Mark A. FlanneryDownload PDFTrademark Trial and Appeal BoardApr 14, 2009No. 76665792 (T.T.A.B. Apr. 14, 2009) Copy Citation Mailed: April 14, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Mark A. Flannery ________ Serial No. 76665792 _______ Robert J. Jacobson, Esq., for Mark A. Flannery. Katherine S. Chang, Trademark Examining Attorney, Law Office 115 (Tomas V. Vlcek, Managing Attorney). _______ Before Seeherman, Hairston, and Ritchie, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: Mark A. Flannery (“applicant”) filed an application to register the mark Hide-Away in stylized form as shown below, for goods ultimately identified as “safety rail apparatus for beds, namely, portable bed safety rail that includes an upright safety guard portion that rests against the side of the bed and a horizontal portion that rests between the mattress and box THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76665792 2 spring,” in International Class 201: The Trademark Examining Attorney refused registration of applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so resembles the registered mark HIDEAWAY, in the stylized format shown below, for “folding beds, day beds, and folding cots” in International Class 20,2 that when used on or in connection with applicant’s identified goods, it is likely to cause confusion or mistake or to deceive: 1 Serial No. 76665792, filed September 11, 2006, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a), alleging first use and first use in commerce on December 31, 2005. The description of the mark reads: “The color purple appears in the wording "Hide" and "Away" and further appears in the dash "—") separating the words "Hide" and "Away". The color white appears in the wording "Hide" and "Away" and further appears in the dash ("-") separating the words "Hide" and "Away". The color black represents outlining and is not a part of the mark. The color black shows where the color white is a part of the mark and where the color white is not part of the mark. The color white is a part of the mark where the color white depicts depth to the color purple. The color white is not a part of the mark where the color white is background and does not depict depth to the color purple. 2 Registration No. 0597382, issued October 26, 1954, claiming first use and first use in commerce on April 1, 1927; Sections 8 and 15 affidavits accepted and acknowledged. Renewed three times. Serial No. 76665792 3 Upon final refusal of registration, applicant filed a timely appeal. Both applicant and the examining attorney filed briefs. For the reasons discussed herein, the Board affirms the refusal to register. We base our determination under Section 2(d) on an analysis of all of the probative evidence of record bearing on a 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, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). We discuss each of the du Pont factors as to which Serial No. 76665792 4 applicant or the examining attorney submitted argument or evidence. The Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The cited registration consists of the words HIDEAWAY in stylized form. These are also the only words in applicant’s stylized mark. Although applicant’s mark contains lower case lettering and a hyphen between the two words, those differences are not sufficient to distinguish the marks. Thymo Borine Laboratory v. Winthrop Chemical Co., Inc., 155 F.2d 402, 69 USPQ 512, 514 (CCPA 1946) (the hyphen in applicant's mark THY-RIN has no significance); Charette Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040, 2042 (TTAB 1989) (registrant's PRO-PRINT and petitioner's mark PROPRINT are identical except for the division of registrant's mark by a hyphen between the syllables); Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978) (FAST-FINDER with a hyphen is substantially identical to the mark FASTFINDER without a hyphen). Thus, the word portions of the marks are effectively identical. Serial No. 76665792 5 The only difference between the marks is the stylization of the words. However, the stylization of applicant’s mark, which consists of the words “Hide-Away” in colored, stylized format, as well as the mark in the cited registration, which consists of the words “HIDEAWAY” in stylized form, do not serve to distinguish the marks. Consumers will note and remember the words themselves, because they will be used to call for or refer to the goods. See CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed. Cir. 1983). Accordingly, the stylized lettering does not change the connotation of either applicant’s mark or the mark in the cited registration, which both give the same commercial impression. Applicant argues that the cited registration is weak since the words “hide away” are frequently used to describe the types of beds identified therein. In support of this argument, applicant submitted a number of third-party registrations for similar goods. Each of the registrations submitted by applicant are for marks that contain either “hide” or “away,” but none contains both. Accordingly, we do not find applicant’s evidence to be probative of the weakness of the registered mark which, we note, has been on the Register since 1954 (and claims use since 1927). In sum, the marks are substantially similar in terms of appearance, sound, meaning and commercial impression. In view Serial No. 76665792 6 of the foregoing, we find that the first du Pont factor weighs heavily in favor of finding a likelihood of confusion. The Goods and Channels of Trade In determinining the similarity or dissimilarity of the goods, we note that the more similar the marks at issue, the less similar the goods or services need to be for the Board to find a likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). Goods or services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that the goods or services are related in some manner or that some circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used or intended to be used therewith, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ goods or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Applicant’s identified goods are a safety rail apparatus for beds, while the cited registration identifies certain types of beds; specifically, folding beds, folding cots, and day beds. A “daybed” is defined as “a chaise lounge” or “a couch that can Serial No. 76665792 7 be converted into a bed.”3 In short, the cited registration covers various types of beds that are or may be portable or stowed away or not be obviously used as a bed during the day, as the mark suggests. Applicant argues that although his safety rails go with “beds” they do not go with portable beds. Even if we accept that argument, there is sufficient evidence that the goods identified by applicant are related to those identified in the cited registration. To that end, the examining attorney has submitted copies of use-based, third-party registrations covering goods of the type in both the application and the cited registration. These include both daybeds, sleeper sofas, or other adjustable beds, as identified by the registrant, and bed rails, as identified by applicant. Copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).4 The examining attorney has also submitted evidence of websites showing bed rails and folding beds offered for sale together, including by the same manufacturer. 3 Merriam-Webster Online Dictionary 2009. The Board may take judicial notice of dictionary definitions not included in the record. The University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc. 213 USPQ 594, 596 (TTAB 1982) aff’d, 703 F.3d 1372, 217 USPQ 505 (Fed. Cir. 1983); and In re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006). Serial No. 76665792 8 In the absence of specific limitations in the registration, we must presume that registrant’s goods will travel in all normal and usual channels of trade and methods of distribution. Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992) (because there are no limitations as to channels of trade or classes of purchasers in either the application or the cited registration, it is presumed that the services in the registration and the application move in all channels of trade normal for those services, and that the services are available to all classes of purchasers for the listed services). Since there are no limitations on the channels of trade in applicant’s identification of goods either, we must make the same presumption with regard to applicant’s goods. In other words, there is nothing that prevents the registrant’s various types of beds from being sold in the same channels of trade and to the same classes of consumers that purchase applicant’s safety rails for beds (and vice versa). Accordingly, we find that these du Pont factors weigh in favor of finding a likelihood of consumer confusion. 4 We note that some of the third-party registrations are owned by the registrant, further indicating that consumers are likely to believe the goods are sufficiently related to emanate from a single source. Serial No. 76665792 9 Balancing the Factors In view of our findings that the marks are substantially similar, the goods are similar, and the goods move in the same channels of trade to the same classes of purchasers, we find that applicant’s stylized mark Hide-Away for “safety rail apparatus for beds, namely, portable bed safety rail that includes an upright safety guard portion that rests against the side of the bed and a horizontal portion that rests between the mattress and box spring,” is likely to cause confusion with the registered mark HIDEDAWAY in stylized form for “folding beds, day beds, and folding cots.” Decision: The refusal to register is affirmed. 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