Liberty Hardware Mfg. Corp.

Trademark Trial and Appeal Board

Sep 4, 2008

No. 77075805 (T.T.A.B. Sep. 4, 2008)

Mailed: September 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Liberty Hardware Mfg. Corp.
________

Serial No. 77075805
_______

Edgar A. Zarins of Masco Corporation for Liberty Hardware Mfg.
Corp.

Marcie R. Frum Milone, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Quinn, Walsh and Taylor, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Liberty Hardware Mfg. Corp. has filed an application to
register on the Principal Register the mark WEST SIDE (in
standard character format) for “pulls and knobs for cabinetry
made primarily of metal” in International Class 6.1
Registration has been finally refused on the ground of
likelihood of confusion, mistake or deception under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d), with the mark WESTSIDE

1 Serial No. 77075805, filed January 4, 2007, and alleging a bona fide
intention to use the mark in commerce.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 77075805
2
DOOR & MOULDING (in typed form2 and the subject of Registration
No. 2824794) for “retail store services featuring doors,
windows, skylights, moulding and hardware” in International
Class 35.3
When the refusal was made final, applicant appealed. Both
applicant and the examining attorney filed briefs. For the
reasons discussed below, we affirm the refusal to register.
Our determination of the issue of likelihood of confusion
is based on an analysis of all 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 Company, 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).
We consider first the goods and services based on a
comparison of the identifications in the application and the

2 The former reference to what is now referred to as standard character
form.

3 Registration No. 2824794, issued March 23, 2004.

Serial No. 77075805
3
cited registration. See Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 at n. 4 (Fed.
Cir. 1993). As is often stated, the goods or services need not
be identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is enough that the goods
or services are related in some manner or that some
circumstances surrounding their marketing are such that they
would be likely to be seen by the same persons under
circumstances which would give rise, because of the marks used
therewith, to a mistaken belief that they originate from or are
in some way associated with the same producer or that there is
an association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and
the cases cited therein.
Applicant’s goods are pulls and knobs for cabinetry made
primarily of metal and the recited services are retail store
services featuring doors, windows, skylights, moulding and
hardware. Applicant maintains that its goods and registrant’s
services are sufficiently distinct to avoid confusion, are not
competitive with each other, and are not considered part of the
same trade channels. Applicant particularly argues that:
Applicant’s goods are decorative knobs and pulls
used to accessorize kitchen and bath cabinets.
These are relatively inexpensive pieces and
Serial No. 77075805
4
easily installed by the do-it-yourself consumer.
Typically, the pieces are purchased purely for
their aesthetic appeal to the consumer without
consideration to some perceived association with
unrelated products. The consumer is simply
looking for a way to dress up their kitchen and
bath cabinets.

… It is apparent from the mark itself and the
description of the services that the
registration [sic] sells products associated
with openings of a home, namely doors, windows
and skylights. As would be typical, such doors,
windows and skylights require moulding and
hardware to operate properly. There is no
question that the “moulding and hardware”
referred to in the identification is for doors,
windows and skylights. … The referenced hardware
is door hardware and the Examining Attorney has
unjustifiably expanded the identification to
include all hardware of all knobs even though
the evidence does not support such an expansive
reading. … Door hardware is functional and
purchased by consumers for a desired function.
There would be no correlation by consumers
between such functional door hardware and
decorative knobs and pulls for cabinetry.

(Brief, unnumbered p. 1). To support its position, applicant
submitted web pages from the registrant’s website purportedly to
show that registrant’s mark “is about doors and more doors.”
(Id.)
The examining attorney conversely contends that since the
registrant’s services are identified broadly, it must be
presumed that the registration encompasses retail store services
featuring all kinds of doors, windows, skylights, mouldings and
hardware, including the type of hardware found in applicant’s
identification, namely pulls and knobs for cabinetry made
Serial No. 77075805
5
primarily of metal. She further contends that it must also be
assumed that registrant’s services move in all normal channels
of trade for such services and that they are available to all
potential customers.
To support her position, the examining attorney in her
brief requested the Board to take judicial notice of the
following definitions of the term “hardware”:
2. tools and implements: tools and
implements, usually of metal, e.g., hinges,
screws, and hammers;4

3. tools, implements, and other items used in
the home and in activities such as gardening;5
and

Noun: 1. Metal goods and utensils such and
locks, tools and cutlery.6

The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format.7
See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002).
See also University of Notre Dame du Lac v. J. C. Gourmet Food

4 Encarta World English Dictionary [North American Edition](2007)
found at http://encarta.msn.com.

5 Compact Oxford English Dictionary found at
www.askoxford.com/concise_oed/hardware?view=uk.

6 The American Heritage Dictionary of the English Language (4th ed.
2000) found at www.bartleby.com.

7 The examining attorney also sought to make of record a definition
from “Contractor Glossary of Terms” compiled by Contractor School
Online®. However, inasmuch as it appears that the “Contractor Glossary
of Terms” is solely an online publication, we will not further
consider the definition taken therefrom.
Serial No. 77075805
6
Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
The examining attorney also made of record with her final
Office action copies of third-party registrations [Registration
Nos. 2543769, 3257909, 2690268, 2904210, 3054749, and 3054746]8
to show that applicant’s type of knobs and drawer pulls for
cabinets are often identified as hardware. For example, the
identification of goods in Registration No. 2904210 reads
“[m]etal hardware, namely cabinet knobs and drawer pulls.” The
examining attorney also submitted third-party registrations
showing that applicant’s types of knobs and drawer pulls for
cabinets and registrant’s type of retail services emanate from
the same source. These third-party registrations may serve to
suggest that the types of goods and services involved herein are
related. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988) (Although third-party registrations are “not
evidence that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, [they] may
nonetheless have some probative value to the extent that they

8 Additional registrations [Registration Nos. 3231827, 3150066,
2707818, 3072535, 3107496, 3052039, 3136454, 3234229 and 3078668]
submitted by the examining attorney have little to no probative value
because they either cover door pulls and knobs or, while the
identified goods included knobs and pulls for cabinets and furniture,
such goods are not categorized as hardware.

Serial No. 77075805
7
may serve to suggest that such goods and/or services are of a
type which may emanate from a single source”). See also In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
These registrations include:
Registration No. 2543769 for, inter alia,
“decorative metal house numbers and metal hardware,
namely knobs [and] pulls … for furniture, doors and
cabinets” and “retail store services… featuring
decorative metal house numbers and metal hardware,
namely knobs [and] pulls … for furniture, doors and
cabinets”; and

Registration No. 2986790 for, inter alia, “metal
hardware, namely, metal knobs, hinges, and bathroom
pulls” and “retail store services featuring general
merchandise.”9

Last, and as further support of the relatedness of the
goods and services, the examining attorney made of record copies
of web pages from registrant’s website as well those of Baldwin
and Schlage, manufacturers whose products are sold via
registrant’s retail services. The web pages show that both
Baldwin’s and Schlage’s product lines feature hardware including
cabinet knobs.
Based on the evidence of record, we find that applicant’s
knobs and pulls for cabinets are clearly included within the
term “hardware” which is set forth in registrant’s registration,
which recites its services as retail store services featuring,

9 We note that general merchandise would include the metal hardware,
namely knobs, hinges, and bathroom pulls.

Serial No. 77075805
8
among other items, hardware. It is settled that confusion is
likely to occur from the use of similar marks for goods, on the
one hand, and for services involving those goods, on the other.
See, e.g., In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988)[BIGG’S (stylized) for retail
grocery and general merchandise store services held likely to be
confused with BIGGS and design 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]; and In re
Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986)[21CLUB for
various items of clothing held likely to be confused with THE
“21” CLUB (stylized) for restaurant services and towels]. See
TMEP § 1207.01(a)(ii)(5th ed. 2007). Quite simply, the
identification in the cited registration is broad enough to
include retail store services featuring goods such as those
identified in applicant’s application. Moreover, the record
suggests that consumers are familiar with hardware and retail
store services featuring hardware emanating from the same
source. We accordingly conclude that applicant’s knobs and
Serial No. 77075805
9
pulls for cabinetry and registrant’s retail services featuring,
inter alia, hardware are closely related because applicant’s
goods could be sold through registrant’s retail services.
Further, we find applicant’s argument that the examining
attorney has unjustifiably expanded the identification of
services in the cited registration to include “all hardware of
all knobs” unavailing. As noted previously and pointed out by
the examining attorney, likelihood of confusion must be
determined on the basis of the goods and services as they are
identified in the application and the cited registration.
Canadian Imperial Bank v. Wells Fargo Bank, supra. Herein, the
identification of services does not restrict the hardware
featured by registrant’s retail services to hardware for doors,
windows and skylights. Therefore it would be improper to
artificially restrict the language in the registration. As
explained above, the term “hardware” in the cited registration
is broad enough to encompass the metal hardware, specifically
articulated as knobs and pulls for cabinetry made primarily of
metal, identified in applicant’s application. See e.g., In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (An
applicant may not restrict the scope of the goods covered in the
cited registration by argument or extrinsic evidence).
Similarly, and contrary to applicant’s contention, in the
absence of any limitations in the identification of goods in the
Serial No. 77075805
10
application or the recitation of services in the cited
registration as to channels of trade or classes of purchasers,
we must presume that both applicant’s goods and registrant’s
services will be offered in the normal channels of trade for
such goods and services, and will be offered to all normal
purchasers of such goods and services. See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). That is to say, potential consumers
of applicant and registrant would overlap to the extent that
consumers seeking to purchase hardware in the nature of knobs
and door pulls for cabinets would utilize retail store services
featuring such hardware.
In view thereof, the du Pont factors of the similarity of
the goods, channels of trade and classes of purchasers strongly
favor a finding of likelihood of confusion as to the cited
registration.
Considering next the similarity of the marks, we must
determine whether applicant’s mark and registrant’s mark, when
compared in their entireties, are similar or dissimilar in terms
of sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties, it is
well settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753 F.2d
Serial No. 77075805
11
1056, 224 USPQ 749 (Fed. Cir. 1985). For instance, “that a
particular feature is descriptive or generic with respect to the
involved goods or services is one commonly accepted rationale
for giving less weight to a portion of a mark….” Id. at 224 USPQ
at 751. Furthermore, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but
rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the
source of the goods and/or services offered under the respective
marks is likely to result. The focus is on the recollection of
the average purchaser who normally retains a general rather than
a specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant contends that the connotations of the respective
marks reduces the likelihood of confusion. While its mark is
merely a fanciful term used to identify the knob and pull
collection, registrant’s mark refers to a store located on the
“westside” of town, and consumers would recognize the
distinction. (Brief at unnumbered p. 1).
The examining attorney, on the other hand, maintains that
the registered mark is highly similar to applicant’s mark because
the dominant portion of the registered mark is phonetically
equivalent to applicant’s mark. She further contends that the
Serial No. 77075805
12
deletion of the wording “DOOR & MOULDING” does not sufficiently
distinguish the marks.
We agree that applicant’s mark WEST SIDE is very similar to
the cited mark WESTSIDE DOOR & MOULDING. In particular, the
dominant portion of the registrant’s mark is WESTSIDE, as the
descriptive and disclaimed term “DOOR & MOULDING” is subordinate
in nature. Applicant’s mark is virtually identical to the
dominant portion of the cited mark. The sole difference being
the space between the terms “west” and “side” in applicant’s
mark. We do not find the difference in spacing distinguishes
applicant’s mark from the cited mark. See Stockpot, Inc. v.
Stock Pot Restaurant, Inc. 220 USPQ 52, 54 (TTAB 1983), aff’d,
737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984)(“There is no
question that the marks of the parties [STOCKPOT and STOCK POT]
are confusingly similar. The word marks are phonetically
identical and visually almost identical”); and In re Best Western
Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984)(“There
can be little doubt that the marks [BEEFMASTER and BEEF MASTER]
are practically identical”). Moreover, applicant’s mere deletion
of the descriptive wording “DOOR & MOULDING” from the registered
mark fails to overcome the similarity between the marks. See
e.g., In re Optical Int’l, 196 USPQ 775 (TTAB 1977)(Applicant’s
mark OPTIQUE and the registered mark OPTIQUE BOUTIQUE when used
Serial No. 77075805
13
in connection with competing optical wear likely to cause
confusion).
When we compare applicant’s mark to registrant’s mark in
their entireties as we must, we find that applicant’s mark is
highly similar in appearance, sound, connotation and overall
commercial impression to the registered mark due to the shared
term WESTSIDE/WEST SIDE. Any differences, primarily in
appearance, are outweighed by the similarities of the marks.
Applicant’s argument that the connotations of the two marks
differ is unpersuasive. While the term “westside” may be
perceived by some as a geographical term, there is nothing in the
record to suggest that consumers upon seeing this term used in
connection with retail store services featuring doors, windows,
skylights, moulding and hardware would think “destination” as
opposed to something “arbitrary.” For the reasons just stated,
we find applicant’s mark and the cited mark highly similar in
appearance, sound, connotation and overall commercial impression.
This factor thus favors a finding of likelihood of
confusion.
In view of the foregoing, we conclude that prospective
purchasers familiar with the registered mark WESTSIDE DOORS &
MOULDING for retail store services featuring doors, windows,
skylights, moulding and hardware would be likely to believe,
upon encountering applicant’s substantially similar mark WEST
Serial No. 77075805
14
SIDE for pulls and knobs for cabinetry made primarily of metal,
that such goods emanate from, or are sponsored by or affiliated
with the same source.
Last, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra.
Decision: The refusal to register is affirmed.