034 (1992).
Serial No. 77146777
4
We find that applicant’s mark MISTLETOE MOUNTAIN is
highly similar to the mark MISTLETOE in the cited
registration. Applicant’s argument that the mark in “the
cited registration is either merely descriptive or generic
[because it] is used to describe the scent or flavor of
candles” (Br. p. 6) amounts to an impermissible collateral
attack on the registration. In re Dixie Restaurants, 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 165 USPQ 515,
517 (CCPA 1970). We must accord the registration the
Section 7(b) presumptions. As such, we must presume the
validity of the registration, the registrant’s ownership of
the mark and the registrant’s exclusive right to use the
mark in commerce in connection with the goods specified in
the certificate. See TEMP §1207.01(d)(iv) (5th ed.
September 2007).
While an applicant may demonstrate through evidence of
third-party use or registration that a term is weak and its
scope of protection limited, there is no evidence of record
to support such a theory. Palm Bay Imp., Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005) (evidence of third-party use
of similar marks on similar goods, relevant to show that a
mark is relatively weak and entitled to only a narrow scope
Serial No. 77146777
5
of protection); AMF Inc. V. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973)
(third-party registrations relevant to show that a mark or
portion of a mark is suggestive, or so commonly used that
the public will look to other elements to distinguish the
source of the goods); and Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1285-
86 (Fed. Cir. 1984) (third-party registrations are similar
to dictionaries showing how language is generally used).
Rather, applicant merely submitted printouts from
registrant’s website to show how the registrant uses its
mark. However, even assuming the term MISTLETOE is highly
suggestive of a feature of candles, weak marks are still
afforded protection, in particular in the circumstances we
have here where the goods are identical and the marks are
similar. King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). That is, the
scope of protection to which the cited registration is
entitled certainly extends to prevent the registration of
the same word, MISTLETOE, to which only a second word has
been added, used for identical goods.
Applicant argues that the additional word MOUNTAIN in
its mark creates a different appearance and sound. In
addition, applicant contends that the meanings and
Serial No. 77146777
6
connotations are distinct in that MISTLETOE MOUNTAIN
connotes a “picturesque location or scenic expanse” and
MISTLETOE connotes a “berried plant with a pungent odor.”
Br. p. 9. Finally, applicant argues that despite the fact
that consumers may “focus on the first word of a trademark”
the commercial impression of these marks is “obviated by
the common ‘generic, descriptive or highly suggestive’
nature of the term as used by Registrant.” Id.
We begin our analysis by noting that “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 re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Applicant’s mark MISTLETOE MOUNTIAN
encompasses the entirety of registrant’s mark MISTLETOE.
In addition, the common word MISTLETOE is the first word in
applicant’s mark and it is the first word that consumers
are more likely to focus on and retain. See Palm Bay, 73
USPQ2d at 1692. Applicant’s argument that the term
MISTLETOE is weak in connection with these goods generally
is not supported by the record. With regard to
connotation, while applicant’s mark my connote a location,
Serial No. 77146777
7
it is a location that is named for mistletoe which brings
the connotation back to registrant’s mark. Overall, the
addition of the word MOUNTAIN is not sufficient to
distinguish the marks’ commercial impressions. In short,
we find the marks sufficiently similar such that when used,
at least, on identical goods a likelihood of confusion
exists and this factor also weighs in favor of likelihood
of confusion.
In conclusion, we find that because the goods,
channels of trade and purchasers are identical, and the
marks are similar, confusion is likely between applicant’s
mark and the mark in the cited registration. To the extent
there are any doubts, we resolve them, as we must, in
registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.