JELD-WEN, inc.

Trademark Trial and Appeal Board

May 2, 2008

No. 78773839 (T.T.A.B. May. 2, 2008)

Mailed:
May 2, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re JELD-WEN, inc.
________

Serial No. 78773839
_______

Charles G. Zug, Lucas V. Haugh and David A. Harlow of
Nelson, Mullins, Riley & Scarborough, L.L.P. for JELD-WEN,
inc.

Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Holtzman and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

JELD-WEN, inc. (applicant) has applied to register the
mark MISSION PRAIRIE in standard characters on the
Principal Register for “decorative glass panels sold as an
integral component of metal doors” in International Class
6.1 The Examining Attorney has finally refused registration

1 Application Serial No. 78773839, filed December 15, 2005, based
on a statement of a bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b).

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78773839
2
on two distinct grounds. First, the Examining Attorney has
finally refused registration on the ground that the mark
merely describes the goods under Trademark Act Section
2(e)(1), 15 U.S.C. § 1052(e)(1). In addition, the
Examining Attorney has finally refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with Registration No. 2612141 for
the mark MISSION in standard characters for goods
identified as “non-metal windows” in International Class
19. The cited registration issued on August 27, 2002, and
is active.
Applicant has appealed both refusals. Applicant and
the Examining Attorney have filed briefs. We affirm as to
both refusals.
Before addressing the refusals themselves, we will
first discuss the relationship between the refusals in view
of applicant’s argument that “… the Cited Mark should be
considered a weak mark, given the descriptive nature of the
term ‘mission’ in relation to non-metal windows.” Reply
Brief at 3. For purposes of our consideration of the
refusal under Trademark Act Section 2(d), we must assume
that the cited mark is entitled to the presumption of
validity and other benefits under Trademark Act Section
7(b), 15 U.S.C. § 1057(b). Applicant’s implication that it
Serial No. 78773839
3
is not worthy of protection is an impermissible collateral
attack on the cited registration. In re Fiesta Palms LLC,
85 USPQ2d 1360, 1363 (TTAB 2007). On the other hand, for
purposes of our consideration of the refusal under
Trademark Act Section 2(e)(1), we must determine the issue
based on the record in this case without regard to actions
taken on other applications, including the application
which resulted in the issuance of the cited registration.
In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001).
THE DESCRIPTIVENESS REFUSAL
A term is merely descriptive of goods within the
meaning of Section 2(e)(1) if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic,
feature, function, purpose or use of the goods. See, e.g.,
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217-18 (CCPA 1978). A term need not immediately
convey an idea of each and every specific feature of the
applicant’s goods in order to be considered merely
descriptive; it is enough that the term describes one
significant attribute of the goods. See In re
H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982); and In re
MBAssociates, 180 USPQ 338, 339 (TTAB 1973).
Serial No. 78773839
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Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods identified in
the application, and the possible significance that the
term would have to the average purchaser of the goods. In
re Polo International Inc., 51 USPQ2d 1061, 1062 (TTAB
1999); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
When two or more merely descriptive terms are
combined, we must then determine whether the combination of
terms evokes a new and unique commercial impression. If
each component retains its merely descriptive significance
in relation to the goods, then the resulting combination is
also merely descriptive. See, e.g., In re Tower Tech,
Inc., 64 USPQ2d 1314, 1317 (TTAB 2002) (SMARTTOWER held
merely descriptive of commercial and industrial cooling
towers).
First, we will consider whether each of the individual
terms, MISSION and PRAIRIE, is merely descriptive. Then,
because we have determined that each is merely descriptive,
we will consider whether the MISSION PRAIRIE mark, viewed
as a whole, is merely descriptive as well.
MISSION
With regard to MISSION, the Examining Attorney argues
that MISSION describes an architectural style which would,
Serial No. 78773839
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in turn, describe the style of the identified goods. The
Examining Attorney has provided excerpts of articles from
the NEXIS data base showing relevant descriptive uses of
MISSION, including: an article from The Post-Standard
(Syracuse NY), dated September 23, 2004, stating, “The
furniture has been purchased from Stickley, Audi & Co., and
the windows, also mission style, have been designed by John
Dobbs, a partner in the new shop, Freedom of Expresso.”; an
article from the Daily News of Los Angeles, dated February
29, 2004, stating, “In addition to mission-style arched
windows, there are arched tunnels and hallways, because the
inn was literally hewn into the side of a mountain…”; and
an article from the Star Gazette (Elmira NY), dated October
19, 2003, stating, “The contractor removed a Mission-style
window from the rear wall of the living room and relocated
it to the Salon….” The Examining Attorney has also
provided a description of MISSION-style architecture from
about.com. It states:
1890-1920 Spanish Mission House Style

Historic Mission churches built by Spanish
colonists inspired the turn of the century house
style known as Mission, Spanish Mission or
California Mission.

Spanish Mission style houses have stucco
walls, arches, and other details inspired by the
Spanish mission churches of colonial America.

Serial No. 78773839
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Spanish Mission Style houses have many of
these features:

• Smooth stucco siding
• Roof parapets
• Large square pillars
• Twisted columns
• Arcaded entry porch
• Round or quatrefoil window
• Red tile roof
…
By the 1920s architects were combining
Mission styling with features from other
movements. Mission houses often have details
from these popular styles:

• Prairie
• Craftsman
• Pueblo.

We have also reviewed and take judicial notice of the
Dictionary of Architecture and Construction (Third Edition
2002).2 The definition of “Mission architecture” is
generally consistent with the description from about.com.
Most notable for our purposes is the description of
additional features of Mission architecture, including
“grilles covering windows facing the street; a massive wood
door at the main entrance, sometimes heavily carved or
paneled, often set in an elaborate sculptured portal.”

2 The Board may take judicial notice of dictionaries and
encyclopedias. See, e.g., University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 78773839
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As we indicated above, applicant effectively concedes
that MISSION is merely descriptive here. In its main brief
applicant states, “Although Applicant agrees with the
Examining Attorney that the term ‘mission’ could, in some
cases be merely descriptive of a specific architectural or
furniture style, Applicant’s Mark, as a whole, is not
merely descriptive of applicant’s goods….” Applicant’s
Brief at 3. Also, as we noted, applicant states, “In
addition, the Cited Mark should be considered a weak mark,
given the descriptive nature of the term ‘mission’ in
relation to non-metal windows.” Reply Brief at 3.
Applicant offers no argument or evidence whatsoever to
counter the Examining Attorney’s determination that MISSION
is merely descriptive of the goods identified in the
application.
The evidence in this case establishes that MISSION
describes an architectural style, including architectural
elements, such as windows, doors, and doors with decorative
glass panels.
Furthermore, because the goods are “decorative glass
panels sold as an integral component of metal doors” we
find the evidence specifically related to the significance
of MISSION as applied to windows, as well as doors, to be
highly relevant and probative of the significance of
Serial No. 78773839
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MISSION as applied to the goods. It is only logical that
the relevant public would view a term, such as MISSION,
which identifies an architectural style as having the same
descriptive significance as applied to either windows or
decorative glass panels in doors, or other features of
buildings in the style.
Accordingly, based on the evidence discussed above, we
conclude that MISSION is merely descriptive of “decorative
glass panels sold as an integral component of metal doors.”
PRAIRIE
With regard to PRAIRIE, the Examining Attorney argues,
once again, that PRAIRIE describes an architectural style
which would, in turn, describe the style of the identified
goods.
Among other evidence, the Examining Attorney has
provided brief excerpts of articles from the NEXIS
database, including: an article from The Atlanta Journal-
Constitution of February 5, 2006, entitled “New designs
convey look of by-gone days,” stating, “Homes in West
Village have prairie-style windows, doors, floors and
ceilings, deep front porches and extended rafters and are
priced from…”; an article from the Contra Costa Times of
January 15, 2006, entitled “A little piece of history in
your living room,” stating, “A Prairie-style casement
Serial No. 78773839
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window, redeemed from a Waterford House, is now a mullioned
glass door on a kitchen cabinet.”; and an article from the
South Bend Tribune, entitled “Building the Wright house,
famous architect’s style inspired couple,” stating, “Other
Wright-ish touches include Prairie-style windows which they
have left unadorned.” See first Office action at 3.
The evidence also includes a longer piece from
buffalo.edu captioned “Prairie Style of Architecture in
Buffalo, NY.” The piece states:
Prairie houses (1905-1915) may be viewed in a
larger context as one type of Arts and Craft
(“Craftsman”) style architecture.

The prairie house is one of the few indigenous
American styles. The name is key to the style.
The stereotypical image of the Midwestern prairie
is that of a wide, flat, horizontal, treeless
expanse that meets the horizon. To translate
that scene into architecture Wright designed a
horizontal building that was low to the ground.
Thus, the architecture features:

• Broad horizontal forms
• Low-pitched roof, usually hipped with deeply
projecting eaves
• Honest use of materials
• Organic ornament
• Two stories, with one-story wings or porches
• Eaves, cornice and facade emphasizing
horizontal lines, often with massive square
porch supports
• Bands of casement windows
• Large, low chimney that forms the hub of the
house
• Free-flowing interior plans
• Seamless transition between indoors and
outdoors
Serial No. 78773839
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• Both Prairie and Craftsman/Arts and Crafts
have widely overhanging eaves, but the
Prairie style does NOT have exposed rafter
tails, or decorative beams or braces under
the gables.

The piece also emphasizes the distinction/contrast between
the Prairie style and Victorian, both in terms of concept
and form. See attachment to first Office action.
On the other hand, applicant argues that its mark is
“arbitrary, or at least suggestive” because PRAIRIE “no
longer describes an architectural style in the minds of
consumers.” Applicant’s Brief at 3. As noted above,
applicant observes that MISSION “could, in some cases, be
descriptive of a specific architectural or furniture
style.” Id. The essence of applicant’s argument,
therefore, is that the “unitary phrase” MISSION PRAIRIE,
when considered as a whole, is not merely descriptive.
Applicant notes, in particular, that there is no evidence
of use of MISSION PRAIRIE, as such.
The principal support for applicant’s position is the
affidavit of Arthur Cogswell, a registered architect. The
affidavit first sets forth Mr. Cogswell’s credentials; we
have no reason to doubt Mr. Cogswell’s credentials and
experience in the field. Mr. Cogswell states:
4. At one time, the word Prairie was
descriptive of a particular school of
Serial No. 78773839
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architecture. Specifically, it was at one time
identified with the designs of Frank Lloyd
Wright, circa 1910-1920, of sophisticated single
family dwellings in the more exclusive suburbs of
Chicago, and thereafter with Wright’s related
work in Wisconsin in the immediately following
years.

5. However, with the passage of time, just
as Wright’s work evolved significantly to a wide
variety of styles, the term “Prairie” has come to
be applied by many individuals to all kinds of
styles and designs, to the point where it no
longer means much. The term “Prairie” has been
applied to works which belong to the “Arts &
Crafts” style in England. The “Arts & Crafts”
style was developed in roughly the same time
period as Wright’s work described above, but it
was independently developed, and is certainly a
different architectural style.

6. Likewise, some people use “Prairie”
interchangeably for what should be called
“Craftsman”. Others have characterized certain
elements of the “Mission” style of the American
Southwest as “Prairie”. You can even find people
calling elements of Victorian designs as
“Prairie.” Frank Lloyd Wright and Victorian are
about as antithetical as anything I can imagine
in architectural design…

7. … In my opinion as an architect, the
term “Prairie” does not describe particular
characteristics of a house design or door design
or window design.

Cogswell Affidavit at 2-3.
Mr. Cogswell does not refer to any publication he or
any other authority in the field has authored as the basis
for his statements. Nor does Mr. Cogswell refer to any
usage of PRAIRIE, like those the Examining Attorney
submitted, to support his statements.
Serial No. 78773839
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We have reviewed and take judicial notice of certain
dictionaries and other reference works, in particular,
works in the nature of encyclopedias, all in the field of
architecture.3 Those sources include: the Dictionary of
Architecture & Construction (Third Edition 2002),
referenced above; The Penguin Dictionary of Architecture
and Landscape Architecture (Fifth Edition 1998); The Visual
Dictionary of American Domestic Architecture (1994);
Dictionary of Building Preservation (1996); James Stevens
Curl, A Dictionary of Architecture (1999); John Milnes
Baker, American House Styles - A Concise Guide (1994); and
The Abrams Guide to American House Styles (2004).
Each of these sources includes a definition or
description of PRAIRIE-style architecture which is entirely
consistent with the description the Examining Attorney
furnished from buffalo.edu. We note the following, in
particular, from these references:
The Dictionary of Architecture and Construction
at pages 710-711 refers to the “Prairie style” as
a house with, among other features, “a two-story
height with wings and/or porches of one story,
integrated with its site to provide a low,
horizontal appearance … and often a series of
windows below the roof overhang, diamond shaped
window panes set in lead cames….”;

The Abrams Guide at page 284 identifies the
“Prairie style” as “Composed of strong horizontal

3 Id.
Serial No. 78773839
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planes that echoed the flat plains of Illinois …
[with] massive central chimneys, low-pitched
roofs with broad overhangs that seemed to hug the
ground. Long strips of windows and use of
windows at corners blur the distinction between
inside and outside.”;

The Dictionary of Building Preservation at 354
refers to “Prairie Style” as “… characterized by
low-pitched hip roofs with wide eaves, casement
ribbon windows and spaces that flow into one
another at right angles….”;

American House Styles at page 112 refers to
“PRAIRIE” style as houses with “… open planning;
shallow pitched roofs with broad sheltering
overhangs; bands of casement windows, often with
abstract patterns of stained glass; and a strong
horizontal emphasis….”;

The Visual Dictionary of American Domestic
Architecture at 202 states, “Wright’s work drew
on many sources, including Japanese design, the
contemporary English Arts and Crafts movement,
and the Victorian preoccupation with the
relationship of a building to its natural
environment. Interpreted in the context of the
flat Midwestern landscape—and Wright’s own very
personal design vocabulary—his Prairie style
evolved as a truly original American art form.”;

The Penguin Dictionary at page 454 defines
“Prairie School” as “Architectural movement in
American Midwest between 1900 and 1916, mainly in
residential building. Inspired initially by
Sullivan, it was given direction by Frank Lloyd
Wright. Horizontality, open plans and emphasis
on the natural qualities of materials, typified
Prairie School buildings. After the first decade
they became more varied and personal in
expression and less local in scope….”; and

A Dictionary of Architecture also identifies the
“Prairie School or style” with Wright and states
“It was characterized by low-pitched roofs with
wide overhanging eaves, a strongly emphasized
horizontality, large hearths separating parts of
Serial No. 78773839
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the living area, and use of traditional
materials.”

Based on the above-referenced evidence, including the
sources as to which we have taken judicial notice, we
conclude that PRAIRIE is merely descriptive of “decorative
glass panels sold as an integral component of metal doors.”
In re Ricci-Italian Silversmiths Inc., 16 USPQ2d 1727 (TTAB
1990) (ART DECO held generic for flatware); In re Bauhaus
Designs Canada Ltd., 12 USPQ2d 2001 (TTAB 1989) (BAUHAUS
held generic for furniture).
We first note that the application is based on
applicant’s statement of a bona fide intention to use the
mark in commerce. Nowhere has applicant stated that the
goods with which it intends to use the mark, in fact, would
not be in the PRAIRIE style.
We reject applicant’s argument that PRAIRIE has ceased
to have any meaning in the architectural field today. The
record includes numerous reference works, many of them of
recent vintage, which continue to identify PRAIRIE in a
consistent manner as a defined architectural style. The
excerpts from recent articles confirm the fact that the
public continues to refer to the PRAIRIE style.
The fact that the style may be varied or that it may
be derived from or share certain characteristics with other
Serial No. 78773839
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styles in no way detracts from the descriptive significance
of PRAIRIE as applied to the identified goods. In re
Ricci-Italian Silversmiths Inc., 16 USPQ2d 1727, 1729 (TTAB
1990) (“It is not necessary, as applicant suggests, that a
term must identify a specific pattern of flatware before it
can be considered generic… The evidence makes it clear
that the ART DECO style is characterized by certain
features such as geometric shapes, smooth lines and
streamlined forms, and that patterns of flatware containing
these features would be recognized as being ART DECO in
style.”). We are not persuaded by Mr. Cogswell’s
observation that PRAIRIE has lost all meaning when we
consider his conclusion in light of the other evidence.
Furthermore, here also, because the goods are
“decorative glass panels sold as an integral component of
metal doors” we find the evidence specifically related to
the significance of PRAIRIE as applied to windows, as well
as doors, to be highly relevant and probative of the
significance of PRAIRIE as applied to the goods. It is
only logical that the relevant public would view a term,
such as PRAIRIE, which identifies an architectural style as
having the same descriptive significance as applied to
either windows or decorative glass panels in doors, or
other features of buildings in the style.
Serial No. 78773839
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Applicant also appears to argue that PRAIRIE is not
merely descriptive here because definitions of “prairie” in
general dictionaries, such as Merriam-Webster’s Collegiate
Dictionary, do not include a definition related to an
architectural style. As the Examining Attorney correctly
notes, the mere absence of a dictionary entry for the
relevant term does not establish that the term is not
merely descriptive. In re Orleans Wines, Ltd., 196 USPQ
516 (TTAB 1977). In fact, in this case we have evidence in
numerous dictionaries in the relevant field which establish
the merely descriptive meaning where it counts. We reject
this argument.
Applicant appears to argue further that, because
“prairie” has meanings in other “fields,” it is not merely
descriptive here. The fact that the mark may have meanings
in another context is not relevant for purposes of our
determination. In re IP Carrier Consulting Group, 84
USPQ2d 1028, 1034 (TTAB 2007). We must determine whether
the mark is merely descriptive as applied to the goods
identified in the application. In re Bright-Crest, Ltd.,
204 USPQ at 593. Accordingly, we reject this argument.
Lastly, applicant has objected to the Examining
Attorney’s reliance on listings of results from searches in
the Google search engine as evidence that its mark is
Serial No. 78773839
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merely descriptive, citing In re Remacle, 66 USPQ2d 1222,
1223 n.2 (TTAB 2002). Thus far, we have not referred to
this evidence, nor need we rely on it. In Remacle, the
Board stated, “The Examining Attorney's print-out of the
results of an Internet search by the Yahoo search engine
are of little probative value, largely because insufficient
text is available to determine the nature of the
information and, thus, its relevance.” Id.
Likewise in this case, more complete examples from web
pages located by the search, rather than the listing of
results, would have far superior probative value, and we
strongly prefer evidence in that form. Nonetheless, here,
as the Board has done in Remacle and other cases, we
decline to exclude the evidence entirely, but rather, we
view it as having very limited probative value. However,
to the extent the listings of record have any probative
value, they do support the conclusions we have reached
based on the other evidence.
For example, one listing referencing amazon.com
states, “Art and Crafts Prairie Style Stained Glass Panel”;
another listing referencing tdstainedglass.com states,
“These “Prairie Style” stained glass windows were produced
for one of the spec home…”; another listing referencing
gommstudios.com states, “The other doors were in the
Serial No. 78773839
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Prairie Style of the same era…”; and still another listing
referencing ebay.com states, “Add a delightful touch to you
(sic) home’s decor with the colorful Prairie style panel
inspired by Frank Lloyd Wright….” See attachments to final
Office action. However, we hasten to reiterate that we
would reach the same conclusions in this case with or
without consideration of these listings.4
MISSION PRAIRIE
Finally, we consider whether MISSION PRAIRIE as a
whole is merely descriptive. We conclude that it is. We
find unpersuasive applicant’s argument that the combination
of MISSION and PRAIRIE is somehow distinctive and not
merely descriptive.
Again we find unpersuasive Mr. Cogswell’s statement
that the combination of MISSION with PRAIRIE merely “blurs”
the meaning of PRAIRIE. In fact, the evidence from
about.com states specifically that the MISSION and PRAIRIE
styles were often combined in the same house.
Likewise, we find Mr. Cogswell’s observation that he
has never previously encountered this combination of terms
unpersuasive. As the Examining Attorney correctly points
out, the mere fact that one is the first to use a
designation does not, by itself, render the designation

4 The same applies to the Google listings related to MISSION.
Serial No. 78773839
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distinctive. See In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983) (“The
fact that applicant may be the first and only user of this
highly descriptive or generic designation does not justify
registration if the term projects only merely descriptive
significance.”).
On this record, we find nothing in the combination of
these terms which is at all incongruous, unusual or
distinctive. See, e.g., In re Tower Tech, Inc., 64 USPQ2d
at 1317 (SMARTTOWER held merely descriptive of commercial
and industrial cooling towers). Even Mr. Cogswell states,
“Others have characterized certain elements of the
‘Mission’ style of the American Southwest as “Prairie.”
Cogswell Affidavit at 2-3. Furthermore, nowhere has
applicant specifically stated that the goods with which it
intends to use the mark will not incorporate elements of
the MISSION and PRAIRIE styles or be compatible with those
styles. Accordingly, we conclude that MISSION PRAIRIE is
merely descriptive of “decorative glass panels sold as an
integral component of metal doors.”
LIKELIHOOD OF CONFUSION
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
Serial No. 78773839
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be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), the Court set forth the factors
to consider in determining likelihood of confusion. See
also In re Majestic Distilling Company, Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Below, we will
consider each of the factors as to which applicant or the
Examining Attorney have presented arguments or evidence.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. 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 differ in appearance
in that the cited mark consists of one word with seven
letters versus applicant’s mark consisting of two words and
fourteen letters. Applicant argues further that the common
element, MISSION, is “… weak in that it could be
descriptive of the design style of each party’s goods.”
Applicant’s Brief at 11-12. Applicant also argues that the
marks differ in sound, again because of the additional word
in applicant’s mark. In addition, applicant argues,
Serial No. 78773839
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“Because the ‘PRAIRIE’ component of Applicant’s Mark is
dominant, the parties’ marks are dissimilar in meaning and
commercial impression.” Applicant’s Brief at 13.
Applicant elaborates by arguing that the suggestive
associations connected with PRAIRIE and the PRAIRIE style
would differ from those connected with MISSION alone.
Applicant thus argues that the marks are not similar
overall.
On the other hand, the Examining Attorney agues that
the marks are similar because they share the same first
term, MISSION, and because PRAIRIE, a descriptive term is
insufficient to distinguish the marks. The Examining
Attorney thus argues that the marks, when viewed in their
entireties, are similar.
We conclude that the marks are similar. First, as we
noted above, we must accord the cited registered mark the
applicable statutory presumptions, including the
presumption that it is a valid mark. See In re Fiesta
Palms LLC, 85 at 1363. At the same time we acknowledge
that MISSION is a weak mark in view of our discussion
above. In this context, it is perhaps appropriately
characterized as, at the very least, highly suggestive.
Nonetheless, even weak marks are entitled to protection
from registration of a similar mark for related goods. See
Serial No. 78773839
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King Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 109 (CCPA 1974).
In fact, on this record, we conclude that MISSION and
PRAIRIE are of roughly equivalent strength when viewed
without regard to their relative positions in applicant’s
mark. However, we concur with the Examining Attorney that
MISSION is of greater importance in determining whether the
marks are similar in this case because it is the first
element in applicant’s mark and the only element in the
cited mark. See Presto Products, Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of
some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered.”). See also Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1692.
Furthermore, we reject applicant’s arguments based on
the word and letter counts in the marks. This misses the
point. Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975) (“… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
Serial No. 78773839
23
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.”). Although there are
differences in appearance and sound, we find that the
similarities in appearance and sound, and especially, the
similarities in connotation and commercial impression are
more important. It is likely that potential purchasers
would view the marks as referring to the same source,
perhaps to variations on products from that same source.
Accordingly, we conclude that the marks are similar.
The Goods
The goods of applicant and the registrant need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). They need only be related in such a way
that the circumstances surrounding their marketing would
result in relevant consumers mistakenly believing that the
goods originate from the same source. On-Line Careline
Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471
(Fed. Cir. 2000); In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and channels of
trade we must consider the goods as identified in the
Serial No. 78773839
24
application and registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”).
Applicant identifies its goods as “decorative glass
panels sold as an integral component of metal doors.” The
goods identified in the cited registration are “non-metal
windows.”
Applicant does acknowledge that we must consider the
goods as identified in the application and cited
registration in determining likelihood of confusion.
Nonetheless, applicant provided evidence through affidavits
from two of its officials, Kevin Pine and Shane Thomas, in
an apparent attempt to show that the registrant, in fact,
uses its mark only in connection with “high-end windows”
Serial No. 78773839
25
and that a set of the registrant’s windows for a home “…
would typically cost in excess of $20,000.” See, e.g.,
Pine Affidavit at 1-2. The witnesses also suggest that the
registrant provides its windows through certain limited
trade channels. To the extent applicant bases its
arguments on this evidence regarding the registrant’s
actual goods and trade channels, we reject those arguments
in their entirety. See In re Bercut-Vandervoort & Co., 229
USPQ 763, 764 (TTAB 1986) (extrinsic evidence and argument
suggesting trade-channel restrictions not specified in
application rejected).
In general, applicant’s arguments with regard to the
goods focus principally on differences in the trade
channels for the respective goods, that is, that consumers
do not purchase windows and doors at the same time.5 Reply
Brief at 5. Applicant also argues that architects,
homebuilders or professional installers would often be
involved in the purchase of both types of goods and that
this involvement would diminish the likelihood of
confusion.

5 The remainder of applicant’s arguments regarding distinctions
in trade channels appear to depend on consideration of extrinsic
evidence regarding the registrant which we cannot consider.

Serial No. 78773839
26
On the other hand, the Examining Attorney states, “…
while not identical, the goods at issue are clearly related
in four critical ways. In short, the goods share the same
basic function; the goods are not limited to any particular
specialized channels of trade; they are available in the
same commercial setting; they are produced by the same
entities….” Examining Attorney’s Brief at 7. Furthermore,
the Examining Attorney argues that, under these
circumstances, consumers “would assume unity of source” if
the respective marks were used on the identified goods.
To support her position, the Examining Attorney
submitted excerpts from applicant’s website showing that
applicant itself sells both doors and windows, including
wood (non-metal) windows, and of course, metal doors with
decorative glass panels. See attachment to final Office
action. Thus, the scope of applicant’s own business is
strong evidence that the respective goods are related, that
is, that the respective goods could and do come from the
same source under the same mark. See Hewlett-Packard Co.
v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002).
The Examining Attorney also submitted excerpts from
the websites of third parties. The excerpt associated with
Pella shows that this entity offers a variety of both
Serial No. 78773839
27
windows and doors. The excerpt from Marvin also indicates
that this entity offers a wide variety of both windows and
doors, including doors with decorative glass panels. The
excerpt also indicates that Marvin sells doors and windows
for both new construction and replacement doors and
windows.6
The Board’s observations in the Amcor case apply here:
Thus, there is in the present situation products,
although different, that are promoted in a
similar fashion to similar “specifiers” in the
construction industry and which can be used in
the construction or renovation of the same
commercial structures. Thus, if these
“specifiers” were to be interested in windows and
in concrete or glazed block for incorporation in
the same structure [it should be noted that
windows can be set in block], and they were to
come across these products under the same
arbitrary designation “AMCOR”, it would not be
unreasonable for them to assume mistakenly that
they are products emanating from the same
producer.

Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB
1981) (AMCOR for glass windows and doors having metal
frames held confusingly similar to AMCOR for concrete
construction block and glazed block and other construction
materials). See also In re Johns-Manville Corp., 180 USPQ
661, 662 (TTAB 1973) (WEATHER KING for asphalt shingles

6 The Examining Attorney also refers to third-party registrations
showing marks registered for both types of goods, but we did not
find this evidence in the record.
Serial No. 78773839
28
held confusingly similar to WEATHER-KING for building doors
and panels therefor).
Accordingly, based on the evidence of record, we
conclude that applicant’s goods are related to the goods
identified in the cited registration and that the channels
of trade for the respective goods overlap and are otherwise
related.
Conditions of Purchase
In a similar vein, applicant also argues that the
types of goods identified in both the application and the
cited registration are relatively expensive, and that
purchasers will exercise more thought and care in
purchasing the products, thus diminishing the likelihood of
confusion. As we noted, applicant has also argued that the
purchasers often are either experts or advised by experts.
We are not persuaded by these arguments. The Board has
stated, “The law has long recognized that even technically
sophisticated and careful purchasers of industrial
equipment and products are not necessarily expert in
trademark evaluation or immune from source confusion.” In
re Pellerin Milnor Corporation, 221 USPQ 558, 560 (TTAB
1983). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
In particular, we find the relative cost of the products
and the sophistication of purchasers would not diminish the
Serial No. 78773839
29
likelihood of confusion. Amcor, Inc. v. Amcor Indus.,
Inc., 210 USPQ at 78.
Actual Confusion
Applicant also argues that confusion is not likely
because there is no evidence of actual confusion to date.
First we note that the application is based on applicant’s
statement of a bona fide intention to use the mark in
commerce. Although applicant has indicated that it has
used its mark for over one year, there is no evidence that
there has been a true opportunity for confusion. More
importantly, as the Court of Appeals for the Federal
Circuit has stated:
… uncorroborated statements of no known instances
of actual confusion are of little evidentiary
value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating
that self-serving testimony of appellant's
corporate president's unawareness of instances of
actual confusion was not conclusive that actual
confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if
not conclusive, of a high likelihood of
confusion. The opposite is not true, however.
The lack of evidence of actual confusion carries
little weight, J.C. Hall Co. v. Hallmark Cards,
Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA
1965), especially in an ex parte context.

In re Majestic Distilling Company, Inc., 65 USPQ2d at 1205.
Accordingly, we reject applicant’s arguments asserting the
absence of actual confusion.
Serial No. 78773839
30
Fame
Applicant also argues that the absence of evidence of
fame of the cited mark favors a finding that there is no
likelihood of confusion. The Federal Circuit addressed
this argument also in Majestic, stating:
Even if such evidence [of a lack of fame] were of
record, though, it would have little probative
value. Although we have previously held that the
fame of a registered mark is relevant to
likelihood of confusion, DuPont, 476 F.2d at
1361, 177 USPQ at 567 (factor five), we decline
to establish the converse rule that likelihood of
confusion is precluded by a registered mark's not
being famous.

Id. Accordingly, we also reject applicant’s arguments
regarding the absence of a showing of fame.
Conclusion
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s MISSION PRAIRIE
mark when used in connection with “decorative glass panels
sold as an integral component of metal doors” and the cited
MISSION mark when used in connection with “non-metal
windows.”
Decision: We affirm the refusals to register
applicant’s mark under both Trademark Act Sections 2(d) and
2(e)(1).