Product Miniature Co., Inc.

Trademark Trial and Appeal Board

Jun 5, 2020

88005423 (T.T.A.B. Jun. 5, 2020)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Product Miniature Co., Inc.
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Serial No. 88005423
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Kyle M. Costello of Boyle Fredrickson, S.C.,
for Product Miniature Co., Inc.
Sahar Nasserghodsi, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Wellington, Shaw and Lebow,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Product Miniature Co., Inc. (“Applicant”) seeks registration on the Principal
Register of the mark FLEXWALL (in standard characters) for the following goods:
[R]etail shelving in the nature of a modular shelving system comprised
primarily of adjustable shelves featuring a back wall unit and components
thereof, namely, shelves, brackets, vertical supports, retail product trays, and
LED lights sold as a unit for use in displaying retail products in a retail store,
in International Class 20.1

1 Application Serial No. 88005423 filed on June 19, 2018, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce.
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as applied
to the goods identified in the application, is identical to the standard character mark
FLEXWALL for “rental of interlocking partitions for use in face to face marketing
events” services in International Class 35,2 on the Principal Register as to be likely
to cause confusion, to cause mistake, or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed.
We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address the Examining
Attorney’s objection to Applicant’s reliance on a list of registrations that have not
been properly made of record.3 Specifically, the Examining Attorney notes that
Applicant previously submitted this list with a response to an Office Action and the
Examining Attorney advised Applicant that it must submit copies of the
registrations, and not merely list them, in order for them to be properly of record.4
The Board has long held that the mere listing of registrations is not sufficient to
make the registrations of record and the Board does not take judicial notice of third-

2 Registration No. 3923744, issued February 22, 2011.
3 11 TTABVUE 3.
4 Id., referencing Applicant’s response filed April 15, 2019 and Office Action issued May 3,
2019.
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party registrations. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1208.02 (2019) and cases cited therein, including In re Duofold,
Inc., 184 USPQ 638, 640 (TTAB 1974) (“The submission of a list of registrations is
insufficient to make them of record”). Accordingly, we sustain the Examining
Attorney’s objection, and do not consider the list of registrations or Applicant’s
arguments relying upon them in our analysis of the refusal.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative 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, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination.”). In any likelihood of confusion
analysis, however, two key considerations are the similarities between the marks and
the relatedness of the goods and/or services. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort
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Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods [and/or services] and differences in the marks.”); see also
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus … on dispositive factors, such as similarity of the
marks and relatedness of the goods [and/or services].’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Identity of the marks
Under the first DuPont factor, we compare Applicant’s mark and the cited
registered mark “in their entireties as to appearance, sound, connotation and
commercial impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (quoting DuPont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005).
Here, Applicant’s mark is identical to the cited registered mark, FLEXWALL. The
term FLEXWALL has no demonstrated meaning in connection with either
Applicant’s goods or Registrant’s services. To the extent that FLEXWALL has
suggestive connotation, it will likely evoke the same idea – namely, that Applicant’s
“modular shelving system . . . featuring a back wall unit” and Registrant’s partition
wall rental service will possess an adaptable (flexible) nature, e.g., to accomodate the
particular needs of their consumers.
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In sum, the identity of the marks is a factor that weighs heavily in favor of finding
a likelihood of confusion.
B. Relatedness of the Goods and Services, Their Trade Channels and
Classes of Purchasers

We now consider the relatedness of the goods and services, their trade channels
and the classes of purchasers. In doing so, we make our determination based on the
goods as they are identified in the application and the services in the cited
registration. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed.
Cir. 1997); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous.
Comput. Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
As to the relatedness of Applicant’s goods and Registrant’s services, in particular,
“[t]his factor considers whether ‘the consuming public may perceive [the respective
goods and services of the parties] as related enough to cause confusion about the
source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004).
It is not necessary that the respective goods and services be identical or even
competitive in order to find that they are related. See Hewlett Packard, 62 USPQ2d
at 1004.
In addition, where the involved marks are identical, as they are here, even less
relatedness between the goods and services will suffice to support a finding of
likelihood of confusion. In re Shell Oil, 26 USPQ2d at 1689 (“[E]ven when the goods
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or services are not competitive or intrinsically related, the use of identical marks can
lead to the assumption that there is a common source”). It is only necessary that there
be a “viable relationship” between the goods and services to support a finding of
likelihood of confusion. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012).
The respective goods and services need only be “‘related in some manner and/or if the
circumstances surrounding their marketing are such that they could give rise to the
mistaken belief that they emanate from the same source.’” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The evidence submitted by the Examining Attorney demonstrates that Applicant’s
“modular shelving system comprised primarily of adjustable shelves featuring a back
wall unit and components thereof, namely, shelves, brackets, vertical supports, retail
product trays, and LED lights sold as a unit for use in displaying retail products in a
retail store” is closely related to Registrant’s service of “rental of interlocking
partitions for use in face to face marketing events.” Specifically, the Examining
Attorney adduced Internet evidence showing third parties offering various types of
display shelving and partition walls for marketing purposes. For example, Nomadic
Display advertises “exhibit rentals” and sells goods like “shelving” and “backwalls”:
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.5

5 November 25, 2019 Office Action, TSDR pp. 51-54.
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Another company, Walls + Forms, offers “Retail Display Solutions,” including
“modular” shelving and floor displays, like Applicant’s goods, as well as a “modular
wall system” like the ones that Registrant provides through its rental services.6
The Examining Attorney identifies in her brief eight additional examples of
Internet evidence, all properly of record, showing similar use by third parties of the
same mark in connection with shelving systems and the rental of partition walls for
marketing and retail display.7
We agree with the Examining Attorney that the record shows a single entity may
provide services like the rental of partitions walls, modular display panels or trade
show displays for a variety of marketing events, including at retail stores while also
offering shelving goods.8 Or, in a similar vein, the evidence shows a single entity
providing trade show displays or modular display systems or retail displays, as well
as shelving goods, all under the same mark. In terms of trade channels and classes
of consumers, the evidence shows that the involved goods and services may be
advertised via the same website, and directed to and encountered by businesses that
either want to market their products at trade shows or put them on display for sale
in retail stores.
Applicant argues that its goods are “marketed and sold directly to highly
sophisticated corporate clients, namely retail stores, which is a distinctly different

6 Id., at pp. 46-50.
7 11 TTABVUE 6-7.
8 Id. at 6.
Serial No. 88005423
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channel of trade from [Registrant’s] rental to persons or companies participating in
‘face to face marketing events.’”9 Applicant also asserts that its goods are “only offered
for sale through its internal sales force of well-informed and highly trained sales
representatives and sale managers,” quoting the declaration of its president.10
Applicant also contends that “[d]ue to the narrow and highly sophisticated channel
of trade in which Applicant’s products are offered for sale, the fact that they are not
officered in traditional retail or on-line store settings, and the fact that [the
Registrant’s] services are similarly not offered for sale in retail or on-line store
settings but rather through rental . . . , Applicant’s goods are not marketed or offered
for sale in the same channel of trade as are [Registrant’s services].”11
Applicant’s attempts to limit the possible channels of trade for its goods and
Registrant’s services are not well taken because these limitations are not reflected in
the respective identifications of goods and services. In re Dixie Rests., Inc., 41
USPQ2d 1534. Thus, although Applicant’s president has averred that Applicant’s
goods will only marketed and sold by its “internal sales force,” this limitation is not
in the Applicant’s identification of goods. Likewise, Registrant’s services are not
limited to renting interlocking partition panels for trade shows, as Applicant
contends, and may include other temporary face to face marketing events. We must
therefore consider that Applicant’s modular shelving system can be marketed in the

9 9 TTABVUE 6.
10 Id. (declaration averment at 9 TTABVUE 12).
11 Id.
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same manner as that used by the third parties shown in the Examining Attorney’s
Internet evidence – for example, the company Opto markets its modular retail “pop-
up & temporary displays” through its website and touts that its goods can be used in
a temporary or short-term manner like the interlocking partitions that Registrant
rents for marketing events:12
.
A company seeking to temporarily display its goods for “face to face marketing
events,” such as a pop-up shop or mall kiosk may look online for companies that either
sell modular shelving systems and/or rent interlocking partitions to display the goods
it intends to sell. This would include uses ranging from “pop-up” shops, temporary

12 November 25, 2019 Office Action, TSDR p. 44.
Serial No. 88005423
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displays, and kiosks, as described in the Opto website. The business owner, in this
case, may seek to purchase Applicant’s modular shelving system and rent
Registrant’s interlocking partitions to accomplish this goal.
We must also consider the scenario whereby a retail business owner who is
already familiar with Registrant’s FLEXWALL partition wall rental services then
decides to purchase a modular shelving system for displaying and selling goods. Upon
encountering Applicant’s goods being sold under the same mark, this business owner
is likely to mistakenly assume a relationship between the goods and services.
Based on the aforementioned evidence, we find that Applicant’s modular shelving
system is closely related to Registrant’s rental of interlocking partition panels for
face-to-face marketing purposes because these goods and services help serve the same
purpose, namely providing an easy and quick way to display goods for sale, and the
goods and services may be offered together in the same trade channels to the same
types of purchasers. Accordingly, the three DuPont factors involving relatedness of
the goods and services, their trade channels, and classes of purchasers, all favor
finding confusion likely.
C. Sophistication of Consumers
Applicant argues that “because its goods are large format shelving system that
are installed in retail stores . . . its buyers are highly sophisticated corporate
consumers that purchase retail shelving system for use in retail store settings as a
well thought out business decision.”13 Applicant asserts that the “care exhibited by

13 9 TTABVUE 7.
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such purchasers and lack of impulsive purchases when making such business
decisions further minimizes any potential likelihood of confusion with the cited
registration.”14
Although Applicant’s goods and Registrant’s services may not be the type to lend
themselves to ‘impulse purchases,’ this does not mean that confusion as to source is
not likely. Furthermore, contrary Applicant’s assertions, the goods identified in the
application are not described as “large format,” but as a “modular shelving system”
for product retail display in a retail store. Again, this may include smaller retail
stores, such as pop-up stores, that may purchase a single modular shelving system.
Even if we are to accept that the business owner consumers for both Applicant’s
goods and Registrant’s services generally will exercise a higher level of care in their
purchasing decisions, this does result in a finding that confusion is unlikely,
especially in this case where the marks are identical. “[W]ith identical or similar
marks used on such goods, even a careful, sophisticated consumer of these goods is
likely to believe that the goods emanate from a common source. ... In other words,
even careful purchasers who do notice the difference in the marks will not ascribe it
to differences in the source of the goods, but will see the marks as variations of each
other, pointing to a single source.” In re I-Coat Co., LLC, 126 USPQ2d 1730, 1739
(TTAB 2018).

14 Id.
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D. Lack of Actual Confusion
Applicant asserts that it “has been marketing and offering for sale retail shelving
for use in retail stores since at least 1989” and that it has “never received any
communication from a customer or potential customer that has mistakenly contacted
[Applicant] while genuinely attempting to rent interlocking partitions for use in face
to face marketing events from [Registrant].”15 In support, Applicant relies on the
declaration of its president. Applicant argues, “such a lack of any evidence of actual
confusion strongly finds against a likelihood of confusion and does not support the
outstanding 2(d) rejection.”16
Applicant’s account of no known instances of actual confusion is not persuasive
for several reasons. We point out that the application is based on Applicant’s claim of
a bona fide intent to use the mark in commerce. In addition, although Applicant’s
president, Mr. Ford, avers that Applicant has been in the retail shelving for use in
retail stores business since 1989, he does not state how long Applicant has actually
been using the mark FLEXWALL in connection with modular shelving systems.
Without any evidence of overlapping years of use of the same mark on the respective
goods and services, it impossible to determine if there has been any opportunity for
actual confusion to have occurred. See, e.g., In re Opus One Inc., 60 USPQ2d 1812,
1817 (TTAB 2001); In re Jeep Corp., 222 USPQ 333, 337 (TTAB 1984); In re Barbizon
Int’l, Inc., 217 USPQ 735, 737 (TTAB 1983).

15 Id. at 8.
16 Id. at 8-9.
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In any event, while a showing of actual confusion is highly probative of a likelihood
of confusion, the lack of evidence of actual confusion carries little weight, especially
in an ex parte context like this appeal. Majestic Distilling, 65 USPQ2d at 1205; In re
Cook Med. Tech. LLC, 105 USPQ2d 1377, 1383-84 (TTAB 2012). See also In re Bissett-
Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (testimony of
appellant’s corporate president’s unawareness of instances of actual confusion was
not conclusive that actual confusion did not exist or that there was no likelihood of
confusion). The Board generally has no way to know whether the Registrant may be
aware of any instances of actual confusion.
Accordingly, this factor is neutral.
III. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant DuPont factors, we find that Applicant’s use of the mark FLEXWALL on
modular shelving systems for use in displaying retail products in a retail store is
likely to cause confusion with Registrant’s use of the same mark in connection with
the rental of interlocking partition walls for face to face marketing events. We make
our conclusion based not only on the identity of the marks, but also the relatedness
of the goods and services that may travel through the same channels of trade and be
offered to same classes of purchasers.
Decision: The refusal to register Applicant’s FLEXWALL mark under Section 2(d)
of the Trademark Act is affirmed.