Menard, Inc.

Trademark Trial and Appeal Board

Feb 1, 2005

No. 75558087 (T.T.A.B. Feb. 1, 2005)

Mailed:
1 February 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Menard, Inc.
________

Serial No. 75558087
_______

Caldwell A. Camero, Esq. for Menard, Inc.

Theodore McBride, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Hairston, Walters, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On September 24, 1998, Menard, Inc. (applicant),
applied to register the mark COMMANDER (typed) on the
Principal Register for goods ultimately identified as
“doors, door panels, door frames, door casings and door
units of metal sold exclusively through MENARDS® home
improvement retail stores” in Class 6.1 The examining
attorney has refused to register applicant’s mark under

1 Serial No. 75558087. The application contains an allegation of
a date of first use of February 1998 and in commerce of September
1998.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75558087
2
Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d))
because of a prior registration for the mark WEATHER
COMMANDER (typed) for “building materials, namely, non-
metal doors" in Class 19.2 When the examining attorney
maintained the refusal, this appeal followed.
Our principal reviewing court has set out thirteen
factors that are appropriate to consider in likelihood of
confusion cases. In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). More
specifically, the Court’s predecessor explained that “[t]he
fundamental inquiry mandated by § 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).
The first factor we will consider is the similarities
and dissimilarities of the marks. In this case, applicant
seeks registration for a mark comprising the single typed

2 Registration No. 2,646,047, issued November 5, 2002. The
underlying application was filed on June 4, 1998, and it was
amended to assert a date of first use of July 12, 2000.
Ser No. 75558087
3
word COMMANDER. The cited registration is also for a typed
mark but it is for the words WEATHER COMMANDER. Obviously,
there is one similarity, i.e., both marks contain the same
word COMMANDER, and one difference, i.e., registrant’s mark
adds the word WEATHER. Regarding the common word
COMMANDER, it appears to be arbitrary or suggestive when
used with doors. There is no evidence that the term is
weak or commonly used in the trade.
Furthermore, the examining attorney has included
evidence in the form of copies of trademark registrations
that supports his conclusion that the term WEATHER has at
least a highly suggestive connotation when used with the
goods. See, e.g., Registration No. 2,128,467 (WEATHER KING
for metal doors and windows); No. 1,344,433 (WEATHERBLOC
and design for insulated doors); No. 2,173,380 (WEATHERSAFE
for non-metallic doors); No. 2,126,602 (WEATHER BREAK for
thermal-barrier type sliding glass doors); No. 2,085,821
(WEATHER SHIELD for metal windows and doors); No. 2,368,864
(WEATHER STOPPER for vinyl windows and doors); and No.
808,327 (WEATHERBAR for steel and aluminum rolling doors).
In analyzing whether marks are similar, “there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of the mark, provided [that] the ultimate conclusion rests
Ser No. 75558087
4
on consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). In this case, we have considered the marks in
their entireties without disregarding the term “Weather,”
however, we find that both marks are dominated by the
identical, common term “Commander.” Registrant’s
additional term “Weather” will likely be viewed as simply a
modifier of the term “Commander,” e.g., a door that is
better suited to handle extremes in weather. Therefore,
the marks are similar in sound, appearance, meaning and
commercial impression. Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products). See also In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (Federal Circuit held that, despite the addition of
the words “The” and “Cafe” and a diamond-shaped design to
registrant’s DELTA mark, there was a likelihood of
confusion).
We have also considered the case of In re Swenson
Spreader Co., 222 USPQ 647 (TTAB 1984). In that case, the
board found that the mark FIELD COMMANDER for fertilizer
spreading machines for farm use was not confusingly similar
to the mark TURF COMMANDER for tractors and gang lawn
Ser No. 75558087
5
mowers therefor for industrial use only. The board found
that “[a]side from the military connotation which one might
ascribe to FIELD COMMANDER, the words ‘FIELD’ and ‘TURF’ in
both marks have only vaguely similar meanings and have
obvious differences in appearance and pronunciation.” 222
USPQ at 648.3 As discussed above, the differences between
COMMANDER and WEATHER COMMANDER are much less significant
and overall the commercial impressions of these marks would
be similar.
We next address the similarities and dissimilarities
in applicant’s and registrant’s goods. “Applicant concedes
that Applicant and Registrant’s goods are similar” (Reply
Br. at 6), but disputes the examining attorney’s contention
that they are identical. Applicant’s goods are “doors,
door panels, door frames, door casings and door units of
metal sold exclusively through MENARDS® home improvement
retail stores,” while registrant’s goods are “building
materials, namely, non-metal doors.” Certainly, both
identifications of goods include doors in general although
it is clear that the doors would be made of different
materials (metal v. non-metal). Setting aside for the
moment the limitation of where applicant’s goods are sold,
applicant’s and registrant’s goods are identical doors with

3 The board also found that the goods “differ sufficiently.” Id.
Ser No. 75558087
6
the difference being applicant’s doors are metal while
registrant’s goods are non-metal.
The examining attorney has included several
registrations that suggest that metal and non-metal doors
have been registered by the same entity under a common
mark. See, e.g., Registration No. 2,454,518 (metal doors
and door frames and non-metal doors and door frames); No.
2,176,615 (residential metal doors and residential non-
metal doors); No. 2,656,163 (metal windows and doors and
non-metal windows and doors); and No. 2,678,839 (Non-metal
doors and metal doors). These registrations are at least
some evidence that metal and non-metal doors would be sold
by the same entity under a common mark. 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 have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
In addition, we note that applicant itself sells non-
metal and metal exterior doors and advertises them on the
same page of its circular. See Advertising circular, p. 15
Ser No. 75558087
7
(“COMMANDER™ 32” or 36” Traditional Pre-Hung Exterior
Insulated Steel Doors” and “Storm & Screen Doors – 32” or
36” White Self-Storing Traditional – Tough textured vinyl
over a durable wood core”).
The record convinces us that non-metal and metal doors
would be sufficiently related such that, if similar marks
were used on these goods, there would be a likelihood of
confusion. However, in this case applicant has amended its
identification of goods to limit its doors and door-related
products to those that are sold exclusively through
MENARDS® home improvement retail stores. We must consider
the goods as they are identified in the application and the
cited registration. Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). However, even considered with
this limitation, the goods of applicant and registrant are
related.
We begin by noting that whether goods are related is
not a simple matter of showing that the goods will not
appear in the same store. Indeed, the fact that goods are
sold in the same stores does not establish that there is a
likelihood of confusion. See Federated Foods, 192 USPQ at
Ser No. 75558087
8
29 (“A wide variety of products, not only from different
manufacturers within an industry but also from diverse
industries, have been brought together in the modern
supermarket for the convenience of the customer. The mere
existence of such an environment should not foreclose
further inquiry into the likelihood of confusion arising
from the use of similar marks on any goods so displayed.”
Board’s finding of likelihood of confusion affirmed as to
some goods, reversed as to other) (emphasis in original).4
Second, “it has often been said that 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 goods or services are related in some manner
or that circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons
under circumstances which could give rise, because of the
marks used thereon, 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

4 Applicant also refers to In re Shoe Works Inc., 6 USPQ2d 1890
(TTAB 1988) and argues that the channels of trade limitation
established that there was no likelihood of confusion. However,
in that case, there were numerous other factors, not the least of
which was applicant’s submission of a detailed consent agreement
as well differences in the goods (shoes v. shorts and pants),
that resulted in the board’s conclusion that there was no
likelihood of confusion.
Ser No. 75558087
9
producers of each parties' goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984); In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In this case, even with the limitation of applicant’s
goods, the goods of applicant and registrant are likely to
be encountered by the same purchasers. Purchasers may be
interested in more than one type of door and purchasers
would shop in more than one store for doors. Furthermore,
a purchaser considering a replacement for a door would
likely consider the advantages of both metal and non-metal
doors. Purchasers who are comparison shopping for doors
could easily encounter registrant’s WEATHER COMMANDER non-
metal door in one store and then see applicant’s COMMANDER
metal door in applicant’s store. Consumers shopping in
this manner would likely believe that there was some
association or relationship between the source of COMMANDER
doors and WEATHER COMMANDER doors.5 Therefore, we conclude

5 In addition, nothing in registrant’s identification of goods
prevents registrant’s goods from being sold in applicant’s
stores. Of course, applicant may voluntarily refuse to carry
registrant’s doors, but there is nothing in the identification of
goods that would require this. We do not read limitations into
the identification of goods or services. Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
Ser No. 75558087
10
that applicant’s metal doors sold exclusively in its stores
and registrant’s non-metal doors are related.
Finally, applicant argues that “Applicant and
Registrant’s marks have coexisted in the marketplace for
several years and there have been no instances of actual
confusion.” Particularly, in an ex parte case, the absence
of actual confusion is hardly unusual and seldom is a
significant factor in finding that there is no likelihood
of confusion. Majestic Distilling, 65 USPQ2d at 1205 (“The
lack of evidence of actual confusion carries little
weight”). Applicant cites the case of In re General Motors
Corp., 23 USPQ2d 1465 (TTAB 1992) as support for its
position that the lack of actual confusion should be
significant in this case. However, the differences between
General Motors and applicant’s case are striking. General
Motors submitted evidence of nearly thirty years of
simultaneous existence without confusion of the GRAND PRIX
marks, the fame of its mark, and the sale of more than
2,600,000 vehicles. In applicant’s case, registrant’s date
of first use is listed as July 12, 2000, so there is a much
shorter period of potential overlap. In addition, the
evidence of use and lack of actual confusion is certainly
much weaker than in the General Motors case. Thus, there
is no basis to deviate from the normal rule that the lack
Ser No. 75558087
11
of actual confusion does not provide much support for the
argument that there is no likelihood of confusion.
Decision: The examining attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registered mark used in
connection with the identified goods under Section 2(d) of
the Trademark Act is affirmed.