Trespa International B.V.

Trademark Trial and Appeal Board

Oct 20, 2003

No. 75663970 (T.T.A.B. Oct. 20, 2003)

Mailed: October 20,2003
Paper No.14
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Trespa International B.V.
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Serial No. 75663970
_______
Marilyn Matthes Brogan and William F. Lawrence of Frommer
Lawrence & Haug LLP for Trespa International B.V.
Catherine Pace Cain, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______
Before Simms, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Trespa International B.V. has filed an application to
register the mark "INSPIRATIONS" for "non-metal building panels,
non-metal boards for wall paneling and facades, [and] non-metal
partition walls, excluding windows."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
1 Ser. No. 75663970, filed on March 19, 1999, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75663970
2
applicant's mark, when applied to its goods, so resembles the
mark "INSPIRATIONS," which is registered for "windows,"2 as to be
likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our 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 the similarity of the marks.3 Here, inasmuch as the
respective marks are identical in all respects, including the
same overall commercial impression,4 it is plain that the
contemporaneous use thereof in connection with the same or
closely related goods would be likely to cause confusion as to
their source or sponsorship. The principal focus of our inquiry
is accordingly on the similarities and dissimilarities in the
respective goods, including similarities and dissimilarities in
2 Reg. No. 2,411,080, issued on December 5, 2000, which sets forth a
date of first use anywhere and in commerce of June 25, 1998.
3 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 differences in the marks."
4 Applicant, we observe, has not raised any argument to the contrary.
Ser. No. 75663970
3
established, likely to continue channels of trade and the
conditions under which and buyers to whom sales are made.
Applicant argues, among other things, that confusion is
not likely from contemporaneous use of the marks at issue due to
the differences in the respective goods, the differences in their
channels of trade and classes of purchasers, the sophistication
of the purchasers thereof and "the non-impulse conditions under
which purchases are made." In particular, applicant notes that
it "is in the business of providing strong, stylized paneling for
both exterior and interior use" and that, as identified in its
application, its goods specifically exclude windows. Thus,
applicant contends that, not only do its goods "not overlap with
those of Registrant," but the respective goods "have different
purposes, attract different customers, and consequently do not
compete for sales." Applicant also argues that "the differences
in the trade channels [and classes of purchasers] ... mitigate
against any likelihood of confusion," asserting that:
Applicant's products are offered to
individuals, retailers, and manufacturers who
require panels for buildings, boards for wall
paneling and facades, and partition walls.
The customers for Registrant's products are
individuals and companies looking to purchase
windows. Applicant's wall panels, facades
and partitions are generally sold to
professional [builders] and contractors. In
contrast, Registrant's windows appear to be
usually purchased [by] ... the individual
consumer and homeowner. .... There is no
evidence that the instant Applicant and the
Registrant offer their products to the same
customers or compete for sales.
In addition, applicant stresses that "when [purchasing]
decisions are made either by sophisticated purchasers or after
Ser. No. 75663970
4
careful examination of the product, there is a lesser likelihood
of confusion." Applicant insists that in this case:
[T]he goods recited in this application
and in the cited registration are not
products that are generally bought on impulse
... but are purchased only after close
consideration. The customers for such goods
are generally knowledgeable about their field
and have expertise in their trade. ....
Applicant, in consequence thereof, "respectfully contends that
since the goods in question are purchased with care and
deliberation by sophisticated purchasers, no confusion is
likely."
As a final consideration, applicant urges that "[t]here
is also an additional factor which further decreases the
likelihood of confusion between the ... respective marks,"
namely, "the co-existence of a number of trademark applications
and registrations containing the formative INSPIR- and the like,
for a variety of goods and/or services." Referring, in this
regard, to the lists of certain third-party applications and
registrations for the mark "INSPIRATIONS," which it submitted as
part of its response to various Office actions, applicant
contends that registrant's mark "is weak, [and thus] the
likelihood of confusion is reduced." Specifically, applicant
states that it "conducted a trademark search on the United States
Patent and Trademark Office website which uncovered approximately
33 marks for the work [sic] INSPIRATIONS alone and about 96 marks
containing the word INSPIRATIONS as part of a composite mark."5
5 As to the latter, however, we note that applicant has not furnished
any copies thereof or set forth other meaningful information, such as
the associated goods or services for which the marks are registered or
Ser. No. 75663970
5
The Examining Attorney, on the other hand, correctly
points out that it is well settled that the issue of likelihood
of confusion must be determined on the basis of the goods as they
are set forth in the involved application and the cited
registration, and not in light of what such goods are asserted to
actually be. See, e.g., Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); 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 an applicant's and a registrant's goods 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 goods of the nature and type described therein, but
that the identified goods move in all channels of trade which
would be normal for those goods, and that they would be purchased
by all potential buyers thereof. See, e.g., In re Elbaum, 211
USPQ 639, 640 (TTAB 1981).
Moreover, as the Examining Attorney properly notes, it
is well established that an applicant's goods need not be
identical or even competitive in nature with those of the
sought to be registered. In view thereof, and inasmuch as the Board
does not take judicial notice of third-party registrations, see, e.g.,
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974), the probative value
of the approximately 96 composite "INSPIRATIONS" marks is essentially
negligible.
Ser. No. 75663970
6
registrant in order to support a finding of likelihood of
confusion. It is sufficient, instead, that the respective goods
are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In view of the above, the Examining Attorney maintains
that:
Applicant's non-metal building panels, [non-
metal] boards [for wall paneling and
facades], and [non-metal] partition walls[,
excluding windows,] and registrant's windows
are highly related building products for home
or office construction and improvement. The
application and cited registration describe
the goods broadly, with no limitations as to
their ... channels of trade or classes of
purchasers[.] Therefore, applicant's and
registrant's building products are available
to individuals or to professional contractors
and travel in the same trade channels.
Moreover, while citing Amcor, Inc. v. Amcor Industries, Inc., 210
USPQ 70, 78 (TTAB 1981), for the proposition that because the
respective marks are identical, the relationship between the
goods at issue "need not be as close to support a finding of
likelihood of confusion as might apply where differences exist
between the marks," the Examining Attorney nonetheless contends
Ser. No. 75663970
7
that the record shows that such goods are indeed so "highly
related" as "building products for home or office construction
and improvement" that, when marketed under the identical mark
"INSPIRATIONS," confusion as to their source or sponsorship is
likely to occur.
Specifically, the Examining Attorney notes that the
record contains copies of various third-party registrations in
which, in each instance, the same mark is registered for "a
variety of building materials, including panels, walls and
windows." It is settled, in this regard, that while use-based
third-party registrations are not evidence that the different
marks shown therein are in use or that the public is familiar
with them, such registrations may nevertheless have some
probative value to the extent that they serve to suggest that the
goods listed therein are of the kinds which may emanate from a
single source. See, e.g., In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988). Here, of the
registrations referred to by the Examining Attorney which are
based on use in commerce, several of those include, in each
instance, such goods as the following: (i) "wood mouldings, wood
panelings, ... [and] wood framed storm windows"; (ii) "millwork
...; wood mouldings; non-metal ceiling and door panels; ... and
non-metal windows"; (iii) "windows ... and mill work"; (iv)
"building materials; namely, ... windows ...; [and] exterior
building panels and walls"; (v) "windows, ... and wall ... and
other building panels"; (vi) "windows, ... [and] building
Ser. No. 75663970
8
panels"; (vii) "laminated building panels, ... [and] storm
windows"; and (viii) "non-metal ... building materials; namely,
windows, ... [and] wall panels." In addition, to demonstrate the
common channels of trade for applicant's and registrant's goods,
the record includes five use-based third-party registrations for
the following retailing and/or distributorship services: (i)
"retail and wholesale store services ... featuring ... a variety
of supplies for building, maintaining, repairing and improving
buildings and homes, such as ... boards; supplies for ...
paneling ...; moldings ...; windows"; (ii) "retail store services
featuring building materials, ... windows, ... [and] millwork";
(iii) "wholesale distributorships featuring windows, ... lumber
and related millwork products used as building materials"; (iv)
"retail store services involving millwork building materials,
namely, windows, ... [and] decorative mouldings"; and (v)
"wholesale distributorships featuring ... windows ..., moldings,
[and] millwork."
The above evidence is sufficient to establish that
applicant's non-metal building panels, non-metal boards for wall
paneling and facades, and non-metal partition walls, excluding
windows, are so closely related in a commercial sense to
registrant's windows that the marketing of such products under
the identical mark "INSPIRATIONS" would be likely to cause
confusion as to origin or affiliation. Not only is it the case
that the respective goods are of the types which may emanate from
a single source, but contrary to applicant's arguments, such
goods travel in the same channels of trade (e.g., retail building
Ser. No. 75663970
9
materials stores and wholesale building supplies outlets) to the
same classes of purchasers (including do-it-yourselfers and other
ordinary consumers as well as professional builders and
remodeling contractors). In particular, as the Examining
Attorney persuasively points out in her brief:
When doing a construction or improvement
project, it is entirely logical that a
contractor, a homeowner, or an office project
manager might purchase building panels,
boards, partition walls, and windows for the
same project. Therefore, the goods are
complementary items.
Furthermore, as the Examining Attorney notes, applicant admits
that there is significant overlap between the respective goods in
terms of consumer purchasers and the same likewise would
obviously be the case as to professional purchasers.
Significantly, in this regard, there not only is no limitation as
to channels of trade or classes of purchasers with respect to the
identification of applicant's goods, which as applicant concedes
are "offered to individuals, retailers, and manufacturers who
require panels for buildings, boards for wall paneling and
facades, and partition walls," but there likewise is no
restriction as to the methods of distribution and customer base
with respect to the identification of registrant's "windows,"
which must be considered suitable for sale, as applicant
acknowledges, to "individuals and companies looking to purchase
windows."
Moreover, as to applicant's argument that there
nevertheless is no likelihood of confusion inasmuch as the
respective goods are purchased with care rather than impulsively
Ser. No. 75663970
10
and the purchasers thereof "are generally knowledgeable about
their field and have expertise in their trade," suffice it to say
that while such generally would be true as to professional
builders, remodeling contractors, construction project managers
and the like, it is not necessarily the case with respect to such
buyers as do-it-yourselfers and other ordinary consumers.
Nonetheless, even assuming that purchases of applicant's and
registrant's closely related goods will be made with at least
some degree of care and sophistication, it is well settled that
the fact that consumers may indeed exercise deliberation in
choosing the respective goods at issue "does not necessarily
preclude their mistaking one 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). Such is especially the case where, as
here, the marks at issue are identical in all respects.
Finally, with respect to applicant's contention that
"the nature and number of similar marks containing the formative
INSPIR- and/or the word INSPIRATIONS also mitigates against the
likelihood of confusion," particularly since the mark
"INSPIRATIONS" is weak in that it "is used and/or registered in
connection with a variety of products or services," the Examining
Attorney counters by accurately observing that "there is little
value in focusing on the third-party [applications and]
registrations because the ... goods and services [set forth
Ser. No. 75663970
11
therein] are unrelated to those of the applicant and registrant
in this case." In addition, inasmuch as the information provided
by applicant with respect to third-party marks does not
constitute proof of actual use of such marks so that it could
otherwise be inferred that the purchasing public, having become
conditioned to encountering various products and services under
marks which consist of the word "INSPIRATIONS" or include the
formative "INSPIR-," is accustomed to distinguishing the sources
thereof, there simply is no demonstrated weakness as to
registrant's mark. See, e.g., AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); and
In re Hub Distributing, Inc., 218 USPQ 284, 285-86 (TTAB 1983).
Thus, the asserted weakness of registrant's mark, as assertedly
measured by the number and nature of the same and/or similar
marks in use on similar goods and/or services is not a relevant
du Pont factor in this appeal.
We accordingly conclude that consumers and potential
customers, who are familiar or acquainted with registrant's
"INSPIRATIONS" mark for "windows," would be likely to believe,
upon encountering applicant's identical "INSPIRATIONS" mark for
"non-metal building panels, non-metal boards for wall paneling
and facades, [and] non-metal partition walls, excluding windows,"
that such closely related goods emanate from, or are sponsored by
or associated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.