Hunter FanCompany

Trademark Trial and Appeal Board

May 15, 2006

No. 78196829 (T.T.A.B. May. 15, 2006)

Mailed: May 15, 2006
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hunter Fan Company
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Serial No. 78196829
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Valerie Walsh Johnson of Baker, Donelson, Bearman,
Caldwell & Berkowitz for Hunter Fan Company.

Karen K. Bush, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Hohein, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Hunter Fan Company has filed an application to
register the mark WEST INDIES COLLECTION in standard
character form for “ceiling fans, electric light fixtures
and portable lamps.”1

1 Serial No. 78196829, filed on December 20, 2002, which alleges
a bona fide intention to use the mark in commerce. The word
COLLECTION is disclaimed apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78196829
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that applicant’s mark, if used on applicant’s goods,
so resembles the previously registered mark AMERICAN
SIGNATURE WEST INDIES COLLECTION for “furniture,”2 as to be
likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal
to register.
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. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
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). See also, In

2 Registration No. 2,632,779, issued October 8, 2002. The words
AMERICAN and WEST INDIES COLLECTION are disclaimed apart from the
mark as shown.
Ser No. 78196829
3
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Turning first to a consideration of the respective
goods, the examining attorney maintains that applicant’s
ceiling fans, electric light fixtures, and portable lamps
and registrant’s furniture are related goods. The
examining attorney argues that the goods are complementary
in nature and are marketed in the same types of stores. In
support of her position that the goods are related, the
examining attorney has made of record twenty “hits” from
the “Yahoo” database that show on-line retailers who sell
furniture, ceiling fans, and lamps. Further, the examining
attorney has made of record copies of use-based third-party
registrations which she maintains show that “numerous
entities offer the respective products under the same
trademark. This evidences that purchasers are accustomed
to viewing the same trademark on the identified goods.”
(Examining attorney’s 2/23/04 office action at unnumbered
2).
Applicant, on the other hand, argues that the
respective goods are not related and are very different in
nature. Applicant maintains that it is not enough that the
kinds of goods involved herein may be sold by the same on-
line retailers because such retailers often market a wide
Ser No. 78196829
4
variety of products from unrelated sources. Finally,
applicant argues that purchasers of furniture, ceiling
fans, electric light fixtures and portable lamps are
sophisticated, and that these kinds of goods are purchased
only after careful consideration.
It is well settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used or intended to be used therewith,
to a mistaken belief that they originate from or are in
some way associated with the same producer or that there is
an association between the producers of each parties’ goods
Ser No. 78196829
5
or services. In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991), and cases cited therein.
To establish a relationship between applicant’s and
registrant’s goods, the examining attorney has submitted
copies of nine use-based third-party registrations for
marks that cover furniture, on the one hand, and ceiling
fans, electric light fixtures, and/or lamps, on the other
hand. Although third-party registrations “are not evidence
that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, [they] may
have some probative value to the extent that they may serve
to suggest that such good or services are the type which
may emanate from a single source.” See In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993. Moreover, the involved goods would be bought by the
same classes of purchasers (e.g., interior designers and
home owners), and at the very least, furniture and portable
lamps would be offered in some of the same traditional
channels of trade (e.g. home furnishing and decorating
stores). Further, we agree with the examining attorney
that the goods are complementary in that an interior
designer or home owner, for example, may coordinate ceiling
fans, electric light fixtures, and/or portable lamps with a
Ser No. 78196829
6
home’s furniture. Under the facts of this case, we
conclude that furniture, on the one hand, and ceiling fans,
electric light fixtures and portable lamps, on the other
hand, are related goods. We note that the Board has
previously found that furniture and electric light fixtures
are related goods. See Drexel Enterprises, Inc. v.
Prescolite Manufacturing Corporation, 148 USPQ 92 (TTAB
1965) [Applicant’s use of the mark THE HERITAGE COLLECTION
for electric light fixtures is likely to cause confusion
with registrant’s mark HERITAGE for furniture].
Applicant asserts that purchasers of both applicant’s
and registrant’s types of goods are sophisticated and will
distinguish source based on the differences between the
involved marks and the goods offered there under. The
involved identifications of goods, however, do not include
any limitations. Accordingly, we must presume that the
identifications encompass all goods of the type described
therein and that the identified goods move in all channels
of trade and to all classes of purchasers that would be
normal for such goods. In re Elbaum, 211 USPQ 639, (TTAB
1981). We must presume, therefore, that the goods are
offered to not only sophisticated purchasers such as
interior designers, but also ordinary consumers. In other
words, the types of goods involved herein are presumed to
Ser No. 78196829
7
be offered to consumers who are not particularly
sophisticated and may be much less capable of
distinguishing between the sources of applicant’s and
registrant’s related goods if offered under similar marks.
In determining likelihood of confusion, it must be
remembered that, at least with respect to ordinary
consumers, due to the normal fallibility of human memory
over time, these consumers retain a general rather than a
specific impression of trademarks encountered in the
marketplace. In re Research and Trading Corp., 793 F.2d
1276, 230 USPQ 49 (Fed. Cir. 1986). Further, to the extent
that some purchasers may be knowledgeable with respect to
home décor and lighting products, this does not necessarily
mean that they are immune from source confusion. In re
Decombe, 9 USPQ2d 1812 (TTAB 1988). We find, therefore,
that if the respective goods were sold under the same or
similar marks, confusion as to source or sponsorship would
be likely to occur.
Considering then the marks, the examining attorney
argues that applicant’s mark WEST INDIES COLLECTION and
registrant’s mark AMERICAN SIGNATURE WEST INDIES COLLECTION
are very similar because both marks include WEST INDIES
COLLECTION. The examining attorney argues that applicant
Ser No. 78196829
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has appropriated registrant’s mark and merely deleted
registrant’s house mark – AMERICAN SIGNATURE.
Applicant, on the other hand, argues that
“[r]egistrant’s inclusion of its AMERICAN SIGNATURE house
mark in its AMERICAN SIGNATURE WEST INDIES COLLECTION mark
creates a sufficiently distinct overall impression that is
readily distinguished from applicant’s WEST INDIES
COLLECTION.” (Applicant’s brief, at 4).
With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar, in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, 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 commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
Ser No. 78196829
9
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, applicant seeks to register WEST INDIES
COLLECTION, while the cited mark is AMERICAN SIGNATURE WEST
INDIES COLLECTION. Obviously, because applicant’s mark
consists of the identical phrase WEST INDIES COLLECTION in
the cited mark, there are consequent similarities in sound,
appearance, connotation and commercial impression.
Although applicant argues that the inclusion of
registrant’s house mark AMERICAN SIGNATURE in the cited
mark creates a different commercial impression from
applicant’s mark, each of the marks, due to the shared
phrase WEST INDIES COLLECTION, connotes a similar theme of
a collection of West Indies-style items. The additional
words AMERICAN SIGNATURE in the registered mark do not
change that meaning or the commercial impression of the
marks. One who is familiar with AMERICAN SIGNATURE WEST
INDIES COLLECTION for furniture is likely to view WEST
INDIES COLLECTION for ceiling fans, electric light
fixtures, and portable lamps as a mark used to identity a
line of products emanating from the same source as the
AMERICAN SIGNATURE WEST INDIES COLLECTION product. Even
Ser No. 78196829
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assuming that the phrase WEST INDIES COLLECTION is
suggestive or geographically descriptive or geographically
misdescriptive, the respective marks have essentially the
same connotation, and when used on related goods, the marks
are likely to cause confusion among purchasers.
Accordingly, we conclude that applicant’s mark WEST
INDIES COLLECTION for ceiling fans, electric light fixtures
and portable lamps is likely to cause confusion with the
cited mark AMERICAN SIGNATURE WEST INDIES COLLECTION for
furniture.
To the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, we
resolve that doubt, as we must, in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal to register under Section 2(d)
is affirmed.