QVC, Inc.

Trademark Trial and Appeal Board

May 6, 2005

No. 76316937 (T.T.A.B. May. 6, 2005)

Mailed: May 6, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re QVC, Inc.
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Serial No. 76316937
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Manny D. Pokotilow of Caesar, Rivise, Bernstein, Cohen &
Pokotilow for QVC, Inc.

Won T. Oh, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
____________

Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

QVC, Inc. has filed an application to register the mark
shown below on the Principal Register for “electric fans,
electric space heaters and household air cleaners,” in
International Class 11.1

1 Serial No. 76316937, filed September 25, 2001, based on an allegation
of a bona fide intention to use the mark in commerce.

THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76316937

2

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles
the mark EQUITABLE HOMEWORKS, previously registered for the
services listed below that, if used on or in connection with
applicant’s goods, it would be likely to cause confusion or
mistake or deception:2
“on line and mail order retail store services
featuring consumer and commercial energy related
products, namely, gas grills, carbon monoxide
alarms, gas lamps and gas heaters,” in
International Class 35.3

Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
The examining attorney contends that applicant’s mark
consists, essentially, of the registered mark minus the word

2 Prior to appeal, the examining attorney withdrew an earlier refusal to
register, under Section 2(d) of the Trademark Act, based on Registration
No. 2089124 for the mark HOMEWORKS, previously registered for electric
lighting controls.

3 Registration No. 2753645, issued August 19, 2003. The registration
also includes the following goods, which the examining attorney makes
clear in his brief are not the basis for the refusal herein:
“inspection, maintenance and repair services for air
conditioners, furnaces and other energy-using equipment,
namely, hot water heaters; providing line protection and
replacement for gas and water lines,” in International Class
37; and “providing energy efficiency auditing,” in
International Class 42.
Serial No. 76316937

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EQUITABLE; that the registered mark is not a weak mark; that
the registered mark is not restricted to any particular
style or type font and, thus, could appear with the
EQUITABLE portion in smaller letters, making the term
HOMEWORKS the dominant portion; and that, otherwise, neither
term in the registered mark is dominant.
The examining attorney submitted third-party
registrations which he contends show the relatedness of the
involved goods and services. Specifically, he submitted six
third-party registrations owned by three parties. One of
the registrations is based on Section 44 of the Trademark
Act and is of no probative value. Only two parties own the
other five registrations, and each registration includes
long lists of goods which include among them some of
applicant’s goods and some of the goods which are the
subject of registrant’s retail services.
Applicant contends that the marks are different and
that the examining attorney has improperly dissected the
registered mark; that the word EQUITABLE is the dominant
portion of the registered mark, as registrant admitted
during the prosecution of its then-application; that
EQUITABLE distinguishes the registered mark from applicant’s
mark; that the term HOMEWORKS is weak in the field of
consumer products and services; that HOMEWORKS is highly
suggestive in connection with products for the home; and
Serial No. 76316937

4
that “applicant’s mark is sought to be registered for
specific products[,] whereas, the registered mark has been
registered for services.”
In support of its position, applicant submitted copies
of eight third-party registrations for marks that consist of
or include the term HOMEWORKS or HOME WORKS for a wide
variety of goods and services; a copy of the application
file history for the cited registration, which includes
copies of numerous advertisements for the then-applicant’s
services; and the results of a Google search of the Internet
showing use of HOMEWORKS in connection with numerous third-
party websites (28 items appear to use the term HOMEWORKS in
connection with various goods or services related to the
home, while context of the remaining entries is unclear or
the entries refer to school assignments); and excerpts from
two third-party websites (www.parcor.com states that it is a
contractor that “delivers energy solutions bundled to fit
any homeowner’s budget” and refers to “The Homeworks
Financing Plan”; and www.apluselectronic.com/homeworks
states that “HomeWorks Interactive can make a home safer by
automatically turning on landscape and security lighting
each night”).
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
Serial No. 76316937

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confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). 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); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
Considering, first, the goods and services involved in
this case, we note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
Serial No. 76316937

6
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion. In
re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases
cited therein.
In this case we have, on the one hand, registrant’s
services featuring the sale of gas grills, carbon monoxide
alarms, gas lamps and gas heaters; and, on the other hand,
applicant’s electric fans, electric space heaters and
household air cleaners. The evidence submitted by the
examining attorney consists essentially of a few
registrations owned by only two third parties. One
registration identifies “a full line of domestic heating
appliances,” which specifically includes “natural gas
heaters” and “electric fans”; and two other registrations
include “fans” and “gas lamps.” 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, such registrations nevertheless have
some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). However, we
find that registrations by only two third parties with no
Serial No. 76316937

7
additional evidence is insufficient to meet the examining
attorney’s burden of establishing that the goods and
services herein are related.
We consider, next, 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 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).
In applicant’s mark, the word portion, HOMEWORKS,
clearly dominates over the minimal design consisting of a
Serial No. 76316937

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background swirl and the contrasting boldness of the
lettering of the words HOME and WORKS.
While we do not agree with applicant that the term
HOMEWORKS is highly suggestive in relation to products and
services for the home, the evidence submitted by applicant
does support the conclusion that HOMEWORKS is at least
somewhat suggestive in connection with such goods and
services. Conversely, there is no indication that EQUITABLE
is anything other than arbitrary in connection with
registrant’s services. Thus, regarding the cited mark,
EQUITABLE HOMEWORKS, we find that EQUITABLE is the dominant
portion of the mark, both because it is the first term in
the mark and because of the somewhat suggestive nature of
HOMEWORKS.
Considering both marks in their entireties, we find
that the marks are different in appearance, connotation and
commercial impression.
In view of the differences between applicant’s mark,
, and registrant’s mark, EQUITABLE HOMEWORKS, and
because the examining attorney has not established a
relationship between the respective goods and services, we
find on this ex parte record that there is no likelihood of
confusion.
Decision: The refusal under Section 2(d) of the Act is
reversed.