Liberty Hardware Mfg. Corp.

Trademark Trial and Appeal Board

Oct 16, 2008

No. 77075723 (T.T.A.B. Oct. 16, 2008)

Mailed:
October 16, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Liberty Hardware Mfg. Corp.
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Serial No. 77075723
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Edgar A. Zarins of Masco Corporation for Liberty Hardware
Mfg. Corp.

Dominick J. Salemi, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Seeherman, Walters and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Liberty Hardware Mfg. Corp. has appealed from the
final refusal of the Trademark Examining Attorney to
register ESSENCE as a trademark for “bath accessories,
namely towel bars, towel rings, tissue holders and
toothbrush-tumbler holders.”1 Registration has been refused

1 Application Serial No. 77075723, filed January 4, 2007, based
on Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-
to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77075723
2
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles
the registered mark ESSENCE for medicine cabinets2 that, if
used in connection with applicant’s identified goods, it is
likely to cause confusion or mistake or to deceive.
We affirm the refusal.
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, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
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).
The marks, as applicant acknowledges, are identical.
This du Pont factor strongly favors a finding of likelihood
of confusion, because “[w]here the applicant's mark is
identical to the registrant's mark, as it is in this case,

2 Registration No. 3174146, issued November 21, 2006.
Ser No. 77075723
3
there need be only a viable relationship between the
respective goods or services in order to find that a
likelihood of confusion exists.” In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001), citing In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993) and In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
As for the goods, it is true that they are not
identical. However, it is not necessary that the goods of
applicant and the registrant be similar or competitive, or
even that they move in the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that the respective goods are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Here applicant’s identified bath accessories and the
registrant’s medicine cabinets are obviously complementary
items, in that they are all used as bathroom furnishings.
Although applicant attempts to distinguish its goods from
the registrant’s by stating that its goods are “decorative
bathroom accessories designed to add an aesthetic yet
Ser No. 77075723
4
functional element to the bath area,” while “the
registrant’s goods are utilitarian medicine cabinets,”
brief, p. 1, we are not persuaded by this argument. Both
applicant’s and the registrant’s goods have functional and
aesthetic functions. Consumers who are remodeling or
freshening the look of a bathroom may well purchase a
medicine cabinet as well as such bathroom accessories as
towel bars and towel rings. As a result, “they would or
could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer,” and we therefore find medicine
cabinets and towel bars and towel rings, at the very least,
to be related goods. The fact that some of applicant’s
goods are related to the registrant’s goods is sufficient
to conclude that the du Pont factor of the similarity of
the goods favors a finding of likelihood of confusion. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion
with respect to any item that comes within the
identification of goods in the application)
In addition, the Examining Attorney has made of record
several third-party registrations that show parties have
Ser No. 77075723
5
registered a single mark for both medicine cabinets and the
items identified in applicant’s application. See
Registration No. 2776342 for, inter alia, medicine
cabinets, towel bars, towel rings and toilet tissue
holders; Registration No. 3283521 for, inter alia, medicine
cabinets, toothbrush holders, towel bars, towel rings,
toilet paper holders; Registration No. 3311732 for, inter
alia, mirrored medicine cabinets, toilet tissue holders,
towel bars and towel rings. Third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).3
Applicant has pointed out that its goods are in Class
21, while the registrant’s medicine cabinets are classified
in Class 20. However, as the Court stated in Jean Patou
Inc. v. Theon Inc., 9 F.3d 1171, 29 USPQ2d 1771, 1774

3 We acknowledge that the evidence of third-party registrations
submitted by the Examining Attorney is somewhat limited. Of the
six third-party registrations, two were owned by the same company
that owns Registration No. 3283521, and one, No. 3127359, is for
such a broad range of goods (venetian blinds, electric hair
clippers, pacifiers for babies, gardening gloves, toy vehicles)
that it has little probative value to show the relatedness of the
goods at issue herein. Thus, although we do not rely exclusively
on the third-party registrations in finding that the goods are
related, they provide support for the conclusion that medicine
cabinets and towel rings and towel bars are related goods.
Ser No. 77075723
6
(Fed. Cir. 1993), “classification is wholly irrelevant to
the issue of registrability under section 1052(d).”
Applicant has also asserted that its goods are sold in
different channels of trade, and that “even in the big box
DIY stores, the respective goods are sold in different
areas or departments.” Brief, p. 1. Applicant’s own
statement seems to acknowledge that applicant’s and the
registrant’s goods can be sold in the same channels of
trade, at least with respect to DIY stores. We have no
evidence in the file as to whether applicant is correct
that “medicine cabinets are sold with other wall-mounted
cabinetry because of the related functionality”, and they
would accordingly be in different parts of stores from bath
accessories such as towel bars, towel rings, etc. which
“are marketed for their appearance.” Brief, p. 1.
However, as we previously stated, medicine cabinets are
bought for their aesthetic as well as for their functional
characteristics, and even if they are sold in different
aisles, consumers may purchase them both at the same time
when remodeling their bathrooms. Thus, they may be
encountered by the same purchasers during a single shopping
trip. We find this du Pont factor to favor a finding of
likelihood of confusion.
Ser No. 77075723
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Neither applicant nor the Examining Attorney has
addressed any other du Pont factor, nor have they submitted
any evidence on these factors. Accordingly, we have
treated them as neutral.
After considering the du Pont factors on which we have
evidence or argument, we find that because the marks are
identical and the goods are related, applicant’s mark
ESSENCE, if used on its identified goods, is likely to
cause confusion with the registered mark.
Decision: The refusal of registration is affirmed.