The Closet Guy, Inc.

Trademark Trial and Appeal Board

Mar 25, 2010

No. 77426306 (T.T.A.B. Mar. 25, 2010)

Mailed:
March 25, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Closet Guy, Inc.
________

Serial No. 77426306
_______

Thomas I. Rozsa of Rozsa Law Group LC for The Closet Guy,
Inc.

Stephanie M. Ali, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney)
_______

Before Seeherman, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

The Closet Guy, Inc. has appealed from the final
refusal of the trademark examining attorney to register THE
CLOSET GUY and design, as shown below, with CLOSET
disclaimed, for services ultimately identified as
“installation of custom closets and storage systems” in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77426306
2
Class 37 and “custom manufacture of closets and storage
systems” in Class 40.1

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the mark THE CLOSET LADY in
typed drawing format, with CLOSET disclaimed, registered
for “custom designed closet and storage systems, comprised
of shelves, drawers, bins and shoe racks, sold as a unit”
in Class 20; “consulting and design services for others in
the field of storage units and closets” in Class 42; and
“syndicated newspaper columns and newsletters in the field
of storage systems and interior space design” in Class 16.2
The appeal has been fully briefed.
As a preliminary matter, the examining attorney has
objected to Exhibit 1 which was submitted for the first
time with applicant’s appeal brief. This submission is

1 Application Serial No. 77426306, filed March 19, 2008,
asserting first use and first use in commerce as early as
December 13, 2004.
2 Registration No. 1917077, issued September 5, 1995; renewed.

Ser No. 77426306
3
untimely, and has not been considered. See Trademark Rule
2.142(d). The examining attorney has also claimed that a
list of trademarks in applicant’s brief “is without merit
because the applicant failed to provide the registered
trademark numbers for each mark for a complete analysis.”
Brief, p. 6. The examining has misread the nature of this
list. Applicant has cited a number of cases which found no
likelihood of confusion between particular marks in which
the applicants had added a word to previously registered
marks, and the list simply shows those marks in a column
format. Thus, we have considered that list, and those
cases, for whatever probative value they have, but note
that because those cases address a different factual
situation from the one at hand, their value is quite
limited.
We now turn to the substantive issue of likelihood of
confusion. Our determination of this issue is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors set forth in In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
Ser No. 77426306
4
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Applicant has discussed only the du Pont factor of the
similarity of the marks. In her brief the examining
attorney pointed this out, and stated that “it is
reasonable to assume that the applicant concedes that the
applicant and registrant’s goods and services are similar
and commercially related.” Brief, p. 6. In its reply
brief applicant did not contest this statement, but again
discussed only the factor of the similarity of the marks.
Therefore, we agree that it is reasonable to conclude that
applicant does not dispute that the du Pont factors
discussed by the examining attorney in her brief, with the
exception of the similarity of the marks, favor a finding
of likelihood of confusion.
Moreover, we find that applicant’s services of “custom
manufacture of closets and storage systems” and
registrant’s “custom designed closet and storage systems,
comprised of shelves, drawers, bins and shoe racks, sold as
a unit” are very similar, while applicant’s “installation
of custom closets and storage systems” is complementary to
these identified goods of registrant, as well as to
Ser No. 77426306
5
registrant’s “consulting and design services for others in
the field of storage units and closets.” Because
applicant’s services and both the registrant’s goods in
Class 20 and its services are closely related, this du Pont
factor favors a finding of likelihood of confusion.3
Although we do not have any evidence about the
channels of trade in which the services are offered, based
on their respective identifications we must assume that
they will be sold to the same classes of consumers,
including members of the general public who want their
closets designed and who want storage systems designed for
their particular closets.
The only other du Pont factor discussed by the
examining attorney, and the only factor discussed by
applicant, is the similarity of the marks.4 Applicant has
acknowledged that, as a general rule, when a mark consists
of words and a design, it is the word portion that is

3 Given the close similarity of these goods and services, we
need not discuss whether applicant’s services and the
registrant’s goods in Class 16 are also related. Thus, in
reaching our decision herein we specifically do not rest our
finding on the Class 16 goods in the cited registration.
4 Applicant has attempted to discuss the strength of the
registered mark in terms of third-party use of the term CLOSET.
The evidence applicant attempted to submit in support of this
point was, as previously discussed, untimely submitted with
applicant’s brief. However, we will discuss the fact that the
word CLOSET has been disclaimed in both marks in the context of
our consideration of the similarity of the marks.

Ser No. 77426306
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accorded greater weight in the likelihood of confusion
analysis because it would be used by purchasers to refer to
or request the goods or services. See In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). However,
applicant asserts that in the case of its mark the design
should be given greater weight because it is such a
prominent part of the mark. We do not agree. Although the
design is certainly visually prominent, it is a picture of
a man building a closet, and therefore it merely reinforces
the meaning of the word portion of the mark, THE CLOSET
GUY. As such, it does not serve to distinguish applicant’s
mark from the registrant’s.
Applicant has also pointed out that no one is entitled
to exclusive rights to the words THE and CLOSET, and that
because of the differences in the words GUY and LADY, the
marks are sufficiently different. We agree that the mere
inclusion of the words THE and CLOSET in two marks would
not necessarily be a sufficient basis on which to find them
similar. However, the marks at issue herein--considered in
their entireties--are also similar in their meaning and
commercial impression, in that they both convey the idea of
a person who is creating closets for customers. The
difference in the gender of the person conveyed by the word
GUY and LADY in the respective marks is not sufficient to
Ser No. 77426306
7
distinguish them, as the overall impression is that of a
person who helps the customer and performs the service for
them. As applicant itself has recognized:
The federal courts have acknowledged an
assumption that “an average purchaser
does not retain all the details of a
mark, but rather the mental impression
the mark creates in its totality.” T&T
Mfg. Co. v. A.T. Cross Co., 449 F. Supp
813, 820, 197 USPQ 763 (D.R.I. 1978).
The federal courts have further
indicated that “[t]he marks must be
compared not by examining in minute
detail their differences, but by
viewing them in their entireties, to
capture the general impression that
they would give a consumer.” American
Assoc. for Advancement of Science v.
Hearst Corp., 498 F.Supp. 244, 259, 206
USPQ 605 (D.D.C. 1980) [other citations
omitted].

Brief, pp. 10-11. Although these were infringement cases,
and the Board normally follows its own precedent and that
of the Federal Circuit, our primary reviewing court, the
same principles have been stated in our cases as well. See
Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255
(TTAB 1980) (under actual marketing conditions, consumers
do not necessarily have the luxury of making side-by-side
comparisons between marks, and must rely upon their
imperfect recollections).
Because the word portion of applicant’s mark follows
the same format as the registered mark, i.e., the phrase
Ser No. 77426306
8
THE CLOSET followed by and ending with a word identifying
a person by gender, such that the overall meaning is that
of a person who designs or creates closets; because the
design element in applicant’s mark merely reinforces this
meaning; and because the marks as a whole create the same
commercial impression; we find that the du Pont factor of
the similarity of the marks favors a finding of likelihood
of confusion.
As noted, no evidence was submitted with respect to
any of the other du Pont factors, and we therefore treat
them as neutral. Because of the relatedness of the goods
and services, the fact that they are offered to the same
classes of consumers, and the similarities of the marks, we
find that applicant’s mark, as used in connection with its
services, is likely to cause confusion with the cited
registration. To the extent that there is any doubt about
our conclusion, we must follow the well-established
principle that such doubt must be resolved in favor of the
registrant and prior user. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.