TruServ Corp.

Trademark Trial and Appeal Board

Jun 8, 2004

No. 76067950 (T.T.A.B. Jun. 8, 2004)

Mailed:6/8/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re TruServ Corporation
________
Serial No. 76067950
_______
Christopher J. Schulte and Kristine M. Boylan of Meagher &
Geer for applicant.
Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hanak, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by TruServ Corporation to
register the mark PARTY PLUS (“PARTY” disclaimed) for
retail store services and wholesale
distributorship services featuring the
rental and leasing of party equipment
and supplies, such as tables, chairs,
glassware, china, flatware, plastic
ware, food service, linen, concession
equipment, disposables, dance floor and
staging, tenting[,] party favors,
balloons and decorations.1
1 Application Serial No. 76067950, filed June 12, 2000, alleging
a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth a
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76067950
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark shown
below
for “retail store services specializing in party supplies”2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant argues, in urging that the refusal be
reversed, that the numerous third-party uses of the common
terms of each mark, in connection with similar services,
have created a situation where the likelihood of confusion
is de minimus. In connection with its principal contention
that the cited mark is weak, applicant submitted the
date of first use anywhere and a date of first use in commerce of
1990.
2 Registration No. 2,169,375, issued June 30, 1998; Section 8
affidavit filed and accepted. The registration sets forth dates
of first use of August 1983. The words “Party” and “Warehouse”
are disclaimed apart from the mark.
Ser No. 76067950
3
following evidence: copies of thirteen third-party
registrations of marks employing the term “party” for
retail store services featuring party supplies; and the
declaration of Judi Stinson, a paralegal at the law firm
representing applicant, accompanied by information relating
to nineteen third-party common law uses of marks employing
both of the terms “party” (or “parties”) and “plus” in the
party supplies industry. Ms. Stinson states that she
called each of the nineteen users to confirm that they were
actually using the respective marks. The information on
these third-party uses includes Dun & Bradstreet reports,
excerpts from websites on the Internet, and brochures.
According to applicant, this evidence of third-party usage
of PARTY (or PARTIES) PLUS marks in the party supplies
field is competent to suggest that purchasers have been
conditioned to look to other elements of the marks as a
means of distinguishing the source of the goods or services
in the field. Applicant further contends that its mark
uses a simple alliteration which creates a commercial
impression that is distinct from the one engendered by
registrant’s mark. Applicant also contends that the
absence of any instances of actual confusion over a ten-
year period of contemporaneous use weighs in its favor.
Ser No. 76067950
4
The examining attorney maintains that the marks are
similar and that the services are closely related. The
examining attorney points to applicant’s evidence to show
that the same entities offer both sales and rental of party
supplies in retail outlets. The examining attorney also
discounts applicant’s evidence of third-party usage and
states that, in any event, even a weak mark is entitled to
protection against the registration of a similar mark for
closely related services.
Our determination of 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). 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).
Insofar as a comparison of registrant’s “retail store
services specializing in party supplies” with applicant’s
Ser No. 76067950
5
“retail store services and wholesale and distributorship
services featuring the rental and leasing of party
equipment and supplies” is concerned, the services are, at
least in part, legally identical, or otherwise closely
related.3 Applicant does not seriously contend to the
contrary. The Federal Circuit has stated that when “marks
would appear on virtually identical goods or services, the
degree of similarity [between the marks] necessary to
support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
When comparing applicant’s mark PARTY PLUS with
registrant’s mark PARTY PLUS WAREHOUSE and design, we find
that the marks are sufficiently similar that, when used in
connection with legally identical or closely related
services, confusion is likely to occur among consumers in
the marketplace.
Although we have considered the marks in their
entireties, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
3 Registrant’s recitation of services is broad enough to
encompass retail store services featuring the rental or leasing
of party supplies. In any event, the sale of party supplies is
closely related to the rental of party supplies, a point
highlighted by the evidence of record showing that single
entities have done both under the same mark.
Ser No. 76067950
6
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 example, a literal
portion of a mark usually dominates over any design portion
because the literal portion would be most likely to be
remembered by consumers and used by them in calling for the
services. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987).
In the present case, we find that the literal portion
of registrant’s mark dominates over the design portion.
Although consumers would see the teddy bear holding the
balloons design, the literal portion PARTY PLUS WAREHOUSE
would be most likely to be remembered by consumers and
would be used by them in calling for registrant’s services.
This literal portion, PARTY PLUS WAREHOUSE, of registrant’s
mark is similar to applicant’s mark PARTY PLUS in sound,
appearance and meaning. Moreover, the registered mark
shows the words PARTY PLUS in strikingly bold type and in a
font size larger than that of the word WAREHOUSE. Thus,
the PARTY PLUS portion of registrant’s mark, which is
identical to the entirety of applicant’s mark, stands out
even more in the mark as depicted. Consumers encountering
both marks might well assume that the services originated
Ser No. 76067950
7
with or are associated with the same source, further
thinking that the goods/services at PARTY PLUS WAREHOUSE
are offered at a discount price or that the variety of
goods/services there exceeds that found at the PARTY PLUS
brand store.
Both services feature party supplies, and we do not
believe anything more than ordinary care would be used by
purchasers in availing themselves of these services. In
finding that the marks are similar, we have kept in mind
the fallibility of purchasers’ memories, and that they
normally retain a general rather than a specific impression
of trademarks encountered in the marketplace.
In sum, applicant’s deletion of the word WAREHOUSE and
of the teddy bear design from registrant’s mark does not
result in a sufficiently distinguishable mark. See, e.g.,
Hewlett Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); and In re Computer Systems
Center Inc., 5 USPQ2d 1378 (TTAB 1987). We are not
persuaded by applicant’s arguments that the marks in their
entireties convey significantly different commercial
impressions, or that the matter common to the marks (PARTY
PLUS) is not likely to be perceived by purchasers as
distinguishing source because it is diluted (see
Ser No. 76067950
8
discussion, infra). Cf. In S.D. Fabrics, Inc., 223 USPQ 54
(TTAB 1984).
Applicant’s principal argument is that the cited mark
is weak and, in this connection, applicant supplied
evidence of third-party uses and registrations of similar
marks in the party supplies field.
With respect to the thirteen third-party registrations
of marks which include the term “party,” this evidence is
of limited probative value. The registrations do not
establish that the marks shown therein are in use, much
less that consumers are so familiar with them that they are
able to distinguish among such marks by focusing on slight
differences between them. Smith Bros. Manufacturing Co. v.
Stone Manufacturing Co., 476 F.2d 1004, 177 USPQ 462 (CCPA
1973). We would add that, in any event, none of these
registered marks (all of which contain the term “party” but
not “plus”) is as similar to registrant’s mark as is
applicant’s mark.
We also have considered applicant’s evidence of
nineteen third-party uses of marks which employ both of the
terms “party” (or “parties”) and “plus” in the party
supplies field. The Board has in the past, in likelihood
of confusion cases, given weight to evidence of widespread
and significant use by third parties of marks containing
Ser No. 76067950
9
elements in common with the involved marks to demonstrate
that confusion is not, in reality, likely to occur in the
marketplace. See, e.g., Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1462
(TTAB 1987). The justification is, of course, that the
presence in marks of common elements extensively used by
others unrelated as to source may cause purchasers not to
rely upon such elements as source indicators, but to look
to other elements as a means of distinguishing the source
of the services. By relying on the third-party marks which
employ both of the terms “party” and “plus,” applicant
would have us conclude that small variations in the PARTY
(PARTIES) PLUS marks in the field, including applicant’s
and registrant’s marks, are sufficient to avoid confusion.
We have carefully considered the evidence of third-
party use, but find that it is not persuasive to reach the
result urged by applicant. Although Ms. Stinson’s
declaration (indicating that she verified the various uses
by telephone calls to the parties) and the accompanying
exhibits show that the nineteen marks are in use, there is
no evidence regarding the extent of this use. Carl Karcher
Enterprises Inc. v. Stars Restaurant Corp., 35 USPQ2d 1125,
1131 (TTAB 1995). Thus, while we have taken the third-
party uses into account, the probative value of this
Ser No. 76067950
10
evidence is clearly diminished by the absence of any
significant information regarding the extent of use. It
may well be that the third parties are small businesses and
that the uses are local in nature. In point of fact, what
evidence we do have shows that most of the businesses
employ only a small number of employees, and that when
sales are shown, the figures are relatively modest. See
Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d
1835, 1839 n. 5 (TTAB 1989) [The probative value of Dun &
Bradstreet reports and telephone verifications of use is
limited, since this evidence does not indicate the extent
to which an entity’s name is used or what opportunity the
public has had to become aware of any use.].
Although applicant has relied upon the Board’s
decision in In re Broadway Chicken Inc., 38 USPQ2d 1559
(TTAB 1996), that case is clearly distinguishable on its
facts. The nineteen common law uses herein stand in stark
contrast to the several hundreds of uses of BROADWAY for
restaurants shown by applicant in that case.4
Our conclusion in this case is not diminished by
applicant’s unsupported assertion that it has not
4 In that case, the record included more than 500 uses of
BROADWAY shown in Dun & Bradstreet reports, a number of listings
in telephone directories, and over 300 uses in the American
Business Directory search report.
Ser No. 76067950
11
encountered any instances of actual confusion between its
mark and registrant’s mark during ten years of
contemporaneous use. While the absence of any instances of
actual confusion over a significant period of time is a
factor indicative of no likelihood of confusion, it is a
meaningful factor only where the record demonstrates
appreciable and continuous use by the applicant of its mark
in the same markets as those served by the registrant under
its mark. Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768, 1774 (TTAB 1992). It is not a mitigating factor
where, as here, the record is devoid of information
concerning the nature and extent of the marketing
activities of applicant and registrant under their
respective marks during the asserted period of
contemporaneous use. Cunningham v. Laser Golf Corp., 222
F.2d 943, 55 USPQ 1842, 1847 (Fed. Cir. 2000).
We conclude that purchasers familiar with registrant’s
retail store services specializing in party supplies
rendered under registrant’s mark PARTY PLUS WAREHOUSE and
design would be likely to believe, upon encountering
applicant’s mark PARTY PLUS for retail store services and
wholesale and distributorship services featuring the rental
and leasing of party equipment and supplies, that the
Ser No. 76067950
12
services originated with or are somehow associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.