Mansfield Plumbing Products, LLC

Trademark Trial and Appeal Board

Oct 2, 2013

No. 85475240 (T.T.A.B. Oct. 2, 2013)

4

Mailed:
October 2, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
________
In re Mansfield Plumbing Products, LLC
________
Serial No. 85475240
_______
Rodney L. Skoglund and Robert J. Diaz, of Renner Kenner Greive Bobak Taylor &
Weber, representing Mansfield Plumbing Products, LLC
Shaila E. Lewis, Trademark Examining Attorney, Law Office 114 (K. Margaret Le,
Managing Attorney).
_______

Before Zervas, Wolfson, and Gorowitz, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
On November 17, 2011, Mansfield Plumbing Products, LLC (“applicant”)
applied to register the mark RESTORE (in standard characters) for “bath tubs;
shower tubs” in International Class 11, on the basis of applicant’s bona fide intent
to use the mark in commerce.
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), contending that
applicant’s use of its mark on the listed goods is likely to cause confusion with the
This Opinion is Not a
Precedent of the TTAB
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following two registrations: Reg. No. 3888742 for the mark RESTORE1 (in standard
characters) and Reg. No. 4001864 for the mark ,2 both for “retail store
services featuring household goods, appliances, and building and home
improvement materials” in International Class 35. Both registrations are owned by
the same entity.
When the refusal was made final, applicant appealed and filed a request for
reconsideration. After the examining attorney denied the request for reconsider-
ation, the appeal was resumed. We affirm the refusal to register.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).

1 Registered December 14, 2010.
2 Registered July 26, 2011.
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Discussion
A. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under the first du Pont factor, 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 impressions that confusion
as to the source of the goods offered under the respective marks is likely to result.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
There is no dispute that registrant’s standard character mark RESTORE is
identical to applicant’s standard character mark RESTORE in appearance and
sound. With regard to connotation and commercial impression, applicant argues
that the marks have different connotations and meanings and therefore different
commercial impressions. When used in connection with its own goods, applicant
argues that the term “restore” means “being renewed” in the sense that someone
“having problems with using bath tubs or shower tubs because of age, balance or
agility, can now restore or renew his/her use of tubs again with the new RESTORE
tubs.” Brief at 11. Applicant contrasts this with the connotation of the term used in
association with registrant’s services, which applicant contends is a play on the
word “store.” In other words, registrant is “a reselling store, wherein second hand
goods, namely, household goods, appliances and building and home improvement
materials, are resold.” Brief at 2.
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We begin by taking judicial notice of the dictionary definitions of the word
“restore,” submitted by the examining attorney with her brief: “to bring back into
existence, use, or the like; reestablish,” “to bring back to a former, original, or
normal condition, as a building, statue, or painting,” or “to give back; make return
or restitution of (anything taken away or lost).”3 On its website, registrant
describes itself as:
a resale business that sells new and used building
materials and home improvement items to the general
public. All materials are donated by local retail
businesses, building contractors, suppliers and
individuals, and are made available for sale to the public
at 50% to 90% below retail prices. All donations are tax
deductible, and proceeds go back to the local Habitat for
Humanity Affiliate to build houses for families in our
community. … Most of the material we receive was
destined to be thrown away. By shopping at the ReStores
you’re helping … to raise funds for a great cause. 4
Thus, the same connotations of giving back, returning to an original condition, and
making whole apply equally to the term “restore,” when used as a mark for
registrant’s services, as they do when applied to applicant’s goods.
Applicant’s argument that the mark is typically used by registrant as
“ReStore” (i.e., in upper and lower-case letters) and that registrant may refer to one
of its retail outlets as a “ReStore,” does not persuade us that the marks are

3 The examining attorney’s request that we take judicial notice of these definitions is
granted. “During an appeal, the Board may take judicial notice of dictionary definitions
retrieved from online sources when the definitions themselves are derived from dictionaries
that exist in printed form.” In re Petroglyph Games, Inc., 91 USPQ2d 1332, 1334 n.1 (TTAB
2009). See also, In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006) (“The Board
has a long history of taking judicial notice of definitions excerpted from print dictionaries
and submitted after appeal”); and TBMP § 1208.04 (2013).
4 At http://www.restorenova.org. Accessed April 11, 2013; attached to the denial of
applicant’s Request for Reconsideration.
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dissimilar in connotation and commercial impression. Because the mark is
registered as a standard character mark, it may be displayed in any font, style or
color, including a style that does not accentuate the word “store” by using upper and
lower-case letters. Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344,
1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (standard character mark may be
displayed in any font, style or color). The fact that the word “store” is embedded in
the word “restore” does support applicant’s argument that the standard character
mark RESTORE will be seen primarily as a play on the word “store.” This factor
weighs heavily in favor of a finding of likelihood of confusion. Kohler Co. v. Baldwin
Hardware Corp., 82 USPQ2d 1100, 1109 (2007) (finding identical marks to have the
same appearance, pronunciation, connotation and commercial impression).
Turning to the design mark, , we are not persuaded by applicant’s
argument that the additional design features, or the possibility that consumers
would perceive the word “store” as embedded within the mark, serve to adequately
distinguish the marks and avoid confusion. Indeed, even with respect to the design
mark, applicant concedes that the “wording [therein] is identical to that of
applicant’s mark and the sound of the marks are very similar.” Brief at 7. As to
connotation and commercial impression, the mark is dominated by its literal
element “restore.” Words generally dominate over design elements in a mark
because the word portion is more likely to be impressed upon a purchaser’s memory
and to be used when requesting the goods or services. In re Dakin’s Miniatures,
Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). See also, In re Viterra Inc., 671 F.3d
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1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). The wording appears in larger,
more prominent type than the small design feature of the house. Consumers will
call for registrant’s services using the word “restore” rather than by referring to the
design. We have frequently observed that 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 the ultimate conclusion rests on a consideration of the marks in
their entireties.” In re National Data Corp., 224 USPQ at 751. Even if consumers
understand the play on the word “store,” they are not likely to fail to recognize the
word “restore” in the mark and make the connection between the term and the
recited services. For these reasons, we find applicant’s mark to be similar in
connotation and overall commercial impression to registrant’s design mark.
Applicant has downloaded pages from two third-party websites and
submitted copies of several third-party registrations in an attempt to show that the
cited marks are weak. The weakness of a particular mark is generally determined
in the context of the number and nature of similar marks in use in the marketplace
in connection with similar goods and/or services. See Nat’l Cable Television Ass’n,
Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 19 USPQ2d 1424, 1430 (Fed. Cir.
1991); In re du Pont, 177 USPQ at 567. Turning first to the websites, one of the
websites5 consists of an online advertisement for “RESTORE,” an “architectural

5 It is noted that the website addresses for these websites have been mostly obliterated.
While we can decipher that the material comes from the Internet, it is unclear from where,
and when, they were downloaded. Inasmuch as the examining attorney did not object to
the evidence, we have considered it, but excerpts of evidence obtained from the Internet
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salvage clearing house” in Philadelphia, advertising “architectural salvage,
deconstruction services as well as design consultations” and “never-been-used house
parts at below retail prices.”6 The second website is for “The RE Store,” located in
the state of Washington. Across the top of the site, The RE Store advertises
“building materials, deconstruction and field services, do it yourself reuse and
more.”7 These two instances are too few in number to support a finding that
registrant’s marks are weak.
The five third-party registrations submitted by applicant are similarly
unhelpful to show that registrant’s marks are entitled to only a narrow scope of
protection because the goods and services covered are not related to any of
applicant’s goods or registrant’s services.8 Two of the registrations cover soil
conditioners,9 one covers water purification units,10 one covers non-metal edging for

should contain the complete URL address of the website as well as the time and date the
search was conducted. Safer Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB
2010). Cf., In re White, 73 USPQ 2d 1713, n.5 (TTAB 2004) (evidence put into record by
examining attorney considered where applicant did not object).
6 According to applicant, these web pages were printed “from a website for Architectural
Salvage Philadelphia Pennsylvania.” Request for Reconsideration at 7. The web pages
show the mark depicted as “ReStore” (i.e., with upper and lower case letters) in the body of
the text.
7 According to applicant, these web pages were printed “from a website advertising two
stores in Washington State.”
8 Applicant submitted six total registrations, but Reg. No. 2600502 for the mark has
expired. Accordingly, we have given it no consideration. An expired registration “is not
evidence of anything except that the registration issued.” TBMP § 704.03(b)(1)(A) and
cases cited therein.
9 Reg. Nos. 1049315 and 1681698 for the mark RESTORE (typed format), both registrations
renewed.
10 Reg. No. 3659015 for the mark RESTORE (standard characters); registered July 21,
2009.
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gardens,11 and one covers “property condition assessment” services.12 Even had the
third-party registrations covered related goods or services, absent evidence of actual
use, they would be of limited probative value in showing a crowded field and
relative weakness. Tektronix, Inc. v. Daktronics, Inc., 189 USPQ 693, 694 (CCPA
1976).
The evidence falls far short of proving that registrant’s marks exist in a
crowded marketplace and that the cited marks should enjoy only a narrow scope of
protection.
Therefore, the first du Pont factor favors a finding of likelihood of confusion.
B. Comparison of the Goods and Services
We next turn our attention to a comparison of the similarity or dissimilarity
and nature of the goods and services as they are identified in the registrations and
application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled
that it is not necessary that the respective goods/services be identical or even
competitive in order to find that they are related for purposes of our likelihood of

11 Reg. No. 3709358 for the mark RESTORE (standard characters); registered November
10, 2009.
12 3304186 for the mark RESTORE (standard characters); registered October 2, 2007;
Sections 8/15 declaration accepted and acknowledged. The complete recitation of services is
“property condition assessment in the nature of assessing pavement conditions and
recommending construction materials to be used for milled hot in-place recycling paving
processes; testing and design of paving materials; providing engineering, road pavement
planning, technical research and engineering technical support services; and quality control
services for others during road construction.” None of these services are related to
registrant’s services.

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confusion analysis. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080,
1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322,
1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). Because applicant’s mark is identical
to registrant’s standard character mark, the degree of similarity between the
parties’ goods and services that is required to support a finding of likelihood of
confusion declines. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-1689
(Fed. Cir. 1993); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB
2002); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001).
Applicant’s goods are bath and shower tubs. Registrant offers retail store
services featuring household goods, appliances, and building and home
improvement materials. Applicant argues that the services description for the cited
registrations do not explicitly include either “bath tubs” or “shower tubs.” However,
as we have stated above, it is not necessary that the respective goods/services be
identical or even competitive in order to find that they are related. The goods and
services need only be sufficiently related that consumers would be likely to assume,
upon encountering the goods and services under similar marks, that they originate
from, are sponsored or authorized by, or are otherwise connected to the same
source. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). That is,
the issue is not whether consumers would confuse the goods and services
themselves, but rather whether they would be confused as to the source of the goods
and services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
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We have held that confusion is likely where one entity uses a mark for goods
and another uses the same or a similar mark for a retail store that sells such goods.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988) (general merchandise stores and furniture); The Wet Seal, Inc. v. FD
Management, Inc., 82 USPQ2d 1629, 1640, (TTAB 2007) (women’s clothing stores
and cosmetics). See also, J. Thomas McCarthy, Trademarks and Unfair
Competition §24:25 (2013) (“[w]here the services consist of retail sales services,
likelihood of confusion is found when another mark is used on goods which are
commonly sold through such a retail outlet.”).
Evidence obtained from the Internet may be used to support a determination
under Trademark Act Section 2(d) that goods and/or services are related. See, e.g.,
In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll
Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). Such evidence may include
evidence that registrant itself sells bath or shower tubs. Cf. Hyper Shoppes, 6
USPQ2d at 1026 (evidence introduced to show that applicant sells furniture
probative in deciding whether furniture and store services were related.)
The examining attorney submitted the following evidence showing the sale of
bath tubs, spa tubs, and shower bases in registrant’s retail stores:
A copy of registrant’s website. Under the tab marked
“ReStore,” registrant lists: “items typically available at
the ReStore.” Listed among the goods are “bathtubs”;13
The online version of the April 16, 2013 edition of the
Akron Beacon. An employee of registrant’s store in Akron

13 At http://www.habitatspringfieldmo.org/habit-for-humanity-springfield-restore/restore-
products. Accessed September 15, 2012; attached to Final Office action.
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is pictured sitting on a “spa tub displayed in the newly
explanded [sic] ReStore facility”;14 and
A press release from Jacuzzi Brands Corp. announcing
that Jacuzzi donated over 2,000 shower bases to
registrant for use in houses built by registrant or “for sale
directly to the public at [registrant’s] ReStore retail
locations.”15
The evidence also shows that registrant sells various bathroom items. The
examining attorney submitted an additional page from registrant’s website, which
declares under the heading “Bathroom” that one might find:
[E]verything from sinks and toilets to soap dishes, tile,
and vanities. Available at both ReStore locations [in
Northern Virginia].16
Applicant also submitted a copy of web pages from www.re-store.com,
showing that registrant sells “pedestal sinks and new lavatories” under the
RESTORE marks.17
The above evidence of use shows that registrant’s retail store services
actually encompass goods of the type listed in applicant’s application.
Applicant’s reliance on In re The PaperClip Club, LLC, slip. op., 2010 WL
985345 (TTAB March 2, 2010) is misplaced. In that case, the Board found that the
Office had failed to establish, on the basis of the evidentiary record presented, that
applicant’s “on-line wholesale and retail store services featuring office and home
office supplies” and registrant’s “office and residential furniture” were similar or

14 At http://bath.ohio.com. Accessed March 31, 2013; attached to denial of Request for
Reconsideration.
15 At http://www.jacuzzi.com. Accessed April 10, 2013; attached to denial of Request for
Reconsideration.
16 At http://www.restorenova.org. Accessed April 11, 2013; attached to denial of Request for
Reconsideration.
17 Accessed March 20, 2013; attached to applicant’s Request for Reconsideration.
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related in such a way as to result in source confusion. Although it found the marks
PAPERCLIP CLUB and PAPERCLIP to be similar, the Board reversed the refusal
to register, noting that there was no evidence “that purchasers understand or refer
to office furniture such as desks, chairs, and bookcases as office supplies.” Id. at *3.
In the case at hand, as shown by the evidence, purchasers will understand that
applicant’s bath and shower tubs are typical household goods or building materials
that are sold through retail outlets, such as registrant’s.
C. Channels of Trade; Classes of Purchasers
Applicant argues that registrant’s goods may be secondhand and sold only
through its own outlets “at a lower cost to less fortunate consumers,” while
applicant intends to sell its goods “through sales reps and wholesales and big box
DIY stores to much wealthier consumers.” Brief at 19. Thus, applicant argues, the
marketing channels “are so difference and directed to completely different
individuals that there is almost no chance that a consumer would be mistaken” Id.
Applicant’s arguments are speculative and not supported by the record, which, as
discussed supra, shows that the goods and services overlap. Moreover, because
there are no limitations as to channels of trade or classes of purchasers in the
description of goods in applicant’s application, it is presumed that the goods move in
all channels of trade normal for those goods, and that they are available to all
classes of purchasers for those goods. See Paula Payne Products Co. v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera-
Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992). Cf., The Wet Seal, 82 USPQ2d at 1641 (“Further,
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where products are closely related, merely because the products in fact would not be
sold together would not necessarily prevent consumers, when encountering the
products in different outlets, from believing the products come from the same
source.”). Applicant’s trade channels could include registrant’s retail outlets. Its
customers are likely to be the same classes of customers of registrant’s services,
which would include ordinary members of the general public.
Accordingly, these du Pont factors weigh in favor of a finding of likelihood of
confusion.
D. Balancing the factors.
In view of the facts that the cited standard-character mark RESTORE is
identical to applicant’s mark, the cited mark is similar, and applicant’s
goods are the type which are likely to be sold through registrant’s retail stores, we
find that applicant’s registration of the mark RESTORE is likely to cause confusion.
The third-party use and registration evidence is unpersuasive of a different result.
Decision: The refusal to register applicant’s mark RESTORE is affirmed.