S. S. Dweck & Sons, Inc.

Trademark Trial and Appeal Board

Nov 20, 2001

No. 75643218 (T.T.A.B. Nov. 20, 2001)

11/20/01

Paper No. 14
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re S.S. Dweck & Sons, Inc.
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Serial No. 75/643,218
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Ezra Sutton for S.S. Dweck & Sons, Inc.

Rebecca A. Smith, Trademark Examining Attorney, Law Office
110 (Chris Pederson, Managing Attorney).
_______

Before Cissel, Hairston and Bucher, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

S.S. Dweck and Sons, Inc. has filed an application to
register the mark shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/643,218
2
for goods identified, following amendment as:
lamps in class 11;
household sponges, scrub brushes, cleaning
brushes for the toilet and shower, exfoliator
brushes, trash cans, drinking glasses, toothbrush
holders, facial tissue holders, bathroom tissue
holders and soap dishes in class 21;

bedspreads, blankets, sheets, cotton placemats,
cotton tablecloths, dishcloths, washcloths,
towels, oven mitts, pot holders, and shower
curtains in class 24; and

floor mats for vehicles, textile floor mats for
use in the home, rugs, and rubber tub mats in
class 27.1

The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act, in
view of two prior registrations, both owned by the same
entity, for the mark STEPHEN DWECK. Registration No.
1,784,692, issued July 27, 1993 (Section 8 & 15 affidavit
filed) covers “pillows and furniture; comforters, bed
sheets, table linens, towels, and fabrics; carpeting, area
rugs, and wall paper; and lamps”; and Registration No.
1,734,413, issued November 24, 1992 (Section 8 & 15
affidavit filed) covers “silver cutlery, namely, forks,
spoons, and knives;

1 Serial No. 75/643,218, filed February 18, 1999, alleging first
use and first use in commerce in 1929. The words “BRAND” and
“FINE IMPORTS” have been disclaimed apart from the mark as shown.
Ser No. 75/643,218
3
silver vases, silver candle holders, silver picture frames,
silver trays, silver jewelry boxes, silver plates, silver
bowls, and silver salt shakers; wooden jewelry boxes and
trays and picture frames with silver ornamentation and
glass picture frames; china dinnerware, namely, plates,
cups saucers, and bowls; mother of pearl dishes, glass
vases, platters, bowls, and candlestick holders; crystal
vases, platters, bowls, and candlestick holders, drinking
glasses, namely, stemware, bar glassware and beverage
glassware; and leather belts and buckles.”
When the Examining Attorney made the refusal final,
applicant appealed. Both applicant and the Examining
Attorney filed briefs, but an oral hearing was not
requested. We affirm the refusal.
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
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key factors are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 75/643,218
4
Turning first to the goods, certain of applicant’s and
registrant’s houseware items are identical, i.e., drinking
glasses, table linens, sheets, towels, and rugs. Others
are closely related, e.g., applicant’s bedspreads and
blankets and registrant’s pillows and comforters.
Applicant does not dispute this, but concentrates its
arguments on asserted differences in the marks.
Applicant argues that its mark is very different from
the registrant’s mark because the dominant portion of its
mark is STEAMSHIP BRAND and because its mark includes a
prominent and distinctive design. Applicant maintains that
the term “DWECK” is a minor portion of its mark. Further,
applicant argues that its mark has been in use since 1929
and has co-existed with registrant’s mark since 1984
without any instances of actual confusion.
The Examining Attorney, on the other hand, argues that
the marks are highly similar. In particular, the Examining
Attorney argues that the most dominant portion of
applicant’s mark is the wording, and that the most dominant
term within the wording is “DWECK,” which is very similar
to registrant’s mark STEPHEN DWECK. Further, the Examining
Attorney argues that DWECK is a distinctive term and that
consumers who are familiar with registrant’s mark STEPHEN
Ser No. 75/643,218
5
DWECK would be likely to believe that applicant’s mark is a
variant of registrant’s mark.
In considering the marks, we are mindful of the well-
established principle that when marks appear on identical
goods, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). Moreover, while marks
must be compared in their entireties, it is nevertheless
the case that, in articulating reasons for reaching a
conclusion on the issue of likelihood of confusion, “there
is nothing wrong in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided [that] the ultimate conclusion rests on
a consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 324 USPQ 749, 751. For
instance, “that a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark . . .” 224 USPQ at 751.
In this case, we recognize that the steamship design
and the wording STEAM-SHIP BRAND are prominent features in
applicant’s mark. However, it is the term DWECK, in the
phrase FINE IMPORTS BY DWECK, that conveys to purchasers
Ser No. 75/643,218
6
and prospective purchasers the source of applicant’s goods.
Thus, it is proper to give more weight to the term DWECK
because it is the principal source-signifying portion of
applicant’s mark. We should add that the words “BRAND” and
“FINE IMPORTS” are entitled to little weight in our
likelihood of confusion analysis because they are
descriptive with respect to the goods. Thus, when we
compare the marks in their entireties, we find that they
engender highly similar commercial impressions. We must
keep in mind the normal fallibility of human memory over
time and the fact that the average consumer retains a
general, rather than a specific, impression of trademarks
encountered in the marketplace. This is especially
important here where consumers are likely to remember the
DWECK portion of both marks because of its uniqueness.
Applicant’s assertion that it is unaware of any
instances of actual confusion despite approximately fifteen
years of concurrent use of the marks by applicant and
registrant does not persuade us that no likelihood of
confusion exists in this case. We cannot determine on this
record that there has been any meaningful opportunity for
actual confusion to have occurred in the marketplace, and
accordingly we cannot conclude that the alleged absence of
Ser No. 75/643,218
7
actual confusion is entitled to significant weight in our
likelihood of confusion analysis in this case.
In sum, we conclude that purchasers and prospective
purchasers familiar with registrant’s STEPHEN DWECK mark
for houseware items would be likely to assume, upon
encountering applicant’s highly similar mark STEAM-SHIP
BRAND FINE IMPORTS BY DWECK and design for identical and
closely related houseware items, that the goods sold
thereunder emanate from, or are sponsored by or affiliated
with, the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed as to each of the cited
registrations.