Perfect Fit Industries, Inc.

Trademark Trial and Appeal Board

Jun 12, 1997

EX (T.T.A.B. Jun. 12, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB
Paper No. 14
RFC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Perfect Fit Industries, Inc.
________
Serial No. 74/593,376
_______
Ronald L. Panitch of Panitch Schwarze Jacobs & Nadel, P.C.
for Perfect Fit Industries, Inc.
Jeffrey R. Cohen, Trademark Examining Attorney, Law Office
102 (Myra K. Kurzbard, Managing Attorney).
_______
Before Cissel, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On November 1, 1994, applicant applied to register the
mark "FINISHING TOUCHES" on the Principal Register for
"pillows," in Class 20, and for "comforters, bedspreads,
curtains, bed ruffles, and pillow shams," in Class 24. The
application was based on applicant's assertion that it
possessed a bona fide intention to use the mark in commerce.
The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that applicant's mark,
if applied to the goods set forth in the application, would
Ser No. 74/593376
2
so resemble the identical mark, "FINISHING TOUCHES,"
registered for "mail order catalog services featuring home
furnishings and accessories,"1 in Class 42, that confusion
would be likely.
Applicant responded with arguments that confusion was
not likely, but the Examining Attorney was not persuaded,
and the refusal to register was made final on August 1,
1995. Attached to the final refusal were copies from the
mail order catalog of a company called Sugar Hill. The
catalog shows a wide variety of home furnishings and
accessories, including bedspreads, curtains, bed ruffles and
shams. Also submitted by the Examining Attorney were copies
of three registrations. One shows a mark registered for
retail store and mail order services featuring a variety of
housewares and furnishings, including bed linens.2 The
other two third-party registrations are both for a single
mark, and both registrations are owned by Williams-Sonoma,
Inc.3 One lists the goods as various types of linens,
including bed sheets and pillow cases, and the other lists
"catalog mail order services for furnishings and accessories
for the bed and bath." The Examining Attorney argued that
the third-party registrations and the Sugar Hill mail order

1Reg. No. 1,712,802, issued to Museum Publications of America,
Inc. on Sept. 1, 1992, based on a claim of first use in commerce
on Aug. 26, 1991.
2Reg. No. 1,469,515, issued to Euromarket Designs, Inc. on Dec.
15, 1987; combined Section 8 and 15 affidavit filed.
3Reg. Nos. 1,663,476 and 1,661,260, issued Nov. 5, 1991 and Oct.
15, 1991, respectively.
Ser No. 74/593376
3
catalog demonstrate that consumers have reason to expect a
common source for applicant's "FINISHING TOUCHES" pillows
and bed linens and registrant's "FINISHING TOUCHES" mail
order catalog services featuring home furnishings and
accessories.
Applicant filed a notice of appeal. Both applicant and
the Examining Attorney filed briefs, but applicant did not
request an oral bearing before the Board.
Based on careful consideration of the record in this
application, we affirm the refusal to register.
In view of the identity of the marks in this case, the
relationship between the goods and services of applicant and
registrant does not need to be as close to support a finding
of likelihood of confusion as might be the case if the marks
were different. Amcor, Inc. v. Amcor Industries, Inc., 210
USPQ 70 (TTAB 1981). The respective goods and services of
applicant and the owner of the cited registration are
certainly not the same, but they are clearly related in such
a way that the use of the same mark on them would likely
cause confusion. Moreover, it is well settled that even if
the marks are not the same, the goods and services would
not have to be identical or even competitive. It would be
sufficient enough if they are related in some manner and
that their character or the circumstances surrounding their
marketing are such that they would likely be encountered by
the same people under circumstances that would give rise to
the mistaken belief that a common source is responsible for
Ser No. 74/593376
4
both. In re International Telephone and Telegraph Corp.,
197 USPQ 910 (TTAB 1978). Mail order catalog services
featuring home furnishings and accessories ordinarily
include the sale of products like pillows, bedspreads and
curtains. The copies from the catalog submitted by the
Examining Attorney support this conclusion as well. So do
the third-party registrations of record. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). The use of
identical marks on the goods and in connection with the
services of selling them would clearly be likely to cause
confusion. In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).
Whether confusion is likely is determined on the basis
of the ways the goods and services are identified in the
application and the cited registration, respectively,
without any limitations or restrictions not specifically set
forth therein. Toys "R" Us, Inc. v. Lamps R Us, 219 USPQ
340 (TTAB 1983). Applicant argues that its goods are not
sold through mail order catalogs, but rather are available
only in retail stores. In the absence of such a limitation
in the way the goods are identified in the application,
however, the argument is not well taken. Moreover, even if
the application had been so restricted, confusion would
still be likely because, as the evidence submitted by the
Examining Attorney demonstrates, consumers have a reasonable
basis to expect goods of these types to be available both at
retail housewares stores and through mail order catalogs
featuring such products.
Ser No. 74/593376
5
For the reasons set forth above, the refusal to
register under Section 2(d) of the Act is affirmed.
R. F. Cissel
T. J. Quinn
G. D. Hohein
Administrative Trademark Judges
Trademark Trial & Appeal Board
Ser No. 74/593376
6