Storage-All Inc.

Trademark Trial and Appeal Board

Feb 21, 2002

No. 75701938 (T.T.A.B. Feb. 21, 2002)

2/21/02 Paper No. 12
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Storage-All Inc.
________

Serial No. 75/701,938
_______

Mark Levy of Salzman & Levy for Storage-All Inc.

Susan C. Hayash, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Seeherman, Hohein and Holtzman, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Storage-All Inc. has filed an application to register
the mark "STORAGE-ALL INC." for "storage space rental services."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its services, so

1 Ser. No. 75/701,938, filed on May 10, 1999, which alleges a date of
first use anywhere of July 15, 1988 and a date of first use in
commerce of November 11, 1989. The term "INC." is disclaimed.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/701,938
2
resembles the following marks, which are registered for the
services of "leasing of storage space" and are owned by the same
registrant, as to be likely to cause confusion, mistake or
deception: (i) the mark "STOR-ALL SELF-STORAGE RENTALS" and
design,2 as illustrated below,

and (ii) the mark "STOR-ALL SYSTEMS" and design,3 as reproduced
below.

Applicant has appealed. Briefs have been filed,4 but
an oral hearing was not requested. We affirm the refusal to
register.

2 Reg. No. 1,338,398, issued on May 28, 1985, which sets forth a date
of first use of July 1983 and a date of first use in commerce of
September 1983; combined affidavit §§8 and 15. The words "SELF-
STORAGE RENTALS" are disclaimed.

3 Reg. No. 1,054,556, issued on December 14, 1976, which sets forth a
date of first use anywhere of August 14, 1967 and a date of first use
in commerce of May 23, 1968; renewed. The word "SYSTEMS" is
disclaimed and the mark is lined for the colors brown and orange.

4 Applicant, as Exhibits B through E to its brief, has submitted as
additional evidence (i) copies of printouts from various third-party
websites for, inter alia, supporting hooks and self-storage services,
and (ii) the affidavit of its president, Ronald DiLorenzo, Sr. The
Ser. No. 75/701,938
3
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973). However, as
indicated in Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the similarity of
the goods and/or services and the similarity of the marks.5
Turning first to consideration of the respective
services, we concur with the Examining Attorney that, as
identified, applicant's "storage space rental services" and
registrant's "leasing of storage space" services "are virtually

Examining Attorney, in her brief, has objected to the submission of
such evidence as being "untimely and improper [inasmuch] as it was not
previously provided to the trademark examining attorney." Trademark
Rule 2.142(d) provides in relevant part that the Board will ordinarily
not consider additional evidence submitted after an appeal is filed.
In view thereof, and since, with the exception of a portion of
evidence attached to applicant's brief as Exhibit B (such portion
consisting of a copy of a third-party registration for the mark "STOR-
ALL" for "supporting hooks" which applicant previously made of record
with its request for reconsideration), the additional evidence
submitted by applicant is indeed untimely and improper, the Examining
Attorney's objection is sustained to the extent that the copies of
printouts from various third-party websites and the affidavit of
applicant's president will not be given further consideration.
Nonetheless, it is pointed out that even if the additional evidence
were to be considered to be of record, consideration thereof would
make no difference in the outcome of this appeal.

5 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks."
Ser. No. 75/701,938
4
the same," "if not identical," in legal contemplation.6 It is
settled, as the Examining Attorney correctly notes in this
regard, that the issue of likelihood of confusion must be
determined on the basis of the services as they are set forth in
the involved application and cited registration. See, e.g., CBS
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Thus, where the services in the application at issue and in the

6 As support therefor, the Examining Attorney in her brief has
requested that "the Board take judicial notice of the definitions of
Leasing, Rental, and Rent attached as Exhibit B" since such
definitions show that the respective storage services "both allow an
individual to use or occupy property under terms of a contract for the
exchange of money." Specifically, The American Heritage Dictionary of
the English Language (3rd ed. 1992) in pertinent part defines
"leasing" as a verb meaning "1. To grant use or occupation of under
the terms of a contract," with "lease," we also note, being defined
thereby as a noun signifying "1. a. A contract granting use or
occupation of property during a specified period in exchange for a
specified rent." The same dictionary in relevant part lists "rental"
as a noun meaning "1. An amount paid out or taken in as rent. 2.
Property available for renting: summer rentals by the beach" and as
an adjective meaning "[o]f, relating to, or available for rent:
rental income; rental properties," while "rent" is set forth as a noun
connoting "1. a. Payment, usually of an amount fixed by contract, made
by a tenant at specified intervals in return for the right to occupy
or use the property of another. b. A similar payment made for the use
of a facility, equipment, or service provided by another." Inasmuch
as the Board may properly take judicial notice of dictionary
definitions, we grant the Examining Attorney's request and have
considered the above definitions. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 (TTAB 1981) at n. 7.
Ser. No. 75/701,938
5
cited registration are broadly described as to their nature and
type, it is presumed in each instance that in scope the
application and registration encompass not only all services of
the nature and type described therein, but that the identified
services move in all channels of trade which would be normal for
such services and that they would be purchased by all potential
buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
In consequence thereof, applicant's attempt to
distinguish the respective services, based upon arguments
relating to unspecified differences in "factors such as
security, temperature controlled storage spaces, location,
price, and size of the storage facility," is without merit.
Likewise, in the absence of any restrictions or limitations
which are set forth in the recitations of the respective
services, applicant's contentions that differences exist in the
channels of trade for such services and the levels of purchaser
sophistication are unavailing. Instead, applicant's storage
space rental services and registrant's leasing of storage space
services must be considered to be legally identical and,
accordingly, such services would be rendered through the same
channels of trade and to identical classes of purchasers,
including those who are ordinary and relatively unsophisticated

Ser. No. 75/701,938
6
consumers. The rendering of the respective services, under the
same or substantially similar marks, would therefore be likely
to cause confusion as to source or sponsorship.
As to the marks at issue, applicant maintains that its
mark "is visually distinct" from both of registrant's marks,
given the design elements and descriptive matter included in the
latter. Applicant also asserts, in view thereof, that "the
marks, when compared side-by-side in their entireties, are
different in ... sound, connotation, and commercial impression."
However, as the Examining Attorney correctly points out, a side-
by-side comparison is not the proper test to be used in
determining the issue of likelihood of confusion inasmuch as it
is not the ordinary way that customers will be exposed to the
marks. Instead, it is the similarity of the general overall
commercial impression engendered by the marks which must
determine, due to the fallibility of memory and the concomitant
lack of perfect recall, whether confusion as to source or
sponsorship is likely. The proper emphasis is accordingly on
the recollection of the average purchaser, who normally retains
a general rather than a specific impression of marks. See,
e.g., Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB
1981); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975); and Grandpa Pidgeon's of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973).
Ser. No. 75/701,938
7
Moreover, while marks must be considered in their
entireties, including any descriptive matter or design element,
our principal reviewing court has indicated that, 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.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the
court, "that a particular feature is descriptive ... with
respect to the involved goods or services is one commonly
accepted rationale for giving less weight to a portion of a mark
...." Id.
In the present case, when the respective marks are
considered in their entireties, it is plain that they are not
only highly similar in appearance and sound but are
substantially the same in connotation and commercial impression.
As to appearance, it must be kept in mind that because applicant
seeks registration of its "STORAGE-ALL INC." mark in typed form,
the display thereof could include the same stylized manner of
lettering as that utilized by registrant for the term "STOR-ALL"
in its "STOR-ALL SELF-STORAGE RENTALS" and design mark and its
"STOR-ALL SYSTEMS" and design mark. See, e.g., Phillips
Ser. No. 75/701,938
8
Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971) [a mark registered in typed format is not limited to
the depiction thereof in any special form]; and INB National
Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992) ["[a]s
the Phillips Petroleum case makes clear, when [an] applicant
seeks a typed or block letter registration of its word mark,
then the Board must consider all reasonable manners in which ...
[the word] could be depicted"].
Clearly, in each of registrant's marks, the term
"STOR-ALL" forms the dominant and distinguishing element thereof
since it is not only the most visually prominent element
therein, due to its size and stylized manner of display, but the
words "SELF-STORAGE RENTALS" and "SYSTEMS," as well as the
design feature consisting of images of a self-storage facility,
are descriptive of respondent's storage space leasing services
and thus constitute subordinate matter. Purchasers and
prospective customers for such services, therefore, generally
would tend to refer to respondent's services by the term "STOR-
ALL." Such term both looks and sounds highly similar to the
term "STORAGE-ALL," which forms the dominant and distinguishing
element in applicant's "STORAGE-ALL INC." mark, given that the
term "INC." therein is simply an entity designation and would be
so regarded by consumers and potential buyers of applicant's
storage space rental services.
Ser. No. 75/701,938
9
Furthermore, the record contains a definition from The
American Heritage Dictionary of the English Language (3rd ed.
1992) which lists "stor." as an abbreviation of the word
"storage." Consequently, not only do the dominant and
distinguishing terms "STOR-ALL" and "STORAGE-ALL" in the marks
at issue share substantially the same connotation, but as the
Examining Attorney points out, because such terms "could be used
interchangeably," the respective marks substantially "create the
same overall commercial impression." Thus, and notwithstanding
that such marks are highly suggestive of storage space rental or
leasing services, in their entireties applicant's "STORAGE-ALL
INC." mark and registrant's "STOR-ALL SELF-STORAGE RENTALS" and
design mark and its "STOR-ALL SYSTEMS" and design mark are so
highly similar in appearance and sound and substantially
identical in connotation and commercial impression that, when
used in connection with legally identical services, confusion is
likely to occur.
Applicant further argues, however, that the conditions
of sale for storage space rental or leasing services are such
that even ordinary consumers must be treated as sophisticated
and discriminating purchasers who will be expected to exercise a
high degree of care in their selection of a self-storage
facility and would know the firm from which they are renting or
leasing storage space. According to applicant:
Ser. No. 75/701,938
10
[I]t is unlikely that there would be any
confusion as to source of the services. A
customer is fully informed and carefully
compares storage companies before making a
decision with regard to storing. A storage
facility provides services unlike any other.
A customer places valuable possessions,
confidential information, business papers,
or personal property (e.g., cars, RVs,
boats, furniture) in these facilities. ....
It is unlikely that a customer is going to
make a spontaneous decision in choosing a
storage facility to these or other valuable
items.

....

Furthermore, before one rents a storage
facility, a contract is signed by both
lessor and lessee. Customers know exactly
with whom they are contracting. There is
personal interaction between a customer and
a storage facility. Even if a customer was
confused as to whether he/she was dealing
with Appellant or ... Registrants [sic],
he/she would have the opportunity to inquire
further to determine who is providing the
service. ....

Storage space is not purchased
casually. In fact it can become quite
expensive. Price increases as the amount of
space required increases and duration of use
increases. .... This further supports
Appellant's assertion that it is unlikely
that purchasers would be confused between
Appellant's and Registrants' [sic] services.

While perhaps in some instances the rental or leasing
of storage space can rise to an expensive level, it is also the
case, as applicant acknowledges in its brief, that such a rental
"may only be for a short period of time and involve minimal
expense." Nevertheless, even assuming that storage space is
Ser. No. 75/701,938
11
purchased only after careful consideration, it is well settled,
as the Examining Attorney correctly notes, that the fact that
consumers may exercise deliberation in choosing the respective
services "does not necessarily preclude their mistaking one
[service mark or] trademark for another" or that they otherwise
are entirely immune from confusion as to source or sponsorship.
Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292
(CCPA 1962). See also In re Decombe, 9 USPQ2d 1812, 1814-15
(TTAB 1988); and In re Pellerin Milnor Corp., 221 USPQ 558, 560
(TTAB 1983).
Applicant additionally contends that, inasmuch as it
"is not aware of any actual confusion between Appellant's and
Registrants' [sic] marks" and because the Examining Attorney has
not "provided any evidence of actual confusion," "the absence of
evidence of actual confusion" favors applicant. However,
absence of evidence of actual confusion is clearly not evidence
of the absence of actual confusion. While, of course, evidence
of the absence of any instances of actual confusion over a
significant period of time is a du Pont factor which is
indicative of no likelihood of confusion, it is a meaningful
factor only where the record demonstrates appreciable and
continuous use by applicant of its mark in the same markets as
those served by registrant under its mark(s). See, e.g.,
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
Ser. No. 75/701,938
12
1992). In particular, there must be evidence showing that there
has been an opportunity for incidents of actual confusion to
occur. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000). Here, there is simply no
evidence in the record, such as information concerning details
of the nature and extent of the sales and marketing activities
of applicant and registrant under their respective marks, from
which it could be concluded that the asserted absence of any
instances of actual confusion is indeed a mitigating factor.
Compare In re General Motors Corp., 23 USPQ2d 1465, 1470-71
(TTAB 1992).
Finally, applicant points to the fact that, with its
request for reconsideration of the final refusal, it made of
record copies of two third-party registrations, owned by
different registrants, which are for the mark "STOR-ALL" for
"supporting hooks"7 and the mark "STOR-ALL" for "corrugated
boxes".8 According to applicant, "[t]hese marks are used on
products that are generally associated with storage facilities
(storage boxes and hooks)," yet such marks co-exist on the
register with the cited registrant's marks. Specifically,
applicant maintains that:

7 Reg. No. 1,131,632, issued on March 11, 1980, which sets forth a date
of first use anywhere and in commerce of August 1975; renewed.

8 Reg. No. 2,218,234, issued on January 19, 1999, which sets forth a
date of first use anywhere and in commerce of January 1, 1964.
Ser. No. 75/701,938
13
Some facilities sell corrugated boxes for
storage purposes and even use hooks within
the storage space itself. It is highly
likely that one would associate the
registered marks with one another before
he/she associated Appellant's and
Registrants' [sic] marks.

However, as the Examining Attorney has correctly
pointed out, the co-existence of the third-party registrations
with the cited registrations "do[es] not justify registration of
yet another confusing mark." As stated in AMF Incorporated v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268,
269 (CCPA 1973):
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registration is not evidence of what
happens in the market place or that
customers are familiar with them nor should
the existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake
or to deceive.

Moreover, and in any event, the third-party registrations and
the cited registrations are for different goods and services,
while applicant's services and those in the cited registrations,
as noted previously, are considered to be legally identical.
We accordingly conclude that consumers and potential
customers, who are familiar or acquainted with registrant's
"STOR-ALL SELF-STORAGE RENTALS" and design mark and its "STOR-
ALL SYSTEMS" and design mark for, in each instance, the services
Ser. No. 75/701,938
14
of "leasing of storage space," would be likely to believe, upon
encountering applicant's "STORAGE-ALL INC." for "storage space
rental services," that such legally identical services emanate
from, or are sponsored by or associated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.