Kiltie Corporation

Trademark Trial and Appeal Board

Jul 11, 2008

No. 77091957 (T.T.A.B. Jul. 11, 2008)

Mailed:
11 July 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Kiltie Corporation
________

Serial No. 77091957
_______

Gerald E. Helget of Briggs and Morgan, P.A. for Kiltie
Corporation.

Mary E. Crawford, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Quinn, Drost, and Wellington, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 26, 2007, applicant, Kiltie Corporation,
applied to register the mark VERANDA, in standard character
form, on the Principal Register for “concrete blocks for
constructing mortarless freestanding and retaining walls”
in Class 19. Serial No. 77091957. The application is
based on a bona fide intention to use the mark in commerce.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77091957
2
(15 U.S.C. § 1052(d)) because of a registration for the
mark VERANDA, in standard character form, for “non-metal
building materials for use in building decks; non-metal
fencing; non-metal lattices” in Class 19.1 When the refusal
was made final, this appeal followed.
Evidentiary Issues
Before we address the merits of this appeal, we must
discuss several evidentiary issues. The examining attorney
has submitted printouts of “applications and registrations”
to “show that the goods, while not identical, are indeed
related.” Final Office Action at 4. Applicant has
objected to these registrations and applications to the
extent that the examining attorney did not include search
strategy results. Applicant also points to the diversity
of goods and services in some of the applications and
registrations and questions their persuasiveness.
We have more fundamental problems with many of the
references. First, we count 24 applications and
registrations that were attached to the first and final
Office actions. Of these, five are duplicates and
therefore, we will not consider them separately. Thirteen
printouts are for registrations or applications filed under
Section 44 of the Trademark Act without any indication that

1 Registration No. 3178672 issued November 26, 2006.
Ser No. 77091957
3
the marks have been used. To the extent that some are
applications, they are simply not probative on the issue of
whether the goods are related. In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (“While
applicant also submitted a copy of a third-party
application …, such has no probative value other than as
evidence that the application was filed”). Furthermore,
registrations (or even applications if we did consider
them) that are based on foreign filings with no indication
of use are entitled to little, if any, weight. In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988):
In the instant case, however, 11 of the 15 third-party
applications and registrations which cover both
restaurant services and mustard were filed under the
provisions of Section 44 of the Act, that is, they are
based on foreign registration rather than on use in
commerce, and most of their owners appear to have
simply copied large parts of the title (including, in
some cases, even the punctuation used therein) of
International Class 30. Such registrations and
applications are not even necessarily evidence of a
serious intent to use the marks shown therein in the
United States on all of the listed goods and services,
and they have very little, if any, persuasive value on
the point for which they were offered.

In addition, we note that Registration Nos. 2908614
and 3125908 are for different marks and their owners are
identified as different corporations.2 However, both

2 The ‘614 registration has now apparently been assigned to the
same corporation as the ‘908 registration, RMF Holdings, LLC.
See Reel/Frame No. 3072/0543.
Ser No. 77091957
4
registrations have curiously similar identifications of
goods, i.e., “Aquarium gravel, aquarium sand, aviaries not
of metal…” We will treat these registrations as
registrations from a common source and we will not
separately consider the ‘908 registration. Therefore, we
are left with five relevant registrations to support the
examining attorney’s position.
In its reply brief, after the examining attorney’s
last opportunity to respond, applicant also requests that
we take into consideration TESS search results that show
the total number of results for the term “fence” and for
the term “concrete” and “block.” Applicant argues that the
examining attorney did not provide “any record of how the
search was conducted, the search term used, the number of
documents responsive to the search query, or how many of
the responsive documents were actually produced.” Reply
Brief at 2.
When an examining attorney waits until the examining
attorney’s brief to object to applicant’s earlier
submission of a list of registrations, we have held that
any objection to this evidence has been waived:
Although the Examining Attorney, in her brief, has
objected to such evidence “as being unsupported” in
that a mere listing of third-party registrations “is
not credible evidence of the existence” thereof and
that copies of such registrations or their electronic
Ser No. 77091957
5
equivalents, in the form of printouts from the
electronic records of the United States Patent and
Trademark Office, need to be submitted in order to
make the registrations properly of record,” the
objection is considered to have been waived since it
was not interposed in response to applicant's reliance
on such listing in its response to the initial Office
Action.

In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1513 n.3 (TTAB 2001). Similarly here, where, if applicant
objected earlier, the examining attorney could have
provided the search strategy or an explanation of why one
was not required, we deem applicant to have waived its
objection by waiting until the reply brief to raise this
question.
We add that applicant’s reliance on TMEP § 701.01(a),
“Evidence from Research Database,” is misplaced inasmuch as
the evidence that the examining attorney submitted was not
an article from a research database as the section
discusses, e.g., LEXIS®, but rather third-party
registrations from the USPTO’s own search system. TMEP
§ 710.03 (5th ed. rev. September 2007) sets out how to make
third-party registrations of record:
To make registrations of record, soft copies of the
registrations or the complete electronic equivalent
(i.e., printouts or electronic copies of the
registrations taken from the electronic search records
of the USPTO) must be submitted.

See also TMEP § 1207.01(d)(iii).

Ser No. 77091957
6
The examining attorney’s search results did comply with
this provision.
Regarding applicant’s other evidence, in its response
to the first Office action (p. 4), it simply included a
statement that “VERANDA is a weak mark, as shown by the
number of registrations in the USPTO TESS database.
According to a TESS search conducted on April 19, 2007,
there are 134 registrations for the mark.” In the Final
Office Action at 3, the examining attorney pointed out that
“applicant argues that the marks are ‘weak.’ However, the
applicant has not submitted any evidence to substantiate
this claim.” When applicant referred to these
registrations in its appeal brief, the examining attorney
objected (Brief at unnumbered p. 5) and pointed out that
applicant did not seek reconsideration in order to submit
any evidence.” We agree with the examining attorney that
the copies of the registrations should have been submitted
earlier. 37 CFR § 2.142(d). We do not take judicial
notice of third-party registrations. In re Carolina
Apparel, 48 USPQ2d 1542, 1542 n.2 (TTAB 1998) (“The Board
does not take judicial notice of third-party registrations,
and the mere listing of them is insufficient to make them
of record”). The fact that that other registrations
(perhaps as many as 134) contain the word “Veranda” for
Ser No. 77091957
7
various unidentified goods and services, hardly establishes
that it is a weak mark for the goods at issue in this case.
In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 (TTAB 2007)
(“[E]ven if there were evidence that MVP is used for non-
related goods or services, this would hardly establish by
itself that it is weak for casino services”).
Likelihood of Confusion Issue
Next, we move on to the main issue here which is
whether there is a likelihood of confusion. In a case
involving a refusal under Section 2(d), we analyze the
facts as they relate to the relevant factors set out in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003)
and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1896 (Fed. Cir. 2000). In considering the evidence of
record on these factors, we must keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin our analysis by looking at the similarities
and dissimilarities of the marks in the application and
Ser No. 77091957
8
registration. In this case, the marks are identical. Both
are for the word VERANDA in standard character form.
Therefore, there are no differences in the marks. This
factor supports a conclusion that there is a likelihood of
confusion. Indeed, the Federal Circuit has held that
“[w]ithout a doubt the word portion of the two marks are
identical, have the same connotation, and give the same
commercial impression. The identity of the words,
connotation, and commercial impression weighs heavily
against the applicant.” In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
Next, we look at the goods to see if they are related.
Applicant’s goods are concrete blocks for constructing
mortarless freestanding and retaining walls. Registrant’s
goods are non-metal building materials for use in building
decks; non-metal fencing; non-metal lattices. It is
obvious that the goods are not identical. Applicant argues
that its “concrete blocks are not used for building decks.
Similarly, ‘fencing’ is not the same as ‘retaining walls.’
Finally, ‘lattices’ are not the same as retaining walls.”
Brief at 5. Applicant also points out that:
Applicant’s products are specifically intended for the
structural application of constructing retaining
walls.

The Veranda Web site also states:
Ser No. 77091957
9
Can Veranda decking be used as planters or
edging? Veranda decking is not recommended for ground
contact applications. It is to be used as a deck
surface only.

In contrast, Applicant’s concrete blocks are
specifically intended to be used in constructing
retaining walls, that is, to hold soil within the
retaining wall (a ground contact application).

Thus, the products of the registrant and the applicant
are clearly non-competitive, and may likely be non-
related.

Brief at 5.

First, applicant is apparently reading limitations
into registrant’s goods based on how registrant describes
the goods on its website. An applicant’s or registrant’s
identified goods are not limited by how they are actually
used. 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
Ser No. 77091957
10
basis of the respective descriptions of goods”).
Therefore, registrant’s building materials for use in
building decks are not limited to building materials that
are not used in contact with the ground or to expensive
materials.
Second, goods or services can be related even if they
are not identical, competitive, or combinable. “[G]oods
that are neither used together nor related to one another
in kind may still ‘be related in the mind of the consuming
public as to the origin of the goods. It is this sense of
relatedness that matters in the likelihood of confusion
analysis.’” Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (citing Recot, Inc.
v. Becton, 54 USPQ2d at 1898). See also McDonald's Corp.
v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989) (“In order to
find that there is a likelihood of confusion, it is not
necessary that the goods or services on or in connection
with which the marks are used be identical or even
competitive. It is enough if there is a relationship
between them such that persons encountering them under
their respective marks are likely to assume that they
originate at the same source or that there is some
association between their sources”).
Ser No. 77091957
11
Here, the examining attorney has submitted trademark
registrations to help show that the goods of applicant and
the registrant are related. Even after we discard the
registrations that have little or no probative value, there
are five registrations that provide at least some evidence
that the goods are related.
No. 2280617 for parquet wood flooring, floor panels,
non-metal floor tiles; non-metal building panels,
namely, floor, roofing, ceilings, wall, door and fence
panels; non-metal building materials, namely, concrete
blocks,3 concrete slabs, bricks, mortars

No. 2908614 for, inter alia, “concrete blocks” and
“non-metal lattices,” “non-metal fencing” and “stone
for building”

No. 3013629 for building materials, namely wall,
hardwood, decking, wood, ceramic enamel tiles, ceramic
tiles, concrete, concrete blocks, floor panels, glass
tiles, granite, hardboard, marble, non-metal roof
coverings, non-metal ceiling panels, non-metal curtain
walls, non-metal door panels, non-metal floor tiles,
non-metal floors, and nonmetal tiles

No. 2791615 for, inter alia, “concrete blocks” and
“erosion control fencing and mats,” “non-metal pre-
fabricated building sets” and “non-metal floor
construction materials, namely, tiles of clay, glass,
gypsum, ceramic or earthenware for wall, floor or
ceiling, paving tiles, roofing tiles, wood tile
flooring and flooring underlayments, frameworks,
sheathing boards, cement and concrete slabs, wood and
concrete beams”

No. 2562369 for on-metal ceiling panels, non-metal
door panels, non-metal roofing panels, non-metal wall

3 We note that the term “concrete blocks” would include “concrete
blocks for constructing mortarless freestanding and retaining
walls.”
Ser No. 77091957
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panels, concrete blocks, and prefabricated non-metal
buildings

“Third-party registrations which cover a number of
differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that
such goods or services are of a type which may emanate from
a single source.” Mucky Duck, 6 USPQ2d at 1470 n.6. We
agree that these registrations suggest that applicant’s and
registrant’s goods may originate from a single source.
Even if we accept applicant’s argument that many sources of
fencing, lattices, and building materials for decks are not
the source of concrete blocks, it does not mean that the
goods are not related or that the registrations of record
do not suggest a relationship. Id. at 1467 n.3 (Four use-
based registrations for mustard and restaurant services).
In re Association of the United States Army, 85 USPQ2d 1264
(TTAB 2007) (“We find, first, that applicant's ‘association
services’ are related to the Class 35 and Class 42 services
recited in the ′479 and ′969 registrations. The Trademark
Examining Attorney has made of record six use-based third-
party registrations…”).
Ser No. 77091957
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We also have no basis to hold that the channels of
trade and the purchasers of these products would not be
similar. Applicant’s and registrant’s goods are likely to
be purchased by contractors or do-it-yourself homeowners
who are adding or replacing a deck and also landscaping the
area around the deck. Their channels of trade would also
be similar to the extent that they would be sold where
building and construction materials and supplies would be
sold.
Applicant also argues (Reply Brief at 5) that “in the
present matter technical or product sophistication
typically of purchasers of the relevant goods would render
them more likely to appreciate the difference between
Applicant’s structural goods, and Registrant’s non—
structural goods – leading to an opportunity and basis to
distinguish the marks.” The fact that purchasers would
appreciate the difference between the products is not
necessarily determinative. Confusion is frequently found
even when the goods are not the same. The question would
be whether even sophisticated purchasers would assume that
these products sold under identical marks would come from
the same source. In re Hester Industries, Inc., 231 USPQ
881, 883 (TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
Ser No. 77091957
14
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”). See also In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999) (“[E]ven careful purchasers
are not immune from source confusion”). In this case, even
sophisticated purchasers are likely to assume that the
sources of these goods sold under the same mark are related
or associated in some way.
Of course, to the extent that we have any doubt we
must resolve this doubt in favor of the prior registrant.
In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d
1944, 1948 (Fed. Cir. 2004) and In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
When we consider the fact that the marks are identical
and the goods are related, we conclude that there is a
likelihood of confusion here.
Decision: The examining attorney’s refusal to
register applicant’s VERANDA mark under Section 2(d) is
affirmed.