Liberty Hardware Manufacturing Corp.

Trademark Trial and Appeal Board

Nov 21, 2006

No. 78495253 (T.T.A.B. Nov. 21, 2006)

Mailed: November 21, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Liberty Hardware Manufacturing Corp.
________

Serial No. 78495253
_______

Edgar A. Zarins, Esq. of Masco Corp. PC for Liberty Hardware
Manufacturing Corp.

David S. Miller, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Quinn, Hohein and Walters, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Liberty Hardware Manufacturing Corp., by merger with
Bath Unlimited, Inc., is the owner of an application to register
on the Principal Register in standard character form the mark
"MESA" for "bathroom accessories, namely towel bars, towel rings,
tissue holders and tumbler-toothbrush holders" in International
Class 21.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 78495253, filed on October 6, 2004, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 78495253
2
applicant's mark, when applied to its goods, so resembles the
mark "MESA INTERNATIONAL" and design, which is registered on the
Principal Register in the form shown below

for "retail and outlet store services featuring decorative
tabletop items and decorative accessories for the home and mail
order catalog services featuring decorative tabletop items and
decorative accessories for the home" in International Class 35,2
as to be likely to cause confusion, or to cause mistake, or to
deceive.
Applicant has appealed and briefs have been filed. We
affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods and/or services at issue and the

2 Reg. No. 2,218,666, issued on January 19, 1999, which sets forth a
date of first use of the mark anywhere and in commerce of May 1997;
affidavit §8 accepted. The word "INTERNATIONAL" is disclaimed.

Ser. No. 78495253
3
similarity or dissimilarity of the respective marks in their
entireties.3 Inasmuch as applicant, in its brief, essentially
concedes by the absence of any argument pertaining thereto that
the respective marks are so similar that, if used in connection
with commercially related goods and services, confusion as to the
source of sponsorship thereof would be likely to occur, the focus
of our inquiry is accordingly on whether the goods and services
at issue are so related.
Applicant, in its brief, argues that the respective
goods and services "have no similarity." According to applicant,
registrant's mark is "used in connection with retail services
featuring decorative knick-knacks and accessories." In
particular, applicant contends that:
A quick Google search reveals that the goods
sold by the Registrant are decorative
bakeware and dining sets used in the kitchen,
wire racks and similar decorative items.
These are goods consumers use to decorate
around the kitchen, items that are purchased
on a whim according to certain tastes.

By contrast, applicant maintains that its goods are "hardware
products which are utilitarian devices used in the bath area."
Specifically, applicant insists that:
Applicant's bath accessories are purchased at
do-it-yourself home centers for installation
in the bath area. Unlike the Registrant's
goods which are purchased on a whim,
consumers will carefully consider Applicant's
bath accessories since they will become semi-
permanent fixtures mounted to the wall in the
bathroom. They are not interchangeable

3 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks." 192 USPQ at 29.

Ser. No. 78495253
4
without some patching of the walls.
Moreover, consumers would not base their
purchase of bath accessories upon a perceived
association with a regional outlet store.

With respect to the evidence of record which is relied
upon by the Examining Attorney (as discussed more fully later in
this opinion), applicant urges that "none of the examples
provided showed retail establishments that sold wall-mounted bath
accessories side by side with decorative plates and the like."
While nonetheless admitting that "[c]ertainly a large enough big
box retailer may sell both," applicant asserts that sales thereof
would occur "in entirely different departments." Applicant
consequently concludes that "[t]here is no likelihood that
consumers would be confused between both hardware and a regional
outlet store specializing in decorative plates."
The Examining Attorney, on the other hand, argues in
his brief that (italics in original):
Applicant offers "bathroom accessories,
namely towel bars, towel rings, tissue
holders and tumbler-toothbrush holders."
Registrant provides "retail and outlet store
services featuring decorative tabletop items
and decorative accessories for the home and
mail order catalog services featuring
decorative tabletop items and decorative
accessories for the home." For the purposes
of this appeal, the most significant portion
of registrant's identification of services is
the usage of the phrase "decorative
accessories for the home." Towel bars, towel
rings, tissue holders, and toothbrush holders
are home accessories. Because there are no
limitations on registrant's scope of its
services, it is presumed to encompass the
decorative type of bathroom accessories
applicant offers.

Consumers are likely to be confused by
the use of similar marks on or in connection
with goods and with services featuring or
Ser. No. 78495253
5
related to those goods. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988) (BIGG'S for retail
grocery and general merchandise store
services held confusingly similar to BIGGS
for furniture); In re U.S. Shoe Corp., 229
USPQ 707 (TTAB 1985) (CAREER IMAGE (stylized)
for retail women's clothing store services
and clothing held likely to be confused with
CREST CAREER IMAGES (stylized) for uniforms);
Steelcase Inc. v. Steelcare Inc., 219 USPQ
433 (TTAB 1983) (STEELCARE INC. for
refinishing of furniture, office furniture,
and machinery held likely to be confused with
STEELCASE for office furniture and
accessories); Mack Trucks, Inc. v. Huskie
Freightways, Inc., 177 USPQ 32 (TTAB 1972)
(use of similar marks for trucking services
and on motor trucks and busses is likely to
cause confusion).

In concluding that "applicant's identified goods,
namely, towel bars, towel rings, tissue holders, and toothbrush
holders are substantially related to registrant's identified
retail store services featuring decorative accessories for the
home" because "[a]pplicant's goods are merely a subset of the
broader category of goods for which registrant provides its
services," the Examining Attorney asserts that "the same
manufacturer normally offers some form of 'bathroom accessories'
as part of its larger 'home accessories' merchandise." As
support for such assertion, the Examining Attorney refers to the
following "sample of excerpted product manufacturer Internet web
sites included with the May 16, 2005 Office Action and November
7, 2005 Final Refusal." According to the Examining Attorney:
From the web site "Elvis Home and
Bathroom Accessories" (http://www.market
streetmercantile.com/pages/elvis9.html):

1. Elvis Presley Beaded Curtain with
"Jailhouse Rock" decoration;

Ser. No. 78495253
6
2. Elvis Presley 3-Pc. Bathroom Set,
includes soap dish and tumbler,
with "Jailhouse Rock" decoration;

3. Elvis Presley Soap/Lotion Dispenser
with "Jailhouse Rock" decoration;

4. Elvis Presley Cotton Ball Holder
with "Jailhouse Rock" decoration;

5. Elvis Presley Trashcan with
"Jailhouse Rock" decoration; and

6. Elvis Presley Shower Curtain with
"Jailhouse Rock" decoration.

From the web site "Renovator's Supply --
Wrought Iron & Decorative Towel Bars"
(http://www.rensup.com):

1. A total of nine (9) different towel
bars all found under the listing
"Decorative Towel Bars," and
located within the larger sets of
"Accessories > Bath Accessories."

2. Excerpt from manufacturer:
"Whether you're looking for a
handcrafted, wrought iron towel
bar, a decorative steel or nickel
bar, or a designer brass bar,
you'll find what you're looking for
in our collection of decorative
towel bars." [emphasis added]

From the web site "Eagle Emporium's Neat
Stuff" (http://www.eagle-emporium.com/bars.
htm):

1. Multiple listings for home décor
items, such as wrought iron towel
bars, paper towel holders, toilet
paper holders, and other "home
décor items."

From the web site "The Home Improvement
Site" (http://www.the-home-improvement-site.
com/kitchens/23/decorative-kitchen-towel.
html):

1. "Decorative towel rings." From the
manufacturer: "Homestead Interiors
specializes in lodge and cabin
style home decorating items to
Ser. No. 78495253
7
enhance the mountain and wilderness
feeling in your home." [emphasis
added]

2. Several other listings for
"decorative towel bars" and
"decorative kitchen towels."

From the web site "La La Ling" (http://
www.lalaling.com):

1. Fun Toothbrush Holders by Crocodile
Creek. "Fun, colorful and
decorative toothbrush holders"
available in four different styles.

As "further support of the relatedness of the goods,"
the Examining Attorney notes that the record contains four use-
based third-party registrations which "have probative value to
the extent that they serve to suggest that the goods listed
therein, namely, towel bars, towel rings, tissue holders, and
toothbrush holders are considered to be home accessories and are
of a kind that may emanate from a single source. In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001),
citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, 1470 at n.6 (TTAB 1988)." According to the Examining
Attorney, "[t]he relevant parts of the third[-]party
registrations that demonstrate the related nature of the goods
and services read as follows:"
1) Registration No. 1394905 for the mark
SURE-LOCK, for goods including "...
accessories for the home and bathroom
namely, toilet tissue holders."

2) Registration No. 1990688 for the mark
CREATIVE BATH, for goods including
"bathroom and home accessories, namely
[tumblers,] ... tissue boxes,
wastebaskets, soap dishes, towel
Ser. No. 78495253
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holders, liquid soap dispensers,
toothbrush holders, bowl brushes, cotton
ball and swab holders, towel rings,
[and] ... toilet tissue holders ...."

3) Registration No. 2709312 for the mark
CHESTNUTS & PAPAYA, for services
including "retail store services ... in
the fields of ... decorative accessories
for the home ... toothbrush holders
...."

4) Registration No. 2846273 for the mark
ANIMAL WALK, for services including
"retail store services, featuring--home
accessories; ... bed and bath products,
namely, bathroom accessories, namely,
tissue holders ...."

With respect to applicant's arguments that applicant's
goods and registrant's services nevertheless are not related
because "a quick Google search reveals that the goods sold by the
Registrant are decorative bakeware and dining sets used in the
kitchen, wire racks and similar decorative items," the Examining
Attorney accurately observes that "applicant provides no evidence
of said Google® search." Moreover, the Examining Attorney
properly points out that, for purposes of assessing whether there
is a likelihood of confusion, it is "the identification of
registrant's services [as] listed in the registration [which]
serves as the true measure of the scope of such services, not
registrant's web site." Specifically, as correctly stated in his
brief:
Likelihood of confusion is determined on
the basis of the goods or services as they
are identified in the application and the
registration. Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); In re Shell Oil Co., 992
F.2d 1204, 26 USPQ 1687, 1690 n.4 (Fed. Cir.
1993). Since the identification of the
registrant's services is considerably broad,
Ser. No. 78495253
9
it is presumed that the registration
encompasses all goods and/or services of the
typed described, including those in the
applicant's more specific identification,
that they move in all normal channels of
trade and that they are available to all
potential customers. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981); In re Optica
International, 196 USPQ 775 (TTAB 1977); TMEP
§1207.01(a)(iii).

Furthermore, as to applicant's argument that, unlike
purchasers of the goods available through registrant's services,
consumers of applicant's goods "will carefully consider
Applicant's bath accessories since they will become semi-
permanent fixtures mounted to the wall in the bathroom," the
Examining Attorney properly observes among other things that
"applicant has provided no evidence of any consumer care taken
when items of this type are purchased." The Examining Attorney,
instead, posits that "the consumers of both applicant's goods and
registrant's services will be members of the general public" and
that, in any event, even if such consumers were discriminating
rather than merely ordinary purchasers, "the fact that purchasers
are sophisticated or knowledgeable in a particular field does not
necessarily mean that they are sophisticated or knowledgeable in
the field of trademarks or immune from source confusion," citing
"In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor
Corp., 221 USPQ 558 (TTAB 1983); TMEP §1207.01(d)(viii)." In
addition, as to applicant's contention that none of the evidence
of record shows "retail establishments that sold wall-mounted
bath accessories side by side with decorative plates and the
like," the Examining Attorney maintains that such contention is
"not persuasive" because, inter alia, the evidence of record
Ser. No. 78495253
10
demonstrates that "'bath accessories' do, in fact, normally
emanate from the same source as 'home accessories' or 'decorative
home accessories.'"
We agree with the Examining Attorney that, inasmuch as
it is the manner in which applicant's goods and registrant's
services are identified which is controlling, such goods and
services must be considered to be commercially related for
purposes of determining whether contemporaneous use of the marks
at issue would be likely to cause confusion. See, e.g., Jean
Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774 (Fed.
Cir. 1993); and National Football League v. Jasper Alliance
Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990). Specifically, as
the Examining Attorney has properly pointed out, it is well
settled that the issue of likelihood of confusion must be
determined on the basis of the goods as they are set forth in the
involved application and the cited registration rather than in
light of what the goods and/or services actually are as shown by
any extrinsic evidence. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed.
Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973).
Ser. No. 78495253
11
Here, as persuasively noted by the Examining Attorney,
applicant's goods, which are identified in its application as
"bathroom accessories, namely towel bars, towel rings, tissue
holders and tumbler-toothbrush holders," are indeed included
within the language "decorative accessories for the home" which
is set forth in registrant's registration, which recites its
services as "retail and outlet store services featuring
decorative tabletop items and decorative accessories for the home
and mail order catalog services featuring decorative tabletop
items and decorative accessories for the home." Moreover, rather
than improperly serving to limit or restrict the identification
of applicant's goods and/or the recitation of registrant's
services, the evidence of record confirms that "bathroom
accessories" of the kinds offered by applicant, namely, "towel
bars, towel rings, tissue holders and tumbler-toothbrush
holders," are considered in the trade for such items to be items
of "decorative accessories for the home," which would be marketed
to consumers through, for instance, registrant's "retail and
outlet store services featuring ... decorative accessories for
the home" and its "mail order catalog services featuring ...
decorative accessories for the home." Stated otherwise,
"decorative accessories for the home" encompass more than just
what applicant refers to as "decorative bakeware and dining sets
used in the kitchen, wire racks and similar decorative items"
which "consumers use to decorate around the kitchen" and which
would be "purchased on a whim according to certain tastes."
Clearly, if respectively offered under the same or similar marks,
Ser. No. 78495253
12
purchasers familiar with "retail and outlet store services
featuring decorative tabletop items and decorative accessories
for the home and mail order catalog services featuring decorative
tabletop items and decorative accessories for the home" would be
likely to believe, upon encountering goods such as "bathroom
accessories, namely towel bars, towel rings, tissue holders and
tumbler-toothbrush holders," that the latter emanate from or are
sold through the former, notwithstanding that the latter are
decorative items which, in some cases, ultimately become semi-
permanent fixtures mounted to a wall in a bathroom.
Turning, therefore, to consideration of the marks at
issue, we concur with the Examining Attorney that, due to its
visual prominence, the dominant and distinguishing portion of
registrant's "MESA INTERNATIONAL" and design mark is the term
"MESA," which is identical in sound, appearance, connotation and
commercial impression to applicant's "MESA" mark. While the
Examining Attorney is also mindful that the respective marks must
be considered in their entireties and that any descriptive or
other disclaimed matter therein cannot be ignored, our principal
reviewing court has indicated that, in articulating reasons for
reaching a conclusion on the issue of likelihood of confusion,
"there is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature of a
mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties." In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
For instance, according to the court, "[t]hat a particular
Ser. No. 78495253
13
feature is descriptive [or otherwise lacking in distinctiveness]
... with respect to the involved goods or services is one
commonly accepted rationale for giving less weight to a portion
of a mark ...." Id. Here, as the Examining Attorney points out,
the word "INTERNATIONAL" in registrant's mark has been disclaimed
as descriptive and, as such, is "less significant" than the
dominant and distinguishing term "MESA" when the mark is
considered as a whole. Thus, while registrant's mark includes
additional matter not present in applicant's mark, including the
descriptive word "INTERNATIONAL," overall the marks at issue are
so substantially similar in sound, appearance, connotation and
commercial impression that we agree that confusion would be
likely. Furthermore, as the Examining Attorney accurately notes,
applicant "has not presented any argument or evidence as to the
... dissimilarity between the marks, effectively conceding that
the marks are indeed highly similar."
Accordingly, we conclude that consumers and prospective
purchasers who are familiar or otherwise acquainted with
registrant's "MESA INTERNATIONAL" and design mark for its "retail
and outlet store services featuring decorative tabletop items and
decorative accessories for the home and mail order catalog
services featuring decorative tabletop items and decorative
accessories for the home," would be likely to believe, upon
encountering applicant's substantially similar "MESA" mark for
its "bathroom accessories, namely towel bars, towel rings, tissue
holders and tumbler-toothbrush holders," that such commercially
Ser. No. 78495253
14
related services and goods emanate from, or are otherwise
sponsored by or affiliated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.