O’Connell and Ruhe Interior Cleaning Co., Inc.v.Franchise Connection, Inc.

Trademark Trial and Appeal Board

Jan 7, 2000

No. 91110504 (T.T.A.B. Jan. 7, 2000)

Paper No. 10
PTH/TWW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 7,00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
O’Connell and Ruhe Interior Cleaning Co., Inc.
v.
Franchise Connection, Inc.
_____
Opposition No. 110,504 to application Serial No. 75/298,616
filed on May 27, 1997
_____
Gail L. Morrissey of Standley & Gilcrest for O’Connell and Ruhe
Interior Cleaning Co., Inc.
Johnny M. Wilson for Franchise Connection, Inc.
______
Before Cissel, Hairston and Holtzman, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Franchise Connection, Inc. has filed an application to
register the mark:
Opposition No. 110,504
2
for "cleaning of carpets, rugs, drapes, upholstery, leather,
mattresses and related household furnishings."1
Registration has been opposed by O’Connell and Ruhe Interior
Cleaning Co., Inc. on the grounds that since prior to the filing
date of applicant’s application, opposer has used the mark
MAGNA-DRY in connection with interior cleaning services including
the cleaning of interior carpets, upholstery and draperies; and
that applicant’s mark, if used in connection with the identified
services, is likely to cause confusion, mistake or deception
pursuant to Section 2(d) of the Trademark Act.
Applicant, in its answer thereto, denied the salient
allegations of the notice of opposition.
The record includes the parties’ pleadings; the file of the
opposed application; and the testimony, with exhibits, of
opposer’s president, Mr. Charles Daniel O’Connell. Applicant
neither took testimony nor introduced any other evidence. Only
opposer filed a brief. An oral hearing was not requested.
Mr. O’Connell testified that opposer has continuously used
the mark MAGNA-DRY in connection with interior cleaning services,
including the cleaning of interior carpets, upholstery and draperies,
since 1982. Opposer has used the mark through radio
advertisements, brochures, newspapers, business telephone
directories, trade shows, direct mail, business stationery and

1 Serial No. 75/298,616, filed on May 27, 1997, which alleges a bona
fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act.
Opposition No. 110,504
3
checks, and through sponsoring a sports team. Furthermore, the
exhibits to the O’Connell deposition show use of opposer’s mark
containing the literal portion, MAGNA-DRY, as well as the literal
portion with a design identical to that depicted in applicant’s
proposed mark.
Turning first to the issue of priority of use, opposer has
demonstrated through the testimony of Mr. O’Connell and the
exhibits thereto that it has used its MAGNA-DRY mark, with and
without the design element, prior to the filing date of
applicant’s intent-to-use application.2 In view thereof, opposer
has priority of use over applicant.
Once the priority of use issue has been resolved, the only
remaining issue for the Board to decide is likelihood of
confusion between the respective marks when used in connection
with the services. Joseph & Feiss Co. v. Joseph Kanner Hat Co.,
337 F.2d 1014, 143 USPQ 297 (C.C.P.A. 1964).
Our determination of this issue 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 issue. In re E.
I. Du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). The factors
deemed pertinent to this proceeding now before us are discussed
below.

2 It is noted that the earliest date applicant may rely on in this
proceeding for priority purposes is May 27, 1997, the filing date
accorded application Serial No. 75/298,616.
Opposition No. 110,504
4
With respect to the services, the parties’ marks will be
used in connection with identical services, namely, the cleaning
of carpets, upholstery and draperies, in addition to other highly
similar household interior cleaning services. Inasmuch as the
services to be rendered are identical, we must also presume that
the respective services will be encountered in the same trade
channels by the same classes of consumers. Consequently, if the
services were to be offered under the same or highly similar
marks, confusion as to the source of the services would be likely
to occur.
In comparing the respective marks, applicant’s mark,
MAGNA-DRY and design, is nearly identical to opposer’s mark,
MAGNA-DRY.3 If a mark is a combination of both a word and a
design, greater weight is often accorded to the word, which would
be used by purchasers in requesting the services. In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). The
dominant portion of applicant’s mark is “MAGNA-DRY” which is
identical to opposer’s mark. The marks have the same connotation
and create the same commercial impression.
In view thereof, we conclude that customers familiar with
opposer’s interior cleaning services offered under the mark
MAGNA-DRY would be likely to believe, upon encountering

3 Although the opposer has pleaded that its mark is “MAGNA-DRY,”
without a design, as noted previously the exhibits attached to the
O’Connell testimony show that opposer has also used the mark with a
design element identical to that contained in applicant’s proposed
mark.
Opposition No. 110,504
5
applicant’s mark, MAGNA-DRY and design, for cleaning of carpets,
rugs, drapes, upholstery, leather, mattresses and related
household furnishings, that the respective services originated
with the same source.
Decision: The opposition is sustained and registration to
applicant is refused.
R. F. Cissel
P. T. Hairston
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board