Sitonit Office Seating, Inc.

Trademark Trial and Appeal Board

Oct 21, 2003

No. 76433340 (T.T.A.B. Oct. 21, 2003)

Mailed: October 21, 2003
Paper No. 12
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UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Sitonit Office Seating, Inc.
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Serial No. 76433340
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Richard P. Sybert of Gordon & Rees, LLP for Sitonit Office
Seating, Inc.
Leslie LaMothe, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Sitonit Office Seating, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register LEADER as a trademark for “office furniture,
namely, an office chair.”1 Registration has been refused
1 Application Serial No. 76433340, filed July 23, 2002, and
asserting first use and first use in commerce as of May 2002.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76433340
2
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark LEADER’S CASUAL FURNITURE (with the words CASUAL
FURNITURE disclaimed), previously registered for “retail
store services featuring furniture and home accessories,”2
that, as used on applicant’s identified services, it is
likely to cause confusion or mistake or to deceive.
The appeal has been fully briefed.3 Applicant did not
request an oral hearing.
There are some procedural matters that we must discuss
first. At the conclusion of its reply brief, applicant has
requested remand “in the alternative” in order to
“introduce additional evidence in the form of survey
evidence to show that consumers recognize LEADER’S as
primarily a surname.” Applicant explains that this
evidence was not filed prior to appeal because “there was
(and frankly is) no reason to put Applicant to the
considerable expense of a survey when Applicant contends
the subject proposition is self-evident and a matter of
common sense and judgment.” Applicant also explains that
2 Registration No. 2,544,574, issued March 5, 2002, and claiming
first use and use in commerce on January 1, 1986.
3 With its appeal brief applicant has submitted as exhibits
copies of the various Office actions and responses. Applicant is
advised that such duplication is unnecessary. Applicant is also
advised that only a single copy of a brief or reply brief need be
submitted in an ex parte appeal.
Ser No. 76433340
3
such a survey has not been conducted, so the request for
remand cannot be accompanied by the evidence sought to be
introduced.
Applicant’s alternative request is denied. Applicant
was aware that it had the option to conduct and submit
evidence of a survey throughout the prosecution of the
application. In its response filed on April 25, 2003
applicant even stated that it could, if necessary,
commission a consumer survey. However, applicant chose not
to do so, and it cannot, at this late stage of the appeal,
have the application undergo further examination (of
evidence which is not even in existence!). (The value of
applicant’s arguments on the surname point is discussed
infra.)
It is also noted that, in applicant’s appeal brief, it
comments, with respect to the factor of the sophistication
of purchasers, that it “is willing to present substantial
sales and marketing evidence to support this point if the
Board so directs.” Brief, p. 11. Applicant appears to
have confused the appeal stage of this proceeding with the
examination phase. The Board's role is not to review the
evidence of record and then tell applicant what additional
evidence it should submit in support of its position.
Trademark Rule 2.142(d) makes clear that the record in the
Ser No. 76433340
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application should be complete prior to the filing of an
appeal.
The Examining Attorney has objected to Exhibit I to
applicant’s brief, which appears to be an excerpt from
applicant’s website, and which was not previously made of
record. The objection is well taken, and this exhibit has
not been considered. See Trademark Rule 2.142(d).
This brings us to the issue of likelihood of
confusion. Our determination is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors set forth in 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 any likelihood of
confusion analysis, two key considerations 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).
Turning first to the goods and services, applicant’s
identified “office chair” is one of the items that can be
sold through “retail store services featuring furniture”
identified in the cited registration. As such, the goods
and services must be considered complementary. A company
that makes furniture may also have a showroom or retail
Ser No. 76433340
5
store in which that furniture is sold, such that, if the
same or similar marks were used in connection with both,
consumers would be likely to assume a connection or
sponsorship.
The Examining Attorney has listed in her brief
numerous cases in which a likelihood of confusion has been
found when the same or similar marks are used for goods, on
the one hand, and for services involving those goods, on
the other. Moreover, the Examining Attorney has submitted
several third-party registrations which show that entities
have registered single marks for both chairs and retail
furniture store services. See, e.g., Registration No.
2,136,125 for, inter alia, furniture, namely chairs and
retail furniture store services; Registration No. 1,849,963
for, inter alia, non-upholstered chairs and retail
furniture store services; Registration No. 2,315,476 for,
inter alia, furniture, namely chairs and retail furniture
and fabric store services. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/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).
Ser No. 76433340
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Applicant has argued that the furniture sold by the
registrant is “‘casual’ furniture for relaxed home use,
namely rattan and wicker.” Brief, p. 9. Applicant bases
this contention on information obtained from the
registrant’s website. Applicant also asserts that its
office chairs are sold to businesses and are intended to
facilitate working, not relaxing, such that the goods and
services do not compete in any meaningful way.
Applicant’s argument is not persuasive. It is well
established that the question of likelihood of confusion
must be determined on the basis of the identification of
goods set forth in the subject application and cited
registration. In re William Hodges & Co., Inc., 190 USPQ
47 (TTAB 1976). See also, Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987) (determination of likelihood of
confusion based on an analysis of the mark as applied to
the goods and/or services recited in applicant's
application vis-à-vis the goods and/or services recited in
an opposer's registration, rather than what the evidence
shows the goods and/or services to be).
Thus, applicant's argument that "there is no reason
that the Board cannot look at the actual underlying facts
in precisely the same way that a court would do in
Ser No. 76433340
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evaluating likelihood of confusion," brief, p. 8, is
answered by the case law that specifically states that the
Board may not do so, but must look only to the goods and
services as they are identified in the respective
application and registration, without restrictions or
limitations not reflected therein. The reason underlying
this principle is that Section 7(b) of the Trademark Act
provides, inter alia, that a certificate of registration is
evidence of the registrant's exclusive right to use the
registered mark in commerce on or in connection with the
goods or services specified in the certificate. Thus,
because registrant has the exclusive right to use its mark
in connection with "retail store services featuring
furniture and home accessories," we must determine whether
applicant's use of its mark on office chairs is likely to
cause confusion with the registrant's use of LEADER'S
CASUAL FURNITURE for retail store services featuring all
types of furniture, including office furniture, and not
just in connection with the rattan and wicker casual
furniture asserted by applicant. The fact that the
registrant's mark includes the words CASUAL FURNITURE does
not limit the registration to retail store services
featuring only casual furniture.
Ser No. 76433340
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Similarly, because the registration is geographically
unrestricted, and because applicant also seeks a
geographically unrestricted registration, applicant's
argument that "no one is going to confuse an office chair
manufacturer in California with a chain of retail furniture
stores selling wicker and rattan in Florida," brief, p. 8,
has no persuasive value. Even applicant's own comments
belie the validity of this argument; applicant acknowledges
that it sells its goods "nationally and even
internationally," brief, p. 8. As a result, even if the
registrant were, in fact, to use its mark in connection
with services rendered only in Florida, applicant's goods
must be deemed to be sold in the same geographic area.
Applicant also argues that the target markets for
applicant and registrant are distinct. Applicant asserts
that its office chairs are marketed to the professional
office market, with the buyers for such goods being
professional agents and employees buying on behalf of a
business, while registrant's furniture is marketed to the
non-professional home user through its own retail stores,
with the buyers being private individuals furnishing their
own homes.
The problem with this argument is that office chairs
may be purchased by individuals as well as businesses. It
Ser No. 76433340
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is common knowledge that many people have offices in their
homes, and they may buy office chairs to furnish their home
offices. Thus, the same class of customers--home or
apartment owners or renters--may both purchase office
chairs and shop in retail furniture stores, and may
encounter both office chairs sold under applicant's mark
and retail furniture store services rendered under the
registrant's mark.
This brings us to a consideration of the marks.
Applicant has argued at great length that the word LEADER’S
in the cited registration is a surname and is therefore
descriptive. It is not entirely clear to us what
applicant’s purpose is in making this argument. Applicant
has cited a number of decisions in which marks were found
to be primarily merely surnames and therefore not
registrable. However, the cited mark is in fact
registered, and applicant may not attack the validity of a
registration in the absence of a cancellation proceeding.
To the extent that applicant is asserting that the
protection to be accorded the cited registration should be
limited because LEADER’S is, according to applicant, a
surname, we point out that the mark LEADER’S CASUAL
FURNITURE was considered by the Examining Attorney who
examined that application to be inherently distinctive, as
Ser No. 76433340
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the registration issued without recourse to the provisions
of Section 2(f) of the Act. Moreover, we note that the
cited registration claims use in commerce since 1986, so
that, even if the application therefor had encountered a
surname refusal, the mark would have been registrable under
Section 2(f).
Applicant argues that the words CASUAL FURNITURE are
the key to the registrability of the cited mark. Because
of the incorrect premise on which it is based, namely, that
the word LEADER'S in the registered mark is a descriptive
term, we do not consider the words CASUAL FURNITURE in the
cited mark to be the dominant element, nor do we view these
words as distinguishing the two marks. The words CASUAL
FURNITURE, which have been disclaimed, would clearly be
perceived by the public as having virtually no source-
indicating value, as they indicate the nature of some of
the goods sold which are the subject of the registrant's
retail store services featuring furniture and home
accessories. It is well established that in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been give to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
Ser No. 76433340
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in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). For the reasons we
have given, we have no doubt that the term LEADER'S in the
cited mark is the dominant element, and must be given
greater weight in the likelihood of confusion analysis.
Thus, the additional words CASUAL FURNITURE in the
cited mark, although adding elements in terms of appearance
and pronunciation, do not serve to distinguish the marks,
since applicant's mark LEADER is virtually identical to the
source-identifying element of the cited mark, LEADER'S. In
this connection, we acknowledge that the cited mark uses
the possessive form of LEADER'S, having an "'S." However,
we do not think that consumers are likely to note or
remember that one mark uses the possessive form and the
other does not. Under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980).
To the extent that applicant is arguing that the marks
are distinguishable in terms of connotation because of the
surname significance of LEADER'S in the cited mark, we are
not persuaded by this argument. Even if we assume that
consumers perceive the mark LEADER'S CASUAL FURNITURE used
Ser No. 76433340
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in connection with retail furniture store services as
suggesting that the store or the furniture sold therein is
connected with a person or family named LEADER, consumers
familiar with the mark used in connection with the store,
and seeing the name LEADER on an office chair, are likely
to believe that this is a furniture item emanating from the
same LEADER individual or family. Conversely, consumers
who are familiar with LEADER office chairs may, upon
encountering a retail furniture store services rendered
under the mark LEADER'S CASUAL FURNITURE, assume an
association or sponsorship between the source of the LEADER
office chair and the source of the services.
Applicant also argues that its goods are purchased
with a high degree of care, and that its "customers are
sophisticated buyers whose livelihoods depend on these
purchases." Brief, p. 11. As noted previously, the
problem with this argument is that office chairs may be
purchased by non-professionals, members of the public that
want office chairs for home offices. In addition, even in
a business setting, not all office chairs are purchased by
large companies which have a professional buyer whose sole
job is to purchase office furniture. A small business may
also, on occasion, have the need to purchase an office
chair, and the purchasing decision may be made by someone
Ser No. 76433340
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without great sophistication about such purchases. Such a
buyer may well assume an association as to source between
an office chair sold under the mark LEADER and retail
furniture store services rendered under the mark LEADER'S
CASUAL FURNITURE. Even assuming that careful purchasers
would notice the differences in the marks, they are likely
to ascribe the differences to the different nature of the
goods and services, rather than to a difference in the
sources of the goods and services (e.g., a single source
uses LEADER'S CASUAL FURNITURE for a retail store
specializing in casual furniture, and LEADER, without the
additional words, for an item of office furniture). For
similar reasons, the fact that furniture may be expensive
does not avoid the likelihood of confusion.4
Decision: The refusal of registration is affirmed.
4 In this connection, although we note applicant's statement
that a single item of furniture "can cost several hundreds of
dollars or more," brief, p. 11, we also note that applicant has
simply commented on the cost of furniture in general, such that
we cannot take this statement as an indication of the price of
all office chairs.