Espace Production International E.P.I.

Trademark Trial and Appeal Board

May 1, 2008

No. 78783663 (T.T.A.B. May. 1, 2008)

Mailed: May 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Espace Production International E.P.I.
________

Serial No. 78783663
_______

John S. Egbert and Jeremy Craft of Egbert Law Offices for
Espace Production International E.P.I.

Wendy B. Goodman, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hohein, Cataldo and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Espace Production
International E.P.I. to register the mark UTOPIA in
standard character form on the Principal Register for the
following goods, as amended: “non-metal flooring, namely,
parquet flooring and parquet floor boards” in International
Class 19.1

1 Application Serial No. 78783663 was filed January 2, 2006,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78783663
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its goods, so
resembles the mark UTOPIA, previously registered on the
Principal Register in typed or standard character form for
“plastic floor covering having a water resistant, smooth or
embossed surface in rolls or tiles” in International Class
27,2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations 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, 27 (CCPA

2 Registration No. 2655030 issued November 26, 2002.
Ser No. 78783663
3
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider the similarity of the marks. In
this case, applicant’s mark is identical to the cited mark,
UTOPIA, in appearance and sound.
We are not persuaded by applicant’s argument that the
marks convey different commercial impressions due to
differences in the identified goods. Applicant fails to
explain how use of its UTOPIA mark on parquet flooring
conveys “the distinct impression of a luxury brand of wood
flooring from France that represent[s] the pinnacle of the
home decorative flooring industry”3 whereas registrant’s use
of the identical mark on plastic flooring conveys “a worry-
free or ‘perfect’ water resistant barrier for floors.”4 As
such, applicant fails to support its contention that these
otherwise identical marks are somehow different in
connotation or convey different commercial impressions.
See, e.g., In re Big Pig, Inc., 81 USPQ2d 1436 (TTAB 2006).
Cf. In re Sears, Roebuck & Co., 2 USPQ2d 1312 (TTAB 1987).
In view of the foregoing, we find that the marks are
identical in all respects. Use of identical marks is a

3 Brief, p. 3.
4 Id.
Ser No. 78783663
4
fact which “weighs heavily against applicant.” See In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ
1289 (Fed. Cir. 1984); and In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Neither are we persuaded by applicant’s argument that
as a result of “unrestrained use by third parties,”5 UTOPIA
is a weak mark. Applicant refers to the results of a
search of the USPTO’s Trademark Electronic Search System
(TESS) which purportedly retrieves a number of UTOPIA
formative marks owned by third parties. We observe,
however, that applicant has not made of record the results
of any such search, and the Board will not take judicial
notice of third-party registrations or marks. See In re
Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). Accordingly,
applicant’s unsupported allegations regarding the asserted
weakness of the mark in the cited registration are entitled
to little weight. We therefore find that on the facts
before us, and in the absence of any evidence to the
contrary, the mark UTOPIA is a strong mark, and as such is
entitled to a broad scope of protection.

5 Id. at 5.

Ser No. 78783663
5
The Goods
We next turn to a consideration of the goods. We
note, at the outset of considering this du Pont factor,
that the greater the degree of similarity between
applicant’s mark and the cited registered mark, the lesser
the degree of similarity between applicant’s goods and
registrant’s goods that is required to support a finding of
likelihood of confusion. See In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). If the marks are the same,
as in this case, it is only necessary that there be a
viable relationship between the goods in order to support a
finding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
Furthermore, it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
Ser No. 78783663
6
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the examining attorney has made of
record a number of use-based third-party registrations
which show that various entities have, in each instance,
adopted a single mark for goods that are identified in both
applicant’s application and the cited registration. See,
for example:
Registration No. 2806186 for, inter alia, parquet
flooring, floor coverings of wood, cork rubber,
plastic or substitutes for these materials;

Registration No. 2261596 for, inter alia, parquet
wood flooring, vinyl flooring, and linoleum
flooring;

Registration No. 2423964 for, inter alia, wood
tile flooring, parquet wood flooring, vinyl floor
covering; and

Registration No. 2350422 for, inter alia, parquet
wood strips, parquet wood floors, linoleum and
vinyl floors, floor coverings of cork, rubber,
plastics, or substitutes therefor.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). In this case, the evidence of record suggests that
applicant’s parquet flooring and parquet floor boards and
Ser No. 78783663
7
registrant’s plastic floor covering, which by definition
includes vinyl floor coverings, are related building
materials that may emanate from a common source. We hereby
take judicial notice of the following definition of vinyl:
“any of various typically tough, flexible, shiny plastics,
often used for coverings and clothing.”6 American Heritage
Dictionary, 4th ed. (2006).
Thus, we find that applicant’s parquet flooring and
floor boards are related to registrant’s plastic floor
coverings such that consumers could, because of the
identical nature of the marks, mistakenly believe that they
originate from the same source.
Channels of Trade
We are not persuaded by applicant’s argument that
while registrant’s goods are “sold to various consumer
flooring stores,”7 its goods “are imported from France and
sold only in bulk to wholesale consumers”8 with the result
that the “channels of trade are necessarily different due
to the fact that the consumers of the goods are radically

6 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
7 Brief, p. 4.
8 Id.
Ser No. 78783663
8
different.”9 It is settled that in making our determination
regarding the relatedness of the parties’ goods, we must
look to the goods as identified in the involved application
and cited 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.”)
In this case, neither the goods identified in the
application at issue nor those in the cited registration
recite any limitations as to channels of trade.
Accordingly, both applicant’s and registrant’s goods are
presumed to move in all normal channels of trade therefor
and be available to all classes of potential consumers,

9 Id.
Ser No. 78783663
9
including consumers of each other’s goods. See In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Summary
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists.
Decision: The refusal of registration is affirmed.