Fourstar Group Inc.

Trademark Trial and Appeal Board

Jan 19, 2018

No. 87104130 (T.T.A.B. Jan. 19, 2018)

Mailed: January 19, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Fourstar Group Inc.
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Serial No. 87104130
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Robert Salter for Fourstar Group Inc.
Melissa S. Winter, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Taylor, Lykos, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On July 14, 2016, Applicant Fourstar Group Inc. applied to register on the
Principal Register the mark DESIGN CONCEPTS, in standard characters, for
“furniture” in International Class 20.1
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied

1 Application Serial No. 87104130 was filed on July 14, 2016 pursuant to Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based on Applicant’s allegation of first use as of June 23,
2016 and use in commerce as of June 27, 2016.
This Opinion Is Not a
Precedent of the TTAB
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to the goods identified in the application, so resembles the mark DESIGN
CONCEPTS, in typeset form and with “design” disclaimed, previously registered on
the Principal Register for “carpet” in International Class 27,2 as to be likely to cause
confusion, to cause mistake, or to deceive.
In an effort to circumvent the refusal, on November 22, 2016, Applicant amended
the identification of goods to “furniture, excluding carpet.” Applicant also satisfied
the requirement to disclaim “design” from the mark as a whole. The Examining
Attorney maintained and made final the refusal nonetheless. Applicant then
requested reconsideration and appealed to this Board. After reconsideration was
denied, the appeal resumed and is fully briefed. We affirm the refusal to register.
I. Procedural Issues
We resolve two procedural issues before turning to the merits of the appeal.
A. Evidence Submitted with Applicant’s Appeal Brief
We first address the Examining Attorney’s objection to evidence Applicant
submitted for the first time with its appeal brief. See 9 TTABVUE 3-4. As the
Examining Attorney correctly argues, evidence submitted with an appeal brief is
untimely. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d) (“The record in the
application should be complete prior to the filing of an appeal.”); see also, e.g., In re
Jimmy Moore LLC, 119 USPQ2d 1764, 1767 (TTAB 2016). We sustain the objection
and have given no consideration to the exhibits attached to Applicant’s appeal brief.

2 Registration No. 1826442, issued March 15, 1994; renewed. Before November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i) (Oct. 2017).
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B. Applicant’s Request to Amend
In its reply brief, Applicant for the first time proposed to amend its identification
of goods from “furniture, excluding carpet” to “ready to assemble snap fit outdoor
furniture, excluding carpet, sold in discount department stores and drug stores for
the average purchaser.” Reply Brief, 10 TTABVUE 4. Applicant essentially requests
a remand to consider the proposed amendment to the identification of goods.
A request for remand should be filed by a separate paper, appropriately captioned
“Request for Remand,” rather than by a request buried within a brief. In re
HerbalScience Group LLC, 96 USPQ2d 1321, 1323 (TTAB 2010). The Board does not
read appeal briefs prior to final decision, and therefore a request that is included
within a brief normally will not be noted.
More importantly, a request for remand to consider an amendment must be
supported by a showing of good cause, and remand is a matter of discretion with the
Board. Whether good cause will be found will depend, in part, on the stage of the
appeal at the time the amendment is filed and the reason given for the delay. The
proposed amendment could not have been filed any later in this appeal and, in any
event, no reason for the delay was given. Applicant has failed to show good cause, and
the proposed amendment will not be considered. See Trademark Rule 2.142(g), 37
C.F.R. § 2.142(g); In re Thomas White Int’l Ltd., 106 USPQ2d 1158, 1160 n.2 (TTAB
2013); In re Major League Umpires, 60 USPQ2d 1059, 1060 (TTAB 2001); see also
TBMP §§ 1205.01, 1209.04 (June 2017).
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II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of 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 Co., 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 or services. See Federated Foods, Inc. v. Fort Howard Paper 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.”).
A. Similarity of the Marks
We first address the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.’” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567).
Applicant’s mark and the cited mark both consist entirely of the phrase
DESIGN CONCEPTS, in standard characters and with “design” disclaimed. To state
the obvious, the marks are identical. Applicant argues that the cited mark is weak –
see, e.g., Reply Brief, 10 TTABVUE 7 – but the cited registration is presumed valid
pursuant to Trademark Act Section 7(b), 15 U.S.C. § 1057(b). While strong marks are
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entitled to a broader scope of protection than weak ones, it has been emphasized often
that even weak marks are entitled to protection from registration by a subsequent
user of a confusingly similar mark for closely related goods. See King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974) (stating
that likelihood of confusion “is to be avoided, as much between ‘weak’ marks as
between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark”); In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1246 (TTAB 2010). The first du Pont factor
thus weighs strongly in favor of a finding that confusion is likely.
B. Similarity of the Goods and Channels of Trade
We next consider the second and third du Pont factors, the similarity of the goods
and established, likely-to-continue trade channels. The test is not whether consumers
would be likely to confuse the goods, but rather whether they would be likely to be
confused as to their source. E.g., In re Anderson, 101 USPQ2d 1912, 1919 (TTAB
2012). Therefore, to support a finding of likelihood of confusion, it is not necessary
that the goods be identical or even competitive. It is sufficient that the goods are
related in some manner, or that the circumstances surrounding their marketing are
such that they would be encountered by the same persons in situations that would
give rise, because of the marks, to a mistaken belief that they originate from the same
source or that there is an association or connection between the sources of the goods.
In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009).
Where, as here, the involved marks are identical, the degree of similarity between
the goods required to support a finding that confusion is likely declines. In re Opus
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One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). It is necessary only that there be a
viable relationship between the two to support a finding of likelihood of confusion. In
re Iolo Techs. LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).
The Examining Attorney submitted extensive evidence that “carpet” and
“furniture, excluding carpet” are goods of a kind that may emanate from a single
source under the same mark. First, the Examining Attorney submitted 18 existing,
use-based registrations for both furniture and carpet or carpets.3 Second, the record
includes examples of furniture and carpet offered under the same marks through the
same websites. This includes:
• Byesville Furniture & Carpet;4
• EMW Carpets and Furniture;5
• Stark;6 and
• Menards.7
The Examining Attorney also made of record several additional examples of furniture
and rugs sold under the same marks through the same websites,8 as well as an entry
from the Macmillan Dictionary defining “rug” as “a small carpet that covers part of a
floor.”9 This evidence establishes that furniture and carpet are related goods traveling
through the same channels of trade.

3 Dec. 19, 2016 Final Office Action at TSDR 2-55.
4 Denial of Request for Reconsideration, 5 TTABVUE 18-19 (byesvillefurniture.com).
5 Id., 5 TTABVUE 20-23 (emwcarpets.com).
6 Dec. 19, 2016 Final Office Action at TSDR 70-71 (starkcarpet.com).
7 Id. at TSDR 56-57 (menards.com).
8 Id. at TSDR 58-67; Oct. 28, 2016 Office Action at TSDR 3-21, 23-24.
9 Dec. 19, 2016 Final Office Action at TSDR 68 (macmillandictionary.com/dictionary/
american/rug).
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Applicant argues that the purchasers of the respective goods are different because
its goods “are sold to consumers who wish to save money on their furniture purchases
as they assemble the product by themselves and do not need to acquire delivery
services for the furniture.” Appeal Brief, 7 TTABVUE 8. Applicant’s argument is
unavailing because its goods are broadly identified as “furniture, excluding carpet”
and we must make our determination regarding the similarity between the goods
based on the goods as they are identified in the application and cited registration,
respectively, not on any extrinsic evidence of actual use. In re i.am.symbolic, LLC,
866 F.3d 1315, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017); Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). In
other words, an applicant may not restrict the scope of the goods covered in its
application or the cited registration by argument or extrinsic evidence. In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); see also Thor Tech, 90
USPQ2d at 1638 (“We have no authority to read any restrictions or limitations into
the registrant’s description of goods.”).
Based on the record evidence as a whole, we find that the goods identified in the
application and cited registration are related and travel through the same channels
of trade. In our likelihood of confusion analysis, these findings under the second and
third du Pont factors support a finding that confusion is likely.
C. Other du Pont Factors
Applicant’s arguments pertain to two additional du Pont factors. First, Applicant
contends that Registrant’s customers are more sophisticated than consumers of its
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ready-to-assemble furniture, which is less expensive than carpet. Appeal Brief, 7
TTABVUE 9. This argument concerns the fourth du Pont factor, the “conditions
under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful,
sophisticated purchasing.” Id., 177 USPQ at 567.
As discussed supra, our determination is based on the goods as identified in the
application and cited registration. Because there are no limitations in the
identification of goods in either the application or the cited registration, we must
presume that the identified goods encompass all goods of the nature and type
described therein. See, e.g., Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.,
719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); Mini Melts, Inc. v. Reckitt
Benckiser LLC, 118 USPQ2d 1464, 1471 (TTAB 2016). There is no basis for us to
conclude that all carpet is more expensive than furniture, or that all carpet buyers
are sophisticated. Precedent requires that we base our decision on the least
sophisticated potential purchasers. Stone Lion, 110 USPQ2d at 1163. Even assuming
that some carpet consumers are sophisticated, moreover, it is well-settled that careful
or sophisticated purchasers are not immune from source confusion, especially in cases
involving identical marks:
That the relevant class of buyers may exercise care does
not necessarily impose on that class the responsibility of
distinguishing between similar trademarks for similar
goods. “Human memories even of discriminating
purchasers . . . are not infallible.” Sophistication of buyers
and purchaser care are relevant considerations, but are not
controlling on this factual record.
In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
(citation omitted). For these reasons, we find the fourth du Pont factor to be neutral.
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Finally, Applicant argues that confusion is not likely because its mark and
Registrant’s have coexisted for 19 years without actual confusion. Appeal Brief, 7
TTABVUE 10. As the Examining Attorney points out, however, the use and
registration of the DESIGN CONCEPTS mark on which Applicant’s argument rests
is not for furniture but for tool kits.10 Because the goods are different, Applicant’s use
and registration of the mark for tool kits has little or no relevance to this appeal. In
the ex parte context, furthermore, a lack of evidence of actual confusion carries little
weight. Majestic Distilling, 65 USPQ2d at 1205; In re Integrated Embedded, 120
USPQ2d 1504, 1515 (TTAB 2016). We find the eighth du Pont factor, the length of
time during and conditions under which there has been concurrent use without
evidence of actual confusion, to be neutral, as well.
III. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, as they pertain to the relevant du Pont likelihood of
confusion factors. To the extent that any other du Pont factors for which no evidence
was presented by Applicant or the Examining Attorney may nonetheless be
applicable, we treat them as neutral.

10 Registration No. 2601433 for “Tool kits comprised of some or all of the following-- socket
adapter for nut driver set; 3-position ratchet driver (forward, lock and reverse); 9-piece allen
wrench set; 5-piece mini screwdriver bits; 5-piece SAE socket; 5-piece metric sockets; 5 torque
bits; 4 square bits; slotted screwdriver bit; phillips bits; pozidriver bit; 2-piece screwdriver
(slotted and phillips); 2-pocket clip handle precision claw; wire cutter insulated chip remover;
retracting claw parts retriever; wire stripper; needle-nose pliers; soldering wick; soldering
iron; penknife; tool storage and carry case with elasticized component sleeves and zippered
closure,” in International Class 8. Nov. 22, 2016 Response to Office Action at TSDR 38-39.
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We have found that Applicant’s mark is identical to the cited mark; the goods
identified in the subject application and cited registration are related and travel
through the same channels of trade; and the remaining du Pont factors are neutral.
We find that Applicant’s mark is likely to cause confusion with the mark in cited
Registration No. 1826442 when used in association with the goods identified in the
application.
Decision: The refusal to register Applicant’s mark is affirmed.