Roxbury Technologies LLC, Series 2

Trademark Trial and Appeal Board

Sep 24, 2020

88465796 (T.T.A.B. Sep. 24, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 24, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Roxbury Technologies LLC, Series 2
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Serial No. 88465796
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Brent D. Sausser of Sausser Summers PC,
for Roxbury Technologies LLC, Series 2.

Leslie Ann Thomas-Riggs, Trademark Examining Attorney, Law Office 125,
Heather Biddulph, Managing Attorney.
_____
Before Lykos, Adlin, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background
Roxbury Technologies LLC, Series 2 (“Applicant”) seeks registration on the
Principal Register of the mark DADOQUARTZ in standard characters for “Bathtubs;
Faucets; Shower heads; Showers; Sinks; Toilet seats; all of the foregoing made in
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whole or in significant part of quartz” in International Class 11.1 The Examining
Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
based on a likelihood of confusion with the previously registered mark on the
Principal Register, DADO LIGHTING in standard characters, for “Electric lighting
fixtures and luminaires” in International Class 11.2 After the Examining Attorney
made the refusal final, Applicant requested reconsideration and appealed. The
Examining Attorney denied the request for reconsideration, and the appeal
proceeded, with Applicant and the Examining Attorney submitting briefs. For the
reasons set forth below, we affirm the refusal to register.
We note that Applicant attached numerous exhibits to its Appeal Brief,3 which is
neither a convenience, nor a courtesy. The entire record from prosecution of the
application is readily available to the Board. Because we must determine whether
the attached exhibits are properly of record, citation to an exhibit rather than to the
record requires examination of the exhibit and then an attempt to locate the same
evidence in the record, requiring more time and effort than would have been
necessary if citations were directly to the evidentiary record. Life Zone Inc. v.
Middleman Grp. Inc., 87 USPQ2d 1953, 1955 (TTAB 2008) (evidence attached to
briefs will almost always be either untimely or duplicative, and in either event should
not be filed); see also 37 C.F.R. § 2.142(b)(3) (“Citation to evidence in briefs should be

1 Application Serial No. 88465796 was filed June 10, 2019, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on use of the mark in commerce.
2 Registration No. 4315757 issued on April 9, 2013, and includes a disclaimer of LIGHTING.
A Section 8 affidavit of continued use has been accepted.
3 7 TTABVUE 17-211 (Applicant’s Brief, Exhibits).
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to the documents in the electronic application record by date, the name of the paper
under which the evidence was submitted, and the page number in the electronic
record”).
II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those
DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912
F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also Stratus Networks,
Inc. v. UBTA-UBET Communs. Inc., 955 F.3d 994, 2020 USPQ2d 10341 **7 (Fed. Cir.
2020) (“Not all DuPont factors are relevant in each case.”). Two key considerations
are the similarities between the marks and the relatedness of the goods. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); Federated
Foods, Inc. v. Fort 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 differences in the
marks.”).
A. Similarity of the Marks
We compare the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison
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Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting
DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
We assess not whether the marks can be distinguished in a side-by-side comparison,
but rather whether their overall commercial impressions are so similar that confusion
as to the source of the goods offered under the respective marks is likely to result.
Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012).
We compare Applicant’s DADOQUARTZ to the cited mark DADO LIGHTING. We
find that the marks look and sound alike in large part because of the identical DADO
portion that forms the beginning portion of both marks. As the first part of the marks,
consumers are more likely to focus on DADO in each mark. Presto Prods., Inc. v. Nice-
Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of a mark “is most
likely to be impressed upon the mind of a purchaser and remembered.”); see also Palm
Bay Imps., 73 USPQ2d at 1692. For rational reasons, we may give more or less weight
to a particular feature of a mark, such as a common dominant element, provided the
ultimate conclusion rests on a consideration of the marks in their entireties. In re
Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
The dominance of DADO is reinforced because the second word of both marks,
QUARTZ in Applicant’s and LIGHTING in Registrant’s, merely describes or names
the respective goods. We treat DADO as a coined term, given the absence of evidence
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in the record that it has a particular meaning. Although there is no disclaimer of
QUARTZ in Applicant’s mark due to the lack of space between DADO and it,4
Applicant’s identification of goods “made in whole or in significant part of quartz”
leaves no doubt about the descriptive or generic character of the word in this context.
In the cited registration for goods that include “lighting fixtures,” LIGHTING is
generic and has been disclaimed. Consumers are less likely to rely on descriptive or
generic wording to indicate source, and so wording such as QUARTZ and LIGHTING
is less significant in the comparison of the marks. See, e.g., Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding descriptive
terms, this court has noted that the descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion”)); In re Dixie
Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997) (in comparing
THE DELTA CAFÉ to DELTA, the generic term CAFÉ lacks sufficient
distinctiveness to create a different commercial impression). So, while we do not
ignore these portions of the marks, “the non-source identifying nature of the words
and the disclaimer[] thereof constitute rational reasons for giving those terms less
weight in the analysis.” In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049
(Fed. Cir. 2018). Ultimately, while the wording other than DADO creates some visual

4 See TRADEMARK MANUAL OF EXAMINING PROCEDURE § 1213.05(a) (Oct. 2018) (“If a
compound word mark consists of an unregistrable component and a registrable component
combined into a single word, no disclaimer of the unregistrable component of the compound
word will be required”).
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and phonetic differences between the marks, overall they still look and sound similar
because of the shared dominant term DADO.
As to the marks’ connotations and commercial impressions, we also find them
similar. Consumers would derive the same impression from the shared arbitrary
wording DADO in Applicant’s mark as they would in the cited mark. The additional
word QUARTZ in Applicant’s mark merely refers to the material composition of the
identified goods,5 while in the cited mark, LIGHTING merely names the identified
goods. Thus, these words contribute less than DADO to the overall commercial
impression, and do not create any distinction in the meaning or impression of DADO
in the two marks. We find that consumers familiar with the cited mark DADO
LIGHTING likely would view Applicant’s mark as a variation from the same source,
used for goods made of quartz.
We remain mindful that “marks must be considered in light of the fallibility of
memory and not on the basis of side-by-side comparison.” In re St. Helena Hosp., 774
F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). Given the resemblance in sound,
appearance, connotation and commercial impression when viewed in their entireties,
we find DADOQUARTZ similar to DADO LIGHTING. The first DuPont factor weighs
in favor of likely confusion.

5 The record includes a definition of “quartz.” TSDR August 1, 2019 Office Action at 4.
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B. The Relatedness of the Goods
In analyzing the second DuPont factor, we look to the identifications in the
application and cited registration. See Detroit Ath. Co., 128 USPQ2d at 1051; Stone
Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “[L]ikelihood of confusion can be found ‘if the
respective goods are 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., 101 USPQ2d at 1722 (internal
citations omitted). It is sufficient for a finding of likelihood of confusion as to a
particular class if relatedness is established for any item of identified goods within
that class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
To show the relatedness of goods such as Applicant’s to those in the cited
registration, the Examining Attorney introduced numerous examples of third parties
that offer both types of goods under the same mark,6 including:
 The Brizo website offers faucets and light fixtures under the CHARLOTTE®
mark, and light fixtures and shower heads under the BRIZO mark.7

6 TSDR August 1, 2019 Office Action & TSDR December 18, 2019 Office Action.
7 TSDR August 1, 2019 Office Action at 5-17 (brizo.com).
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 The Kallista website features wall sconce light fixtures, shower heads and
toilet seats, all under the KALLISTA mark.8
 The Premier Copper Products website offers faucets, bathtubs, and pendant
copper light fixtures, and sinks under the PREMIER COPPER PRODUCTS
mark.9
 Under the YOSEMITE HOME DÉCOR mark, the Yosemite Home Décor
website features bath tubs, faucets, sinks, and light fixtures.10
 The Kohler website offers under the ARTIFACTS® mark faucets, shower
heads, and various light fixtures.11
 The Moen website features faucets, shower heads and light fixtures, all under
the BELFIELD mark.12
This evidence supports the relatedness of the goods in the application and cited
registration by showing that consumers are accustomed to encountering such goods
offered under the same mark. See Detroit Ath. Co., 128 USPQ2d at 1050 (crediting
relatedness evidence that third parties use the same mark for the goods and services
at issue because “[t]his evidence suggests that consumers are accustomed to seeing a
single mark associated with a source that sells both”); Hewlett-Packard, Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.

8 Id. at 37, 45, 55 (kallista.com).
9 Id. at 59-74 (premiercopperproducts.com).
10 Id. at 94-104 (yosemitehomedecor.com).
11 TSDR December 18, 2019 Office Action at 17, 35, and 39-44 (us.kohler.com).
12 Id. at 77, 102, 106-07 (moen.com).
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2002) (stating that evidence that “a single company sells the goods and services of
both parties, if presented, is relevant to a relatedness analysis”).
In addition, the Examining Attorney introduced nine third-party used-based
registrations that identify under the same mark goods such as Applicant’s along with
goods such as Registrant’s.13 Applicant also introduced another use-based third-party
registration for that identifies “ceiling lights,” “LED lamps,” “lamps,”
and “mixer faucets for water pipes.”14 “Third-party registrations which cover a
number of differing goods and/or services, and which are based on use in commerce,
although not evidence that the marks shown therein are in use on a commercial scale
or that the public is familiar with them, may 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 Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998).
We find the evidence of third-party use and registration of the same marks for
goods such as Applicant’s and goods such as Registrant’s sufficient to establish a
relationship between them. Applicant contends that the only similarity between the
goods is that they “are in the same international class and cover the broad spectrum
of bathroom goods.”15 Applicant also argues that its limitation to goods made of quartz
“removes its goods from an industry that is targeted by the Cited Mark’s owner,

13 TSDR August 1, 2019 Office Action at 105-35.
14 4 TTABVUE 131 (Request for Reconsideration).
15 7 TTABVUE 9 (Applicant’s Brief).
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namely, Applicant’s mark is limited to those looking for quartz goods rather than
lights.”16 As noted above, the standard for relatedness is not that the goods overlap.
Rather, the marketplace evidence discussed above establishes that these types of
goods are often part of bathroom or kitchen collections offered under the same mark
by a single source. This contributes to likely source confusion for consumers who
encounter similar marks on such goods that actually emanate from different sources.
Applicant points to twelve pairs of coexisting registrations for marks that i t
contends “contain nearly identical wording and bath installation related goods on one
hand, and lighting products on the other.”17 According to Applicant, this indicates
that its mark can coexist with Registrant’s. We find Applicant’s argument unavailing.
As an initial matter, many of the pairs of marks are much more dissimilar than
Applicant’s and Registrant’s DADOQUARTZ and DADO LIGHTING marks. For
example, the pairs below illustrate the greater degree of difference:
18
LAVA LITE 19

16 Id.
17 Id. at 10.
18 4 TTABVUE 48-58, 121-25.
19 4 TTABVUE 126-37.
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20
Other pairs involve goods that are not clearly comparable to those at issue here, such
as SKY, which identifies in International Class 11 “manually-operated plumbing
valves; plumbing fittings, namely valves; water control valves for faucets,” while
LIGHT SKY identifies, inter alia, lighting fixtures.21 Faucet valves are not
comparable to faucets. And other pairs include registrations that the Examining
Attorney points out have been cancelled, such as Registration Number 4372494 for
HIGHLAND and Registration Number 2058395 for BATHMASTER. See Action
Temp. Servs. v. Labor Force, 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989)
(cancelled registration is not evidence of any existing rights in the mark); Sunnen
Prods. Co. v. Sunex Int'l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987) (cancelled
registration is evidence of nothing but the fact that it once issued). As to others, we
also do not know the history of the registrations or about any commercial
relationships between the pairs of trademark owners.
In addition, considering only the allegedly similar marks for allegedly comparable
goods that coexist on the Register does not present the full picture of examination
practice. We lack information about marks that may have been denied registration
as confusingly similar to a prior registered mark for the same types of allegedly
comparable goods. Thus, this type of evidence necessarily is one-sided, and

20 4 TTABVUE 177-89.
21 4 TTABVUE 197-209.
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particularly given the quality and quantity of such evidence in this case, which is
lacking, we do not rely on it as indicative of an examination practice or policy on the
unrelatedness of the goods at issue. The prior decisions and actions of other
trademark examining attorneys in registering other marks have little evidentiary
value and are not binding upon the USPTO or the Board. TMEP § 1207.01(d)(vi); see
In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB
2017). Each case is decided on its own facts, and each mark stands on its own merits.
USA Warriors, 122 USPQ2d at 1793 n.10.
Ultimately, especially given these deficiencies in Applicant’s evidence, it does not
outweigh the countervailing third-party use and registration evidence submitted by
the Examining Attorney that these types of goods tend to emanate from a single
source under a single mark. The coexistence of the third-party registrations
submitted by Applicant does not demonstrate that the respective goods are unrelated.
The second DuPont factor weighs in favor of likely confusion.
C. The Trade Channels and Classes of Consumers
Turning to the trade channels and classes of consumers, Applicant asserts,
without pointing to any supporting evidence, that “the goods are found on different
aisles within a retail hardware store as well as target different consumers.” 22
Applicant’s argument is unconvincing. Because the identifications in the application
and cited registration for the mark have no restrictions on channels of trade, we must

22 7 TTABVUE 9 (Applicant’s Brief).
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presume that the goods travel in all channels of trade appropriate for such goods,
which as the record shows include online retailers featuring kitchen and bath fixtures
and décor. See Hewlett-Packard Co. 62 USPQ2d at 1005. The third-party retail
website evidence discussed above establishes that goods such as Applicant’s and
Registrant’s travel in some of the same channels of trade to the same classes of
consumers, who appear from the record to include members of the general public as
well as home builders or contractors. In fact, the record reflects that these types of
goods are sometimes offered as part of a coordinated collection of fixtures for a
bathroom or kitchen.
Thus, the third DuPont factor weighs in favor of likely confusion.
III. Conclusion
The overall similarity of the marks for related goods that move in some of the
same channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.