American Precision Mold, Inc.

Trademark Trial and Appeal Board

Jun 12, 2014

No. 85791226 (T.T.A.B. Jun. 12, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 12, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re American Precision Mold, Inc.
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Serial No. 85791226
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Matthew H. Swyers of The Trademark Company, PLLC for American Precision
Mold, Inc.

Mayur Vaghani, Trademark Examining Attorney, Law Office 102 (Mitchell Front,
Managing Attorney).
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Before Quinn, Ritchie and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
American Precision Mold, Inc. (“Applicant”) seeks registration of GOLD
STAR ORNAMENTS, in standard characters and with ORNAMENTS disclaimed,
for:
3D decorative ornaments made from plastic; 3D
decorative plastic ornaments for attachment to cars,
walls, windows, mirrors and other solid surfaces; 3D
ornaments made from plastic; Holiday ornaments of
plastic; Party ornaments of plastic; Three dimensional
plastic ornaments, in International Class 20; and

Serial No. 85791226
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Christmas tree ornaments; Christmas tree ornaments and
decorations, in International Class 28.1

The Examining Attorney refused registration of the mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark,
when used in connection with Applicant’s goods, so resembles the previously-
registered mark GOLD STAR, in typed format, for inter alia, “retail and wholesale
store services featuring … holiday ornaments and decorations” in International
Class 352 that use of Applicant’s mark in connection with Applicant’s goods is likely

1 Application Serial No. 85791226, filed November 30, 2012, based on an intent to use the
mark in commerce under Section 1(b) of the Act.
2 Registration No. 2850003, issued June 8, 2004; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged. The cited registration’s identification of services, in its entirety, is:
“Retail pharmacy services; retail and wholesale store services featuring groceries, dairy
products, baked goods, juices, meats, seafood, sundries, candy, liquor and alcoholic
beverages, non-alcoholic beverages, cigarettes, tobacco products, general merchandise,
clothing, footwear, headgear, toys, sporting goods, exercise and recreational equipment,
housewares, household goods, domestics, detergents, soap and cleaning products, cosmetics
and personal care products, personal hygiene products, sanitary preparations,
pharmaceutical preparations, vitamins, nutritional supplements, dietary supplements,
lawn and garden products and equipment, pet food and pet care products, power and hand
tools, automotive goods, gasoline, tires, batteries, oils and lubricants, beds and bedding,
floor coverings, office furniture, office supplies, office equipment, office machines, computer
software and hardware, small and major home appliances, lighting and electrical supplies,
plumbing supplies, books, compact discs, cameras, consumer electronics, luggage, jewelry,
precious stones, watches, restaurant equipment and supplies, institutional, restaurant and
convenience store food and sundries, automobile service station supplies, catering
equipment and supplies, holiday ornaments and decorations; retail and wholesale store
services via online electronic communications in the fields of appliances, barbecues, books,
CDs, DVDs, clothing, computers, computer peripherals, consumer electronics, cameras,
floral arrangements and delivery, live plants, gourmet foods, crystal glass, ceramics,
personal care products, fragrances, vitamins, herbal and mineral supplements, non-
prescription remedies, analgesics, home furnishings, housewares, mattresses, jewelry,
precious stones, luggage, briefcases, handbags, office machines, office supplies, sporting
goods, toys, outdoor furnishings, saunas and spas, gardening supplies, pet supplies,
plumbing supplies and hand tools; retail and wholesale bakery store services; retail and
wholesale butcher store services; photocopying services.”
Serial No. 85791226
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to cause confusion or mistake or to deceive. After the refusal became final,
Applicant appealed and Applicant and the Examining Attorney filed briefs.
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of 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 and 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.”).
Turning first to the marks, they both include and begin with the term GOLD
STAR, with the only difference between them being that Applicant’s mark includes
the descriptive and disclaimed word ORNAMENTS thereafter. This does not
meaningfully distinguish the marks.
In fact, GOLD STAR is the dominant element of Applicant’s mark and the
entirety of Registrant’s mark. It is settled that that descriptive words such as
ORNAMENTS are entitled to less weight than arbitrary or suggestive wording such
as GOLD STAR. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the
Serial No. 85791226
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‘descriptive component of a mark may be given little weight in reaching a conclusion
on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re
Dixie Rests., Inc., 105 F.3d at 1405, 41 USPQ2d at 1533-34; In re Binion, 93
USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE,
is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”). Moreover, GOLD STAR appears first
in Applicant’s mark, further establishing that it is the dominant element thereof.
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of
a purchaser and remembered”); see also, Palm Bay Imports Inc., 73 USPQ2d 1692;
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
In fact, because Applicant’s mark contains the entirety of the cited mark, the
marks create similar overall commercial impressions. See, Bellbrook Dairies, Inc. v.
Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213 (CCPA 1958)
(recognizing and applying general rule “that one may not appropriate the entire
mark of another and avoid a likelihood of confusion by the addition thereto of
descriptive or otherwise subordinate matter”); see also, International Paper Co. v.
Valley Paper Co., 468 F.2d 937, 175 USPQ 704 (CCPA 1972) (DATA for “writing,
typewriter and printing paper” confusingly similar to DATA-SPEED for “paper sold
in bulk rolls or bulk reams for conversion only into business forms”); In re Fiesta
Serial No. 85791226
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Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS MVP for casino services
confusingly similar to MVP for casino services offered to preferred customers
identified by special identification cards); In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984) (“we are firmly of the opinion that purchasers who encounter
applicant’s ‘LITTLE GOLIATH’ stapler kits and registrant’s ‘GOLIATH’ large
diameter woodcased pencils are likely to believe … that both products emanate from
or are in some way associated with the same source”); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155 (TTAB 1982) (EBONY for cosmetics
confusingly similar to EBONY DRUM for hairdressing and conditioner).
In short, Applicant’s and Registrant’s marks both include the identical term
GOLD STAR, and therefore they look and sound quite similar and convey similar
meanings. “The proper test is not a side-by-side comparison of the marks, but
instead ‘whether the marks are sufficiently similar in terms of their commercial
impression’ such that persons who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). This factor
weighs in favor of finding a likelihood of confusion.
Applicant argues, however, that Registrant’s mark is weak and not entitled
to a broad scope of protection, as evidenced by 10 third-party marks containing
GOLD STAR or variations thereof which coexist on the Principal Register. Office
Action Response of September 9, 2013 Exs. 4-13. This argument is unpersuasive,
for two reasons. First, third-party registrations are not evidence that the marks are
Serial No. 85791226
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in use on a commercial scale or that the public has become familiar with them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA
1973) (the purchasing public is not aware of registrations reposing in the U.S.
Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria
La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). In other words, because
there is no evidence that any of the marks in these third-party registrations are
currently in use, the third-party registrations standing alone are not particularly
relevant. Second, none of the third-party marks are registered for goods similar to
Applicant’s or services similar to Registrant’s. This factor is therefore neutral.
Turning to the goods and services, they need not be identical or even
competitive in order to support a finding of likelihood of confusion. It is enough that
the goods and services are related in some manner or that the 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, to a mistaken belief that Applicant’s goods and Registrant’s services originate
from or are in some way associated with the same source or that there is an
association between the sources of the goods and services. Hilson Research, Inc. v.
Society for Human Resource Management, 27 USPQ2d 1423, 1432 (TTAB 1993); In
re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering Corp. v. Alza
Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v. Anixter Bros.
Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether purchasers would
Serial No. 85791226
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confuse the goods and services, but rather whether there is a likelihood of confusion
as to the source of the goods and services. In re Rexel Inc., 223 USPQ 830, 832
(TTAB 1984).
Here, Registrant’s retail stores sell holiday ornaments. Applicant intends to
offer: (1) plastic ornaments, which encompass plastic holiday ornaments and could
therefore be sold in Registrant’s stores; and (2) Christmas ornaments, which are a
subset of the holiday ornaments sold in Registrant’s retail stores. It is settled that
retail store services may be related to goods sold by retail stores. See e.g. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (BIGGS
for retail grocery and general merchandise store services likely to be confused with
BIGGS for furniture); In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) (“It is
clear that consumers would be likely to believe that jewelry on the one hand and
retail stores selling jewelry on the other emanate from or are sponsored by the same
source if such goods and services are sold under the same or similar marks.”); In re
Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992) (“As we have said before there is
no question that store services and the goods which may be sold in that store are
related goods and services …”). Moreover, the Examining Attorney introduced
evidence that ornaments, including holiday ornaments, are sold at retail by
Hallmark, Pottery Barn, Pier 1 Imports, Lenox, Christopher Radko, Annalee,
Swarovski, Baccarat and Waterford. Offices Actions of March 22 and September 25,
2013.
Serial No. 85791226
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Applicant argues, however, based on the Affidavit of Richard Erlandson
(“Erlandson Aff.”), that Registrant Costco uses its mark GOLD STAR to identify one
of its “levels of membership.” Erlandson Aff. ¶¶ 2, 3.3 The problem with this
argument and extrinsic evidence is that these details are not reflected in
Registrant’s identification of services. In fact, Applicant’s extrinsic evidence is
irrelevant, because we must base our decision on the goods identified in the
involved application and services identified in the cited registration, rather than
extrinsic evidence. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, ___ F.3d
___, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application”) (quoting Octocom Sys., Inc. v. Houston Comps. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Thor Tech Inc., 90 USPQ2d
1634, 1637-38 (TTAB 2009) (“we must also analyze the similarity or dissimilarity
and nature of the goods based on the description of the goods set forth in the
application and the registration at issue … we may not limit or restrict the trailers
listed in the cited registration based on extrinsic evidence”); In re Bercut-
Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“the question of likelihood
of confusion must be determined by an analysis of the marks as applied to the goods
identified in the application vis-à-vis the goods recited in the registration, rather
than what extrinsic evidence shows those goods to be.”). In short, because

3 Mr. Erlandson is unidentified, but because he refers to “our customers,” and claims that
he is familiar with Applicant’s mark and the goods sold thereunder from “the course and
scope of my work,” we assume that he is somehow affiliated with Applicant.
Serial No. 85791226
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Registrant’s identification encompasses the retail sale of Applicant’s goods, this
factor also weighs in favor of finding a likelihood of confusion.
As for the channels of trade, Applicant’s and Registrant’s identifications of
goods and services include no limitations as to channels of trade or classes of
consumers, and their goods and services are therefore presumed to move in all
normal channels of trade for those goods and services and to be available to all
classes of consumers. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also,
Stone Lion Capital, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“Even assuming there
is no overlap between Stone Lion’s and Lion’s current customers, the Board
correctly declined to look beyond the application and registered marks at issue. An
application with ‘no restriction on trade channels’ cannot be ‘narrowed by testimony
that the applicant’s use is, in fact, restricted to a particular class of purchasers.’”).
Furthermore, the Examining Attorney has introduced evidence that ornaments
such as those identified in the application are sold through retail store services such
as those identified in the cited registration. In any event, Applicant admits that its
goods “will be offered at retail stores.” Erlandson Aff. ¶ 4. This factor therefore also
weighs in favor of finding a likelihood of confusion.
Finally, Applicants’ argument that the relevant consumers would “exercise a
high level of sophistication” is belied by its admission that its products range in
price “from $4.00 to $10.00 per ornament.” Erlandson Aff. ¶ 8. Moreover, even if
Serial No. 85791226
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we assume that consumers may exercise at least some care in purchasing holiday
and other ornaments which will be displayed in their homes, even careful
purchasers can be confused as to source where substantially similar marks are used
on highly related goods and services. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v.
Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human
memories even of discriminating purchasers … are not infallible.”). Giving
Applicant the benefit of the doubt, this factor is neutral.
There is no relevant evidence or argument concerning the remaining
likelihood of confusion factors, and we therefore treat them as neutral.
Conclusion
After considering all of the evidence of record as it pertains to the relevant du
Pont factors, including all of Applicant’s arguments and evidence, even if not
specifically discussed herein, we find that confusion is likely because the marks are
quite similar, the goods and services related and the channels of trade overlapping.

Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.