The Innovative Companies LLC

Trademark Trial and Appeal Board

Mar 15, 2007

No. 76640746 (T.T.A.B. Mar. 15, 2007)

Mailed:
March 15, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Innovative Companies LLC
________

Serial No. 76640746
_______

Myron Amer of Myron Amer, P.C. for The Innovative
Companies LLC.

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

Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant, The Innovative Companies LLC. seeks
registration on the Principal Register of the mark STONE
DEPOT (in standard character format) for services originally
recited in the application as “wholesale and retail store
services for natural stone, man-made stone, and tiles, and
advising on the end uses thereof.”1 When this recitation

1 Application Serial No. 76640746 was filed on June 13, 2005
based upon applicant’s allegation of a bona fide intention to
use the mark in commerce. No claim is made to the word “Stone”
apart from the mark as shown.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76640746
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was found to be indefinite, applicant proposed an
amendment of the recitation to “services featuring end
uses of quarry stones as kitchen countertops and bathroom
vanities,” a description placed by applicant, once again,
in International Class 19.
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon two different
grounds.
(1) The Trademark Examining Attorney contends that
applicant’s proposed amendment to the recitation of
services is unacceptable. Absent applicant’s
compliance with the requirement for an acceptable
recitation of services, registration has been
refused. 15 U.S.C. § 1062(b); 37 C.F.R. § 2.64(a).
(2) The Trademark Examining Attorney has also refused
registration of applicant’s mark based upon Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The
Trademark Examining Attorney asserts that applicant’s
mark, when used in connection with the recited
services, so resembles the trademark STONE TILE
DEPOT.COM (in standard character format) registered in
connection with “wholesale and retail store services
Serial No. 76640746
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for natural stone, man made stone and tile” in
International Class 35,2 as to be likely to cause
confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney
submitted briefs. We affirm both refusals to register.
Unacceptable recitation of services
Applicant’s original recitation of services, as
filed, was “wholesale and retail store services for
natural stone, man-made stone, and tiles, and advising on
the end uses thereof” in class 19. Clearly, services are
not classified in International Class 19. We also agree
with the Trademark Examining Attorney that the “advising”
language needed some clarification. Nonetheless, with
minor tweaking, it appears likely that this original
description of applicant’s goods/services could well have
been changed to an acceptable recitation of services in
International Class 35, for example.
However, in response to the initial Office action,
applicant asked that the description of services be

2 Registration No. 3005046 issued to Marble Systems Inc. of
Fairfax, VA on October 4, 2005, based upon an application filed
on January 23, 2004 having claims of first use anywhere and
first use in commerce at least as early as March 12, 2003. No
claim is made to the words “Stone Tile” apart from the mark as
shown.

Serial No. 76640746
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amended to “services featuring end uses of quarry stones
as kitchen countertops and bathroom vanities” (emphasis
supplied). The Trademark Examining Attorney takes the
position that this terminology is indefinite and vague,
“ … particularly with respect to
applicant’s use of the wording, “services
featuring end uses of …,” because the
applicant fails to state the nature of the
“services.” As proposed, the applicant’s
services may refer to any number of
services in any number of classes, for
example: “retail or wholesale store,”
“advertising,” or “consumer information,”
services in class 35, “installation” or
“maintenance” services in class 37, or
“design” services in class 42.

Because applicant’s proposed services are
sufficiently ambiguous as to encompass
these numerous diverse services, the
applicant’s proposed services are 1)
indefinite, 2) do not use common
terminology so as to be readily
understandable and (3) do not accurately
describe the services. TMEP § 1402.11.
Therefore, the applicant’s proposed
amendment to its identification of services
remains unacceptable as indefinite.

Trademark Examining Attorney’s appeal brief, unnumbered
pp. 13 – 14.
Applicant points to an earlier issued registration
owned by applicant – a registration covering goods in
International Class 20 for a composite mark that appears
to include applicant’s INNOVATIVE house mark:

Serial No. 76640746
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INNOVATIVE
STONE
SURFACES
for “kitchen and vanity bathroom countertops
featuring natural stones and agglomerates of
volcanic stone” in International Class 20.3

In his final refusal, the Trademark Examining
Attorney suggested that applicant adopt the recitation of
services, if accurate, of “providing consumer information
in the field of the end uses of quarry stones as kitchen
countertops and bathroom vanities” in International Class
35. However, rather than working out an acceptable
recitation of services with the Trademark Examining
Attorney, applicant appealed the final action as to both
bases for refusal.
As seen in applicant’s INNOVATIVE STONE SURFACES
registration – or as one would discover by perusing the
United States Patent and Trademark Office’s “Acceptable
Identification of Goods and Services Manual” – a range of
detailed descriptions for stone countertops (e.g.,
“kitchen countertops of stone,” “bathroom vanity

3 Registration No. 2586480 issued to Innovative Marble and
Tile, Inc. on June 25, 2002 based on an application filed on
October 23, 2000, ultimately claiming first use anywhere and
first use in commerce at least as early as February 5, 2002.
The words “Stone Surfaces” are disclaimed apart from the mark as
shown. According to the assignment records of the United States
Patent and Trademark Office, this registration was one of twenty
applications and registrations that Innovative Marble and Tile,
Inc. n/k/a Innovative Stone International, Inc., assigned to The
Innovative Companies LLC, as of January 9, 2004, recorded at
Reel 3041, Frame 0563.

Serial No. 76640746
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countertops made of natural quarry stones,” etc.) comprise
definite identifications of goods for parts of furniture
in International Class 20 – the “furniture class.”
Figurines, tiles, prefabricated stone and stones for
building and construction are generally identified by
their common commercial names and/or end uses, and are
placed in International Class 19.
However, despite the fact that applicant repeatedly
placed its described goods/services in International Class
19 – a goods class, the words themselves have consistently
pointed to services. Furthermore, the Trademark Examining
Attorney takes issue with applicant’s proposed, lead-off
wording of “services featuring end uses of quarry stones
as kitchen countertops and bathroom vanities.” Inasmuch
as applicant has failed to clarify the nature of the
“services,” the Trademark Examining Attorney takes the
position that this terminology is indefinite and vague.
We agree.
For example, applicant initially applied for
“wholesale and retail store services …” – a description
that would correctly be placed in International Class 35.
While “advertising” and “consumer information” services
would also be placed in International Class 35,
“installation” or “maintenance” services would be placed
Serial No. 76640746
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in International Class 37, “custom manufacture of stones
in the form of countertops” would be placed in
International Class 40, “educational services, namely,
providing training to individuals in the use of stones”
would be placed in International Class 41, while “design”
services would be placed in International Class 42.
Therefore, we agree with the Trademark Examining Attorney
that applicant’s proposed services are sufficiently
ambiguous as to encompass potentially this whole range of
diverse services. Hence, the Trademark Examining Attorney
is correct in taking the position that judging by the
standards set out in TMEP § 1402.11, the applicant’s
proposed wording for its services is indefinite, not
readily understandable and inaccurate.
Inasmuch as applicant has failed to comply with the
requirement of the Trademark Examining Attorney for an
acceptable recitation of services, we affirm this refusal
to register. 15 U.S.C. § 1062(b); 37 C.F.R. § 2.64(a).
Likelihood of Confusion
We turn, then, to the issue of likelihood of
confusion. Our determination of likelihood of confusion
is based upon our analysis of all of the probative facts
in evidence that are relevant to the factors bearing on
Serial No. 76640746
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the issue of likelihood of confusion. See 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, however, two key,
although not exclusive, 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).
The Services
Registrant’s services are recited as “wholesale and
retail store services for natural stone, man made stone
and tile” in International Class 35. Applicant’s original
description of goods/services was written as “wholesale
and retail store services for natural stone, man-made
stone, and tiles, and advising on the end uses thereof,”
in International Class 19. Apart from the final clause
that the Trademark Examining Attorney found objectionable
(and applicant’s incorrect classification), applicant’s
and registrant’s services would be identical. While the
indefinite nature of applicant’s proposed amendment makes
Serial No. 76640746
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any definitive comparisons inherently difficult,4 “services
featuring end uses of quarry stones as kitchen countertops
and bathroom vanities” could certainly include “retail
store services for natural stone.” Accordingly, we find
that the services are, at the very lease, closely related,
and may well be identical.
The Marks
We turn next to the du Pont factor that focuses on
the similarities or dissimilarities in the appearance,
sound, connotation and commercial impression of the
respective marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
We also note that if the respective services (or
goods) of the parties are essentially identical, as is the
case herein, it has been held that “the degree of
similarity [of the marks] necessary to support a

4 In addition to ensuring proper classification, a primary
reason for examination practice and procedures in the area of
identifications of goods/recitation of services, and an
underlying reason for the precision of the entries of the
USPTO’s “Acceptable Identification of Goods and Services
Manual,” is the proper determination of likelihood of confusion.
This is necessarily a critical issue at the time the
involved application is being examined. Secondly, should a
resulting registration eventually issue, problems might well
arise during the unlimited life of that registration in
determining whether this registration should act as a bar to
later-filed applications under Section 2(d) of the Lanham Act.
Serial No. 76640746
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conclusion of likely of confusion declines.” Century 21
Real Estate v. Century Life of America, 970 F.2d 874, 877,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992), cert. denied 506
U.S. 1034 (1992) [finding CENTURY LIFE OF AMERICA for
insurance underwriting services confusingly similar to
opposer's CENTURY 21 mark for insurance brokerage
services]; Centraz Industries Inc. v. Spartan Chemical
Co., 77 USPQ2d 1698, 1700 (TTAB 2006) [finding and
ICE SHINE confusingly similar for floor-refinishing
preparations]; In re J. M. Originals Inc., 6 USPQ2d 1393
(TTAB 1987) [J M COLLECTABLES and JM ORIGINALS confusingly
similar for identical and related items of clothing]; and
TMEP § 1207.01(b).
Furthermore, under actual market conditions,
consumers generally do not have the luxury of making side-
by-side comparisons. The question is whether the marks
create the same overall impression. Recot, Inc. v. M. C.
Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir.
2000); and Visual Information Inst., Inc. v. Vicon Indus.
Inc., 209 USPQ 179 (TTAB 1980). The focus is on the
recollection of the average purchaser who normally retains
a general rather than specific impression of trademarks.
Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby
Serial No. 76640746
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Skate Corporation, 206 USPQ 255 (TTAB 1980); Chemetron
Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB
1979); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975); and TMEP § 1207.01(b).
Applicant’s mark is STONE DEPOT and registrant’s mark
is STONE TILE DEPOT.COM. There are obvious similarities
in the appearance and pronunciation of the two marks in
that both begin with the identical term “Stone” and end
with the identical, stand-alone word, “Depot.” Although
registrant’s mark does follow the word “Depot” with the
Top-level Domain name (TLD), “.COM,” such a designation
operates as a locator for Internet website addresses, and
hence, in this case, does not serve to distinguish the
source of the services. In particular, the joinder of the
words “stone,” “tile” and “depot” with the TLD “.com” does
not create a formulation that, in context, would be
perceived by the relevant public as suggesting a non-
descriptive connotation like SUGAR & SPICE for bakery
products,5 THE SOFT PUNCH for noncarbonated soft drink,6 and
NO BONES ABOUT IT for fresh pre-cooked ham7. Cf. In re DNI
Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005). At best, in

5 In re Colonial Stores Incorporated, 394 F.2d 549, 157 USPQ
382 (CCPA 1968).
6 In re Delaware Punch Co., 186 USPQ 63 (TTAB 1975).
7 In re National Tea Co., 144 USPQ 286 (TTAB 1965).
Serial No. 76640746
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the context of registrant’s mark, the TLD suffix serves
merely to suggest that potential customers can transact
business with registrant via the Internet.
The mark of the applicant and registrant are also
different in that the applicant has deleted the highly
descriptive, if not generic, term, “Tile,” from the mark
of the registrant, in order to arrive at its mark. In the
event this small difference in the middle of the marks
would even be noticed or remembered – we find that this
difference is not sufficient to distinguish the marks as
to appearance. Certainly, marks may be confusingly
similar in appearance where there are similar terms or
phrases or similar parts of terms or phrases appearing in
both applicant’s and registrant’s mark. See Crocker Nat’l
Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689
(TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987)
[COMMCASH and COMMUNICASH]; and In re Optical Int’l, 196
USPQ 775 (TTAB 1977) [OPTIQUE versus OPTIQUE BOUTIQUE used in
connection with competing optical wear]. Hence,
notwithstanding these differences, we find that the marks
are similar in appearance.
Similarly, as to sound, applicant’s deletions of the
term, “Tile,” from the middle of the mark and the TLD,
“.COM” from the ending of registrant’s mark, do not
Serial No. 76640746
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INTELECT
v.
distinguish the marks. As noted by the
Trademark Examining Attorney, slight
differences in the sound of similar marks
will not avoid a likelihood of confusion.
See In re Energy Telecomm. & Electrical
Ass’n, 222 USPQ 350 (TTAB 1983). Hence, we find that the
marks involved herein are pronounced similarly.
As to connotation, the terms “Stone” and “Depot” have
the same meaning in both marks – namely, a place for
storing stones. The major difference, with respect to the
commercial impressions created by the marks, is the term,
“Tile,” which is present in the mark of the registrant.
However, the record shows that in registrant’s and
applicant’s field of business, tile products move through
the same channels of trade as do stones, and registrant
has correctly disclaimed exclusive rights to use this
term. Hence, for rational reasons, we give less emphasis
to this term.8

8 When considering marks for purposes of a likelihood of
confusion determination under Section 2(d) of the Trademark Act,
disclaimed matter is typically less significant or less dominant
when comparing marks. Although a disclaimed portion of a mark
certainly cannot be ignored, and the marks must be compared in
their entireties, one feature of a mark may be more significant
in creating a commercial impression. Dixie Restaurants Inc.,
supra; In re National Data Corporation, 753 F.2d 1056, 224 USPQ
749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc.,
3 USPQ2d 1553 (TTAB 1987). See Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002)
Serial No. 76640746
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Therefore, although there are some differences in the
marks, we find that applicant’s mark and registrant’s mark
are very similar in their entireties as to appearance,
sound, connotation and commercial impression.
Finally, given the close relationship of the
services, applying the standard of Century 21 Real Estate,
supra, we find that the degree of difference between the
proposed mark, STONE DEPOT and the registered mark, STONE
TILE DEPOT.COM, is certainly not enough to avoid a
likelihood of confusion as to source with regard to the
marks.
Decision: Inasmuch as applicant’s proposed amendment
to the recitation of services is unacceptable, we affirm
the refusal of registration on this ground. Also, we
affirm the refusal to register based upon Section 2(d) of
the Lanham Act.

[HEWLETT PACKARD confusingly similar to PACKARD TECHNOLOGIES];
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189
USPQ 693 (CCPA 1976) [TEKTRONIX not confusingly similar to
mark having prominent letter “D” above DAKTRONICS INC.];
In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988)
[MACHO COMBOS for food items and MACHO for sandwich is likely to
cause confusion]; and In re Equitable Bancorporation, 229 USPQ
709 (TTAB 1986) [RESPONSE CARD confusingly similar to RESPONSE].