DV International, Inc.

Trademark Trial and Appeal Board

Sep 10, 2008

No. 78470317 (T.T.A.B. Sep. 10, 2008)

Mailed:
September 10, 2008
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re DV International, Inc.
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Serial No. 78470317
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Daniel M. Pauly of Pauly DeVries Smith & Deffner, LLC for
DV International, Inc.

Curtis W. French, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney)
_______

Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

DV International, Inc. (applicant) has applied to
register the mark SOFTTOUCH in standard characters on the
Principal Register for goods identified as “household
plastic storage organizers, namely, cutlery trays, spice
racks, lazy susans, and drawer organizers” in International
Class 21.1

1 Application Serial No. 78470317 based on applicant’s statement of its
bona fide intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78470317
2
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with
Registration No. 2938634 on the Principal Register for the
mark SOFT TOUCH CAN in standard characters for goods
identified as “metal trash cans, household containers sold
empty that are used for recycling purposes” in
International Class 21. The registration issued on April
5, 2005. The registration claims first use of the mark
anywhere and first use of the mark in commerce on March 14,
2003. The registration includes a disclaimer of “CAN.”
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion …” 15 U.S.C. § 1052(d).
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), the Court set forth the factors
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
applicant and registrants. Federated Foods, Inc. v. Fort
Serial No. 78470317
3
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
Regarding the marks, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues that the marks are not similar
because the registered mark includes the word “CAN” and its
mark does not. The Examining Attorney argues that the
marks are highly similar because the only difference
between the marks is the inclusion of “CAN,” a generic
term, in the registered mark.
Without hesitation we conclude that the marks are
highly similar. The presence of the disclaimed, generic
term, “CAN,” in the registered mark does nothing to
distinguish the marks in any significant way in appearance,
sound, connotation or commercial impression. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997). Accordingly, we conclude that the marks are
highly similar.
Serial No. 78470317
4
As to the goods, the goods of applicant and the
registrant need not be identical to find a likelihood of
confusion under Section 2(d). They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant purchasers mistakenly
believing that the goods originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels
of trade we must consider the goods as identified in the
application and registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
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 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 goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”).
Serial No. 78470317
5
Applicant identifies its goods as “household plastic
storage organizers, namely, cutlery trays, spice racks,
lazy susans, and drawer organizers.” The goods in the
cited registration are identified as “metal trash cans,
household containers sold empty that are used for recycling
purposes.”
Applicant argues, “The goods and services for the two
marks are not confusingly similar. None of the items in
connection with applicant’s mark is likely ever to be used
for recycling purposes. Applicant fails to see how a
cutlery tray would be used to store recycling materials.”
Applicant’s brief at 2. Applicant argues in similar
fashion with regard to its other goods. As to the channels
of trade, applicant argues, “The respective goods are in
two different markets altogether. SOFT TOUCH CAN is
directed to recycling options, and SOFTTOUCH is directed to
kitchen organization.” Applicant’s Brief at 3.
The Examining Attorney argues that the respective
goods, as identified in the application and registration,
are closely related and that they would travel through the
same or overlapping trade channels, in the absence of any
restrictions in the identifications.
The Examining has provided evidence to support his
position. Specifically, the Examination Attorney has
Serial No. 78470317
6
provided several third-party registrations where the same
mark has been registered for the types of goods in both the
application and the cited registration. For example, those
registrations include:
Registration No. 2783704 identifying, among other
things, “plastic kitchen and house ware goods,
namely, … trash cans, … storage containers, …
cutlery trays…”;

Registration No. 2836427 identifying, among other
things, “… cutlery trays, … trash cans, … non-
precious metal containers for household or
kitchen use…”;

Registration No. 3012881 identifying, among other
things, “kitchen utensils and containers for
household use, namely, … cutlery trays, cutlery
trays with covers, … large rectangular
containers, … multi-purpose trash cans…”; and

Registration No. 3041871 identifying, among other
things, “containers, not of precious metal, for
household or kitchen use; kitchen utensils, not
of precious metal, namely, … folding spice racks;
… trash cans…”

Attachments to Final Office Action.
These registrations, and the others submitted by the
Examining Attorney, suggest that the respective goods are
of a type which may emanate from the same source. In re
TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
Serial No. 78470317
7
The Examining Attorney has also provided excerpts from
a website associated with Rubbermaid showing various types
of trash containers and drawer and cutlery organizers for
sale under the same mark, as well as excerpts from the web
site of Oxo showing various types of trash containers and
drawer-type utensil organizers, and table or kitchen
turntables (lazy susans) for sale under the same mark. Id.
We conclude that the goods identified in the
application and the goods identified in the cited
registration are related and that they would travel through
the same or overlapping trade channels to the same
potential purchasers. We reject applicant’s argument
asserting that the goods would not be confused. Applicant
misses the fundamental point. The point of the likelihood-
of-confusion analysis is not whether the goods could be
confused, but whether the source of the goods could be
confused as a result of the use of similar marks on related
goods. We likewise reject applicant’s unsupported argument
that the respective goods are in different markets – trade
channels. The Examining Attorney’s evidence satisfactorily
establishes that the respective goods are related and that
the respective goods, in fact, do travel through the same
trade channels.
Serial No. 78470317
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Furthermore, the Board has stated, “… it is important
to note that the greater the degree of similarity in the
marks, the lesser the degree of similarity that is required
of the products or services on which they are being used in
order to support a holding of likelihood of confusion. In
re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983).
In this case, the marks are highly similar, the goods
are related and the goods travel through the same channels
of trade. Therefore, we conclude that there is a
likelihood of confusion between SOFTTOUCH, when used in
connection with “household plastic storage organizers,
namely, cutlery trays, spice racks, lazy susans, and drawer
organizers,” and SOFT TOUCH CAN, when used in connection
with “metal trash cans, household containers sold empty
that are used for recycling purposes.”
Decision: We affirm the refusal under Trademark Act
Section 2(d).