Serta, Inc.v.S Industries, Inc. and Central Mfg. Co.

Trademark Trial and Appeal Board

May 15, 2003

No. 91112035 (T.T.A.B. May. 15, 2003)

Mailed: 15 MAY 2003
Hearing: Paper No. 50
22 APR 2003 AD
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Serta, Inc.
v.
S Industries, Inc. and Central Mfg. Co.
_____
Opposition No. 112,035
to Application Serial No. 75/228,064
_____
Richard W. Young of Gardner, Carton & Douglas for Serta,
Inc.
Leo Stoller, pro se, for S Industries, Inc. and Central Mfg.
Co.
______
Before Walters, Bucher, and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On January 6, 1997, S Industries, Inc. (applicant)1
applied to register the mark SENTRA in typed form on the
Principal Register for: furniture; mirrors; picture frames;
sleeping bags; seat cushions; non-metal trophies; key rings
with plastic fobs; pillows; folding stadium seats; air
cushions; wooden figurines; wall plaques; director's chairs;
1 In an order dated September 24, 1999, Central Mfg. Co. was also
joined as a party defendant.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 112,035
2
plastic name badges; upholstered furniture; wall mirrors;
children's furniture, namely, seats, toy boxes, bedroom
furniture, and chests in International Class 20.2
On October 1, 1998, Serta, Inc. (opposer) opposed the
registration of applicant’s mark alleging that applicant’s
mark was confusingly similar under Section 2(d) of the
Trademark Act to five trademark registrations it owned. 15
U.S.C. § 1052(d). The first registration is for the mark
SERTA, in typed form,3 for “mattresses, mattress
foundations, mattress pads and pillows” in International
Class 20. The second registration is for the mark SERTA
with the design shown below4 for “mattresses and mattress
foundations” in International Class 20.
The third registration is for the mark SERTA in typed
form5 for “furniture convertible into beds” in International
Class 20. The fourth and fifth registrations are for the
2 Serial No. 75/228,064. The application contains a date of
first use and the date of first use in commerce of January 1986.
3 Registration No. 2,041,918 issued March 4, 1997, affidavits
under Sections 8 and 15 accepted or acknowledged.
4 Registration No. 1,864,743 issued November 29, 1994, affidavits
under Sections 8 and 15 accepted or acknowledged
Opposition No. 112,035
3
marks SERTA shown below for “mattresses” in International
Class 20.
6 7
Applicant denied that its mark and opposer’s marks are
confusingly similar. Applicant filed a request for an oral
hearing, which was held on April 22, 2003. Opposer declined
to attend the hearing.
The Record
The record consists of the file of the involved
application and opposer’s Notice of Reliance on Registration
Nos. 2,041,918; 1,864,743; 1,180,198; 582,464; and 582,463
and applicant’s responses to interrogatories and requests
for production.8
Priority
Priority is not an issue here in view of opposer’s
ownership of five registrations for SERTA marks. See King
5 Registration No. 1,180,198 issued December 1, 1981, renewed.
6 Registration No. 582,464, issued November 17, 1953, second
renewal.
7 Registration No. 582,463, issued November 17, 1953, second
renewal.
8 Applicant attempted to submit a notice of reliance containing
copies of registrations it allegedly owns for other goods and
services and opposer’s responses to interrogatories. The notice
was untimely and applicant’s request to reopen the testimony
Opposition No. 112,035
4
Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974).
Likelihood of Confusion
The issue in this case is whether applicant’s mark
SENTRA is confusingly similar to opposer’s marks SERTA when
the marks are used on the parties’ respective goods. Our
analysis of the issue of likelihood of confusion requires us
to consider the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
In this case, we begin by looking at the goods of both
parties. The goods of the parties are identical to the
extent that they include “pillows” in their identification
of goods, and legally identical to the extent that
applicant’s identification of goods includes furniture,
period was denied. See orders dated August 24, 2001, and
Opposition No. 112,035
5
upholstered furniture, and children’s furniture, namely
bedroom furniture and opposer’s registration includes the
term “furniture convertible into beds.” In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997) (Applicant’s restaurant services identified as
“restaurant services specializing in Southern-style cuisine”
legally identical to registrant’s restaurant services
identified as “hotel, motel, and restaurant services”).
We must consider the goods as they are identified in
the application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). Also, because the goods in part
are identical and there are no restrictions in the
identification of goods, 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 Kangol
Ltd. v. KangaRoos U.S.A. 974 F.2d 161, 23 USPQ2d 1945 1946
(Fed. Cir. 1992).
While applicant attempts to differentiate the products
based on applicant's selling its products only through
mail orders while opposer's sales of its goods are
through ordinary retail channels of distribution, in
the absence of a restriction in applicant's
identification of goods and in the identification of
February 24, 2003.
Opposition No. 112,035
6
goods in opposer's registrations, the respective goods
must be presumed to travel in all channels of trade
suitable for goods of that type. Accordingly, in the
present case, the goods of applicant and of opposer are
presumed to be sold through the same channels of
distribution to the same customers and since the goods
are, at least in part, virtually identical, the only
issue is whether the use of the respective marks on or
in connection with these goods would be likely to cause
confusion for purposes of Section 2(d) of Trademark
Act.
Chesebrough-Pond's Inc. v. Soulful Days, Inc., 228 USPQ
954, 956 (TTAB 1985) (citation omitted). See also In re
Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
Next, we address the issue of whether the mark SENTRA
is similar to the registered mark SERTA. SENTRA is the only
element in applicant’s mark, while SERTA is either the only
element or the dominant element in registrant’s SERTA typed,
stylized, and design marks. Applicant argues that
“Opposer’s SERTA mark(s) contain a design component that
clearly distinguish[es] the marks from each other.” Brief
at 6. We disagree that the design element in Registration
No. 1,864,743 (a swirl) and No. 582,464 (a swirl in a
square) would offer “sufficient distinctiveness to create a
different commercial impression” from applicant’s mark.
Dixie Restaurants, 41 USPQ2d at 1533. More importantly, the
two most pertinent cited registrations, for pillows (No.
Opposition No. 112,035
7
2,041,918) and furniture convertible into beds (No.
1,180,198), are in typed form and no difference in the style
of the mark can be asserted. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). Also,
inasmuch as applicant’s mark is depicted as a typed drawing,
no difference in type style can be maintained with the
stylized SERTA mark in Registration No. 582,463.
Therefore, the only significant difference between the
marks is the spelling. Applicant has not pointed to any
differences in meaning that the two marks would have. Nor
are we aware of any. They appear to be coined terms. As an
arbitrary or coined term, registrant’s mark is entitled to a
broad scope of protection. TBC Corp. v. Holsa Inc., 126
F.3d 1470, 44 USPQ2d 1315, 1317 (Fed. Cir. 1997) (Board’s
finding of no likelihood of confusion reversed. “GRAND SLAM
is wholly arbitrary, i.e., it has no meaning at all. It is
neither descriptive nor suggestive of the goods or any of
their properties and its dictionary definitions in the
fields of games and sports are of no help in solving the
problem of the likelihood of confusion if the two marks are
used on automobile tires”); In re Wilson, 57 USPQ2d 1863,
1865 (TTAB 2001) (“PINE CONE is an arbitrary and strong mark
entitled to a broad scope of protection”); In re Opus One
Inc., 60 USPQ2d 1812, 1814 (TTAB 2001) (OPUS ONE is a
Opposition No. 112,035
8
“strong mark which is entitled to a broad scope of
protection”).
In addition to there being no difference in meaning, we
find that, while the marks would not be pronounced
identically, they would be pronounced similarly. See TBC
Corp., 44 USPQ2d at 1318 (Court found that there was a
“close similarity in sound between GRAND SLAM and GRAND
AM”). See also San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977) (“Each syllable of each mark generates an
‘impact,’ but the only impact to be considered is that of
the whole… MONOCERAM and MICROCERAM are not sufficiently
different in their total impacts to eliminate likelihood of
confusion as to source”).
Also, the marks have similar appearances. All the
letters of the registered mark are found in applicant’s mark
in the same order except that applicant transposes the “R”
and ”T” and adds an “N.” While there are certainly
differences between the appearances of the marks, there are
also similarities.
When we view the marks in their entireties, a “[s]ide-
by-side comparison is not the test. The focus must be on
the ‘general recollection’ reasonably produced by
appellant’s mark and a comparison of appellee’s mark
therewith.” Johann Maria Farina Gegenuber Dem Julichs-Platz
Opposition No. 112,035
9
v. Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200
(CCPA 1972) (citation omitted). Furthermore, “[i]f the
[goods or] services are identical, ‘the degree of similarity
necessary to support a conclusion of likelihood of confusion
declines.’” Dixie Restaurants, 41 USPQ2d at 1534, quoting,
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). Here, the
marks are used in part on legally identical goods, that we
must assume are sold to the same customers, in the same
channels of trade. Applicant’s mark SENTRA is similar to
the arbitrary registered mark SERTA. Therefore, we conclude
that the overall commercial impression of each of opposer’s
marks is substantially similar to applicant’s mark, and
therefore, confusion is likely in this case. TBC Corp., 44
USPQ2d at 1318 (“[I]n this age of business over the
telephone and advertising on TV and radio the close
similarity in sound between GRAND SLAM and GRAND AM would be
likely to result in mistake if not confusion”).
We address some additional arguments applicant has
made. The first of which concerns the allegation of a lack
of actual confusion. Even if applicant’s untimely notice of
reliance were properly of record,9 the lack of actual
9 Applicant’s untimely notice of reliance also contained copies
of other SENTRA registrations applicant owns for different goods.
Even if these registrations were of record, they would not permit
applicant to register a confusingly similar mark for the goods in
this case.
Opposition No. 112,035
10
confusion would not change the result here. The absence of
actual confusion does not mean that there is no likelihood
of confusion. Giant Food, Inc. v. Nation's Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983);
J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1892 (Fed. Cir. 1991). Because there is no
evidence of sales volume or marketing strategies, we have no
basis to find that there were opportunities for actual
confusion to occur.
Applicant also alleges that “Opposer, other than
submitting its said copies of Registrations, has not
presented one scintilla of evidence showing that Opposer’s
marks are actually in use. The Applicant asserts that the
Opposer has shown no right to relief in this case.” Brief
at 6 (footnote omitted). However, an opposer, “by virtue of
its registrations pleaded and made of record herein, has
sufficiently shown that it has prior rights in its
registered marks for the goods and services recited
therein.” Ups ‘N Downs, Inc. v. The Downery, 212 USPQ 387,
388 (TTAB 1981).10
10 Applicant also refers to 37 CFR § 2.132(b) concerning a party
in the position of defendant’s right to move to dismiss if the
only evidence submitted by a party in the position of plaintiff
consists of copies of Patent and Trademark Office records. This
rule does not apply here. First, 27 CFR 2.132(c) makes it clear
that a motion under Rule 132(b) “must be filed before the opening
of the testimony period of the moving party.” Second, opposer
did more than put in copies of its registrations. It also
submitted portions of applicant’s response to interrogatories and
requests for production.
Opposition No. 112,035
11
Finally, under the well-established rule in trademark
cases, we must resolve doubts about confusion in favor of
the registrant and against the newcomer, which we do here.
Kenner Parker Toys v. Rose Art Industries, 963 F.2d 350, 22
USPQ2d 1453, 1458 (Fed. Cir. 1992); TBC Corp., 44 USPQ2d at
1318.
Decision: The opposition is sustained and registration
to applicant of its mark SENTRA is refused.