Wieland Designs Inc.

Trademark Trial and Appeal Board

Jan 9, 2018

No. 86940330 (T.T.A.B. Jan. 9, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: January 9, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Wieland Designs Inc.
_____

Serial Nos. 86940270 and 86940330
_____

Steven J. Olsen of Yoder Ainlay Ulmer & Buckingham, LLP,
for Wieland Designs Inc.
Leslee Friedman, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Kuczma, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Wieland Designs Inc. (“Applicant”) seeks registration on the Principal Register of
the mark WIELAND DESIGNS (in standard characters, with “DESIGNS”
disclaimed) and the word and design mark

Serial Nos. 86940270 and 86940330
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(also with “DESIGNS” disclaimed), both for “Assembly of furniture for others; Custom
manufacture of consumer and commercial furniture and furniture components;
Manufacture of general product lines in the field of consumer and commercial
furniture and furniture components to the order and specification of others” in
International Class 40 and “Furniture design services; New product design services”
in International Class 42.1
The Trademark Examining Attorney has refused registration of Applicant’s
marks under Section 2(d) of the Trademark Act on the ground that the marks, as
used in connection with their identified services, so resemble the previously
registered word and design mark
2
for “custom manufacturing in the field of doors and windows” in International Class
40, as to be likely to cause confusion or mistake, or to deceive. 15 U.S.C. § 1052(d).3

1 Application Serial nos. 86940330 and 86940270 were filed on March 15, 2016, based upon
Applicant’s claim of first use anywhere and use in commerce since at least as early as July
31, 1994. 15 U.S.C. § 1051(a). In Application Serial no. 86940270, the description of the word
and design mark states: “The mark consists of the text ‘WIELAND DESIGNS’ with the word
‘WIELAND’ on top of the word ‘DESIGNS’ in equal size font; centered above the text,
primarily over the letters ‘L’ and ‘A’ in WIELAND, are three columns of equally sized circles
with four circles in each column forming a vertical rectangular shape of twelve equally sized
circles.”
2 Registration no. 4453523 issued on the Principal Register on December 24, 2013. The
description states “The mark consists of the outline of a window frame with the word ‘weiland’
to the right.” Color is not claimed as a feature of the mark.
3 The Examining Attorney also based her refusals on Registration no. 3232702 for the mark
WEILAND SLIDING DOORS AND WINDOWS, INC, and design . That
registration, which was owned by the same Registrant, was cancelled on December 1, 2017
Serial Nos. 86940270 and 86940330
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After the Trademark Examining Attorney made the refusals final, Applicant
appealed to this Board. We consolidate the appeals because they involve common
issues of law and fact. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 1214 (June 2017); In re Anderson, 101 USPQ2d 1912, 1915
(TTAB 2012) (Board sua sponte consolidated two appeals); In re Bacardi & Co. Ltd.,
48 USPQ2d 1031, 1033 (TTAB 1997) (Board sua sponte considered appeals in five
applications together and rendered single opinion).4 We affirm the refusal to register
in each application.
I. Analysis
We base our determination of likelihood of confusion under Trademark Act Section
2(d), 15 U.S.C. § 1052(d), 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, 567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v.
Hargis Ind., Inc., 575 U.S. __, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).

for lack of maintenance. We therefore focus solely on Registration no. 4453523 for purposes
of determining likelihood of confusion. We hasten to add that the cancellation of the other
registration does not affect the outcome of this appeal, as the mark in Registration no.
4453523 is more similar to Applicant’s marks. In other words, if it is ultimately determined
that Applicant’s marks are not likely to cause confusion with Registration no. 4453523, it
follows that confusion would not have been likely with the other, previously registered mark.
See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
4 All references to TTABVUE are to the appeal in Application Serial no. 86940270, and all
references to the Trademark Status and Document Retrieval database (“TSDR”) are to the
prosecution history of that same application, in PDF format.
Serial Nos. 86940270 and 86940330
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We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated the other factors as neutral. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City
Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play
more or less weighty roles in any particular determination”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods and services. In re i.am.symbolic, llc, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa
Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002)) (“The likelihood of
confusion analysis considers all DuPont factors for which there is record evidence but
‘may focus … on dispositive factors, such as similarity of the marks and relatedness
of the goods.’”); Primrose Ret. Cmties., LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030, 1032 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)).
A. Similarity of the Marks
Under the first DuPont factor, we consider the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
Serial Nos. 86940270 and 86940330
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appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Applicant argues that the first literal element in both of its marks, the surname
WIELAND, differs in pronunciation from WEILAND, the sole literal element in the
cited mark. Applicant’s president, Kip M. Wieland, avers in his declaration that
“Wieland is pronounced as follows: (w EE l uh n d). On the other hand, Weiland is
pronounced as follows: (why l uh n d).”5 Applicant urges that “This is an important
distinction because it is how a consumer will ask for the goods or services.”6 As a
further point of distinction, Applicant argues, the surname WIELAND is
accompanied by the word “DESIGNS” in each of its marks.,7 and the design element
in its word and design mark, , differentiates it from Registrant’s word and
design mark, .8

5 Dec. 24, 2016 declaration of Kip M. Wieland, president of Applicant, Dec. 24, 2016
Response to Office Action TSDR p. 132.
6 Applicant’s brief p. 8, 4 TTABVUE 9.
7 Id.
8 Id.
Serial Nos. 86940270 and 86940330
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We agree with the Examining Attorney, however, that these differences fail to
sufficiently distinguish the marks. WIELAND and WEILAND are nearly identical,
differing only in the transposition of two letters.9 Both terms are two syllables,
beginning with a “W” and ending with “LAND”; even Applicant’s president describes
no difference in their structure or suffixes. The purported difference in
pronunciation of the first syllables (long “e” versus long “i”), may not be shared by
the purchasing public. Because it is impossible to predict how the public will
pronounce a particular mark, a “correct” pronunciation generally cannot be relied
on to avoid a likelihood of confusion. StonCor Grp., Inc. v. Specialty Coatings, Inc.,
759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014); In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012) (XCEED and X-SEED similar); Centraz
Indus. Inc. v. Spartan Chem. Co. Inc., 77 USPQ2d 1698, 1701 (TTAB 2006)
(acknowledging that “[t]here is no correct pronunciation of a trademark, and it
obviously is not possible for a trademark owner to control how purchasers will
vocalize its mark”).
In actual marketing conditions, consumers may not necessarily encounter the
marks side by side, and must rely upon their imperfect recollections. In re Integrated
Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016). Hence, a minor difference in the
pronunciation of the marks’ first syllables may go unnoticed, Viterra, 101 USPQ2d
at 1912, and would not necessarily avoid a likelihood of confusion. See In re Energy
Telecomms. & Elec. Ass’n, 222 USPQ 350, 352 (TTAB 1983).

9 Examining Attorney’s brief, 6 TTABVUE 5.
Serial Nos. 86940270 and 86940330
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Applicant’s reliance on the disclaimed suffix “DESIGNS” is similarly unavailing.
The disclaimer tacitly admits that the suffix is descriptive or generic for Applicant’s
identified services, which include “furniture design services; new product design
services.” See Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d
1750, 1762 (TTAB 2013), aff’d, 565 Fed. Appx. 900 (Fed. Cir. 2014). Since many other
firms offering design services are free to use the term “DESIGNS” to describe their
services, customers would not be inclined to rely on the term to distinguish source.
See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985); In re
Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is
often “less significant in creating the mark’s commercial impression”). Customers
would instead rely on the more dominant part of the mark. See In re Dixie Rests., Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (finding “DELTA” the
dominant part of the mark “THE DELTA CAFÉ where CAFÉ was disclaimed).
The dominant part, in this case, is the word WIELAND. As the first word in
Applicant’s marks, it is the part that prospective purchasers are likely to first notice,
focus upon, remember, and use in asking for the services. See Palm Bay Imps., 73
USPQ2d at 1692 (“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and the first word to appear
on the label); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“it is often the first part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered”). Thus the dominance of WIELAND in
Applicant’s marks is reinforced by its location as the first word in the marks. See In
Serial Nos. 86940270 and 86940330
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re Integrated Embedded, 120 USPQ2d at 1513 (finding surname dominant because it
is first word in mark). And it is, as noted above, nearly identical to WEILAND, save
for a transposition of letters.
The design element in Applicant’s word-and-design mark does not distinguish it
from Registrant’s word-and-design mark. If anything, Applicant’s design, a rectangle
formed of circles, increases the similarity with Registrant’s mark, which also has a
rectangle design:

Applicant’s Word and Design Mark Registrant’s Mark

Applicant’s rectangle design approximates Registrant’s rectangle design, in that both
are taller than they are wide, and both could be taken as a stylized rendition of
windows or doors, which are the subject of Registrant’s custom manufacturing
services. As such, Applicant’s rectangular design element could be perceived as a
variant of Registrant’s mark, suggesting a new rendering of an old design. Taken
together with the terms WIELAND and WEILAND, which are the dominant parts of
the marks, Viterra, 101 USPQ2d at 1908, the rectangular designs could reinforce
rather than reduce the similarity of the marks’ commercial impressions. See In re
Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1742 (TTAB 2016).
Serial Nos. 86940270 and 86940330
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For these reasons, we find that Applicant’s and Registrant’s marks are more
similar than dissimilar. The first DuPont factor favors a finding of likelihood of
confusion.
B. Similarity of the Services
The second DuPont factor concerns “[t]he similarity or dissimilarity and nature of
the goods or services as described in an application or registration…” DuPont, 177
USPQ at 567.
The applications identify “Assembly of furniture for others; Custom manufacture
of consumer and commercial furniture and furniture components; manufacture of
general product lines in the field of consumer and commercial furniture and furniture
components to the order and specification of others” and “Furniture design services;
new product design services.” The cited registration identifies “custom
manufacturing in the field of doors and windows.”
“The goods manufactured by both companies are distinctively different,”
Applicant insists, “the purpose and function of a window and/or door are distinctly
different from the purpose and function of a sofa, table, chair, or other piece of
furniture.”10 However, the issue is not whether prospective purchasers would confuse
the services, but whether they are likely to be confused as to the source of the services.
In re Binion, 93 USPQ2d 1531, 1535 (TTAB 2009). “[I]t is not necessary that the
respective services be competitive, or even that they move in the same channels of

10 Applicant’s brief p. 7, 4 TTABVUE 8, Applicant’s reply brief p 5, 7 TTABVUE 6.
Serial Nos. 86940270 and 86940330
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trade to support a holding of likelihood of confusion. It is sufficient that the respective
services are related in some manner, and/or that the conditions and activities
surrounding the marketing of the services 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 originated from the
same producer.” Id. at 1534-35; see Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012).
To show that the services are related, the Examining Attorney has adduced
evidence of ten third-party websites marketing custom and contract manufacturing
of doors as well as custom designing and manufacturing of furniture under the same
mark.11 For instance Dayoris makes custom doors and furniture:

12

11 Examining Attorney’s brief, 6 TTABVUE 8-10.
12 DayorisCustom.com 6/25/2016, June 25, 2016 Office Action, TSDR pp. 12-14.
Serial Nos. 86940270 and 86940330
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So does Creekside Millwork:
13
Hammer & Hand touts its custom furniture, windows and doors:

13 Creekside-Millwork.com 1/12/2017, Jan. 13, 2017 Office Action TSDR p. 34.

Serial Nos. 86940270 and 86940330
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14
And Thompson Custom Woodworking does the same:

14 HammerAndHand.com 1/12/2017, Jan. 13, 2017 Office Action TSDR pp. 43-47.
Serial Nos. 86940270 and 86940330
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15
So does Wood Window Workshop, which advertises its custom wood doors and its
Adirondack chairs:

15 ThompsonCustomWoodworking.com 1/12/2017, Jan. 13, 2017 Office Action TSDR pp. 60-
62.
Serial Nos. 86940270 and 86940330
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16
The Examining Attorney’s evidence shows that third parties provide the types of
services offered and advertised by both Applicant and Registrant under a single
mark. Such evidence supports a finding that the services are related. See, e.g., In re
Integrated Embedded, 120 USPQ2d at 1515 (citing In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1268-69 (TTAB 2009)).
The Examining Attorney has also adduced nine active, use-based third-party
registrations identifying the respective identified services offered by the same
registrant under the same mark, e.g.:
Mark Reg. No. Relevant Goods or Services
ARTSTRUCT 3380674 Customer manufacture of
doors, furniture
DEMEJICO 3826639 Manufacture of doors, lighting
and furniture to order and/or
specification of others
METALMEDIA 4138303 Custom fabrication and
finishing of goods, namely,
doors, screen doors and

16 WoodWindowWorkshop.com 1/12/2017, Jan. 13, 2017 Office Action TSDR pp. 64-66.

Serial Nos. 86940270 and 86940330
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Mark Reg. No. Relevant Goods or Services
security doors, furniture,
namely, bed frames, bed
headboards, bed footboards,
tables, chairs
SEMIHANDMADE 5066664 Custom manufacturing of
doors, furniture
17
Although registrations of this sort are not evidence that the marks shown therein
are in use or that the public is familiar with them, they nonetheless have some
probative value to the extent that they serve to suggest that the services listed therein
are of a kind that may emanate from a single source under a single mark. In re
Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); In re Davey Products Pty
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009) (citing In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988)); TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) §1207.01(d)(iii) (Oct. 2017).
Applicant responds that “[o]f the sixteen prior registrations and websites cited by
Examining Attorney, all but one are considered to be millwork/woodworking or
cabinetry companies,” unlike Applicant or Registrant.18 That, however, is a
distinction that is not reflected in Applicant’s or Registrant’s identifications of
services. Moreover, many ultimate consumers―homeowners seeking new furniture,
doors, or windows―would be unaware of any such distinction. For all such prospective

17 Jan. 13, 2017 Office Action TSDR pp. 7-33.

18 Applicant’s brief p. 15, 4 TTABVUE 16.
Serial Nos. 86940270 and 86940330
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purchasers know, Applicant or Registrant or both could engage in millwork,
woodworking or cabinetry. Or they could custom-design, assemble and install
furniture, doors, or windows, parts of which are manufactured to their specifications
by millwork, woodworking or cabinetry companies. In either event, their services
would or could be encountered under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that they originated from the
same producer. In re Binion, 93 USPQ2d at 1534-35. Thus Applicant’s proffered
distinction does not distinguish the Examining Attorney’s third-party evidence of
relatedness.
Applicant counters with third-party evidence of its own to show that furniture is
unrelated to windows and doors. It has submitted fifteen pairs of third party
registrations to show that “the Trademark Office has consistently recognized such a
great distinction between the goods/services as to regularly permit similar, and
sometimes identical, marks for furniture on the one hand, and doors and/or windows
on the other.”19 For example:
Registered Marks for Furniture Registered Marks for Windows and/or
Doors
AMERICAN CRAFTSMAN
COLLECTION

Supplemental Registration no. 2486384;
issued Sept. 4, 2001, cancelled June 6,
2008.

Furniture

AMERICAN CRAFTSMAN WINDOW
AND DOOR COMPANY and design, Reg.
no. 1741319, issued Dec. 22, 1992,
cancelled Jan. 29, 2016; all literal terms
disclaimed.

Non-metal windows and patio doors;

19 Applicant’s brief p. 9, 4 TTABVUE 10.
Serial Nos. 86940270 and 86940330
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Registered Marks for Furniture Registered Marks for Windows and/or
Doors
Custom manufacture of doors and
windows to the order and specification of
others.

CASE SYSTEMS and design,
Registration no. 1992721, issued Aug.
13, 1996; CASE SYSTEMS disclaimed.

Furniture, namely cabinets and shelves

CASE WINDOW AND DOOR and design,
Registration no. 2221570; issued Feb. 2,
1999, cancelled Nov. 5, 2005; WINDOW
and DOOR disclaimed.

Custom window and door manufacturing
services
TRELISE COOPER

Registration no. 3476710; issued July
29, 2008.

Furniture (one of six International
Classes)
COOPER WINDOWS

Supplemental Registration no. 5121417,
issued Jan. 10, 2017; WINDOWS
disclaimed.

Windows, not of metal; window frames,
sashes and casements made of wood;
window frames, sashes and casements,
not of metal; non-metal doors;

Custom manufacture of doors and
windows

KITCHEN CRAFT

Registration no. 2359468; issued June
20, 2000, KITCHEN disclaimed.

Furniture, namely cabinets.

CRAFT DOOR and design, Registration
no. 4662259; issued Dec. 30, 2014; DOOR
disclaimed

Custom manufacturing of doors.
IDEAL DESIGNS

IDEAL WINDOW

Registration no. 4334927; issued May 14,
2013; WINDOW disclaimed.
Serial Nos. 86940270 and 86940330
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Registered Marks for Furniture Registered Marks for Windows and/or
Doors
Application no. 86819405; notice of
allowance issued Sept. 27, 2016;
DESIGNS disclaimed.

Home furniture, furnishings and
accessories.

Manufacturing services for others in the
field of windows and doors.
IMPERIAL COURT

Registration no. 4409353; issued Oct. 1,
2013.

Bedroom furniture, dining room
furniture, living room furniture.
IMPERIAL DOORS

Registration no. 3290411; issued Sept. 11,
2007, cancelled April 18, 2014; DOORS
disclaimed.

Custom fabrication of doors.
SAMUEL LAWRENCE

Registration no. 2061208; issued May
13, 1997.

Bedroom furniture.
LAWRENCE DOORS

Registration no. 4391545; issued Aug. 27,
2013; DOORS disclaimed.

Installation, maintenance and repair of
doors.
Custom manufacturing of doors.
MESSY MARVIN

Registration no. 4515379; issued April
15, 2014.

Children’s furniture (one of five
International Classes).
MARVIN
Registration no. 3849839; issued Sept. 21,
2010.

Custom manufacture of doors and
windows.
MUELLER

Registration no. 3246268, issued May
29, 2007.

Retail, wholesale, and online store
services featuring indoor recreational
furniture and equipment for pool, darts,
table tennis, foosball, table hockey,
bumper pool, shuffleboard, and card
games.

M MUELLER DOOR CORP. and design,
Registration no. 3992102, issued July 12,
2011; DOOR CORP disclaimed.

Non-metal doors.

Serial Nos. 86940270 and 86940330
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Registered Marks for Furniture Registered Marks for Windows and/or
Doors
Manufacturing services for others in the
field of non-metal doors.
METRO DOOR

Registration no. 4588217, issued Aug.
14, 2014 to Metro Door USA, Inc.; DOOR
disclaimed.

Custom manufacture of furniture for
others starting with proprietary,
measure-first, computer-designed
methods.
METRO DOOR

and
METRO DOOR and design

Registration nos. 1645791 and 1651319,
issued May 28, 1991 and July 23, 1991,
respectively, to Metro Door USA, Inc.,
assigned to Romet Manufacturing, Inc. via
merger.

Metal rolling doors.

From these and other third-party registrations, Applicant concludes that “there
are too many co-existing registrations … to attribute to error in judgment by prior
examiners. Instead, it shows a pattern of identifying that confusion is not likely
between similar and even identical marks used in these two industries.”20
The Examining Attorney points out that four of these third-party registrations
have been cancelled,21 as is noted in the table above. The Examining Attorney also
points out that the METRO DOOR registrations (the last registrations listed in the
above table) were owned by the same owner at the time of registration, with two being

20 Applicant’s brief p. 13, 4 TTABVUE 14.
21 Registration nos. 2486384, 1741319, 2221570, and 3290411; Examining Attorney’s brief 6
TTABVUE 7 n. 1.
Serial Nos. 86940270 and 86940330
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assigned to a secondary holder thereafter;22 we agree that those registrations can
therefore be discounted.
With respect to the remaining pairs of registered marks, Applicant has not
provided evidence of actual use of the third-party marks in commerce to show that
the purchasing public has grown accustomed to seeing same or similar marks used
by different entities marketing furniture on the one hand and windows and doors on
the other. Instead, Applicant relies exclusively on third-party registration and
application evidence to show that the similar marks passed muster in the eyes of
examining attorneys. Although the Board is not bound by prior examination
decisions, see In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1135 n. 1 (TTAB 2010), we
consider this evidence for what it is worth.
We find that this evidence may reduce the weight of the Examining Attorney’s
third-party registration evidence somewhat, but it does not negate her essential
point: that furniture is often sold by the same entity under the same mark as windows
and doors. Indeed, for two goods or services to be related, it is not necessary that they
always emanate from the same source under the same mark. See In re G.B.I. Tile and
Stone Inc., 92 USPQ2d 1366, 1369-70 (TTAB 2009) (“There is no requirement for
goods to be found related that all or even a majority of the sources of one product
must also be sources of the other product. Therefore, evidence showing only that the

22 Registration nos. 4588217, 1645791, and 1651319; Examining Attorney’s brief 6 TTABVUE
7 n. 2.
Serial Nos. 86940270 and 86940330
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source of one product may not be the source of another product does not aid applicant
in its attempt to rebut the evidence of the examining attorney.”) (citing In re Thor
Tech Inc., 90 USPQ2d 1634, 1636-37 (TTAB 2009)). The fact that they frequently
emanate from the same source under the same mark is evidence that the respective
products or services “are related in some manner and/or … the circumstances
surrounding their marketing are such that they could give rise to the mistaken belief
that they emanate from the same source.” Coach Servs., v. Triumph Learning, 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)).
Furthermore, as the Examining Attorney correctly observes, the pairs of third-
party marks to which Applicant alludes contain additional matter―in wording,
design, or both―that helps distinguish them from each other.23 For example, the
third-party marks most comparable to the present case are those containing a
name―either a given name or a surname. Yet each contains additional nondescriptive
wording and/or design elements differentiating the marks―e.g., TRELISE
COOPER versus COOPER WINDOWS, SAMUEL LAWRENCE versus
LAWRENCE DOORS, MESSY MARVIN versus MARVIN, MUELLER versus M
MUELLER DOOR CORP. and design .

23 Examining Attorney’s brief, 6 TTABVUE 7.

Serial Nos. 86940270 and 86940330
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Those pairs of third-party marks are, in the main, far more dissimilar from one
another than are Applicant’s and Registrant’s marks, which consist of an unusual
name, WIELAND, differing from Registrant’s literal element, WEILAND, by the
mere transposition of two letters. That transposition, we have noted, makes no
discernable difference in their pronunciation or overall commercial impression. And
Applicant’s word-and-design mark adds a rectangle evoking Registrant’s rectangle
design. “[T]he greater the degree of similarity between the applicant’s mark and the
cited registered mark, the lesser the degree of similarity between the applicant’s
goods or services and the registrant’s goods or services that is required to support a
finding of likelihood of confusion.” Time Warner Entm’t Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002).
Applicant argues that Registrant applied for and obtained registration of its cited
Registration, , even though Applicant owned a registration
for WIELAND DESIGNS & Design at the same time; this implies (Applicant argues)
that both Registrant and the examining attorney for Registrant’s application
acknowledged that Applicant’s and Registrant’s services were unrelated, and
confusion was unlikely.24 However, Applicant’s erstwhile registration was
Registration no. 3203298 for the mark:

24 Applicant’s brief pp. 3, 6, 14, 4 TTABVUE 4, 7, 15.
Serial Nos. 86940270 and 86940330
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for “custom manufacture of furniture for a variety of industries, including the airline,
medical, automotive, specialty, motorcycle, marine, business office, hospitality and
healthcare industries”; it described a more narrowly circumscribed set of services,
directed to industrial clients, than Applicant’s present Applications, which describe
services for consumer, as well as commercial clients. Moreover, Applicant’s prior
registration registered on January 30, 2007, and was cancelled on September 6, 2013.
The registration for the cited mark, , issued over three
months later, on December 24, 2013. Hence the issuance of the cited Registration
does not constitute an admission, either by Registrant or the examining attorney for
that Registration, that the services identified in Applicant’s current Applications are
distinct from the cited Registration’s identified services.
Therefore, under the second DuPont factor, we find Applicant’s and Registrant’s
services to be related.
C. Channels of Trade
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567.
Applicant maintains that “at no time has any sales channel traveled by Applicant
ever served as a common avenue for the sale of residential or commercial windows or
Serial Nos. 86940270 and 86940330
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doors. In fact, window and door components have never been included in any trade
show or promotional event attended by Applicant.”25 In support of this position, it
relies once again on the declaration of its president, who avers:
Applicant primarily uses three trade channels, distinct from that of
Weiland Sliding Doors and Windows, Inc. for reaching its clients: direct
sales, independent sales representatives, and e-commerce based sales
channels. Each of these channels creates a setting for careful
sophisticated purchases and not impulse purchases. Wieland Designs
employees engage in direct sales by calling on specific industry segments,
such as commercial air carriers, other large furniture marketers,
channel specific dealers, industrial users. Wieland Designs also engages
independent sales representatives calling on architect and designer
focused furniture specification channels. Wieland Designs has also
developed e-commerce based sales channels - selling through larger e-
commerce dealer relationships - to both B2B and B2C markets.
Applicant has not seen Weiland Sliding Doors and Windows, Inc. present
in any of these trade channels. In fact, Applicant was not aware of
Weiland Sliding Doors and Windows, Inc. until after the filing of its
Trademark Application.26

As the Examining Attorney points out, likelihood of confusion is determined based
on the description of the services stated in the Applications and Registration at issue,
not on extrinsic evidence of actual use in the marketplace. See Stone Lion Capital,
110 USPQ2d at 1162. In the absence of specific limitations in the Applications or the
cited Registration, the issue must be determined “on the basis of all normal and usual
channels of trade and methods of distribution.” In re i.am.symbolic, 123 USPQ2d at
1749; see In re Integrated Embedded, 120 USPQ2d at 1515. Here, although
Applicant’s declaration describes some business-to-business channels, such as sales
to airlines, that are unlikely to entail the concurrent sale of Registrant’s doors and

25 Applicant’s brief p. 9, 4 TTABVUE 10.
26 Wieland declaration, Dec. 24, 2016 Response to Office Action TSDR p. 133.
Serial Nos. 86940270 and 86940330
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windows, its subject Applications broadly describe “general product lines in the field
of consumer and commercial furniture and furniture components”, as well as
“furniture design services.” As the Examining Attorney’s third-party website
evidence demonstrates (e.g., “Dayoris Custom Doors and Custom Furniture,”
“Creekside Custom Doors and Custom Furniture),27 such services may flow through
the same normal and usual channels of trade as Registrant’s. The Applications
contain no limitations on these channels of trade, and we may not read such a
limitation into them. See Stone Lion Capital, 110 USPQ2d at 1162.
For these reasons, the third DuPont factor favors a finding of likelihood of confusion.
D. Sophistication and Care of Purchasers
The fourth DuPont factor is “the conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at
567. Applicant argues that “[c]ustom furniture purchasers are sophisticated by
nature and carefully evaluate their purchasing decisions.”28 The Examining Attorney
responds that Applicant has offered no evidence to back this assertion, but even
presuming it to be true, the fact that purchasers are sophisticated or knowledgeable
in a particular field does not necessarily mean that they are sophisticated or
knowledgeable in the field of trademarks or immune from source confusion.29 See
Stone Lion Capital, 110 USPQ2d at 1163-64.

27 See web pages accompanying footnotes 12 and 13.
28 Applicant’s reply brief p. 6, 7 TTABVUE 7.
29 Examining Attorney’s brief, 6 TTABVUE 12.
Serial Nos. 86940270 and 86940330
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Applicant’s president does not address the sophistication of its customers.30
Nonetheless, the identification of services in its Applications includes furniture and new
product design services, as well as custom manufacture of furniture and furniture
components―services that purchasers, particularly commercial purchasers, do not tend
to engage on impulse. On the other hand, Applicant’s identification of services also
includes assembly of furniture for others and manufacture of general product lines in the
field of consumer furniture and furniture components―meaning that its services are
offered to a range of customers, including unsophisticated general “consumers.” In Stone
Lion Capital, the Federal Circuit considered a similar range of sophistication, holding:
[T]he Board properly considered all potential investors for the recited
services, including ordinary consumers seeking to invest in services with
no minimum investment requirement. Although the services recited in the
application also encompass sophisticated investors, Board precedent
requires the decision to be based “on the least sophisticated potential
purchasers.” …

Id.

Here, as in Stone Lion Capital, we must base our decision on the least
sophisticated potential purchasers.
For these reasons, we find that the fourth DuPont factor is neutral.
E. Actual Confusion
The seventh and eighth DuPont factors are “The nature and extent of any actual
confusion” and “[t]he length of time during and conditions under which there has
been concurrent use without evidence of actual confusion.” DuPont, 177 USPQ at 567.

30 Wieland declaration, Dec. 24, 2016 Response to Office Action TSDR pp. 133-134.
Serial Nos. 86940270 and 86940330
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Applicant avers that it “has used the mark Wieland Designs for over 40 years and no
actual confusion has ever occurred.”31 Presumably this refers to its standard
character mark. Its president, Kip Wieland, avers in his December 2016 declaration
that Wieland Designs, Inc. a.k.a Wieland Designs, was founded and incorporated in
1976.32 He declares that:
In the 40 year history of Wieland Designs Inc., Wieland Designs Inc. and
the goods and services offered by the company have never been mistaken
by a prospective client, dealer, sales representative or other third party as
having any affiliation or connection with Weiland Sliding Doors and
Windows, Inc. Weiland Sliding Doors and Windows, Inc. has never
participated in a trade show or promotional event that Wieland Designs
Inc. has attended. Wieland Designs Inc. has never identified Weiland
Sliding Doors and Windows, Inc. in any sales channel traveled by Wieland
Designs Inc. In fact, at no time in the history of Wieland Designs Inc., prior
to submitting the Trademark Application on March 15, 2016, did Wieland
Designs Inc. possess knowledge or awareness of Weiland Sliding Doors and
Windows, Inc.33

Such an assertion by a principal of an applicant, however, is of little probative
value in an ex parte proceeding such as this. See In re Bissett-Berman Corp., 476 F.2d
640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of
appellant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion) cited in In re Majestic Distilling, 65 USPQ at 1205 (“The lack of evidence
of actual confusion carries little weight, … especially in an ex parte context.”). As the
Board has explained:

31 Applicant’s brief p. 6, 4 TTABVUE 7; Wieland declaration, Dec. 24, 2016 Response to Office
Action TSDR pp. 133-134.
32 Wieland declaration, Dec. 24, 2016 Response to Office Action TSDR p. 133.
33 Id. at p. 134.
Serial Nos. 86940270 and 86940330
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[A]pplicant’s assertion that it is unaware of any actual confusion
occurring as a result of the contemporaneous use of the marks of applicant
and registrant is of little probative value in an ex parte proceeding such
as this where we have no evidence pertaining to the nature and extent of
the use by applicant and registrant (and thus cannot ascertain whether
there has been ample opportunity for confusion to arise, if it were going
to); and the registrant has no chance to be heard from (at least in the
absence of a consent agreement, which applicant has not submitted in
this case).

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In other words, the
absence of reported instances of confusion is meaningful only if the record indicates
appreciable and continuous use by Applicant of its marks for a significant period of
time in the same markets as those served by Registrant under its mark. See In re
Continental Graphics Corp., 52 USPQ2d 1374, 1377 (TTAB 1999) (citing Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992)).
The evidence in this case does not establish that there has been a reasonable
opportunity for confusion to occur. Even though Applicant evidently commenced use
of its mark over 40 years ago, its first products consisted of furniture designed for use
in vans and automobiles. According to its president, “Between 1976 and 1995,
Wieland Designs focused its efforts on developing the Wieland Designs brand within
these specialty vehicle markets.”34 From 1995 to the present, Applicant broadened its
product lines, including “customers in various and diverse industries selling
upholstered seating, space division tools, and other furniture in the business to
business markets. Wieland Designs products can be found in the airline, medical,
automotive, specialty, motorcycle, marine, business office, hospitality, and healthcare

34 Wieland declaration, Dec. 24, 2016 Response to Office Action TSDR p. 132.
Serial Nos. 86940270 and 86940330
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industries.”35 During this same time period, Applicant also branched out into the
Business to Consumer market, according to its president and the description of
services in its subject Applications.36
It is that market―sales to ordinary consumer homeowners―that is most likely to
overlap that of Registrant, which, according to its cited Registration, commenced use
of its mark in 2011. During this period of overlap, from 2011 to the present,
Applicant’s advertising figures range from $ 50,000 to $150,000 per year, and its sales
grew from approximately $30 million to $50 million per year,37 but those gross figures
do not indicate the extent of its advertising and sales in the same markets as those
served by Registrant under its mark. Moreover, during this time, as Applicant
pointedly emphasizes, it has pursued different channels of trade than Registrant,
even though its subject Applications, like the cited Registration, are not so limited,
and do not foreclose expansion into the same channels of trade in the future.
For these reasons, Applicant’s evidence of an absence of actual confusion
heretofore does not reduce the likelihood of confusion engendered by use of the
respective marks in accordance with their broadly worded identifications.
Consequently, the seventh and eighth DuPont factors are neutral.

35 Id.
36 Id. at 133.
37 Id.
Serial Nos. 86940270 and 86940330
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F. Fame
The fifth DuPont factor is “the fame of the prior mark (sales, advertising, length
of use).” DuPont, 177 USPQ at 567. Applicant argues that “[t]he USPTO records and
Applicant’s Declaration confirm that with over 40 years of use, ‘Wieland Designs’ was
used as a mark in commerce prior to the registrations cited by the examining
attorney” and has gained fame through its aforementioned advertising and sales over
four decades.38
The “prior mark” under the fifth DuPont factor means the prior Registration cited
by the Examining Attorney. Any fame enjoyed by Applicant’s mark is therefore
irrelevant. See generally In re Calgon Corp., 435 F.2d 596, 168 USPQ 278, 280 (CCPA
1971) (“As the board correctly pointed out, ‘the question of priority of use is not
germane to applicant’s right to register’ in this ex parte proceeding.”); In re Dixie
Rests., 41 USPQ2d at 1534-35; In re Jump Designs LLC, 80 USPQ2d 1370, 1376
(TTAB 2006); see TMEP § 1207.01(d)(iv) (Oct. 2017). This DuPont factor is neutral.
II. Conclusion

We have considered of all of the evidence of record and all of the arguments,
including evidence and arguments not specifically discussed in this opinion, as it
pertains to the relevant DuPont likelihood of confusion factors. We find that the
applied-for marks are similar to the cited mark, that the identified services are
related, and that those services may travel through the same or overlapping channels
of trade to the same or overlapping classes of customers, some of whom cannot be

38 Applicant’s reply brief p. 6, 7 TTABVUE 7.
Serial Nos. 86940270 and 86940330
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expected to exercise sophistication or care in their purchases. There may be no
evidence of actual confusion, but neither is there any evidence that there has been a
significant opportunity for actual confusion to have occurred in the marketplace.
Therefore, we conclude that Applicant’s subject marks, as used in connection with the
services identified in the Applications, so resemble the cited registered mark as to be
likely to cause confusion or mistake, or to deceive under Section 2(d) of the Trademark
Act.
Decision: The refusals to register Applicant’s marks WIELAND DESIGNS and
are affirmed as to both International Classes.