Dillard’s, Inc.

Trademark Trial and Appeal Board

May 22, 2008

No. 78789424 (T.T.A.B. May. 22, 2008)

Mailed:
May 22, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dillard’s, Inc.
________

Serial No. 78789424
_______

Simor L. Moskowitz of Jacobson Holman, PLLC for Dillard’s,
Inc.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Cataldo, Mermelstein, and Wellington,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Dillard’s, Inc., applicant, filed an application to
register the mark STUDIO D (in standard character form) on
the Principal Register for goods ultimately identified as
“picture frames; furniture, namely, side tables and nesting
tables; mirrors” in International Class 20.1

1 Application Serial No. 78789424 is an intent-to-use application
filed under Section 1(b) of the Trademark Act.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 78789424
2
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the previously registered mark STUDIO A (in
standard character form) for, inter alia, “picture frames,
mirrors, furniture, namely, bedroom furniture, bookshelves,
tables, chairs, television stands, entertainment centers,
buffets, hutches and kitchen carts; bed pillows; decorative
pillows” in International Class 202, that, as used on
applicant’s identified goods, applicant's mark is likely to
cause confusion or mistake or to deceive.
Applicant appealed the final refusal and briefs were
filed. We affirm the refusal to register.
Our determination of the issue of likelihood of
confusion 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,
however, two key, although not exclusive, considerations

2 Registration No. 3004765 issued October 4, 2005. The
registration also covers goods in International Classes 21 and
24.

Serial No. 78789424
3
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We first consider the du Pont factor regarding the
similarity of the goods. In this regard, there is no
dispute that the identifications of goods in the
application and registration cover identical goods.
Indeed, all of applicant’s identified goods, namely,
furniture tables3, mirrors and picture frames, are contained
in the registration’s identification of goods.
Accordingly, the respective goods are identical, in part,
and this factor therefore weighs strongly in favor of
finding a likelihood of confusion.
Because the goods in the application are encompassed
by those in the cited registration, we must presume that
the channels of trade and classes of purchasers are also
the same. 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”). Thus, the

3 Applicant identifies certain types of furniture tables in its
application, i.e., side and nesting tables; nonetheless, these
goods are encompassed by the broader term “tables” in
registrant’s identification of goods.
Serial No. 78789424
4
du Pont factors involving trade channels and classes of
purchasers also favor a finding of likelihood of confusion.
Before considering the similarity of the marks
themselves, we examine the strength of the registered mark
in order to determine the scope of protection it is
entitled to, since this has an effect on our determination
of likelihood of confusion. Indeed, applicant’s principal
argument against finding a likelihood of confusion is that
the term STUDIO is “diluted and non-distinctive” and that
“almost any differences between the marks is sufficient to
enable the relevant purchasing public to distinguish the
parties’ marks for their respective products.” Reply
brief, p. 3 (emphasis in applicant’s brief). In support of
these claims, applicant submitted copies of twenty-three
third-party registrations for marks containing the term
STUDIO as an element of the mark.4 Of these third-party
registrations, approximately eleven cover goods that
include furniture, ten cover goods that include picture (or
photo) frames, and three cover goods that include mirrors.5

4 One registration (Reg. No. 3148407) for the mark STUDIO (in
standard character form) covering “ready-to-assemble home office,
office and home entertainment furniture,” issued pursuant to
Section 2(f). All of the other registered third-party marks
identified by applicant have additional elements, other than the
term STUDIO, and some include designs and/or stylization as
features of the marks.
5 Two of the registrations cover “furniture mirrors,” and are
included in the tally under both furniture and mirrors.
Serial No. 78789424
5
In several of these registrations, a disclaimer of STUDIO
has been entered. Based on the treatment and coexistence
of these third-party registrations, applicant “submits that
the Trademark Office has accorded ‘Studio’ only a narrow
scope of protection as a highly diluted term in connection
with the parties’ respective goods.” Id.
Initially, we point out that although third-party
registrations are not evidence that the registered marks
are in use, such registrations may be considered in the
same manner as a dictionary to show a term’s significance
in a particular trade. See, e.g., Tektronix, Inc. v.
Daktronics, Inc., 187 USPQ 588 (TTAB 1975), aff'd, 534 F.2d
915, 189 USPQ 693 (CCPA 1976). As such, they may be used
to indicate that a commonly registered element has a
suggestive or commonly understood meaning for particular
goods such that differences in other portions of the marks
may be sufficient to render the marks as a whole
registrable. Id.

Applicant also referenced two applications that were approved
for publication and contain the term STUDIO. Both of these
applications matured into registrations subsequent to the filing
of briefs and have been considered.
As acknowledged by applicant in its brief, two of the
identified registrations, namely Registrations Nos. 2142667 and
2116584 (both for picture frames), were cancelled on May 18, 2005
and August 28, 2004, respectively.

Serial No. 78789424
6
With the above in mind and based on the third-party
registrations, we are persuaded that there is some weakness
of the term STUDIO when used in connection with furniture
and picture frames, and therefore that the scope of
protection to be accorded the cited mark may be limited with
respect to that term and said goods. We do not, however,
find the term STUDIO to be weak when used in connection with
mirrors and, accordingly, the cited mark is not limited in
its scope of protection with respect to mirrors. We also do
not hesitate to add that the term STUDIO has not been
disclaimed in either the subject application or the cited
registration; moreover, to be clear, we are not finding that
that the term STUDIO is descriptive of any of the
identified goods. Indeed, the cited registered mark is on
the Principal Register and it is, of course, entitled to
all of the statutory presumptions under Section 7(b).
This brings us next to the similarity of the marks.
We keep in mind that when marks would appear on identical
goods, as they do here, the degree of similarity necessary
to support a conclusion of likely confusion declines with
respect to that class of goods (in this case, International
Class 20). Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992). Our focus is on whether the marks are similar in
sound, appearance, meaning, and commercial impression.
Serial No. 78789424
7
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). The test under this factor is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
Again, applicant’s mark is STUDIO D and the cited
registered mark is STUDIO A, both in standard character
format. Visually and aurally, the obvious similarity in
the marks is the initial common term, STUDIO, while the
obvious, and only, dissimilarity is the letter “D” in
applicant’s mark versus the letter “A” in the registered
mark. And, as the examining attorney correctly points out,
because both marks are in standard character format
registrant and applicant are “free to adopt identical forms
of stylization.” Brief, unnumbered p. 7. Although we do
not view the marks in any specific font for purposes of
determining the degree of similarity, we must consider that
Serial No. 78789424
8
the marks may appear (in use) in the same font or stylized
manner.
Further, both marks are also similar in meaning and
commercial impression because they result from the
combination of the term STUDIO with a letter, albeit a
different letter. Both marks suggest a connection to a
design studio. There is no evidence to suggest that the
different letters used, A and D, have any significance
other than as letters, which would help distinguish the
marks as a whole.6 As mentioned, the proper test is not a
side-by-side comparison of the marks. Instead, they are
more likely to be encountered at different times and under
different circumstances by ordinary consumers, who will not
necessarily have perfect memories. These consumers will
likely recall the mark they first encountered in terms of
its overall commercial impression. In re Continental
Graphics Corp., 52 USPQ2d 1374 (TTAB 1999). Although we
have found the term STUDIO to be weak when used in
connection with furniture and picture frames, we are

6 Applicant argues in its reply brief that applicant is a “well-
known national retail department store chain, Dillard’s[] is
utilizing the letter ‘D’ in its STUDIO D mark as symbol of the
association of its mark with its stores.” Reply brief, p. 5.
Again, however, no evidence was submitted that the letter D or
applicant’s mark would be perceived as such by consumers. And,
to the extent that applicant intends to rely on its fame as a
department store, we note that this is not a relevant factor for
purposes of this decision.
Serial No. 78789424
9
unconvinced that applicant’s use of a different letter
following the term STUDIO is sufficient for purposes of
distinguishing the overall commercial impressions of the
marks. The term STUDIO appears first and is visually the
largest element in both marks; these factors significantly
weigh in favor of STUDIO, while weak as to some of the
goods, being the element of the marks that consumers will
likely recall. See Presto Products Inc. v. Nice-Pak
Products, 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”).
The significance of STUDIO as the dominant element of the
mark is even more pronounced when the respective marks are
considered in connection with mirrors, because there is no
finding that STUDIO is weak with respect to those goods.
In sum, in spite of any weakness of the term STUDIO,
we find that the respective marks are substantially similar
when used in connection with all of the goods identified in
the application. This du Pont factor favors a finding of
likelihood of confusion.
In arguing against a finding of likelihood of
confusion, applicant also relies on the fact that it was
able to register the same mark, STUDIO D (in standard
character format), for goods that are identical or related
Serial No. 78789424
10
to those identified in the cited registration.7 Applicant
further notes that the application which matured into its
registration was “approved by the Examining Attorney, and
published without objection by the owner of the [cited
registration] (or any other party), notwithstanding the
overlapping and/or complimentary goods, including ‘towels”
which are identified in both registrations.” Brief, p. 4.
As was pointed out to the applicant by the examining
attorney during the prosecution of this application, such
decisions made by examining attorneys have no bearing on
the decision before us. Instead, this Board must decide
each case on its own merits and is not bound by the
decisions of examining attorneys in approving other marks
for registration, even if those marks are owned by
applicant. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). Thus, we are not
persuaded by applicant's argument.
In conclusion, given that applicant’s goods are
identical to, indeed totally encompassed by, the goods in
the cited registration, that the goods will presumably move
through the same channels of trade to the same classes of

7 Applicant’s Registration No. 3234013 (issued April 24, 2007)
covers “towels” which are also contained in the cited
registration. There is a disclaimer of STUDIO in applicant’s
registration.

Serial No. 78789424
11
consumers, that the respective marks are similar in
appearance, sound and overall commercial impression, we
conclude that applicant's mark, when used in connection
with its identified goods, so resembles the cited,
registered mark as to be likely to cause confusion.
We make our conclusion as to all of all goods
identified in the application and notwithstanding our
finding that the term STUDIO is weak when used in
connection with furniture and picture frames (not mirrors).
Even though the registered mark contains the element
STUDIO, it is entitled to protection. See King Candy Co.
v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 109 (CCPA 1974) (likelihood of confusion is to be
avoided as much between weak marks as between strong
marks).
To the extent we have any doubt, we resolve it, as we
must, in favor of the registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988);
In re Pneumatiques, Caoutchouc Manufacture et Plastiques
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registration
No. 3004765 is affirmed.