Milliken & Co.

Trademark Trial and Appeal Board

May 24, 2001

No. 75655478 (T.T.A.B. May. 24, 2001)

5/24/01 Paper No. 13
CEW
UNITED ST
Trad
Timothy J. Monahan
Milliken & Company
Florentina Blandu,
112 (Janice O’Lear
Before Hanak, Walt
Judges.
Opinion by Walters
Milliken & Co
register the mark
commercial use.”1
term TILES apart f
The Trademark
registration under
U.S.C. 1052(d), on
resembles the mark

1 Serial No. 75/655,478
based on an allegation
commerce. Applicant c
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.ATES PATENT AND TRADEMARK OFFICE
___________
emark Trial and Appeal Board
___________
In re Milliken & Company
___________
Serial No. 75/655,478
___________
, Esq. and Thomas L. Moore, Esq. for
.
Trademark Examining Attorney, Law Office
, Managing Attorney).
____________
ers and Chapman, Administrative Trademark
, Administrative Trademark Judge:
mpany has filed a trademark application to
MILLIKEN IMAGE TILES for “carpet tiles for
Applicant entered a disclaimer of the
rom the mark as a whole.
Examining Attorney has finally refused
Section 2(d) of the Trademark Act, 15
the ground that applicant’s mark so
IMAGE, previously registered for

, in International Class 27, filed March 8, 1999,
of a bona fide intention to use the mark in
laims ownership of several other registrations.
Serial No. 75/655,478
2
“carpeting,”2 that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
We consider, first, the goods involved in this case.
The Examining Attorney contends that applicant’s carpet
tiles are closely related to registrant’s carpeting.
Applicant does not contend otherwise. In support of her

2 Registration No. 2,031,333 issued January 21, 1997, to Image
Industries, Inc., in International Class 27.
Serial No. 75/655,478
3
position, the Examining Attorney includes copies of third-
party registrations of marks for goods that include both
carpeting and carpet tiles.
We agree with the Examining Attorney and conclude that
the goods involved herein are closely related. The products
are essentially identical in that both parties’ goods are
floor coverings consisting of carpeting. The products
differ only in the “format” in which they are sold, i.e.,
rolls of carpeting versus carpet tiles.
Applicant seeks to distinguish its goods from those of
registrant by limiting its identification of goods to
“commercial use.” However, registrant’s identification of
goods does not contain any limitations as to channels of
trade or classes of purchasers and, thus, encompasses
carpeting for commercial use. Because the parties’
respective goods are closely related, these goods must be
deemed to be sold in the same or similar commercial channels
of trade to the same class of commercial purchasers. See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
In limiting its goods to commercial use, applicant also
argues that the class of purchasers of its goods is
exclusively professionals such as architects and, therefore,
its purchasers are sophisticated and able to distinguish the
marks herein. However, this argument is unavailing because
Serial No. 75/655,478
4
it is not supported by any evidence regarding the nature of
the purchasers of its products.
Further, even if we were to conclude that the goods of
the parties are marketed under their respective marks only
to professionals in the field, we note that highly educated
and sophisticated professionals are not immune from
confusion when the marks are confusingly similar and the
goods with which they are used are as closely related as the
goods herein. See In re General Electric Company, 180 USPQ
542 (TTAB 1973).
We note that, in determining likelihood of confusion, a
lesser degree of similarity between two parties’ marks is
required when the marks are applied to identical or closely
related goods or services. HRL Associates, Inc. v. Weiss
Associates, Inc., 12 USPQ2d 1819 (TTAB 1989).
We turn, next, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
Serial No. 75/655,478
5
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). Furthermore,
although the marks at issue 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 1056, 224 USPQ 749 (Fed. Cir.
1985).
The Examining Attorney contends that “image” is an
arbitrary term in connection with carpeting and carpet
tiles; and that applicant’s evidence of third-party
registrations3 for other “image” marks for flooring products
does not establish that “image” is a weak mark in this field
because the additional matter in those marks gives those
marks entirely different commercial impressions than the two
marks involved in this case. The Examining Attorney
contends that the MILLIKEN portion of applicant’s mark does
not distinguish it from the registered mark, and that the

3 Although applicant submitted a mere list of third party registered
marks, which is improper evidence of those registrations, the Examining
Attorney did not object and, in fact, discussed the registered marks.
Therefore, we consider the list of third-party registrations to be of
record in this case for whatever limited value it may have. We can draw
no conclusions from this regarding the strength or weakness of IMAGE in
connection with carpeting and carpet tiles. Not only are the listed
marks and goods different from the marks and goods involved in this
case, we do not know how many owners are involved in this list or the
facts surrounding the registration of each of the listed marks.
Serial No. 75/655,478
6
addition of applicant’s “house mark,” MILLIKEN, increases
the likelihood of confusion.
Applicant argues that “image” is a weak, suggestive
term in connection with flooring products, citing its list
of third-party registrations; and that MILLIKEN is a famous
mark in connection with applicant’s carpet products and, as
such, effectively distinguishes its mark from registrant’s
mark.
First, we note that there is no evidence that IMAGE is
a weak mark in connection with carpeting. Further, even
weak marks are entitled to protection against the subsequent
registration of confusingly similar marks.
We find that applicant has simply incorporated
registrant’s mark in its entirety into its mark. The term
TILES at the end of applicant’s mark is at least merely
descriptive in connection with applicant’s identified goods,
if not generic, and it adds little to the mark. Contrary to
applicant’s contention, registrant’s mark IMAGE and the
IMAGE TILES portion of applicant’s mark, for the goods
herein, are substantially similar in sound, appearance,
connotation and commercial impression.
While the addition of MILLIKEN as the first word in
applicant’s mark changes the sound and appearance of
applicant’s mark, we believe the addition of MILLIKEN will
be perceived as the addition of a house mark or trade name
Serial No. 75/655,478
7
to the IMAGE mark. As a general rule, the mere addition of
a trade name, house mark or the like to one of two otherwise
confusingly similar marks will not serve to avoid confusion
between them. See In re Champion Oil Co., 1 USPQ2d 1920
(TTAB 1986); In re Shawnee Milling Co., 225 USPQ 747 (TTAB
1985) and cases cited therein. In this case, we find that
the overall commercial impressions of applicant’s and
registrant’s marks are sufficiently similar that confusion
as to source or sponsorship is likely.4
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, MILLIKEN IMAGE TILES, and registrant’s mark, IMAGE,
their contemporaneous use on the closely related goods
involved in this case, carpet tiles and carpeting
respectively, is likely to cause confusion as to the source
or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.

4 While applicant asserts that MILLIKEN is a famous mark for carpet
products, applicant has provided no evidence in support of this
assertion.