CCA Global Partners, Inc.v.Global Tile, Inc.

Trademark Trial and Appeal Board

Mar 26, 2008

No. 92030214 (T.T.A.B. Mar. 26, 2008)

Mailed:
March 26, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

CCA Global Partners, Inc., by change of name
from Carpet Co-op of America Association

v.

Global Tile, Inc., by change of name from
Global Tile & Carpet, Inc.1
_____

Cancellation No. 92030214
_____

Michael R. Annis, Gary A. Pierson II and Alan S. Nemes of
Blackwell Sanders LLP for CCA Global Partners, Inc., by
change of name from Carpet Co-op of America Association.

William M. Lee of Barnes & Thornburg, LLP for Global Tile,
Inc., f/k/a Global Tile & Carpet, Inc.
______

Before Seeherman, Grendel and Zervas, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On March 23, 1999, Registration No. 2234973 (“the ‘973
registration”) for the mark TILE ONE (in typed form) issued

1 On May 2, 2005, the Assignment Branch of the United States
Patent and Trademark Office recorded a change of name from Global
Tile & Carpet, Inc. to Global Tile, Inc. at Reel No. 3204, Frame
No. 0581. The caption for this proceeding has been amended to
reflect the change of name. See TBMP § 512.02 (2d ed. rev.
2004).
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Cancellation No. 92030214
2
on the Principal Register for “importation and wholesale
distribution of ceramic, porcelain, granite, marble and
stone tile through a network of dealers” in International
Class 35, based on an application filed on February 18,
1997. The ‘973 registration states dates of first use
anywhere and first use in commerce on September 22, 1998 and
includes a disclaimer of the word TILE. Global Tile, Inc.
(“respondent”) is the owner of record of the ‘973
registration.2
CCA Global Partners, Inc. (“petitioner”), formerly,
Carpet Co-op of America Association, has filed a petition to
cancel the ‘973 registration. In the petition to cancel,
petitioner pleaded ownership of the following registrations:
Registration No. 1422989 issued December 30, 1986
for the mark CARPET ONE (in typed form) for
“carpeting” in International Class 27 and “carpet
dealership services” in International Class 42,
with CARPET disclaimed;

Registration No. 1397206 issued June 10, 1986 for
the mark

for “retail store services featuring carpets” in
International Class 42, with CARPET disclaimed;

Registration No. 2091844 issued August 26, 1997
for the mark DISTRIBUTION ONE (in standard
character form) for “wholesale distributorship
featuring carpet and floor coverings” in

2 A Section 8 affidavit was accepted on June 28, 2006.
Cancellation No. 92030214
3
International Class 42, with DISTRIBUTION
disclaimed;

Registration No. 17784113 issued June 22, 1993 for
the mark YES! THE ONE WORD GUARANTEE for “floor
coverings; namely, carpets, carpet pads and
resilient hard surface vinyl covering for floors”
in International Class 27; and

Registration No. 2223178 issued February 9, 1999
for the mark CERAMICA UNO (in typed form) for
“ceramic tile” in International Class 19, with
CERAMICA disclaimed.4

Petitioner has alleged that its marks form a family of
marks; and that respondent’s mark so closely resembles the
marks of petitioner's pleaded registrations and petitioner’s
family of marks as to be likely to cause confusion, mistake
or deception in violation of Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). Petitioner has also alleged that
respondent has abandoned its mark.
Respondent has answered the petition to cancel by
denying the salient allegations thereof.
The record consists of the pleadings; the file of the
involved registration; petitioner's notice of reliance by
which petitioner submitted status and title copies of
various registrations, including the pleaded registrations;
and the April 11, 2007 testimonial deposition of Robert

3 The petition to cancel incorrectly identifies this registration
as Registration No. 1778441.
4 Petitioner has also alleged ownership of Registration No.
1405940 for the mark CONTRACT ONE (in typed form) but has not
submitted a status and title copy of the registration with its
notice of reliance and has not established its ownership and
Cancellation No. 92030214
4
Wilson, Chief Operating Officer of CCA Global Partners,
Inc., and accompanying exhibits, divided into a confidential
portion and a non-confidential portion.
Petitioner has filed its main brief; respondent has not
filed any evidence nor a main brief.
Findings of Fact
Petitioner is a cooperative composed of a number of
members which are an affiliated group of independently owned
and operated retail floor coverings stores. The members
sell floor coverings such as carpet, wood, stone, ceramic
tile, vinyl and rugs throughout the United States.
Petitioner provides advertising for its members through
television, magazines, newspapers and other forms of media
including a website. It also provides them with
merchandising, management and training services.
Additionally, petitioner maintains a buying system that
allows its members to purchase floor covering products and
accessories at reduced prices. The members may and are
encouraged to use the CARPET ONE mark in their trade names.
Priority
Because this is a cancellation proceeding, petitioner
does not necessarily have priority simply because it owns
registrations. Brewski Beer Co. v. Brewski Brothers, Inc.,
47 USPQ2d 1281, 1284 (TTAB 1998) (the “Board has taken the

existence through the testimony of any witness. We therefore
Cancellation No. 92030214
5
position, in essence, that the registrations of each party
offset each other; that petitioner as a plaintiff must, in
the first instance, establish prior rights in the same or
similar mark …. Of course, petitioner or respondent may
rely on its registration for the limited purpose of proving
that its mark was in use as of the application filing
date.”). In this case, because respondent has not submitted
any evidence, the earliest date upon which it can rely is
the February 18, 1997 filing date of respondent's
application which issued as Registration No. 2234973.
Intersat Corp. v. International Telecommunications Satellite
Organization, 226 USPQ 154, 156 n. 5 (TTAB 1985) (“The
earliest date of first use upon which Intelsat can rely in
the absence of testimony or evidence is the filing date of
its application.”). Inasmuch as petitioner's underlying
applications for pleaded Registration Nos. 1422989, 1397206,
2091844 and 1778411 were all filed prior to the February 18,
1997 filing date of the TILE ONE application, petitioner has
priority in connection with each of the marks of such
registrations.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of

have not considered any claim based on Registration No. 1405940.
Cancellation No. 92030214
6
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In considering the evidence of record on
these factors, we 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).
We first address petitioner's contention that it has a
family of marks. The Court of Appeals for the Federal
Circuit has defined a family of trademarks as follows:
A family of marks is a group of marks having a
recognizable common characteristic, wherein the
marks are composed and used in such a way that the
public associates not only the individual marks,
but the common characteristic of the family, with
the trademark owner. Simply using a series of
similar marks does not of itself establish the
existence of a family. There must be recognition
among the purchasing public that the common
characteristic is indicative of a common origin of
the goods. … Recognition of the family is
achieved when the pattern of usage of the common
element is sufficient to be indicative of the
origin of the family.

J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991).
In order to create the requisite recognition of the
common element of the marks or “family surname,” the common
Cancellation No. 92030214
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element must be so extensively advertised that the public
recognizes the “family surname” as a trademark. Reynolds &
Reynolds Co. v. I.E. Systems, Inc., 5 USPQ2d 149, 1751
(TTAB 1987). The Board has required:
In order to establish a “family of marks,” it must
be demonstrated that the marks asserted to
comprise its “family” or a number of them have
been used and advertised in promotional material
or used in everyday sales activities in such a
manner as to create common exposure and thereafter
recognition of common ownership based upon a
feature common to each mark.

American Standard Inc. v. Scott & Fetzer Co., 200 USPQ 457,
461 (TTAB 1978).
Petitioner's evidence fails to establish that
petitioner has created a family of “ONE” marks. First,
petitioner relies heavily on various registrations for marks
containing the word ONE. See brief at p. 7 (“CCA uses the
above noted marks as a family of ‘ONE’ marks,” citing only
to petitioner's registrations and Mr. Wilson’s testimony
regarding such registrations). The mere fact that
petitioner has registered many of the purported “family”
members is not sufficient to prove that a family of marks
exists. Consolidated Foods Corp. v. Sherwood Industries,
Inc., 177 USPQ 279, 282 (1973)(“the registrations, per se,
are manifestly incompetent to establish the extent of use of
the registered marks, whether one or more of the registered
marks have been promoted, advertised, used or displayed in
Cancellation No. 92030214
8
any manner likely to cause an association or ‘family’ of
marks, or that, at the least, a good number of the
registrations have become known or familiar to purchasers of
frozen confections and the like”). Second, petitioner's
evidence does not show that the different “ONE” marks have
been promoted, advertised, used or displayed together in any
manner likely to cause an association among the marks or
that there is a “family” of marks. Therefore, the record in
this case falls short of presenting the type of evidence
necessary to support an allegation of a “family” of “ONE”
trademarks. Accordingly, petitioner's claim of likelihood
of confusion must be based solely on its alleged individual
“ONE” trademarks and not on a family of marks.
Because petitioner has asserted that its marks are
famous, we next consider the du Pont factor regarding the
fame of these marks. This factor plays a dominant role in
cases featuring a famous or strong mark. Kenner Parker Toys
Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d
1453 (Fed. Cir. 1992). Famous marks are accorded more
protection precisely because they are more likely to be
remembered and associated in the public mind than a weaker
mark. Id. at p. 1456. A famous mark is one “with extensive
public recognition and renown.” Id. See also Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
Cancellation No. 92030214
9
In determining whether a mark is famous, we may
consider sales, advertising expenditures, and the length of
time the mark has been used. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811
(TTAB 2005). This information, however, must be placed in
context (e.g., a comparison of advertising figures with
competitive products, market share, reputation of the
product, etc.). Bose, 63 USPQ2d at 1309.
Petitioner maintains that “[a]s a result of the
considerable sales, promotion and publicity in connection
with CCA’s CARPET ONE Marks [defined at p. 6 of petitioner's
brief as including pleaded Registration Nos. 1422989 and
13972065], as well as the long period of continued use of
the Marks, CCA and the Marks have become extremely well
known to the trade and purchasing public. Petitioner and
its members have offered floor coverings and related goods
and services throughout the country under the CARPET ONE

5 Petitioner has also included Registration No. 2327090 for the
mark CARPET ONE for “cleaning services for carpets …” and
Registration No. 2757785 for the mark

for “cleaning services for carpets, draperies, upholstery,
fabrics and furniture, water damage restoration services,
cleaning and resurfacing of hard surface flooring, and duct
cleaning” in its definition of “CCA’s CARPET ONE Marks.” Because
petitioner did not plead these two registrations in its petition
Cancellation No. 92030214
10
marks for more than twenty-two years.” Brief at p. 23. At
p. 25 of its brief, petitioner concludes that “the CARPET
ONE Marks … have in fact attained a high level of fame.”
We have carefully considered petitioner's evidence and
arguments in support of its contention that “the CARPET ONE
Marks” are famous and find that the evidence does not
support petitioner's contention. First, the annual total
advertising and sales figures provided by petitioner are not
just for “the CARPET ONE Marks,” which number two pleaded
marks, but are for “the ‘ONE’ Family of Marks.” Mr. Wilson
has defined “the ‘ONE’ Family of Marks” as including more
than ten registered marks, some of which were not pleaded
and some of which are for unrelated services.6 See, e.g.,
Wilson dep. at p. 41 regarding Registration No. 2535829 for
THE POWER OF ONE for “association services, namely promoting
the interests of member carpet retailers.” Second,
petitioner has not provided the annual advertising and sales
figures for goods or services for each mark, but only annual
totals for “the ‘ONE’ Family of Marks.” Because we have
found earlier in this decision that petitioner has not
established that its asserted marks are part of a family of
marks, the annual totals provided by petitioner are of

to cancel, we do not consider them as part of petitioner's
alleged family of marks.
6 A plaintiff may not rely on an unpleaded claim. See TBMP § 314
(2d ed. rev. 2004) and cases cited therein.

Cancellation No. 92030214
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limited probative value. Third, as to the sales figures,
Mr. Wilson, has testified that petitioner's members sell
“soft surface flooring” such as “traditional fuzzy carpet,”
and hard surface flooring such as wood, engineered wood,
ceramic tile and stone flooring. He adds that they may sell
counter tops and laminate flooring; and that “it’s
approximately a 50/50 mix of [hard and soft] product that’s
sold in the marketplace.” Thus, the record is unclear as to
what goods petitioner has included within its “product
purchases of the ‘ONE’ Family of Marks”; sales of disparate
goods such as counter tops may have been included within
such figures. Because the evidence is insufficient, we find
that petitioner has not established that its asserted marks
are famous.
Next, we turn to the du Pont factor regarding the
similarity or dissimilarity and nature of the goods and/or
services. We limit our consideration of this factor, and
the remaining du Pont factors, to Registration No. 1422989
for the mark CARPET ONE, which is the pleaded mark most
similar to respondent’s mark.
The services in the CARPET ONE registration, “carpet
dealer services,” are broadly identified and, based on the
record, include the wholesale distribution of carpets.
Respondent’s services are more narrowly identified as
“importation and wholesale distribution of ceramic,
Cancellation No. 92030214
12
porcelain, granite, marble and stone tile through a network
of dealers.” The question, then, is whether the wholesale
distribution of carpets is similar or dissimilar to the
wholesale distribution of tile.
Generally, services need not be identical or even
competitive to support a finding of likelihood of confusion.
Rather, it is enough that the services are related in some
manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which would give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties' services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991), and the cases cited
therein.
We find that these services are related. The evidence
of record shows that petitioner sells both tile and carpet
to retailers. See Mr. Wilson’s testimony regarding (i) the
CARPET ONE and the CERAMICA UNO registrations for goods and
services including carpet and tile, and (ii) petitioner’s
sources of flooring products from manufacturers and
wholesalers and sales to its members. Wilson dep. at pp.
30, 33, 34 and 39 – 40; Wilson confid. dep. at pp. 28 and
30. See also Exhibit 47A to Mr. Wilson’s deposition, a
Cancellation No. 92030214
13
printout of various webpages from petitioner's carpetone.com
website, which offers among other things CARPET ONE carpet
and CERAMICA UNO tile. Petitioner's evidence establishes
that a distributor may offer both carpet and tile to
retailers and a retailer of flooring products may acquire
carpet and tile from a common source. As a result,
retailers are likely to believe that carpet dealer services
and tile wholesale distribution services would emanate from
a single source if they were offered under the same or
similar marks. Thus, we resolve the du Pont factor
regarding the similarity of the services in petitioner's
favor.
This brings us to the du Pont factors regarding the
classes of consumers and the established and likely to
continue trade channels. Respondent’s identification of
services specifies that respondent, inter alia, is a
wholesaler of tile through a network of dealers. Its
customers, therefore would necessarily be wholesalers or
retailers of tile who are part of a network of dealers.
Petitioner's “carpet dealership services” is broad enough to
include wholesale sales of carpet to wholesalers or
retailers. Because petitioner has established that
retailers of flooring products purchase carpeting and tile,
consumers of petitioner's and respondent’s goods are at
least in part identical. We therefore resolve the du Pont
Cancellation No. 92030214
14
factors regarding the classes of consumers and similarity of
the channels of trade in petitioner's favor.
Next, we consider the du Pont factor regarding the
similarity or dissimilarity of the CARPET ONE and the TILE
ONE marks. We must determine whether the marks are similar
in sound, appearance, meaning, and commercial impression.
Palm Bay Imports, 73 USPQ2d at 1692.
There are several similarities between these marks.
Both are two word marks with an initial term which has been
disclaimed and which is a descriptive term for a flooring
product, followed by the word ONE. Descriptive terms which
have been disclaimed are often less significant in creating
a mark's commercial impression and may be given little
weight in reaching a conclusion on the issue of likelihood
of confusion. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842 (Fed. Cir. 2000); In re Code Consultants,
Inc., 60 USPQ2d 1699 (TTAB 2001). See also, M2 Software
Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d
1944 (Fed. Cir. 2006). Thus, we find that the word ONE in
each mark is the dominant term in each of the marks. Put
another way, the fact that the marks contain different
initial descriptive words does not serve to distinguish the
marks. Consumers are likely to view these differences not
as indications of different sources for the services, but as
information about the services themselves, i.e., that CARPET
Cancellation No. 92030214
15
ONE dealer services involve distribution of carpet, and TILE
ONE distribution services involve distribution of tile.
When we consider the marks as a whole, they are very
similar. As noted, they have a similar construction (a
descriptive term for flooring, followed by ONE). They also
are similar in meaning, with each mark having a suggestive
laudatory significance for an item of flooring. Further,
due to the similarities in meaning and construction, the
commercial impressions of the marks are also similar. In
short, although there are specific differences in the marks,
consumers would likely view the marks as variations of each
other, adopted by a single entity, with the variation
indicating the specific type of floor covering that is the
subject of the service. We therefore resolve the du Pont
factor regarding the similarity of the marks against
respondent.
Considering and balancing all of the evidence as it
pertains to the relevant du Pont factors, we conclude that a
likelihood of confusion exists. Respondent's mark is
sufficiently similar to petitioner's CARPET ONE mark in
Registration No. 1422989 that use of the respective marks on
respondent’s similar services is likely to lead to confusion
as to source, sponsorship or affiliation. A member of
petitioner's cooperative desiring to sell tile could easily
Cancellation No. 92030214
16
assume that petitioner is the source of respondent’s tile
offered through a network of dealers.
In view of our finding that there is a likelihood of
confusion between petitioner's Registration No. 1422989 and
respondent’s mark, we need not reach the question of whether
there is a likelihood of confusion between the remaining
pleaded marks and respondent's mark. Also, we need not
reach petitioner's pleaded claim of abandonment.
DECISION: The petition to cancel Registration No.
2234973 is sustained.