Houston Shutters, LLC

Trademark Trial and Appeal Board

Oct 30, 2008

No. 78896946 (T.T.A.B. Oct. 30, 2008)

Hearing: 10/14/08 Mailed: 10/30/08

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Houston Shutters, LLC
________

Serial No. 78896946
_______

Clarence E. Eriksen for Houston Shutters, LLC.

Nakia Henry, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Mermelstein and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Houston Shutters, LLC filed an application to register
the mark ROCKWOOD for “interior window coverings, namely
shutters and blinds” (in International Class 21).1
The trademark examining attorney refused registration
under Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark ROCK WOOD for

1 Application Serial No. 78896946, filed May 31, 2006, alleging
first use anywhere and first use in commerce on January 1, 2004.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78896946
2
“furniture, namely, kitchen furniture, bedroom furniture,
living room furniture, lawn furniture and outdoor
furniture” (in International Class 20); “wholesale
distributorships featuring furniture, namely, kitchen
furniture, bedroom furniture, living room furniture, lawn
furniture and outdoor furniture” (in International Class
35); and “industrial design of furniture” (in International
Class 42),2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs, and an
oral hearing was held before the Board.3
The examining attorney maintains that the marks are
virtually identical, a factor that weighs heavily in favor
of finding a likelihood of confusion. With respect to the
similarities between applicant’s goods and registrant’s
goods and/or services, the examining attorney states that
furniture and interior window coverings are sold in similar
trade channels. In support of the refusal, the examining
attorney submitted an excerpt from a single third-party
website showing that the retailer sells both furniture and

2 Registration No. 2769236, issued September 30, 2003.
3 After applicant filed its appeal brief and the application file
was forwarded to the examining attorney for her brief, the
examining attorney filed a request for remand to “clarify” the
final refusal and to submit new evidence. The Board, in an order
dated May 5, 2008, denied the request for remand.
Serial No. 78896946
3
window treatments. The examining attorney also relied upon
the statement of applicant’s president that, according to
the examining attorney, “admits that furniture stores do
carry window coverings, such as blinds and shutters.”
(Appeal Brief, p. 6).
Applicant concedes that the involved marks are
“similar,” but contends that the goods and/or services are
different. In support thereof, applicant points to its
president’s declaration wherein she states that furniture
stores only “rarely” sell window coverings. In this
connection, applicant highlights the fact that the
examining attorney produced only one third-party website
showing that a single furniture store also sells window
treatments. Thus, applicant argues, the examining
attorney’s evidence falls short in showing that applicant’s
goods and registrant’s goods and/or services travel in the
same trade channels. Applicant also contends that the
absence of actual confusion shows that there is no
likelihood of confusion between the marks at issue.
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
Serial No. 78896946
4
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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 (CCPA 1976).
Turning first to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
marks ROCKWOOD and ROCK WOOD are identical in sound and
meaning, and essentially identical in appearance and
commercial impression. Applicant, with good reason, does
not argue to the contrary. The space between ROCK and WOOD
in registrant’s mark certainly is insufficient to
distinguish the marks in any significant manner. The
virtual identity between these arbitrary marks weighs in
favor of a finding of likelihood of confusion.
Applicant and the examining attorney have focused
their attention on the du Pont factor of the
similarity/dissimilarity between applicant’s window
Serial No. 78896946
5
coverings and registrant’s furniture and furniture-related
services. Insofar as the goods and/or services are
concerned, it is not necessary that the respective goods
and/or services be competitive, or even that they move in
the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods and/or services are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the goods and/or services 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 originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The entirety of the record bearing on this factor
comprises excerpts from a single third-party furniture
store website,4 and the declaration of applicant’s
president.

4 In its reply brief, applicant states the following: “The
present website of Carls Furniture is different from the 2006
website initially relied upon by the Examining Attorney in the
November 2006 Office Action.” The pages from the current website
accompany the reply brief. In reaching our decision, we have
considered the two pages from the November 2006 website submitted
by the examining attorney, and the two pages from the current
website submitted by applicant. Suffice it to say that even if
the current website pages were excluded, we would reach the same
result in this appeal.
Serial No. 78896946
6
With respect to applicant’s goods vis-à-vis
registrant’s services, there is no evidence whatsoever
regarding the similarity between applicant’s window
coverings and registrant’s wholesale distributorship
services featuring furniture in Class 35 and industrial
design of furniture services in Class 42.
The meager evidence relates to only the similarity
between applicant’s window coverings and registrant’s
furniture. The website indicates that Carls furniture
store employs a “dedicated Drapery Design Professional.”
In this connection Carls sells window treatments and the
website states that it is a HunterDouglas (window fashions)
priority dealer.
The examining attorney’s statement (Brief, p. 5) that
“multiple retail stores sell furniture, shutters, and
blinds” [emphasis added] is belied by the fact that the
record includes only one example showing a common trade
channel.5 Jennifer Baur, applicant’s president, states that
she has been in the shutters and blinds business for nine
years. Ms. Baur also asserts, in pertinent part, the
following:

5 Likewise, the examining statements relating to what “commonly”
occurs in the furniture industry in “the North Carolina area” is
not supported by any evidence. (Appeal Brief, pp. 6-7).
Serial No. 78896946
7
Based on my experience, furniture
stores rarely carry window coverings
such as blinds and shutters.
Occasionally, a furniture store may
venture into the design arena and carry
window coverings, but this [is] the
exception and not the rule. When a
furniture store enters the design arena
to provide window coverings the store
will usually engage a third party, such
as Houston Shutters, to provide such
services. Based on my experience,
furniture and window coverings do not
travel in the same channels of trade,
except as indicated.

In considering Ms. Baur’s declaration, we pay particular
attention to her statements that “furniture stores rarely
carry window coverings such as blinds and shutters” and
“[o]casionally, a furniture store may venture into the
design arena and carry window coverings, but this [is] the
exception and not the rule.” [emphasis added]. The fact
that the examining attorney’s evidence consists entirely of
a single website, if anything, corroborates the accuracy of
Ms. Baur’s statements to the effect that the conjoint sale
of furniture and window coverings by the same entity is not
the industry practice. Inasmuch as the record indicates
that the conjoint sale of furniture and window coverings by
the same furniture store is the exception rather than the
rule, consumers would not be accustomed to seeing the
respective goods offered by the same source.
Serial No. 78896946
8
We find that the record falls short of establishing
that applicant’s window coverings and registrant’s
furniture are sufficiently similar that consumers would be
likely to think that they originated from the same source,
even when sold under virtually identical marks.
Although we have considered Ms. Baur’s statement that
there have not been any instances of actual confusion
between applicant’s mark and any ROCKWOOD mark for
furniture, we have given this du Pont factor little weight
in our determination. As pointed out by the examining
attorney, it is not necessary to show actual confusion to
establish a case of likelihood of confusion. Further,
applicant did not provide any evidence relating to the
extent of its use of its mark and, therefore, we are unable
to accurately gauge the opportunity for actual confusion to
have occurred in the marketplace. See In re Kangaroos
U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Decision: The refusal to register is reversed.