My Kids Room Inc.

Trademark Trial and Appeal Board

Sep 3, 2003

No. 75742897 (T.T.A.B. Sep. 3, 2003)

Mailed:
September 3, 2003
Paper No. 16
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re My Kids Room Inc.
________
Serial No. 75/742,897
_______
Ezra Sutton for My Kids Room Inc.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Seeherman and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
My Kids Room Inc. seeks registration on the Principal
Register for the mark MYKIDSROOM for “retail store services
in the field of juvenile furniture,” in International Class
35.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, if it is used in
1 Application Serial No. 75/742,897 was filed on July 1,
1999, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/742,897
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connection with the recited services, so resembles the mark
MY ROOM registered for “juvenile bedroom furniture,” in
International Class 20,2 that it would be likely to cause
confusion, to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal, but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant contends that applicant’s services are
easily differentiated from registrant’s goods; that the two
marks create different commercial impressions; and that a
review of the federal register shows that the cited mark is
weak as applied to juvenile furniture.
By contrast, the Trademark Examining Attorney takes
the position that applicant’s services are closely related
to registrant’s goods; that the respective marks create
substantially similar overall commercial impressions; and
that applicant has failed to demonstrate the weakness of
marks such as registrant’s in the field of juvenile
furniture.
2 Registration No. 1,600,909, issued on the Principal
Register on June 12, 1990; Section 8 affidavit accepted and
Section 15 affidavit acknowledged; renewed.
Serial No. 75/742,897
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Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Despite applicant’s arguments to the contrary,
applicant’s retail store services in the field of juvenile
furniture are closely related to registrant’s juvenile
bedroom furniture. We must presume that the juvenile
furniture to be marketed through applicant’s retail store
will include bedroom furniture for juveniles. Contrary to
applicant’s contention, it is well recognized that
confusion is likely to occur from the use of the same or
similar marks for goods, on the one hand, and for services
involving those goods, on the other. See 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]; and Steelcase Inc. v.
Steelcare Inc., 219 USPQ 433 (TTAB 1983) [STEELCARE INC.
Serial No. 75/742,897
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for refinishing of furniture, office furniture, and
machinery held likely to be confused with STEELCASE for
office furniture and accessories]. Hence, for purposes of
this critical du Pont factor, we find applicant’s services
to be closely related to registrant’s goods.
Moreover, turning to the du Pont factors dealing with
the similarity or dissimilarity of established, likely-to-
continue trade channels, as well as the conditions under
which and buyers to whom sales are made, we must presume
that applicant’s services and registrant’s goods will move
through all of the normal channels of trade to all of the
usual purchasers of the goods and/or services of the type
identified. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). Juvenile bedroom
furniture could be sold in retail stores offering juvenile
furniture, and both the goods and services would be offered
to the same class of purchasers, namely, the general
public.
Accordingly, then, we turn to the question of whether
the respective marks are sufficiently similar that their
use in connection with these closely-related goods and
services would be likely to cause confusion.
Serial No. 75/742,897
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Despite applicant’s arguments about the overall
dissimilarity of the marks, the Trademark Examining
Attorney continues to emphasize the similarity of the marks
based upon the dominant MY___ROOM designation found in both
of these marks.
Obviously, there are differences between the marks, in
that applicant’s mark contains the word KIDS – a word not
present in the cited mark. However, a determination of
likelihood of confusion is not made on a purely mechanical
basis, counting the number of words, or even letters, that
are the same or different. It is a well-established
principle that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, “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
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). The proper test for determining the issue of
likelihood of confusion is the similarity of the general
commercial impression engendered by the marks – not
specific differences one can identify when the marks are
subjected to a side-by-side comparison. See Johann Maria
Serial No. 75/742,897
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Farina Gegenuber Dem Julichs-Platz v. Chesebrough-Pond,
Inc., 470 F.2d 1385, 176 USPQ 199, 200 (CCPA 1972).
As to sound and appearance, these two marks have
strong similarities. They both begin with MY and end with
ROOM. Yet as noted above, because the additional word KIDS
does form part of applicant’s mark, we have not failed to
take it into consideration. Nonetheless, as applied to
retail store services in the field of juvenile (or kids’)
furniture, it is clearly a descriptive component in
applicant’s mark, and as such, it has been accorded less
source-identifying significance. Simply adding a
descriptive term to a registered mark in this fashion is
not sufficient to distinguish it from the registrant’s mark
and thereby obviate a likelihood of confusion. Coca-Cola
Bottling Company v. Joseph E. Seagram & Sons, Inc., 526
F.2d 556, 188 USPQ 105 (CCPA 1975). The word KIDS is also
less prominent in appearance because it is sandwiched in
the middle of applicant’s mark.
As to the connotations of the respective marks, we
find both marks connote the same thing – namely, a child’s
bedroom. The logical difference, of course, is that in the
case of registrant’s mark, it would be seen through the
eyes of the child, while in applicant’s mark, it would be
seen from the parent’s perspective.
Serial No. 75/742,897
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Despite this nuance, we find that consumers familiar
with the registrant’s mark MY ROOM used in connection with
items of juvenile furniture would be likely to assume, upon
seeing the term MYKIDSROOM for a retail establishment
selling the same goods, that the goods and services emanate
from the same source.
Accordingly, as to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation, we find
that when these marks are considered in their entireties –
especially when we take into account the fact that the
ordinary consumers to whom items of juvenile furniture are
sold have imperfect recollection and will not necessarily
be comparing these marks on a side-by-side basis – the
marks are quite similar as to overall commercial
impression.
Finally, we look into the number and nature of similar
marks in use on similar goods and/or services in order to
determine how broad a scope of protection to accord to
registrant’s mark. In this context, we note that applicant
has consistently argued as follows:
There are currently at least 13 federal
registrations and approved applications in
Class 020 and Class 035 which include the
term MY and/or ROOM and variations thereof…
(Applicant’s appeal brief, p. 2).
Serial No. 75/742,897
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Third-party registrations are not evidence of
commercial use of the marks shown therein, or what happens
in the marketplace, or that consumers are familiar with the
third-party marks. See Olde Tyme Foods Inc., v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d, Appeal No. 92-1086 (Fed. Cir.
June 5, 1992).
The thirteen third-party registrations assembled by
applicant do demonstrate that the word “room” is a
suggestive term for furniture. However, the connotations
of these marks are distinctly different from the
connotation shared by the cited registration and the
involved application.3
While all thirteen of these third-party registrations
contain the word ROOM, contrary to applicant’s
representations (e.g., “ … include the term MY and/or ROOM
and variations thereof…”), none also contains the word MY.
This leads us to the inexorable conclusion that other than
the registration cited by the Trademark Examining Attorney,
3 For example,the marks in these registrations are: ROOM
GEAR, BEDROOM.COM, ROOM BOOM, ROOM BY WELLIS, THE LOCKER ROOM,
ROOM SENSE, BEDROOM EYES, THE CHANGING ROOM, CLEANROOMS, DESIGNER
ROOMS, ROOM EXPRESS and ROOMS OF EUROPE.
Further, a thorough examination of the identified goods and
recited services shows that none of these registrations makes any
specific reference to furniture for juveniles.
Serial No. 75/742,897
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applicant was not able to locate a single federal trademark
registration for any goods or services in the general field
of furniture (and much less as applied specifically to
children’s furniture) having a combination of the words MY
and ROOM within the same mark. Hence, we find that
registrant’s mark has not been shown to be weak, and as a
result should not be accorded a narrowed scope of
protection.
In conclusion, we find that applicant’s services are
closely related to registrant’s goods and that the
respective marks create substantially similar overall
commercial impressions.
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is hereby affirmed.