Premier Products, Inc.

Trademark Trial and Appeal Board

Mar 22, 2001

No. 75488001 (T.T.A.B. Mar. 22, 2001)

03/22/01
Paper No. 13
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Premier Products, Inc.
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Serial No. 75/488,001
_______
Ronald P. Kananen of Rader, Fishman & Grauer for Premier
Products, Inc.
Julie A. Watson, Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Hanak, Hohein and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Premier Products, Inc. (applicant) has filed an
application to register the mark PREMIER for goods
ultimately identified as “aluminum windows for metal
buildings; and metal doors and metal door frames, namely
steel doors and steel door frames for fire doors, for use
in public buildings” in International Class 6.1 The
1 Serial no. 75/488,001 filed on May 19, 1998, claiming a date of
first use and date of first use in commerce of January 1, 1990.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/488,001
2
Examining Attorney has refused to register the mark under
Section 2(d) of the Trademark Act because of the
registration for the mark PREMIER for “vinyl windows and
patio doors” in International Class 19.2 Both applicant’s
and registrant’s marks are depicted in a typed drawing.
After the Examining Attorney made the refusal final,
this appeal followed. Both applicant and the Examining
Attorney filed briefs. An oral hearing was not requested.
After considering the arguments and papers of the
applicant and the Examining Attorney, the Examining
Attorney’s refusal to register applicant’s mark because it
is confusingly similar to the mark of the cited
registration under Section 2(d) is affirmed.
In cases involving the issue of likelihood of
confusion, we look to the relevant factors set out in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973), to determine whether there is a
likelihood of confusion. Not all of the du Pont factors
are applicable in every case. In re Dixie Restaurants, 105
F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
In this case, the first factor that we consider is
whether the marks are similar. It is obvious, and
2 Registration No. 1,681,213, issued March 31, 1992. Section 8
and 15 affidavits have been accepted and acknowledged.
Ser. No. 75/488,001
3
applicant admits (brief at 3), that the marks are identical
inasmuch as both applicant’s and registrant’s marks are for
the same word PREMIER depicted in a typed drawing.
Therefore, the next issue is whether the goods are
related. To determine whether the goods are related, we
must look to the identification of goods in the application
and registration. Dixie Restaurants, 41 USPQ2d at 1534;
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1493, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987);
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973). Applicant’s goods are
“aluminum windows for metal buildings; and metal doors and
metal door frames, namely steel doors and steel door frames
for fire doors, for use in public buildings.” Registrant’s
goods are “vinyl windows and patio doors.” While applicant
argues that the goods are not identical, du Pont speaks in
terms of similar goods, not identical goods. du Pont, 177
USPQ at 567 (“The similarity or dissimilarity and nature of
the goods and services as described in the application or
registration”). See also In re Shell Oil Co., 992 F.2d
1204, 26 USPQ 1687 (Fed. Cir. 1992)(Distributorship
services in the field of automobile parts related to
service station oil and lubrication change services).
Ser. No. 75/488,001
4
Applicant’s most significant argument is that the
goods are sold to different purchasers in different
channels of trade. Applicant claims its goods are marketed
for use by commercial or industrial contractors who engage
in the construction of public, commercial and industrial
buildings. Registrant’s goods, according to applicant, are
used by homeowners and residential contractors and,
therefore, unrelated. There are several flaws to
applicant’s arguments.
One, the goods identified in the registration are not
limited to those offered to homeowners or residential
contractors, and therefore we must presume that the goods
move through all normal channels of trade for such
products. Applicant’s submission of information from
registrant’s website and sales brochure does not serve to
limit registrant’s identification of goods, which is
unrestricted. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
Ser. No. 75/488,001
5
to which the sales of goods are directed”). Similarly,
registrant’s goods must be considered on the basis of the
goods as identified in the registration. We agree with the
Examining Attorney that we must presume that registrant’s
vinyl windows and patio doors are marketed and sold to
commercial and industrial contractors and not just to
homeowners and residential contractors.
Second, there is no evidence in the record that the
residential or commercial contractors who would purchase
applicant’s and registrant’s goods would not overlap. We
must assume that registrant’s vinyl windows and patio doors
and applicant’s metal windows and doors would be sold to
contractors who build both residential and commercial
buildings.
Third, the Examining Attorney has made of record
evidence from the “NEXIS” database showing that the sources
of vinyl and aluminum windows are often the same.
Wintech manufactures advanced lines of welded and
mechanical vinyl windows for replacement and new
construction and aluminum windows for commercial and
heavy commercial applications. Times Union, July 13,
1996, p. B12.
. . . plant will phase out Hara’s high-end vinyl
window to concentrate its efforts n the former Hara’s
primary vinyl window model, he said. Production of an
aluminum window will continue for the time being.
Idaho Business Review, Apr. 14, 1997, p. 3A.
Ser. No. 75/488,001
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Both its vinyl windows and aluminum windows are
produced at its Pittsburgh plant, which employs about
850 people. Omaha World Herald, Dec. 26, 1994, p.
11sf.
Wade said he founded B&K in 1978 as an aluminum window
producer and started making vinyl windows in 1989.
Plastics News, Aug. 12, 1996, p. 6.
In addition, the Examining Attorney has made of record
several third-party registrations that show that sources of
aluminum windows and steel doors also produce vinyl
windows. 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”).
In addition to its arguments concerning the
relatedness of the goods, applicant argues that there has
been no actual confusion despite allegations of at least
ten years of simultaneous use. It is unnecessary, however,
to show actual confusion in establishing likelihood of
confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J
Smack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991). Moreover, an ex parte
Ser. No. 75/488,001
7
proceeding provides no opportunity for the registrant to
show instances of actual confusion. Thus, even if the
statement of applicant’s attorney was supported by evidence
of record, it would not eliminate the likelihood of
confusion.
Applicant also argues that the marks are not
inherently distinctive and it attempted to submit a
printout of 50 “PREMIER” marks and registration numbers in
support of that argument. (Response dated May 30, 2000, p.
4). The Examining Attorney properly objected to this
evidence and, since the Board does not take judicial notice
of registrations, it will not be considered. In re
Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974). Even if the
registrations were considered, they do not support the
registration of applicant’s identical mark in view of the
cited registration.
Applicant’s final argument is that “the mark at issue
here, ‘PREMIER,’ lacks inherent distinctiveness and is
widely used to describe products in many fields.” Brief at
6. Since the registrant’s mark is not registered under
Section 2(f) and it is not on the Supplemental Register, it
is presumed to be inherently distinctive. An applicant
cannot attack the validity of a registration in an ex parte
proceeding. Dixie Restaurants, 41 USPQ2d at 1534.
Ser. No. 75/488,001
8
However, we construe applicant’s argument as directed to
the lack of strength of registrant’s mark. “But, it does
not stretch credibility to understand the laudatory nature
of the word, so that copies of the registrations are mere
surplusage to the point that has been established.” (Brief
at 7). To the extent that applicant is arguing that
PREMIER is a weak mark, we have no evidence that in the
field of doors and windows, the mark is weak. Even
assuming applicant’s point that “premier” is a frequently
used laudatory term, even a weak mark is entitled to
protection when the identical mark is used on closely
related goods. In re Colonial Stores, 216 USPQ 793, 795
(TTAB 1982). Here, when the mark PREMIER is used on
applicant’s goods, there is a likelihood of confusion when
the identical mark is used on vinyl windows and patio
doors.
Decision: The refusal to register is affirmed.