Tricam Industries, Inc.

Trademark Trial and Appeal Board

Feb 27, 2003

No. 75824369 (T.T.A.B. Feb. 27, 2003)

Mailed: February 27, 2003
Paper No. 14
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Tricam Industries, Inc.
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Serial No. 75/824,369
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Bruce H. Little and Barrett M. Weber of Lindquist & Vennum
P.L.L.P. for Tricam Industries, Inc.
Cimmerian Coleman, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Simms, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Tricam Industries, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
UNIFRAME as a trademark for “metal ladders.”1 Registration
has been refused pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d), on the ground that applicant’s
1 Application Serial No. 75/824,369, filed October 18, 1999, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/824,369
2
mark so resembles the mark UNIFRAME, previously registered
for “vinyl windows and doors,”2 that, if used on applicant’s
identified goods, it is likely to cause confusion or
mistake or to deceive.
The appeal has been fully briefed, but applicant did
not request an oral hearing.
We reverse.
Our determination on 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). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the goods, applicant argues at some
length that the goods (vinyl windows and doors, and metal
ladders) are specifically different, and are used for
different purposes. However, as the Examining Attorney
points out, it is not necessary that the goods of the
parties be similar or competitive, or even that they move
2 Registration No. 1,865,795, issued December 6, 1994, Section 8
affidavit accepted; Section 15 affidavit received.
Ser No. 75/824,369
3
in the same channels of trade to support a holding of
likelihood of confusion, as long as they are related in
some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp.¸197 USPQ 910, 911 (TTAB 1978).
Thus, we must consider whether the Office has shown a
sufficient relationship between the goods that consumers
are likely to believe that they originate from the same
producer. In support of her position that applicant’s and
the registrant’s goods are related, the Examining Attorney
has asserted that they are all home improvement products.
However, the fact that a single term can be found that may
generally describe the goods is not a sufficient basis for
finding them to be related. See General Electric Company
v. Graham Magnetics Incorporated, 197 USPQ 690 (TTAB 1977);
Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd.,
188 USPQ 517 (TTAB 1975).
The Examining Attorney has also made of record a
number of third-party registrations in an attempt to show
that the goods are related. Third-party registrations
Ser No. 75/824,369
4
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). However, in
reviewing these ten registrations, we note that three are
based on Section 44 of the Trademark Act, and thus are not
based on use in commerce. In two other registrations the
items doors, windows and ladders have been deleted from the
identification of goods. The remaining registrations list
metal windows, doors and ladders; however, two of these
five registrations are owned by the same company, while a
third lists a wide variety of structural steel products,
including culverts, guard rails, flood gates and trash
intake screens for sewage plants and power plants. We
cannot consider this registration to show that all of the
listed goods are related, nor can we conclude, on the basis
of the limited number of probative registrations which have
been made of record, that consumers would consider ladders,
and windows and doors, to emanate from the same source if
sold under the same mark. Simply put, because of the
obvious differences in the nature and purposes of windows
and doors, on the one hand, and ladders, on the other, the
very limited evidence submitted by the Examining Attorney
Ser No. 75/824,369
5
in terms of the third-party registrations is not sufficient
to demonstrate that applicant’s identified goods and those
identified in the cited registration are related.
The Examining Attorney also asserts that vinyl windows
and doors and metal ladders are marketed in the same manner
and appeal to the same consumers. In her brief the
Examining Attorney makes the unsupported statement that
“such goods are likely to be marketed in television,
magazine, radio and print advertisements” and “are likely
to be sold in home improvement, hardware, and retail stores
and are likely to be available to the general consumer and
contractors who use home improvement products.” p. 5. As
to the first point, obviously a wide variety of goods are
advertised on television and radio and in publications such
as magazines. Clearly all such goods are not related, nor
would consumers assume a connection in source simply
because they are advertised in television commercials, etc.
The Examining Attorney has not submitted any proof that
vinyl windows and doors and metal ladders are advertised
together, such that consumers would assume a connection in
source if they were sold under the same mark. Similarly,
the fact that both types of products can be found in home
improvement stores (assuming this is the case; again, the
Examining Attorney has not submitted any evidence to this
Ser No. 75/824,369
6
effect), does not establish the necessary relationship
between the goods. A wide variety of items are sold in
home improvement stores, and this fact alone is not
sufficient to find that confusion is likely.
This brings us to a consideration of the marks. The
marks, clearly, are identical. However, as applicant has
pointed out, the use of identical marks does not
necessarily mandate a finding of likelihood of confusion.
In this case, the registered mark UNIFRAME has a suggestive
connotation for windows and doors. The scope of protection
to be accorded a suggestive mark is more limited than the
protection accorded to an arbitrary mark. Moreover, the
connotation of UNIFRAME in the context of windows and
doors, which relates to the framing of the windows and
doors, is different from the connotation of UNIFRAME in the
context of a metal ladder.
For the foregoing reasons, including the different
nature and purposes of the goods and the limited scope of
protection to be accorded to the suggestive mark UNIFRAME
for windows and doors, we find that applicant’s mark for
metal ladders is not likely to cause confusion with the
registered mark for vinyl windows and doors. However, this
is not to say that, on a different record, we might not
come to a different conclusion.
Ser No. 75/824,369
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Decision: The refusal of registration is reversed.
Simms, Administrative Trademark Judge, concurring:
I concur in the conclusion that confusion is not
likely, but for somewhat different reasons.
First, I believe that the respective marks are not
likely to be distinguished because of any different
suggestive connotation or meaning. Rather, both marks
would appear to have the same connotation. However, this
connotation is indeed suggestive of the construction of the
respective goods, and, without evidence of the strength of
registrant’s mark in this case, it must be considered a
relatively “weak” one entitled to a fairly limited scope of
protection.
While the record contains some evidence that ladders
and windows or doors may be made by the same entity, I do
not believe that, in this case, that evidence is
controlling. More important, in my opinion, would be
evidence concerning the channels of trade of the respective
goods, because manufacturing channels (evidence that these
goods may be made by the same entity) and trade channels
(evidence that these goods may be promoted together and
Ser No. 75/824,369
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sold in the same stores) may not be the same. See In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). While one can perhaps take judicial
notice of the fact that windows, doors and ladders may be
sold in the same hardware stores or home centers, as the
majority has noted a great number of items are brought
together in such stores. A stronger case could be made out
if there was evidence of the joint promotion of such items
by the same company under similar marks, showing the
exposure to the relevant public of the same goods under the
same mark.
Moreover, ladders and windows and doors are
specifically different products with completely different
purposes and uses. Windows and doors are, of course, items
used in the building and remodeling of homes and other
structures whereas ladders are used in painting as well as
in general repair and maintenance. These goods are not
commercially related, and while they may be sold in some of
the same channels of trade, there is no evidence that these
goods are likely to be sold together in hardware stores and
home centers.
It is also worthy of mention that windows, doors and
ladders are not inexpensive items which would be casually
purchased.
Ser No. 75/824,369
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I also agree with the majority that a different record
might result in a different conclusion. For example, as
indicated, if there was evidence that consumers were
exposed to advertising or promotion of these goods from the
same manufacturer under the same mark (rather than simply
third-party registrations of which consumers are unaware),
or if the registered mark were more arbitrary or well
known, those facts might lead us to reach a different
result.