Jenisys Engineered Products, Inc.

Trademark Trial and Appeal Board

Jan 18, 2008

No. 78656734 (T.T.A.B. Jan. 18, 2008)

Mailed: January 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Jenisys Engineered Products, Inc.
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Serial No. 78656734
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Todd Deveau of Thomas, Kayden, Horstemeyer & Risley LLP for
Jenisys Engineered Products, Inc.

Russ Herman, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Hohein, Hairston and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Jenisys Engineered Products, Inc. seeks registration
on the Principal Register of the mark PRESTIGE PANEL (in
standard character form with PANEL disclaimed) for goods
identified as “metal panels for use in construction of
building roofs” in International Class 6.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Application Serial No. 78656734, filed on June 23, 2005,
alleging July 16, 2001 as the date of first use anywhere and in
commerce under Section 1(a) of the Trademark Act. 15 U.S.C.
§1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78656734
2
applicant’s mark, when used with its identified goods, so
resembles the registered mark PRESTIGE SERIES (in typed
form with SERIES disclaimed) for “metal structural roof
decking for use as vertical and interior walls, fascias and
soffit ceiling panels” in International Class 6 as to be
likely to cause confusion, mistake or deception.2
When the refusal was made final, applicant appealed
and briefs have been filed. 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. du Pont de Nemours & Co., 476 F.2d
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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).

2 Registration No. 2820579, issued March 9, 2004, setting forth
August 1989 as the date of first use anywhere and in commerce.
Serial No. 78656734
3
We first consider the goods, the channels of trade and
the class of purchasers. In making our determination, we
must consider the cited registrant’s and applicant’s goods
as they are described in the registration and application,
and we cannot read limitations into those descriptions of
the goods. See Hewlett-Packard Co. v. Packard Press Inc.,
281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1987). If the cited
registration and application describe the goods broadly,
and there is no limitation as to the nature, type, channels
of trade or class of purchasers, it is presumed that the
registration and application encompass all goods of the
type described, that they move in all channels of trade
normal for those goods, and that they are available to all
classes of purchasers for the described goods. See In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
Applicant argues that the fact that the goods are all
“materials for building construction does not per se
establish a likelihood of confusion.” Br. p. 10.
Applicant contends that the goods at issue are different
inasmuch as the goods in the cited registration are “for
use as vertical and interior walls, fascias and soffit
ceiling panels ... intended for interior use, as opposed to
Serial No. 78656734
4
exterior use” and therefore “are not intended for the same
use as Applicant’s goods, namely in construction of
building roofs.” Br. p. 11.
The examining attorney states, on the other hand,
that:
[R]egistrant’s goods, as described in the cited
mark, are not all limited to interior
applications as claimed by applicant. After all,
fascias and soffits are exterior boards that form
part of a cornice, the exterior projection of a
roof overhang at the eaves ... Roof construction
includes both vertical and horizontal framing
elements involving rafters, joists and trusses
that require both interior and exterior wall
construction. “Decking” can be laid between
joints in horizontal flooring applications as
well as between rafters in vertical roofing
applications.

Br. p. 9.
We take judicial notice of the following dictionary
definitions:3
Fascia: 1.b. a horizontal piece (as a board)
covering the joint between the top of a wall and
the projecting eaves – called also fascia board.
Merriam-Webster’s Collegiate Dictionary (10th ed.
1999);

Soffit: n. The underside of a structural
component, such as a beam, arch, staircase, or
cornice. The American Heritage Dictionary of the
English Language (4th ed. 2006); and

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Serial No. 78656734
5
Decking: 1. material, as paper or fiberboard,
treated in various ways as a waterproof covering
for a deck or roof. 2. material of concrete,
asbestos, steel, or the like in the form of self-
supporting flooring or roofing units laid between
joists or rafters. Random House Unabridged
Dictionary (2006) retrieved from
www.dictionary.com.

Applicant’s interpretation of registrant’s goods
imposes a limitation that is not there. The term “vertical
walls” in the identification of such goods encompasses
interior and exterior walls. In addition, the word
“interior” therein appears to apply only to “interior
walls,” and the fascias and soffit ceiling panels are not
limited to interior applications. As shown by the
dictionary definitions, fascias and soffit ceiling panels
have both interior and exterior applications and in some
applications are closely tied to construction of the roof.
In view thereof, we find the goods to be closely related.
Considering the channels of trade and class of
purchasers, inasmuch as there are no limitations in either
the registration or the subject application, we must
presume that applicant’s and registrant’s closely related
goods will be sold in the same channels of trade and will
be bought by the same classes of purchasers. See Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
Serial No. 78656734
6
1813 (Fed. Cir. 1987); and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the
similarity of the goods, the channels of trade and class of
purchasers favor a finding of likelihood of confusion as
between applicant’s mark and the mark in the cited
registration.
With regard to the conditions of sale, applicant
argues that its goods would be purchased by more
sophisticated consumers such as architects and designers.
Applicant argues that “[a] nonprofessional is highly
unlikely to purchase metal panels for construction of
roofs.” Reply Br. p. 8. While the identification of goods
does not contain a specific limitation, the reference to
“building” in applicant’s identification could indicate a
more sophisticated consumer base. However, even if we
consider the overlapping customers to be more informed and
discriminating, they are not immune from confusion in
connection with the use of trademarks. In re Decombe, 9
USPQ2d 1812 (TTAB 1988).
We next consider whether the marks PRESTIGE PANEL and
PRESTIGE SERIES are similar or dissimilar when compared in
their entireties in terms of appearance, sound, connotation
and commercial impression.
Serial No. 78656734
7
In arguing that the marks are dissimilar, applicant
contends that the term PRESTIGE is a weak, laudatory term
and the addition of different words to applicant’s and
registrant’s marks sufficiently distinguishes the marks.
In support of this argument applicant submitted a listing
retrieved from the Trademark Electronic Search System
(TESS) that includes 681 “live” and “dead” applications and
registrations that contain the word PRESTIGE in the mark,
and printouts of three registrations from TESS. In
addition, applicant, in its request for reconsideration,
referenced three other registrations that contain the word
PRESTIGE and noted the goods for which they are registered.
Submission of a listing and references in a response do not
properly make the registrations of record; however,
inasmuch as the examining attorney has not objected to this
deficiency and has treated such matter as being of record
by addressing it, we consider it to be of record for
whatever probative value it may have. See In re Volvo Cars
of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998)
and In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 n.
6 (TTAB 1999).
Applications serve no evidentiary purpose other than
to show that they were filed. In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002); Glamorene
Serial No. 78656734
8
Products Corp. v. Earl Grissmer Co., Inc., 203 USPQ 1090,
1092 n. 5. (TTAB 1979). Further, it is well settled that
registrations are not evidence of use and, thus, are not
probative for purposes of analyzing the sixth du Pont
factor. AMF Inc. v. American Leisure Products, Inc., 474
F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973); In re Comexa
Ltd., 60 USPQ2d 1118 (TTAB 2001). Moreover, the “existence
on the register of confusingly similar marks cannot aid an
applicant in its effort to register another mark which so
resembles a registered mark as to be likely to cause
confusion.” In re Total Quality Group Inc., supra at 1479.
See also Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d
324, 153 USPQ 406 (CCPA 1967). However, registrations may
serve to show, in the nature of a dictionary definition,
how language is used. Specialty Brands, Inc. v. Coffee
Bean Distributors Inc., 748 F.2d 669, 675, 223 USPQ 1281,
1285-86 (Fed. Cir. 1984). Thus, third-party registrations
may be relevant to show that a term is descriptive or
suggestive such that the public will look to other elements
to distinguish the marks. See Textronix, Inc. v.
Dactronics, Inc., 53 F.2d 915, 189 USPQ 693 (CCPA 1976).
With regard to the TESS listing, because we do not
know from the listing the goods or services for which the
marks are registered, such necessarily limits our analysis.
Serial No. 78656734
9
However, we do have more detailed information as to the six
registrations from the three TESS full record printouts and
the three references in applicant’s request for
reconsideration and they are set forth below:
Reg. No. 2417018 for the mark PRESTIGE SERIES
(SERIES disclaimed) for door locks made primarily
of metal, namely, deadbolts, knobsets,
handlesets, leversets, and parts thereof;

Reg. No. 2034256 for the mark PRESTIGE for
bathroom accessories, namely, soap dishes,
toothbrush and tumbler holders, toilet paper
holders, towel bars and towel rings;

Reg. No. 680909 for the mark PRESTIGE for seals
of metal, metal with cardboard and/or paper
inserts, plastic, plastic with cardboard and/or
paper inserts, and a combination metal and paper
to be applied to shipping containers and consumer
goods;

Reg. No. 2023339 for the mark PRESTIGE for non-
metal windows and patio doors;

Reg. No. 2287012 for the mark PRESTIGE HARDWOOD
FLOORS for wood flooring, particularly strips and
planks; and

Reg. No. 3044687 for the mark PRESTIGE SERIES for
architectural masonry units, namely, glazed
concrete blocks used for interior walls.

In addition, applicant submitted the following
dictionary definition for the word PRESTIGE as evidence
that it is a laudatory term:
Prestige: 1. standing or estimation in the eyes
of people: weight or credit in general opinion.

The Merriam-Webster Online Dictionary.

Serial No. 78656734
10
The examining attorney, however, also submitted the
following dictionary definition of such word:
PRESTIGE: 2. distinction or reputation
attaching to a person or thing and thus
possessing a cachet for others or for the public.

Random House Unabridged Dictionary (2006), retrieved from
www.dictionary.com.
The six registrations are not sufficient for us to
conclude that PRESTIGE has been so widely registered
because of a particular meaning in the field of structural
metal building materials. Three of the registrations do
not include metal building materials and none of the goods
include metal panels used for roofing or ceiling
applications or structural construction applications.
However, as shown by the dictionary definitions, the term
PRESTIGE may suggest a general attribute of the goods to
the extent it evokes something that has a high level of
distinction or reputation, but even weak marks are
protected, in particular, where as here, the goods are
closely related. Hollister Inc. v. Ident A Pet, Inc., 193
USPQ 439 (TTAB 1976).
Applicant further argues that the marks, when compared
in their entireties, are different due to the addition of
the words SERIES and PANEL to the respective marks.
Specifically, applicant argues that due to the weakness of
Serial No. 78656734
11
the word PRESTIGE consumers would not rely on the word
“prestige” alone “as the sole indication of source.” Br.
p. 7. Applicant further contends that, in addition to a
difference in sound and appearance, the addition of those
words creates a different meaning in that PRESTIGE SERIES
“has the meaning ‘a number of things of the same class
coming one after another having standing or estimation in
the eyes of people’” and PRESTIGE PANEL has the meaning of
“a flat usually rectangular piece of construction material
having standing or estimation in the eyes of people.” Br.
p. 8.
We find these differences are not sufficient to
distinguish the marks. We must determine whether the marks
are sufficiently similar that there is a likelihood of
confusion as to source and, in doing so, we must consider
the recollection of the average purchaser, who normally
retains a general, rather than specific, impression of
trademarks. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975). Despite any suggestiveness the word
PRESTIGE may have, in comparison to the other elements, the
dominant element in both marks is the word PRESTIGE. The
additional words in the marks have been disclaimed and are,
if not generic, at least descriptive of the goods. The
word “panel” is the name of applicant’s goods which consist
Serial No. 78656734
12
of metal panels. The word “series” in registrant’s mark
simply alerts the consumer that this is one of many
products offered and could even serve to increase the
likelihood of confusion by indicating it is part of a
series.
Overall, we find that the marks are similar in sound,
appearance and connotation, and have a very similar
commercial impression. Therefore, the factor of the
similarity or dissimilarity of the marks in their
entireties weighs in favor of there being a likelihood of
confusion.
In conclusion, we find that because the marks are
similar, the goods are related, and the channels of trade
and purchasers overlap, confusion is likely between
applicant’s mark and the mark in the cited registration.
To the extent we may nonetheless have any doubt, we must
resolve that doubt in favor of the registrant. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.