Mannington Carpets, Inc.

Trademark Trial and Appeal Board

Nov 3, 2008

No. 76617521 (T.T.A.B. Nov. 3, 2008)

Mailed:
November 3, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mannington Carpets, Inc.
________

Serial No. 76617521
_______

Sherry H. Flax of Saul Ewing LLP for Mannington Carpets,
Inc.

Martha Santomartino, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mannington Carpets, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register ART
WITH A HEART (in standard characters) for “charitable
fundraising services” (Class 36).1 Registration has been
refused pursuant to Section 2(d) of the Trademark Act, 15

1 Application Serial No.76617521, filed October 21, 2004, and
asserting first use and first use in commerce as early as
November 1, 2003.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76617521
2
U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark ART WITH A HEART and design, as shown
below, previously registered for “providing visual art
classes to underserved and disadvantaged people,”2 that,
when used in connection with applicant’s services, it is
likely to cause confusion or mistake or to deceive.3

We affirm the refusal of registration.
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

2 Registration No. 3078119, issued April 11, 2006.
3 In the first Office action the Examining Attorney refused
registration on the basis of Registration, No. 1894068, owned by
a third party for ART FROM THE HEART for “paintings” (Class 16)
and “charitable fund raising services” (Class 36), and advised
applicant of two pending applications that might be cited against
applicant’s application if they were to mature into
registrations. One was the application that did eventually
mature into the registration that forms the basis for the current
refusal. The second application, Serial No. 78331266, for BIG
FEST ART WITH A HEART and design for “event management,
conducting art exhibits,” was abandoned. The Examining Attorney
later withdrew the refusal based on Registration 1804068,
presumably because when this registration was renewed the Class
36 services (charitable fund raising services) were deleted from
it, and it is now only for “paintings.”

Ser No. 76617521
3
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).
We turn first to a consideration of the marks.
Applicant has not discussed the factor of the similarity or
dissimilarity of the marks in its brief. Nor did applicant
make any comment about this factor in its reply brief, even
though the Examining Attorney stated in her brief that
“applicant does not even dispute the fact that the marks
themselves are virtually identical in appearance, sound and
meaning,” and “it may be assumed from the record,
therefore, and from applicant’s lack of any argument to the
contrary, that applicant concedes that the marks are indeed
virtually identical from a likelihood of confusion
standpoint”. Brief, p. 4.
We agree with the Examining Attorney that the marks
are virtually identical. In terms of appearance, the type
font and the design element in the registrant’s mark do not
serve to distinguish them. Because applicant seeks to
Ser No. 76617521
4
register its mark in standard character format, it could
use its mark in the same type font in which the
registrant’s mark is displayed. The design element of the
heart with paint brush design in the registrant’s mark
merely reinforces the words in the mark. We further note
that, as shown in the specimens submitted with applicant’s
application, applicant’s mark is accompanied by a heart
design. Further, the marks are identical in pronunciation,
connotation and commercial impression. This factor
strongly favors a finding of likelihood of confusion, as
the greater the degree of similarity between the
applicant's mark and the cited registered mark, the lesser
the degree of similarity between the applicant's goods or
services and the registrant's goods or services that is
required to support a finding of likelihood of confusion.
In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). If
the marks are the same or almost so, as is the case here,
it is only necessary that there be a viable relationship
between the goods or services in order to support a holding
of likelihood of confusion. In re Corcordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
We next consider the services and the channels of
trade. Applicant argues that the services are different,
and that, while applicant’s service of raising charitable
Ser No. 76617521
5
funds “may involve the sale of works of art,” brief p. 1,
it has nothing whatsoever to do with art classes.
Applicant also contends that the consumers/channels of
trade of the services are different, asserting that
applicant’s consumers are institutions and individuals who
make donations, while the registrant’s consumers would be
disadvantaged or underserved people who take art classes.
Thus, applicant asserts that the Examining Attorney has
erroneously compared the consumers of the registrant’s
services with the putative beneficiaries of applicant’s
services, rather than its consumers.
The Examining Attorney does not claim that applicant’s
charitable fund raising services and the registrant’s
service of providing visual art classes is the same.
However, she points out that it is not necessary that the
goods or services 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 or
services 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
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re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
It is the Examining Attorney’s position that the
Office has shown the necessary degree of relatedness
because “it is likely that the relevant consumer would
believe that applicant’s charitable fundraising was to
benefit registrant’s visual art classes for underserved and
disadvantaged people.” Office action mailed March 7, 2007.
Essentially, she contends that the registrant’s art classes
for the underserved and disadvantaged would be viewed as a
charitable cause, and that applicant’s charitable fund
raising would be viewed as being for the benefit of that
cause.
Applicant’s charitable fund raising services
essentially have two groups of consumers: 1) the charitable
organizations themselves for which applicant raises money,
such as organizations that would directly engage applicant
to perform fund raising services for them or to which
applicant would give funds that applicant had collected for
their benefit; and 2) the people who would make donations
to those charitable organizations as a result of
applicant’s fund raising efforts. Neither of these groups
is likely to be the same consumers of the registrant’s
services, since those services are directed to people who
Ser No. 76617521
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are underserved and disadvantaged. On the other hand, the
fact that applicant’s and the registrant’s “consumers” do
not directly overlap does not mean that one group will have
no contact with the other’s mark or services, such that, as
is the case when goods are sold in separate channels of
trade, there is no opportunity for confusion to occur. The
consumers for charitable fund raising services are members
of the general public who donate to charity, in effect, the
public at large. They also may be aware of programs that
help underserved and disadvantaged people, particularly
because of the public-service/charitable aspect of such a
service. The Examining Attorney provides the example of a
person who
volunteers at the registrant’s ART WITH
A HEART program for the disadvantaged
and underserved, or sees literature for
such program, or attends a fund raiser
for such program, and then one day
comes across ART WITH A HEART
charitable fund raisers.

Brief, p. 9.
Thus, even though the channels of trade and the direct
consumers of the services are different, the consumers of
applicant’s charitable fund raising services are likely to
encounter both services under conditions that could,
because of the similarity of the marks, give rise to the
Ser No. 76617521
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mistaken belief that they are associated with or sponsored
by the same entity.
We note applicant’s argument that “there are countless
charitable organizations that provide assistance to other
causes [than those identified in the cited registration],
such as environmental, conservationist, museums, performing
arts, medical research, leadership, religious, and so on,
to which Applicant might provide its fundraising services.”
Brief, p. 2. This argument is not persuasive. Applicant
has identified its services as “charitable fundraising
services,” without limitation as to any particular type of
charity. Accordingly, we must construe the identification
to include any type of charity, including one that provides
art classes to underserved and disadvantaged people.
Although not discussed by applicant or the Examining
Attorney, we also consider the du Pont factor of the
conditions of purchase to favor a finding of likelihood of
confusion. As noted, the consumers of applicant’s services
include anyone who donates to charities. Charitable
fundraising may involve not only soliciting large donations
from wealthy individuals and foundations, but door-to-door
requests in which individuals are requested to give small
amounts of money. The latter group may not study the
promotional materials, or exercise great deliberation or
Ser No. 76617521
9
care in deciding to make their donation. Rather, they may
simply hear that the solicitor is doing ART WITH A HEART
fund raising and assume that the fund raising is connected
with or on behalf of the registrant’s service of providing
art classes to the underserved or disadvantaged.
In making our decision we have considered the two
third-party registrations submitted by applicant, namely,
Registration No. 2691000 for ART FROM THE HEART for
“education in the field of music, dance, singing and
acting” and Registration No. 2737117 for ART OF THE HEART
for “educational programs, namely, conducting etiquette
classes for children.” Applicant argues that these
registrations “indicate the willingness of the USPTO to
register similar marks for similar services.” Brief, p. 2.
We cannot conclude from these two registrations, however,
that there can be no likelihood of confusion between
applicant’s and the registrant’s marks. Aside from the
fact that two registrations hardly shows a pattern by the
Patent and Trademark Office of registering such marks, the
subject matter of the third-party educational services,
particularly the etiquette classes, is very different from
the art classes which are the subject of the registrant’s
services. We also point out that third-party registrations
do not prove that the marks shown therein are in use. See
Ser No. 76617521
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In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). Therefore we cannot say that the public has been so
conditioned to seeing third-party marks that rhyme ART and
HEART that they would distinguish applicant’s and the
registrant’s mark based on the differences in the services.
We recognize that third-party registrations can be used in
the manner of dictionary definitions, to show that a term
has a significance in a particular industry. Here, we do
not need these registrations to show that ART WITH A HEART
for both the registrant’s and applicant’s services has a
suggestive connotation. However, as indicated previously,
both marks convey the same suggestive connotation.
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, it is a well-established
principle that such doubt must be resolved in favor of the
registrant and prior user. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.