Ferguson Enterprises, Inc.

Trademark Trial and Appeal Board

Jul 22, 2008

No. 78827490 (T.T.A.B. Jul. 22, 2008)

Mailed:
7/22/2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ferguson Enterprises, Inc.
________

Serial No. 78827291
Serial No. 78827490

_______

Mary F. Love, of Law Office of Mary F. Love, for Ferguson
Enterprises, Inc.

Katherine Stoides, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Rogers, Drost, and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Ritchie de Larena, Administrative Trademark
Judge:

Ferguson Enterprises, Inc. filed an application to
register the mark RIVERS COLLECTION, in standard character
format, for “plumbing fixtures, namely, bath tubs, pedestal
lavatories, toilets, sinks and faucets” in International
Class 11.1 Applicant also filed an application to register

1 Application Serial No. 78827291, filed March 2, 2006, pursuant
to Section 1(b) of the Trademark Act, 15 USC §1051(b), claiming a
bona fide intent to use in commerce, and disclaiming the
exclusive right to use “COLLECTION” apart from the mark as shown.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
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the mark RIVERS COLLECTION (and design), shown below, for
the same goods.2

The trademark examining attorney refused registration
of both marks under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
marks so resemble the mark RIVERBATH, registered for
“plumbing fixtures, namely whirlpool baths; and replacement
parts for the aforesaid goods,” that when used in
connection with applicant’s identified goods, they will be
likely to cause confusion.3
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney
filed briefs. Since these two ex parte appeals involve the
same applicant, highly similar marks, and common issues of
law and fact, we issue this single opinion that discusses
both applications. For the reasons discussed herein, the
Board affirms the final refusals to register in both cases.
We base our determination under Section 2(d) on an
analysis of all of the probative evidence of record bearing

2 Application Serial No. 78827490, filed March 2, 2006, pursuant
to Section 1(b) of the Trademark Act, 15 USC §1051(b), claiming a
bona fide intent to use in commerce, and disclaiming the
exclusive right to use “COLLECTION” apart from the mark as shown.
3 Registration No. 2990372, issued August 30, 2005, for a typed
drawing in International Class 11, claiming first use and first
use in commerce on January 1, 1999.
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on a 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. See Federated Foods,
Inc. v. Fort Howard 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”). We consider each of the factors as to which
applicant or the examining attorney presented arguments or
evidence.
The similarity or dissimilarity
and nature of the goods, and channels of trade
Applicant is seeking registration of its marks for
certain types of plumbing fixtures including “bath tubs.”
The cited registration also covers certain types of
plumbing fixtures, including “whirlpool baths.” The
examining attorney has submitted evidence of third-party
registrations and web sites to show that the designation
“bath tubs” includes and subsumes “whirlpool baths,” and
that the other plumbing fixtures identified in applicant’s
recital of goods are also commonly associated with
whirlpool baths. Accordingly, we find that the goods at
issue are in part identical and otherwise highly related.
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Applicant does not dispute the similarity of its products
to those of registrant.
Turning next to the channels of trade, there is
nothing in the recital of goods in the cited registration
that limits the channels of trade or classes of consumers
for registrant’s goods. In the absence of specific
limitations in the registration, we must presume that
registrant’s goods will travel in all normal and usual
channels of trade and methods of distribution and be sold
to all classes of consumers. Squirtco v. Tomy Corporation,
697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983). In view of
the foregoing, the second and third du Pont factors weigh
heavily in favor of finding that there is a likelihood of
consumer confusion.

The similarity or dissimilarity of the marks
in their entireties
Preliminarily, we note that the more similar the goods
at issue, the less similar the marks need to be for the
Board to find a likelihood of confusion. Real Estate One,
Inc. v. Real Estate 100 Enterprises Corp., 212 USPQ 957
(TTAB 1981). We consider and compare the appearance,
sound, connotation and commercial impression of the marks
in their entireties. 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 dissimilar as a
matter of law and that its marks “do not even have a word
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in common” with the registered mark. We find that argument
to be unpersuasive however, since the marks clearly share
the word “RIVER.” The difference of a space after the word
“RIVER” in applicant’s marks and the addition of a plural
“s” does not significantly affect the sight, sound, or
commercial impression of the marks.
Meanwhile, descriptive and disclaimed matter is
generally viewed as a less dominant or significant feature
of a mark. In re National Data Corp., 224 USPQ 749, 750
(Fed. Cir. 1985)(“Regarding descriptive terms, this court
has noted that the ‘descriptive component of a mark may be
given little weight in reaching a conclusion on the
likelihood of confusion’”). Accordingly, we find that the
addition of the descriptive and disclaimed word
“COLLECTION” to the overlapping word “RIVER(S)” does not
create a sufficiently distinct commercial impression to
obviate a likelihood of confusion between the marks on the
same or highly related plumbing fixtures. See In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004)
(“GASPAR’S ALE” and “JOSE GASPAR GOLD”); Lilly Pulitzer,
Inc. v. Lilly Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA
1967)(“THE LILLY” and “LILLI ANN”); In re U.S. Shoe Corp.,
229 USPQ 707(TTAB 1985)(“CAREER IMAGE” AND “CREST CAREER
IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985)(“ACCUTUNE”
and “RICHARD PETTY’S ACCU TUNE”). Similarly, regarding
applicant’s RIVERS COLLECTION (and design) mark, it is
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well-established that where a mark consists of words as
well as a design, the words are generally considered
dominant. See CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 200 (Fed. Cir. 1983) (“in a composite mark comprising
design and words, the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it
is affixed”). That is certainly true here, where the
design is not especially elaborate or unusual.
In comparing the marks, we are mindful that the test
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 so that confusion as to the
source of the goods offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991), aff'd unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975).
The registered mark “RIVERBATH” is suggestive of the
movement of water in registrant’s whirlpool baths. The
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included word “bath” is simply a generic term for all types
of “baths,” including registrant’s “whirlpool baths,” and
is not likely to be relied upon by consumers to distinguish
the marks. Applicant argues that therefore “RIVERBATH” is
a weak mark entitled to scant protection. In support of
its argument, applicant submitted evidence of four
registrations that contain the word “RIVER.” However, only
three of the four identify bath-related products. We do
not find that to be probative of the weakness of the
registered mark. Furthermore, even a weak mark is entitled
to protection against registration of confusingly similar
marks. See Giant Food Inc. v. Roos and Mastacco, Inc., 218
USPQ 521 (TTAB 1982).
In view of the foregoing, we find that the first du
Pont factor weighs in favor of finding a likelihood of
consumer confusion.
Balancing The Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the goods
are identical in part and otherwise highly related; they
are likely to be sold through the same channels; and the
marks are similar. It is well-established that any doubts
as to likelihood of confusion are to be resolved in favor
of the registrant. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly, we
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find a likelihood of confusion between applicant’s marks,
and the cited registration.
Decision: The refusals to register are affirmed.