Steelcase Inc.

Trademark Trial and Appeal Board

Sep 26, 2008

No. 78968191 (T.T.A.B. Sep. 26, 2008)

Decision Mailed:
September 26, 2008
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Steelcase Inc.
________

Serial No. 78968191
_______

Aaron J. Wong of Price, Heneveld, Cooper, DeWitt & Litton, LLP
for Steelcase Inc.

Christina M. Sobral, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Hohein, Zervas and Cataldo, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Steelcase Inc. has filed an application to register on
the Principal Register in standard character form the mark
"RUNNER" for "tables" in International Class 20.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "RUNNER," which is registered on the Principal Register in

1 Ser. No. 78968191, filed on September 6, 2006, which alleges a date
of first use of the mark anywhere and in commerce of June 1995.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78968191
2
standard character form for "chairs" in International Class 20,2
as to be likely to cause confusion, or to cause mistake, or to
deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). See also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity or dissimilarity of the goods at issue and the
similarity or dissimilarity of the respective marks in their
entireties.3 See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). Here, inasmuch as
the respective marks are identical in all respects, the primary
focus of our inquiry is accordingly on the similarities and
dissimilarities in the goods at issue along with consideration
of, inter alia, such factors as the conditions under which and
buyers to whom sales are made, i.e., "impulse" vs. careful,

2 Reg. No. 2,651,512, issued on November 19, 2002, which is based on
Danish Reg. No. VR200101250 issued on March 14, 2001.

3 The court, in particular, pointed out that: "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."
192 USPQ at 29.
Ser. No. 78968191
3
sophisticated purchasing, and the length of time during and
conditions under which there has been contemporaneous use without
evidence of actual confusion.
Turning first to the similarities and dissimilarities
in the goods at issue, applicant (although notably without any
evidentiary proof other than as to the name of the owner of the
cited registration) maintains in its brief that "[t]he mark
[which is the subject of the registration] cited by the Examining
Attorney is owned by Fritz Hanson A/S Corp., who sells the RUNNER
chair" which, applicant insists, "is a stacking chair designed by
Danish designer Kasper Salto." Applicant further asserts that:
The Fritz Hanson website notes that the
RUNNER chair can be supplied with or without
arms, with or without seat upholstery, and,
when used at conferences, with or without
writing tablets and linking elements. Thus,
the chairs marketed under the [mark of the]
registration cited by the Examining Attorney
are for use at conference type settings where
seating capacity is an issue and where there
also exists a need to store the chairs in an
efficient manner such as stacking the chairs,
which is a feature provided by the runner
chair of the '512 registration.

By contrast, applicant argues that (citation omitted):
The present application is for the mark
RUNNER for use in connection with tables.
Purchasers of Applicant's products are
typically corporate purchasers whom [sic] use
these products for designing office layouts
and configurations. Such purchases are not
impulse purchases, but rather require
detailed analysis of options, costs,
configuration and capacity. Thus, the
purchasers of Applicant's products are highly
discriminating purchasers who will only buy
after careful consideration. Discriminating
purchasers are, generally speaking, less
likely to be confused by ...
[contemporaneous] use of marks. What is
more, the purchasers of the products sold
Ser. No. 78968191
4
under the [mark which is the subject of the]
registration cited by the Examining Attorney
are likely to be buyers for conference
centers and the like, such that these
purchasers are also highly sophisticated and
are specifically seeking chairs which provide
the seating capacity needed as well as the
storage capabilities of the RUNNER chair.
Therefore, the goods identified in the
present application and the goods of the mark
cited by the Examining Attorney are not
purchased without careful thought and
consideration by untrained consumers, but
rather, they are purchased by discriminating
purchasers with specific intentions for the
goods such that they are not likely to be
confused.

The Examining Attorney, on the other hand, properly
observes as a preliminary matter in her brief that where the
marks at issue are identical, as is the case herein, the
respective goods "need not be as close to support a finding of
likelihood of confusion as might apply where differences exist
between the marks," citing In re Opus One Inc., 60 USPQ2d 1812,
1815 (TTAB 2001) and Amcor, Inc. v. Amcor Industries, Inc., 210
USPQ 70, 78 (TTAB 1981). See also, Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1994). In
addition, the Examining Attorney correctly points out that it is
well established that the issue of likelihood of confusion must
be determined on the basis of the goods as they are set forth in
the application and the cited registration, rather than on the
basis of what they are asserted to be or any evidence reveals
them actually to be. See, e.g., Octocom Systems Inc. v. Houston
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) ("The authority is legion that the question of
Ser. No. 78968191
5
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 the goods are
directed"); Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir.
1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Thus, as the Examining Attorney accurately notes, where
an applicant's and a cited registrant's goods are broadly
described as to their nature and type, it is presumed in each
instance that in scope the application and cited registration
encompass not only all goods of the nature and type described
therein, but that the identified goods move in all channels of
trade which would be normal for those goods and that they would
be purchased by all potential buyers thereof. See, e.g., In re
Dakin's Miniatures Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); and In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). Here, applicant's goods are broadly
identified as "tables" while registrant's goods are broadly set
forth as "chairs"; neither of the identifications of the
respective goods contains any restriction or limitation as to the
use of the goods or their typical purchasers. The Examining
Attorney is accordingly correct that "applicant's argument that
Ser. No. 78968191
6
the nature of the goods and the purchasers are different has no
bearing" in this case.
Moreover, as the Examining Attorney also accurately
observes, it is well settled that goods need not be identical or
even competitive in nature in order to support a finding of
likelihood of confusion. Instead, it is sufficient that the
goods are related in some manner and/or that the circumstances
surrounding their marketing are such that they would be likely to
be encountered by the same persons under situations that would
give rise, because of the marks employed in connection therewith,
to the mistaken belief that they originate from or are in some
way associated with the same producer or provider. See, e.g., In
re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999);
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
Here, the Examining Attorney contends that, as shown by
the following evidence which she has made of record, applicant's
tables and registrant's chairs are related goods in that they
"are commonly sold and marketed together." Specifically, such
evidence consists of copies of four use-based third-party
registrations for marks which are registered in International
Class 20 for goods which are variously identified as: "tables
and chairs"; "furniture, namely, tables, chairs, ..."; "chairs,
tables, ... lounge chairs, ... swivel chairs, high-backed chairs,
dining tables, cocktail tables, coffee tables, conference
tables"; and "furniture, namely, chairs, tables, ...." Although
Ser. No. 78968191
7
we note that such registrations are not evidence that the
different marks shown therein are in use or that the public is
familiar with them, it is still the case that the registrations
have some probative value to the extent that they serve to
suggest that the goods listed therein are the kinds of goods
which may emanate from a single source. See, e.g., In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18
(TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d as not citable
precedent, 864 F.2d 149 (Table, unpublished) (Fed. Cir. 1988).
In addition, the Examining Attorney has furnished copies of pages
from the catalogs of such furnishings retailers as "IKEA," "Crate
& Barrel," "Target" and "Pottery Barn" showing, in each instance,
the advertising and offering for sale of chairs in conjunction
with tables. In light of such evidence, as well as applicant's
original specimens of use, which demonstrate use of its tables
with chairs, we fully concur with the Examining Attorney's
conclusion that the goods at issue herein are commercially
related in that "tables and chairs are complementary goods that
are often sold together in the same channels of trade."
Furthermore, while we understand and appreciate
applicant's argument that confusion is nonetheless unlikely,
despite contemporaneous use by applicant and registrant of the
identical mark "RUNNER," because tables and chairs are not
impulse items and are instead products which are typically
purchased by sophisticated purchasers only after careful
Ser. No. 78968191
8
deliberation and assessment of their particular furnishing needs,
we concur with the Examining Attorney that confusion is likely to
occur. As the Examining Attorney persuasively notes, it is well
established that while buyers may be knowledgeable and
discriminating as to the kinds of goods required to meet or take
care of their specific needs or requirements, and thus would be
expected to exercise care and deliberation in their choice of
goods, such sophistication as to product selection "does not
necessarily preclude their mistaking one trademark for another"
or that they otherwise are entirely immune from confusion as to
source or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Research &
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986);
In re Decombe, 9 USPQ 1812, 1814-15 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). This would
be especially so where, as here, the marks at issue are identical
in all respects.
Finally, applicant asserts (although again without any
evidentiary proof) that "both the applied-for mark and the mark
cited by the Examining Attorney have been in use concurrently for
the past six years without any indication of actual confusion."
Even assuming that, by "concurrent use," applicant actually means
contemporaneous use in the same marketplaces (rather than true
concurrent use in separate geographical areas) as the basis for
its stated "belief that these two marks can coexist in their
distinct channels of trade without any likelihood of confusion,"
Ser. No. 78968191
9
the Examining Attorney properly notes that as stated by the Board
in In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984):
[A]pplicant's assertion that it is
unaware of any actual confusion occurring as
a result of the contemporaneous use of the
marks of applicant and registrant is of
little probative value in an ex parte
proceeding such as this where we have no
evidence pertaining to the nature and extent
of the use by applicant and registrant (and
thus cannot ascertain whether there has been
ample opportunity for confusion to arise, if
it were going to); and the registrant has no
chance to be heard from (at least in the
absence of a consent agreement, which
applicant has not submitted in this case).

In particular, it is pointed out that in order for an asserted
lack of any incidents of actual confusion to be a meaningful
factor, the record must demonstrate that there has been
appreciable and continuous use by applicant of its mark in the
same market(s) as those served by registrant under its mark.
See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). Specifically, there must be evidence showing
that there has been an opportunity for instances of actual
confusion to occur and here the record is devoid of any such
proof. See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000). There simply is no such
evidence on this record in order for the asserted absence of any
instances of actual confusion to be a meaningful factor in the
determination of whether confusion is likely to occur.
Accordingly, we conclude that purchasers who are
familiar or otherwise acquainted with registrant's "RUNNER" mark
for "chairs," would be likely to believe, upon encountering
applicant's identical "RUNNER" mark for "tables," that such
Ser. No. 78968191
10
commercially related goods emanate from, or are sponsored by or
affiliated with, the same source. For instance, purchasers could
reasonably believe that registrant's "RUNNER" chairs and
applicant's "RUNNER" tables are a line of coordinated office or
conference furniture.
Decision: The refusal under Section 2(d) is affirmed.