Chief Manufacturing Inc.Download PDFTrademark Trial and Appeal BoardNov 30, 2007No. 78634899 (T.T.A.B. Nov. 30, 2007) Copy Citation Mailed: November 30, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Chief Manufacturing Inc. ________ Serial No. 78634899 _______ Michael A. Bondi of Patterson, Thuente, Skaar & Christensen for Chief Manufacturing Inc. Christopher M. Ott, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Hohein, Drost and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: On May 23, 2005, Chief Manufacturing Inc. filed an intent-to-use trademark application for the mark REACTION, in standard character format, for goods ultimately identified as “mechanical mounting systems, namely, mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes,” in International Class 9 (Serial No. 78634899). The Trademark Examining Attorney finally refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used in connection with THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78634899 2 applicant’s goods, so resembles the mark REACTION, in typed drawing form (now known as standard character format), for “office furniture,” as to be likely to cause confusion.1 Evidentiary Issue In its appeal brief, applicant submitted an excerpt from the Staples website (www.staples.com) (Exhibit B) and copies of five (5) third-party trademark registrations from the U.S. Patent and Trademark Office database (Exhibit C). The Examining Attorney objected to Exhibits B and C on the ground the exhibits were untimely filed. Trademark Rule 2.142(d), 37 CFR §2.142(d), provides that the record in an application should be complete prior to filing an appeal, and that the Board will not ordinarily consider evidence filed with the brief. See also TBMP §1207.01 (2nd ed. rev. 2004). In view of the foregoing, the Examining Attorney’s objection is sustained, and Exhibits B and C attached to applicant’s brief will not be considered in reaching a decision on the merits of this case. 1 Registration No. 2332336, issued February 22, 2000; Sections 8 and 15 affidavits accepted and acknowledged. Serial No. 78634899 3 Likelihood Of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Federated Foods, Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In this case, applicant’s mark and registrant’s mark are identical: REACTION. This is a du Pont factor that strongly favors finding that there is a likelihood of confusion. B. The similarity or dissimilarity and nature of the goods. In analyzing the goods at issue, we note that the when the marks in the application and the cited registration are Serial No. 78634899 4 identical, a lesser degree of similarity between the applicant’s goods and the registrant’s goods is required to support a finding of likelihood of confusion. In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). In this case, applicant is seeking to register its mark for “mechanical mounting systems, namely, mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes,” and the registrant’s mark is for “office furniture.” The applicant argues that even though the mark REACTION is a strong mark when applied to office furniture, it is entitled to only a narrow scope of protection because there are five (5) other REACTION marks registered for various goods.2 Those registrations are listed below: 1. Registration No. 1822060 for golf clubs; 2. Registration No. 2345847 for jewelry and watches; 3. Registration No. 2450283 for cleaning preparations for use on bowling equipment, bowling balls, and bowling shoes; disposable wipes impregnated with chemicals or compounds for 2 Applicant included one application. However, an application is only evidence that an application has been filed. Serial No. 78634899 5 cleaning bowling balls, bowling bags, and bowling shoes; 4. Registration No. 2637226 for rubber floor tile; and, 5. Registration No. 3058575 for land vehicle parts, namely, wheels. However, these registrations have little probative value because (i) none of the registrations are for products as close to office furniture as applicant’s mechanical mounting systems, and (ii) the third-party registrations are not probative of actual marketplace use of the marks or that the public is familiar with the marks. In re Vroman Foods, Inc., 224 USPQ 242, 244 (TTAB 1984). See also Saab- Scania Aktiebolag v. Sportomatic Corp., 26 USPQ2d 1709, 1713 (TTAB 1993) (Board discounted applicant’s third-party registrations because they were further removed from opposer’s products than applicant’s products). Applicant also contends that “mechanical mounting systems do not reasonably fall within the broadly defined market of potentially related goods.”3 However, the products at issue need not be similar or even competitive to support a finding of likelihood of confusion. It is 3 Applicant’s Brief, p. 4. Serial No. 78634899 6 sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used thereon, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this regard, the Examining Attorney submitted five (5) registrations owned by Bretford Manufacturing, Inc. and one (1) registration owned by Wright Line LLC for both office furniture and mounting racks for computer hardware or television and video display mounting systems. Also, the Examining Attorney submitted excerpts from the websites of these two companies that display the use of the marks in connection with the products at issue.4 4 The Examining Attorney also submitted excerpts from the Office Depot, Staples, and Best Buy websites to prove that office supply stores and an electronics retail store sell both office furniture and wall mounts for monitors. We do not find this evidence particularly persuasive because these two office supply stores and the electronic retail store sell a wide variety of products, and the excerpts do not show the same or similar marks used for office furniture and wall mounts for monitors. Just because office furniture and wall mounts for monitors are sold in the same large store or by the same internet retailer may not, in and of itself, be sufficient to establish that the products are related. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Otherwise, based on this Serial No. 78634899 7 The Office Depot and Staples websites display some desk mounted monitor arms indicating that video display screens may be mounted on desks. These websites and the Bretford Manufacturing, Inc. and Wright Line LLC registrations and websites are sufficient to make a prima facie showing that mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes and office furniture are related products. C. The similarity or dissimilarity of likely-to-continue trade channels. Applicant argues that the likelihood of confusion refusal is based on the false premise that mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes and office furniture move in the same channels of trade. According to applicant, “the goods in the cited registration would most likely be sold through office furniture stores. In contrast, Appellant’s goods would not be sold through office furniture stores, but more likely through direct marketing to installers of audio/visual equipment in industrial or commercial settings. If Appellant’s products were sold in a retail setting, they would likely be sold through electronics evidence, one could argue that office furniture or wall mounts for monitors are related to paper, pencils, pens, staplers and virtually any other like items simply because they are all products that are sold in office supply stores. Serial No. 78634899 8 outlets – - not at furniture stores.”5 Unfortunately, there is no evidence to support applicant’s arguments. Instead, the evidence in the record supports the Examining Attorney’s position (e.g., the excerpts from the Office Depot, Staples, and Best Buy websites demonstrate that at least these three retailers sell both mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes and office furniture). Because there are no restrictions or limitations in the description of goods for the application or the cited registration, we must assume that the goods travel in “the normal and usual channels of trade and methods of distribution.” CBS Inc., v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed”). Accordingly, both 5 Applicant’s Brief, pp. 3-4. Serial No. 78634899 9 the goods of the applicant and the registrant are presumed to move in all normal channels of trade and be available to all classes of potential consumers. In other words, we must assume that both office furniture and mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes may be sold in office supply and electronics stores. The fact that the third-party retailers display mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes and office furniture in different sections of their websites is not dispositive of the channels of trade issue. Consumers shop for products, not necessarily brands (i.e., a consumer goes to a store to buy a specific product, rather than any product by a specific manufacturer). Accordingly, consumers expect that retailers will display related products together (i.e., chairs with chairs, desks with desks, mounting racks with mounting racks). However, if a consumer is putting together an office suite, he/she may very well encounter both a REACTION desk and a REACTION mounting rack for a computer monitor at the same time. Under such circumstances, a consumer may associate the REACTION brand desk and the REACTION brand desk mounting rack with a single source. Serial No. 78634899 10 In view of the foregoing, we find that mounting racks and stands for liquid crystal displays, plasma displays and cathode ray tubes and office furniture move in the same channels of trade. C. The conditions under which and buyers to whom sales are made, (i.e., “impulse” vs. careful, sophisticated purchasing). Applicant contends that neither office furniture, nor mounting systems are impulse purchases, but are purchased for specific applications. These are high-priced, durable goods that the consumers purchase only after careful consideration.6 Again, there is no evidence in the record to support applicant's arguments, and the evidence that is of record does not support applicant. In the case of the mounting racks, the Office Depot, Staples, and Best Buy websites indicate that the mounting racks range in price from $60 to $250 for desk and wall mounted systems to $1,000 for a wheeled cart for a 61-inch plasma screen monitor. Moreover, office furniture spans a wide range of prices (e.g., office chairs range from $50 to $260, computer desks may cost as little as $140, portable workstation costs $90). Because there are no restrictions or limitations in the description of goods, we must 6 Applicant’s Brief, p. 5-6. Serial No. 78634899 11 consider all potential consumers of applicant’s mounting systems and the registrant’s office furniture in all potential price ranges. In other words, we must consider inexpensive and expensive products sold to both discerning and nondiscerning customers. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (average ordinary wine consumer must be considered in determining source confusion). Even assuming, arguendo, that customers for the products at issue exercise a high degree of care, applicant does not provide any evidence regarding the decision process used by these careful and sophisticated consumers, the role trademarks play in their decision making process, or how observant and discriminating they are in practice. The problem with applicant’s “degree of care” argument is that there is no corroborating evidence and it is inconsistent with both the evidence of record and the description of goods in the application and registration (i.e., not all mounting systems and office furniture is expensive). Serial No. 78634899 12 D. Balancing the factors. In weighing all the likelihood of confusion factors present in this case, we find that because the marks are identical and the goods are sufficiently related and move in the same channels of trade, there is a likelihood of confusion. To the extent that any doubt might exist as to the correctness of this decision, we resolve such doubt against applicant. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Decision: The refusal to register is affirmed and registration to applicant is refused. Copy with citationCopy as parenthetical citation