Starcrest Products of California, Inc.

Trademark Trial and Appeal Board

Jun 30, 2004

No. 76307697 (T.T.A.B. Jun. 30, 2004)

Mailed:6/30/04
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Starcrest Products of California, Inc.
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Serial No. 76307697
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Glenn S. Bacal and Christine Meis of Quarles & Brady
Streich Lang for applicant.
Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Hanak, Quinn and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Starcrest Products of California, Inc. filed an
application to register the mark LEISURE LIVING for “mail
order catalog and mail order services in the field of
general merchandise, in the area of tools, gadgets, sprays,
solutions and other things for making one’s home chores
inside and outside the home easier, and excluding swimming
pools, swimming pool supplies, swimming pool equipment,
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76307697
2
outdoor furniture, swimming pool accessories, fencing, swim
masks and swimming pool fins, toys, games and floats.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark
LEISURE LIVING STORES (“STORES” disclaimed) for “retail
stores and mail order and telephone order catalog services
featuring swimming pools, swimming pool supplies, equipment
and accessories, outdoor furniture, fencing, swim masks and
fins, toys, games and floats”2 as to be likely to cause
confusion.
When the refusal to register was made final, applicant
appealed. Applicant and the examining attorney filed
briefs. An oral hearing was not requested.
Applicant argues that its services are very different
from those identified in the cited registration. Applicant
contends that registrant’s services feature only products
related to pools, and that such products have been
explicitly excluded from the items featured for sale
through applicant’s services. The products sold via
1 Application Serial No. 76307697, filed August 31, 2001,
alleging first use anywhere and first use in commerce on August
18, 1994.
2 Registration No. 2021608, issued December 10, 1996; Section 8
affidavit accepted, and Section 15 affidavit acknowledged.
Ser No. 76307697
3
applicant’s and registrant’s services have, according to
applicant, different functions and physical
characteristics. Applicant argues that “tools, gadgets and
other items associated with chores provide a completely
different function from recreation--that of physical labor”
and that “the whole theme of swimming pool recreation is
different than and separate from that of Applicant’s.”
(Brief, p. 6). Applicant further points out that, unlike
registrant, it does not offer retail store services and
that “[g]iven the great number of catalogs available to
consumers, consumers have learned to distinguish retail
stores with catalogs from catalog services offering only
catalog and mail order services.” (Brief, p. 8). In
urging that the refusal be reversed, applicant also
highlights the facts that registrant has used its mark for
nearly twenty years without expanding into applicant’s
market, and that the marks have coexisted for over nine
years without any instances of actual confusion. In
support of its position, applicant submitted an excerpt of
registrant’s website retrieved from the Internet.
The examining attorney maintains that the marks are
essentially identical and that the services are closely
related. The examining attorney asserts that swimming pool
supplies, equipment and accessories can be broadly
Ser No. 76307697
4
described as tools, gadgets, and solutions which make one’s
chores outside of the home easier. The examining attorney
also points to the evidence that the same entities sell
both pool and gardening equipment and supplies. The
absence of actual confusion is not, according to the
examining attorney, persuasive in the context of this ex
parte proceeding. In support of the refusal, the examining
attorney submitted third-party registrations, and excerpts
of websites retrieved from the Internet, all offered to
show that the same entities sell both swimming pool and
garden equipment and supplies.
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 Company, 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/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Ser No. 76307697
5
We first turn to compare the marks. The marks are
virtually identical in sound, appearance and meaning, with
the only difference being the inclusion of the generic term
“STORES” in the cited mark. With respect to a comparison
of applicant’s mark LEISURE LIVING with registrant’s mark
LEISURE LIVING STORES, we must consider the marks in their
entireties. Nevertheless, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, “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 [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.3d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For example, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a
mark....” Id. at 751.
In the case at hand, when comparing the two typed
marks, the generic word “STORES,” which has been
disclaimed, clearly is subordinate to the remainder of the
words, “LEISURE LIVING,” in registrant’s mark. This
dominant portion of registrant’s mark is identical to the
entirety of applicant’s mark. Applicant has merely deleted
Ser No. 76307697
6
the generic word “STORES” from registrant’s mark; it hardly
need be stated that this deletion does not sufficiently
distinguish the marks in any meaningful way. In re El
Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988).
Throughout the prosecution of its application, and in
its appeal brief, applicant was conspicuously silent as to
the duPont factor of the similarity between the marks. It
was not until its reply brief that applicant made an
argument that the marks “create different commercial
impressions.” (Reply Brief, p. 3). Applicant contends
that the presence of “STORES” in registrant’s mark makes
the two marks sufficiently different in commercial
impressions. According to applicant, “‘Stores’ creates the
commercial impression that the Registrant provides ‘retail
store services’” whereas “[i]n contrast, the mark LEISURE
LIVING does not give that impression, and correctly so,
because Applicant does not provide ‘retail store
services.’” (Reply Brief., p. 4). We are entirely
unpersuaded by this argument. What applicant overlooks is
that in addition to retail store services, registrant
renders mail order and telephone order catalog services.
Thus, as used in connection with the respective marks, we
Ser No. 76307697
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see very little difference in commercial impressions.3
In sum, the marks, in their entireties, are virtually
identical in sound, appearance and meaning. Differing in
only the generic term “STORES” in registrant’s mark, the
marks engender virtually identical overall commercial
impressions so that, if used in connection with similar
services, confusion would be likely to occur among
consumers.
We next turn to consider the services. Our likelihood
of confusion determination must be made on the basis of the
services identified in applicant’s application and in the
cited registration. In re Elbaum, 211 USPQ 639 (TTAB
1981). As noted above, registrant’s identification reads
retail stores and mail order and
telephone order catalog services
featuring swimming pools, swimming pool
supplies, equipment and accessories,
outdoor furniture, fencing, swim masks
and fins, toys, games and floats.
Applicant’s services are identified as
mail order catalog and mail order
services in the field of general
merchandise, in the area of tools,
gadgets, sprays, solutions and other
things for making one’s home chores
inside and outside the home easier, and
excluding swimming pools, swimming pool
3 As shown by the examining attorney’s evidence, entities such as
Pottery Barn and Restoration Hardware offer both retail store
services and mail order and telephone order catalog services
under the same mark.
Ser No. 76307697
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supplies, swimming pool equipment,
outdoor furniture, swimming pool
accessories, fencing, swim masks and
swimming pool fins, toys, games and
floats.
In comparing the services, it is not necessary that
they be identical or even competitive in nature in order to
support a finding of likelihood of confusion. It is
sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks used in connection
therewith, to the mistaken belief that the services
originate from or are in some way associated with the same
source. In re International Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
We find that registrant’s and applicant’s services are
related. Both registrant and applicant render mail order
catalog services featuring products that, although not
identical or competitive, are sufficiently similar so that
when rendered under virtually identical marks consumers are
likely to be confused. Applicant’s mail order services are
broadly worded, featuring the sale of, inter alia, items
“in the field of general merchandise” and “other things for
making one’s home chores inside and outside the home
easier.” A review of the specimens, taken from applicant’s
Ser No. 76307697
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catalog, shows items such as a garden owl used as an
outdoor decorative ornament to ward off birds and rodents,
outdoor water hose fittings and an electro-magnetic bug
repeller. Even though applicant specifically has excluded
the swimming pool equipment, supplies and accessories
featured in registrant’s services, applicant’s mail order
services feature “general merchandise” items and “things
for making one’s home chores outside the home easier.” As
defined in applicant’s recitation of services, some of
these products might be used in conjunction with a swimming
pool. Taking care of a home swimming pool is certainly a
chore, and there are swimming pool products which make the
chore easier to complete. There are also products which
might be used around a swimming pool. A prime example is
the decorative owl that could be placed near a swimming
pool and/or outdoor furniture. As shown by the examining
attorney’s Internet evidence, the same entity may sell both
swimming pool items and outdoor/garden items.
Applicant’s and registrant’s services would be
purchased by some of the same classes of purchasers,
including homeowners. These purchasers would be expected
to exercise nothing more than ordinary care in making their
decisions. Further, in making our likelihood of confusion
determination, we have kept in mind the normal fallibility
Ser No. 76307697
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of human memory over time, and the fact that consumers
retain a general rather than a specific impression of
trademarks encountered in the marketplace.
Other than counsel’s unsupported assertion, the record
is devoid of any evidence bearing on the lack of actual
confusion between the marks over nine years of
contemporaneous use. Inasmuch as there is no evidence as
to the nature and extent of the use of the respective
marks, there is little basis to find that the lack of
actual confusion is significant. That is to say, we have
no way of knowing whether there has been a meaningful
opportunity for confusion among purchasers. Even if there
were evidence of the use of the marks, the “lack of
evidence of actual confusion carries little weight.” In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003).
Decision: The refusal to register is affirmed.