Hytex Industries, Inc.

Trademark Trial and Appeal Board

Nov 14, 2002

No. 75771324 (T.T.A.B. Nov. 14, 2002)

Hearing: Mailed:
September 19, 2002 November 14, 2002
Paper No. 17
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hytex Industries, Inc.
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Serial No. 75/771,324
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Charles Hieken of Fish & Richardson P.C. for Hytex
Industries, Inc.
Jennifer Stiver Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Hytex Industries, Inc. seeks to register the mark HYTEX
on the Principal Register for “decorative vertical textiles;
namely, wallcoverings sold to the commercial interiors
market sold through a distribution network of professionals
who are with interior designers, facility managers and
contractors,” in International Class 24.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
1 Application Serial No. 75/771,324, filed on August 9, 1999,
is based upon applicant’s allegation of use in commerce since at
least as early as 1959.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/771,324
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that applicant’s mark, when applied to its goods, so
resembles the mark HITEX which is registered for “woven
goods and textiles, namely, covering textile for use on
furniture, pillows, curtains, textile household products,
tablecloths and bed linen and sheets,” 2 as to be likely to
cause confusion, to cause mistake or to deceive.
When the Trademark Examining Attorney made the refusal
final, applicant appealed. Applicant and the Trademark
Examining Attorney have filed briefs, and both appeared at
an oral hearing before the Board.
We reverse the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973).
The du Pont case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
The Examining Attorney maintains that the marks are
confusingly similar in overall commercial impression and
that applicant’s textile wallcoverings are companion goods
that will often be coordinated with the fabrics used, for
2 Registration No. 1,517,224, issued on December 20, 1988.
Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
Serial No. 75/771,324
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example, to upholster furniture, cover pillows and/or make
curtains. In connection with the refusal, the Trademark
Examining Attorney submitted more than twenty-five third-
party registrations of marks registered in connection with
wallcoverings, on the one hand, and covering textiles for
use on furniture, pillows, curtains, textile and/or other
household products, on the other hand.
Applicant, in urging reversal of the refusal to
register, contends that the marks are dissimilar; that the
goods are different; that any common users of registrant’s
and of applicant’s goods are all sophisticated purchasers;
and that because the marks are highly suggestive,
registrant’s mark is entitled to a narrow scope of
protection.
We turn first to a consideration of the respective
marks. Although HITEX and HYTEX will likely be pronounced
identically, and may well have the same suggestive
connotation (hi-techs or hi-textiles), the differences in
the second letter of the respective marks (“I” vs. “Y”) does
result in marks having a somewhat different appearance.
This difference would not be determinative if one were
dealing with identical goods and/or casual purchasers.
However, when this slight difference in overall appearance
Serial No. 75/771,324
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is combined with other critical du Pont factors (e.g., the
cumulative differences in the marks and in the goods), we
are convinced that there will not be a likelihood of
confusion in the instant case.
We turn next to a consideration of the respective
goods. Applicant’s goods are heavy, decorative, textile
wallcoverings for the commercial interiors market. At oral
hearing, applicant argued that these industrial strength
materials are sold in very large quantities to the
hospitality, corporate, retail, industrial and healthcare
markets. It would be expected that before a deal is
consummated, applicant’s products will be compared closely
with other similar textile wallcoverings on price, material
composition, durability, acoustical features, fire
retardment, etc.
Moreover, in a related du Pont factor, the distribution
of applicant’s goods is explicitly restricted to a specific
network of professionals, further identified as being
employed by “interior designers, facility managers and
contractors.” As a result of this limitation, we find that
the consumers who must be presumed to know of the goods of
applicant and of registrant are all sophisticated purchasers
working in commercial settings.
Serial No. 75/771,324
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While average consumers making casual purchasing
decisions may be prospective purchasers of registrant’s
goods, they are not included in the population of
applicant’s users. Hence, we find that the decision to
purchase applicant’s goods is made by sophisticated
professionals after careful deliberations.
In light of the difference in the goods and the
sophistication of the purchasers, we conclude that the
extent of potential confusion is de minimis. In this
regard, applicant urges us, in effect, not to be “like a cat
watching the wrong rat hole.” See In re Nat'l Distillers &
Chem. Corp., 297 F.2d 941, 948, 132 USPQ 271, 277 (CCPA
1962) (Rich, J., concurring). This does indeed appear to be
a case where the role of the United States Patent and
Trademark Office is to protect owners of trademarks by
allowing them to register their marks. Certainly, our
denial of registration herein would not deny applicant the
right to continue using the mark it has been using
continuously since 1959.
We turn briefly to consider the number and nature of
similar marks in use on similar goods. Applicant argues
throughout the prosecution of this application that the
registered mark “should be afforded a narrow penumbra of
Serial No. 75/771,324
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exclusive use about the goods identified in the
registration.” In this regard, based upon common sense, we
have noted that the term appears to be highly suggestive and
hence we accord it a narrowed scope of protection. However,
with its reply brief, applicant submitted copies of a single
third-party (Hill-Rom / SSI) having a registration and two
applications for marks including the word HYTEX, registered
(or to be registered) in connection with mattress pads/covers
(also in International Class 24) specifically designed for
hospitals and others in the healthcare industry. As pointed
out by the Trademark Examining Attorney, however, the
printouts of these three records attached to applicant’s
reply brief were untimely, and have not been considered
herein. Trademark Rule 2.142(d). The record must be
complete prior to the time of the appeal. See 37 CFR
§2.142(d) and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994). The Trademark Examining Attorney correctly
objected to this tardy submission of third-party
registrations/applications, and we have not considered them
in reaching our decision herein.
In conclusion, we find that the cumulative differences
in the appearance of these two highly suggestive marks,
differences in the goods themselves, and the fact that all
Serial No. 75/771,324
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common purchasers will be sophisticated professionals are
sufficient to avoid a likelihood of confusion.
Decision: The refusal to register is reversed.
- o O o -
Simms, Administrative Trademark Judge, dissenting:
I respectfully dissent from the majority’s conclusion
that confusion is unlikely in this case. I would find that,
in view of the near identity of the marks and the close
relationship of the goods, confusion is likely.
First, applicant’s mark HYTEX and registrant’s mark
HITEX are identical in pronunciation and commercial
impression or meaning and almost identical in appearance.
When the respective marks are the same or almost the same,
this is a strong factor supporting the conclusion that
confusion is likely. That is to say, the first du Pont3
“factor weighs heavily against applicant” because
applicant’s mark is nearly identical to the registered mark.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289, 1290 (Fed. Cir. 1984).
3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361,
177 USPQ 563, 567 (CCPA 1973).
Serial No. 75/771,324
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With respect to the goods, I believe that they are
closely related. Registrant’s goods are woven goods and
textiles, namely, covering textiles for use on furniture,
pillows, curtains, textile household products, tablecloths
and bed linen and sheets, while applicant’s goods are
decorative vertical textiles, namely, wall coverings sold to
the commercial interiors market through a distribution
network of professionals. Because registrant’s description
of goods is unlimited, we must presume that registrant’s
textiles encompass textiles sold in commercial channels of
trade and that they are or would be available to the same
commercial purchasers as would be applicant’s goods.
Therefore, registrant’s goods could include textiles for use
on furniture, pillows, curtains, and tablecloths, all for
commercial interiors. Registrant’s goods, like applicant’s,
may therefore be used for interior decoration.
A further important consideration in this case is the
evidence of approximately 25 third-party registrations of
marks identifying wall coverings on the one hand and such
goods as linens and other textile products as curtains,
tablecloths and pillows on the other. This evidence tends
to demonstrate that potential purchasers may be accustomed
to seeing the same mark on goods of the nature of those
Serial No. 75/771,324
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produced by both applicant and registrant. While a
commercial purchaser may be assumed to be more sophisticated
than a homeowner, for example, whether even a commercial
purchaser may be able to distinguish the source of such
closely related textile products when they are identified by
such similar marks as HYTEX and HITEX is very problematical.
A further factor, which the majority has not taken into
consideration, at least explicitly, is the variety of goods
covered in registrant’s registration. This is also a
du Pont factor which may be considered where appropriate.
The fact that a registrant uses its mark on a variety of
goods (textiles for use on furniture, pillows, curtains,
textile household products, tablecloths and bed linen and
sheets) makes it more likely that a purchaser may assume
that a somewhat different but related product (textile wall
coverings) identified by a very similar mark emanates from
the same source. The evidence of record here demonstrates
that the goods of applicant and registrant are certainly
companion products. And it is well established that
confusion may be likely where the goods are related in some
manner or the conditions surrounding the marketing of the
goods are such that the respective products could be
encountered by the same purchasers under circumstances that
Serial No. 75/771,324
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could give rise to the mistaken belief that they come from
the same source. In re Martin’s Famous Pastry Shoppe, Inc.,
supra.
Finally, if there should be any doubt on the question
of likelihood of confusion, that doubt must be resolved in
favor of the registrant. Applicant had a legal duty to
select a mark sufficiently dissimilar from a registered mark
so as to avoid any likelihood of confusion.
I also observe that applicant has failed to introduce
any evidence whatsoever relating to the lack of actual
confusion. The fact that there may have been no instances
of actual confusion despite years of contemporaneous use is
a factor to be considered only when there is appropriate
evidence relating to this factor. In order for us to
consider this factor, it was incumbent on applicant to have
provided such evidence, by way of an affidavit or
declaration from a knowledgeable employee of applicant, for
example, attesting to the lack of actual confusion.
Applicant has not done so.
I would affirm the refusal of registration.