Kraftmaid Cabinetry, Inc.

Trademark Trial and Appeal Board

Jun 9, 2004

No. 75857510 (T.T.A.B. Jun. 9, 2004)

Mailed:
June 9, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kraftmaid Cabinetry, Inc.
________
Serial No. 75857510
_______
Edgar A. Zarins of Masco Corporation for Kraftmaid
Cabinetry, Inc.
David T. Taylor, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Quinn, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Kraftmaid Cabinetry, Inc. seeks registration on the
Principal Register of the mark TRADITIONS for goods
identified, as amended, as “cabinets, namely, kitchen and
bathroom cabinets,” in International Class 20.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
1 Application Serial No. 75857510 was filed on November 24,
1999 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75857510
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Act, 15 U.S.C. §1052(d). The cited registration is for the
identical mark, TRADITIONS, registered for “upholstered
furniture,” also in International Class 20.2 The Trademark
Examining Attorney has taken the position that applicant’s
mark, when used in connection with the identified goods, is
likely to cause confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board.
We reverse the refusal to register.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Certainly, as we turn first to the du Pont factor
focusing on the similarity of the marks, there is no
2 Registration No. 1920915 issued on September 19, 1995;
section 8 affidavit accepted and section 15 affidavit
acknowledged.
Serial No. 75857510
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dispute but that the marks are identical. In this context,
the Trademark Examining Attorney points out that the Board
has stated in the past that “[i]f the marks are the same or
almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a likelihood of confusion.” In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983).
However, as to the number and nature of similar marks
in use on similar goods, the Trademark Examining Attorney’s
final refusal continued to refuse applicant’s mark based
upon three different registered mark owned by three
different registrants. In addition to the one registration
discussed above, these included THE NEW TRADITION for
“furniture” and “upholstery fabrics”3 and BRASS TRADITIONS
for “cabinet hardware made of metal, namely, pulls, knobs
and back plates.”4 While these do not establish that the
cited mark is weak for furniture, it does support a
conclusion that the word “traditions,” drawing on its
3 Registration No. 2081174 issued on July 22, 1997 (since
cancelled – on April 24, 2004 – for registrant’s failure to file
its section 8 affidavit).
4 Registration No. 1644738 issued on May 14, 1991; section 8
affidavit accepted and section 15 affidavit acknowledged,
renewed. The Trademark Examining Attorney expressly dropped
this registration as a citation at the time of his appeal brief.
Serial No. 75857510
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ordinary dictionary meaning, may be suggestive of a style
of furniture having some history or handed-down
characteristics.
In arguing for registrability, applicant contends as
follows:
Applicant is the manufacturer and
distributor of kitchen and bath cabinets of
the type which would be fixedly secured to a
wall during construction and remodeling.
These goods are sold through dealer centers
specializing in kitchen and bath remodeling.
Because of the specialized nature of the
products and the skilled trades involved in
their installation, cabinetry distributors
do not branch out beyond the distribution,
sale and installation of cabinetry.
Furthermore, despite the USPTO’s outdated
description of goods, household furniture
and wooden cabinetry do not travel in the
same channels of trade. Each are sold
through specialized channels. And furniture
cabinets, i.e., entertainment systems and
the like, are not the same as kitchen and
bath cabinets. Furniture requires no more
than delivery and placement without any
specialized skills. The arrangement,
ordering and installation of kitchen and
bath cabinets require the skills of a
carpenter. For these reasons, the goods do
not travel in the same channels of trade and
consumers would purchase each category of
goods through vastly different stores.
… [T]he selection and installation of fixed
and expensive products such as cabinets
would carry the consumer through careful
consideration and the support of highly
skilled specialists.
(Applicant’s appeal brief, pp. 2-3)
Serial No. 75857510
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However, the Trademark Examining Attorney disagrees
with applicant’s position and argues, in response, that the
goods are related:
In the instant case, the applicant’s goods
are identified as “cabinets, namely, kitchen
and bathroom cabinets”. The registrant’s
goods are identified as “upholstered
furniture”. The fact that the relevant
goods are each included in the genus of
goods identified as “furniture” creates the
viable relationship necessary to support a
finding of a likelihood of confusion when
the marks associated therewith are
identical.5 Additionally, as indicated in
the examiner’s Final Refusal, numerous
manufacturers and distributors offer both
goods in the same channels of trade. For
instance, Pave Street, Inc. offers a full
line of “furniture” and “kitchen and
bathroom cabinets” under the mark PAVE
STREET WOODWORKS (Registration No. 2567482).
Thomasville Furniture Industries features
both “kitchen cabinets and furniture
cabinets” under the mark THOMASVILLE
CABINETRY (Registration No. 2555117).
Atlantic Wood & Cabinet Works offers
“kitchen cabinets, desks and entertainment
centers” under the word mark COOK & COOK
EXQUISITE CUSTOM CABINETRY (Registration No.
2660607).
The applicant argues that household
furniture and wooden cabinetry do not travel
in the same channels of trade due to the
specialized nature of cabinetry. The
applicant also states that its goods are
sold only through specialized dealer
centers. Contrary to this assertion, the
5 In fact, we have no per se rule holding that there is
always a likelihood of confusion among quite different furniture
items contained in International Class 20 when the respective
goods bear highly similar, or even identical, marks.
Serial No. 75857510
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identification of goods does not limit the
channels of trade in any manner. It is
therefore presumed that applicant’s goods
move in all normal channels of trade and
that they are available to all potential
customers. TMEP Section 1207.01(a)(iii).
Attached to the examining attorney’s Final
Refusal are fourteen (14) third party
registrations demonstrating that
manufactures [sic] and/or distributors of
furniture are commonly engaged in the
manufacture and/or distribution of kitchen
and bathroom cabinetry as well. This
evidence clearly contradicts Applicant’s
assertion that cabinetry and furniture are
found in vastly different stores.
As stated above, to find a likelihood of
confusion the goods and services of the
parties need only be related in some manner,
or the conditions surrounding their
marketing be such, that they could be
encountered by the same purchaser under
circumstances that could give rise to the
mistaken belief that the goods and services
come from a common source. Here, the same
consumers will seek the goods of the parties
in the same channels of trade. These
consumers are likely to encounter the goods
under the same marketing conditions, thereby
giving rise to the belief that goods
originate from a common source.
(Trademark Examining Attorney’s appeal brief, pp. 5 – 6).
Although the Trademark Examining Attorney contends
that these third-party registrations demonstrate that
furniture manufacturers “are commonly engaged in the
manufacture and/or distribution of kitchen and bathroom
cabinetry as well,” a closer examination of the fourteen
registrations on which this conclusion is based makes that
Serial No. 75857510
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proposition questionable. In fact, the vast majority of
the third-party registrations do not demonstrate that the
same manufacturer makes, or the same merchant sells,
upholstered furniture and kitchen cabinets / bathroom
cabinets to common purchasers.
Specifically, of the fourteen registrations, three are
registrations based upon Section 44 of the Act – not on use
in commerce in (or with) the United States, and hence they
have very limited probative value. See In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n. 6 (TTAB 1988).
Another five are service mark registrations – two
registrations for a variety of installation services, two
for retail store services featuring a broad array of hard
goods (not upholstered furniture) and one involving kitchen
design services. In another group of five of the
registrations, the word “furniture” occurs within a listing
of International Class 20 goods, but the word is used
solely to define the cabinetry that follows (e.g.,
“furniture namely kitchen cabinets…,” “furniture cabinets,
namely bathroom cabinets,” “kitchen cabinets and furniture
cabinets”). That leaves for our consideration a single
registration owned by a company in the Virgin Islands for
the mark PAVE’ STREET WOODWORKS, that does include within
Serial No. 75857510
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the identification of goods, inter alia, living room
furniture, furniture parts and cabinets of all kinds.
In the face of applicant’s claims that, like other
merchants and manufacturers of built-in cabinetry, its
goods “are sold through dealer centers specializing in
kitchen and bath remodeling,” we are hesitant to accept a
contrary view of the marketplace for these goods based
solely upon this most limited evidence proffered by the
Trademark Examining Attorney. That is not to say that we
are grafting onto the identification of goods a limitation
on the channels of trade. Rather, we are concluding that
in the event that a past customer of registrant’s
upholstered furniture were to encounter a promotion for
applicant’s kitchen or bathroom cabinets, there is nothing
in this record supporting the conclusion that such
prospective consumers would form the mistaken impression
that applicant’s named goods originated with, or had the
imprimatur of, registrant. As to channels of trade, there
is clearly nothing in the record to suggest that
upholstered furniture, on the one hand, and kitchen or
bathroom cabinets, on the other hand, share the same
channels of trade. We are not free to speculate on this
point. On this record, we simply cannot be sure either way
Serial No. 75857510
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inasmuch as the Trademark Examining Attorney has presented
no evidence at all as to channels of trade for these
respective goods.
In conclusion, while the marks herein are identical,
there is insufficient evidence in this record to support
the conclusion that kitchen and bathroom cabinets are
sufficiently related to upholstered furniture to support a
finding of a likelihood of confusion.
Decision: The refusal to register based upon Section
2(d) of the Trademark Act is hereby reversed.