The West Retail Group LimitedDownload PDFTrademark Trial and Appeal BoardOct 28, 2015No. 86050612 (T.T.A.B. Oct. 28, 2015) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: October 28, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re The West Retail Group Limited _____ Serial No. 86050612 _____ Peter B. Kunin and Cathleen E. Stadecker of Downs Rachlin Martin PLLC, for The West Retail Group Limited Andrew Rhim, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Ritchie, Lykos and Heasley, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: The West Retail Group Limited (“Applicant”) seeks registration on the Principal Register of the mark WREN (in standard characters), for goods and services ultimately identified as1: International Class 20: Non-metal shelves, shelves made of wood and wood substitutes; non-metal shelving, and shelving made of wood and wood substitutes; non-metal fasteners in the nature of spacers for use with kitchen furniture; non-metal fasteners in the nature of spacers 1 Application Serial No. 86050612 was filed on August 28, 2013, based upon applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, as well as Section 44(e). Other goods and services were divided out into a child application after the Final Office Action. Serial No. 86050612 - 2 - made of wood, wood substitutes, and plastic for use with kitchen furniture; pre-fabricated kitchen units comprised of any of cabinets, cupboards, display cases, shelves, shelving, sinks, and spacer brackets, all of non-metallic materials; pre-fabricated kitchen units comprised of any of cabinets, cupboards, display cases, shelves, shelving, sinks, and spacer brackets, all of wood, wood substitutes, and plastic; kitchen units comprised of any of cabinets, cupboards, display cases, shelves, shelving, sinks, and spacer brackets, all of non-metallic materials, for further assembly into a suite of kitchen furniture excluding, however, seating and upholstered furniture; kitchen units comprised of any of cabinets, cupboards, display cases, shelves, shelving, sinks, and spacer brackets, all of wood, wood substitutes, and plastic, for further assembly into a suite of kitchen furniture excluding, however, seating and upholstered furniture; furniture excluding, however, seating and upholstered furniture; kitchen furniture, namely, assembled and ready to assemble furniture for the kitchen space excluding, however, seating and upholstered furniture; bedroom furniture excluding, however, seating and upholstered furniture; bathroom and shower room furniture excluding, however, seating and upholstered furniture; fitted kitchen cabinets and fitted bedroom furniture and kits thereof for assembling kitchen and bedroom furniture comprised of furniture excluding, however, seating and upholstered furniture; fitted bathroom furniture and furniture for shower rooms and kits for assembling bathroom and shower room furniture comprised of furniture excluding, however, seating and upholstered furniture; articles of furniture, namely, cupboards, picture frames, cabinets, furniture chests for storage, drawers, chests of drawers, beds, wardrobes, bedside tables, shelving, shelves, mirrors, shoe racks excluding, however, seating and upholstered furniture; worktops and table tops; parts and fittings for all the aforesaid goods; tables; outdoor furniture excluding, however, seating and upholstered furniture; fitted kitchen furniture, namely, kitchen cabinets excluding, however, seating and upholstered furniture; kitchen furniture sold complete, namely, kitchen cabinets; cabinets; kitchen cabinets; cupboards; kitchen cupboards; kitchen display cases; display cases; kitchen display tables; shelves; worktops; kitchen worktops; shelving, kitchen shelving, furniture chests for storage, pre-fabricated kitchen units comprised of cabinets, cupboards, display cases, shelves, shelving, sinks, and spacer brackets, all of metallic materials; kitchen units comprised of cabinets, cupboards, display cases, shelves, shelving, sinks, and spacer brackets, all of metallic materials, for further assembly into a suite of kitchen furniture excluding, however, seating and upholstered furniture; and parts, fittings, components and accessories for all of the aforesaid goods; and Serial No. 86050612 - 3 - International Class 35: (Based on Intent to Use and Section 44(e)) The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in the field of kitchen furniture, fitted kitchen furniture, kitchen furniture sold complete, pre-assembled kitchen furniture, kitchen furniture for further assembly into a suite of kitchen furniture, cabinets, kitchen cabinets, cupboards, kitchen cupboards, kitchen units, display cases, kitchen display cases, shelves, worktops, kitchen worktops, storage units, shelves, shelving, kitchen shelving, sinks, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; retail store services featuring kitchen furniture, fitted kitchen furniture, kitchen furniture sold complete, pre-assembled kitchen furniture, kitchen furniture for further assembly into a suite of kitchen furniture, cabinets, kitchen cabinets, cupboards, kitchen cupboards, kitchen units, display cases, kitchen display cases, shelves, worktops, kitchen worktops, storage units, shelves, shelving, kitchen shelving, sinks, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; mobile retail store services featuring kitchen furniture, fitted kitchen furniture, kitchen furniture sold complete, pre-assembled kitchen furniture, kitchen furniture for further assembly into a suite of kitchen furniture, cabinets, kitchen cabinets, cupboards, kitchen cupboards, kitchen units, display cases, kitchen display cases, shelves, worktops, kitchen worktops, storage units, shelves, shelving, kitchen shelving, sinks, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; mail order services featuring kitchen furniture, fitted kitchen furniture, kitchen furniture sold complete, pre-assembled kitchen furniture, kitchen furniture for further assembly into a suite of kitchen furniture, cabinets, kitchen cabinets, cupboards, kitchen cupboards, kitchen units, display cases, kitchen display cases, shelves, worktops, kitchen worktops, storage units, shelves, shelving, kitchen shelving, sinks, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; online retail store services featuring kitchen furniture, fitted kitchen furniture, kitchen furniture sold complete, pre-assembled kitchen furniture, kitchen furniture for further assembly into a suite of kitchen furniture, cabinets, kitchen cabinets, cupboards, kitchen cupboards, kitchen units, display cases, kitchen display cases, shelves, worktops, kitchen worktops, storage units, shelves, shelving, kitchen shelving, sinks, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; the bringing Serial No. 86050612 - 4 - together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from an Internet website in the fields of kitchen furniture, fitted kitchen furniture, kitchen furniture sold complete, pre-assembled kitchen furniture, kitchen furniture for further assembly into a suite of kitchen furniture, cabinets, kitchen cabinets, cupboards, kitchen cupboards, kitchen units, display cases, kitchen display cases, shelves, worktops, kitchen worktops, storage units, shelves, shelving, kitchen shelving, sinks, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; consultancy, information and advisory services for all of the aforesaid services; (Based on Intent to Use) The bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in the field of furniture, bathroom furniture, bathroom accessories, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; retail store services featuring furniture, bathroom furniture, bathroom accessories, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; mobile retail store services featuring furniture, bathroom furniture, bathroom accessories, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; mail order services featuring furniture, bathroom furniture, bathroom accessories, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; online retail store services featuring furniture, bathroom furniture, bathroom accessories, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods from an Internet website in the fields of furniture, bathroom furniture, bathroom accessories, and parts, fittings, components and accessories therefor all of the foregoing excluding, however, seating and upholstered furniture; consultancy, information and advisory services for all of the aforesaid services. The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when applied to the identified goods and services, so Serial No. 86050612 - 5 - resembles the previously registered mark, , for “furniture, namely, upholstered seating,” in International Class 20,2 as to be likely to cause confusion, mistake, or to deceive. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We reverse the refusal to register. I. Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all 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). We consider the du Pont factors for which there were arguments and evidence. The others, we consider to be neutral. We first consider the du Pont factor of similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. The mark in the cited 2 Registration No. 1534327, issued April 11, 1989. Sections 8 and 15 affidavits accepted and acknowledged. Renewed. Serial No. 86050612 - 6 - registration is , while Applicant’s mark is WREN. The differences in sight and sound are apparent, in that the mark in the cited registration consists of a stylized form of the terms “CABOT” and “WRENN.” The mark in the cited registration is three syllables rather than one, and begins with the term “CABOT.” In addition to differences in sight and sound, Applicant argues that the marks are dissimilar in commercial impression. Applicant submitted evidence that the terms “CABOT” and “WRENN” are surnames. August 28, 2013 Response to Office Action, at 4 and 7. By contrast, the term “WREN” is understood as a type of bird. Id. at 10. Applicant admits in its brief that “WREN” may also be variation of the surname WRENN. 10 TTABVUE 10; See also July 28, 2014 Final Office Action at 2. However, Applicant argues that consumers who encounter the mark in the cited registration, , will understand it to be composed of two surnames, whereas customers who encounter Applicant’s mark, WREN, will more likely understand it as conveying the commercial impression and connotation of a bird. We agree with this assessment. Accordingly, we find that the marks differ in sight, sound, connotation, and commercial impression, and that the first du Pont factor weighs against finding a likelihood of confusion. We turn next to a consideration of the similarity or dissimilarity of the goods and services. It is well-settled that the question of likelihood of confusion must be determined based on an analysis of the goods identified in the application vis-à-vis those identified in the registration. Stone Lion Capital Partners, LP v. Lion Capital Serial No. 86050612 - 7 - LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Applicant has pointedly excluded from its International Class 20 and 35 goods and services involving furniture the “seating and upholstered furniture” that is identified in the cited registration. This does not automatically avoid likelihood of confusion. We keep in mind that the test is not whether consumers would be confused, but whether consumers would be confused into believing that the goods emanate from a single source. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). To establish the similarity of the goods and services, the Examining Attorney submitted evidence of website printouts from a number of retailers or online retailers that feature bedroom, outdoor, or kitchen furniture, as identified in the application (International Class 20), and upholstered seating, as identified in the cited registration. These include Crate&Barrel; Home Decorators Collection; Bed Bath & Beyond; Ikea; West Elm; Weaver Furniture Barn; and Pier One, among others, as well as registrant itself. The websites also show retail or online retail services of the goods noted (International Class 35). What is not clear from the evidence, however, is whether the goods and services at issue are being offered under the same mark, or are merely advertised on the same website. Serial No. 86050612 - 8 - While we may accept that the evidence indicates that the goods and services identified in the application and the cited registration are likely to travel in the same channels of trade via some of the same retailers and online retailers, there is insufficient evidence that they are sold under the same mark. As such, the Examining Attorney has not made a prima facie case establishing the relatedness of the goods and services in the application to those in the cited registration. Thus while we find the third du Pont factor to weigh in favor of finding a likelihood of confusion, we find the second du Pont factor to weigh against it. II. Conclusion In conclusion, considering all of the arguments and evidence of record as they pertain to the relevant du Pont factors, we find the mark in the application, WREN, to be different in sight, sound, connotation, and commercial impression from the mark in the cited registration, . We further find that although the goods and services may travel through the same channels of trade, there is insufficient evidence of the relatedness of the goods and services. Accordingly, we find no likelihood of confusion. Decision: The refusal to register Applicant’s mark is reversed. Copy with citationCopy as parenthetical citation