Franco Mfg. Co., Inc.

Trademark Trial and Appeal Board

Jan 31, 2001

No. 75558518 (T.T.A.B. Jan. 31, 2001)

UNI
Anthony F. L
Franco Manuf
James R. Cad
(Janice O’Le
Before Cisse
Judges.
Opinion by C
On Sept
referenced a
on the Princ
towels, hand
The applicat
possesses a
goods in com
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.Paper No. 9
1/31/01 RFC
TED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Franco Manufacturing Co., Inc.
________
Serial No. 75/558,518
_______
oCicero of Amster, Rothstein & Ebenstein for
acturing Co., Inc.
y, Trademark Examining Attorney, Law Office 112
ar, Managing Attorney).
_______
l, Quinn and Chapman, Administrative Trademark
issel, Administrative Trademark Judge:
ember 24, 1996, applicant filed the above-
pplication to register the mark “COMPLIMENTS”
ipal Register for “bath products, namely, bath
towels and fingertip towels,” in Class 24.
ion is based on applicant’s assertion that it
bona fide intention to use the mark on these
merce.
Ser. No. 75/558,518
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that if
applicant’s mark were to be used on the products identified
in the application, it would so resemble the mark
“COMPLIMENTS,” which is registered1 for “retail store
services dealing with home and office furnishings and
accessories and personal accessories,” in Class 42, that
confusion would be likely.
Applicant responded to the refusal of registration
with arguments that confusion would not be likely.
Applicant claimed that it has priority based on its prior
use and federal registrations of the mark “KITCHEN
COMPLIMENTS” for, inter alia, kitchen towels, dish cloths,
fabric place mats and plastic place mats. (Reg. Nos.
1,098,841 and 1,100,871, both issued in August of 1978 and
both timely renewed). Additionally, applicant argued that
confusion would not be likely because the goods set forth
in the application and services recited in the registration
are different.
The Examining Attorney was not persuaded by
applicant’s arguments, and the refusal to register was made
1 Reg. No. 1,640, 023, which issued on April 2, 1991 to Port
Enterprises, Inc. on the Principal Register. A combined
affidavit under Sections 8 and 15 was accepted and acknowledged.
Ser. No. 75/558,518
3
final with the second Office Action. Submitted in support
of the refusal to register were copies of a number of
third-party registrations wherein the goods and services
specified include both towels and retail store services in
the field of home furnishings and accessories. Other
enclosed registrations demonstrate that towels are products
within the category of “home furnishings.”
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs, but
applicant did not request an oral hearing before the Board.
Our primary reviewing court set out the principal
factors to be considered in resolving the issue of
likelihood of confusion in In re E. I. duPont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Chief among
these factors are the similarity of the marks as to
appearance, sound, meaning and commercial impression, and
the similarity of the goods or services in question. If
the marks are identical, the relationship between the goods
are services sold under them need not be as close to
support a finding that confusion is likely as would be the
case if there were differences between the marks. Amcor,
Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).
When the marks are the same, it is only necessary to show
that there is a viable relationship between the goods and
Ser. No. 75/558,518
4
services in order to support holding that confusion is
likely. In re Concordia International Forwarding Corp.,
222 USPQ 355 (PTA be 1983). Any doubt as to the existence
of a likelihood of confusion must be resolved in favor of
the registrant. Lone Star Manufacturing Co. v Bill
Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (CCPA 1974).
In the case now before us, the marks in question are
the same, so the Examining Attorney needed only to
establish that the goods set forth in the application are
related to the services specified in the cited registration
in such a way that use of these identical marks in
connection with both would be mistakenly assumed to
indicate that one source is responsible for both.
That burden has clearly been met. The third-party
registration information made of record by the Examining
Attorney demonstrates that consumers would have a basis for
assuming that the use of the same mark in connection with
retail store services in the field of home furnishings and
accessories, on one hand, and bath products, namely bath
towels, and towels and fingertip towels, on the other,
indicates a common source for both. In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993). The Examining
Attorney has established that the goods set forth in the
application are of a type that would be offered as part of
Ser. No. 75/558,518
5
the retail store services specified in the cited
registration. Clearly, the use of the identical mark in
connection with both would be likely to cause confusion as
to the source of the goods and services.
Applicant’s argument with respect to its prior use and
registrations of “KITCHEN COMPLIMENTS” for different, but
arguably related, products is not well taken. As noted
above, applicant claims that the cited registration is not
a proper basis for refusal of registration because
applicant has established priority over the registrant
based on applicant’s “KITCHEN COMPLIMENTS” registrations
for place mats and kitchen towels. As the Examining
Attorney points out, however, this argument is
inappropriate for several reasons. To begin with, in view
of the valid and subsisting registration cited against
applicant, priority is simply not an issue. Moreover, the
prior registrations asserted by applicant are not for the
same mark which it seeks to register here, nor are the
goods listed in the registrations the same as the goods
specified in the instant application. Even if the goods
were the same as those in applicant’s prior registrations,
this argument with regard to priority would still not be
available to applicant. If applicant believed that it
possesses priority and that the cited registration should
Ser. No. 75/558,518
6
have been denied based likelihood of confusion with the
mark in applicant’s registrations, applicant could have
filed a petition to cancel the cited registration, but the
collateral attack applicant makes by asserting priority
here in this ex parte appeal is not permitted. In re Dixie
Restaurants, 105 F.3rd 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). The cited registration is entitled to the
presumption of validity assured by Section 7 of the Lanham
Act.
In summary, because the marks are identical and the
goods specified in the application are of the type that
would be provided as part of the retail store services set
forth in the cited registration, and because this record
shows that other entities both render retail store services
like those of the registrant and sell goods like those of
the applicant under the same marks, confusion would be
likely with the registered mark for retail home furnishing
store services if applicant were to use the same mark in
connection with the bath products listed in the
application.
Decision: The refusal to register is affirmed.
Ser. No. 75/558,518
7
Ser. No. 75/558,518
8