Soho Corp.

Trademark Trial and Appeal Board

Jan 3, 2001

No. 75391891 (T.T.A.B. Jan. 3, 2001)

1/3/01
Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Soho Corporation
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Serial No. 75/391,891
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Michael A. Hierl and Kathryn E. Garipay of Olson & Hierl,
Ltd. for Soho Corporation.
Doug Hutton, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney)
_______
Before Cissel, Seeherman and Bottorff, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Soho Corporation has appealed from the final refusal
of the Trademark Examining Attorney to register HOLD
EVERYTHING! as a trademark for “plastic storage boxes for
household use.”1 Registration has been refused 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 following
1 Application Serial No. 75/391,891, filed November 18, 1997,
and asserting first use and first use in commerce in March 1987.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/391,891
2
three registrations, all owned by Williams-Sonoma, Inc.,
that, as used on applicant’s goods, it is likely to cause
confusion or mistake or to deceive:
Mark Services
HOLD EVERYTHING
Retail store services in the
field of containers and
storage devices2
Distributorship and retail
store services in the field
of containers and storage
devices3
Retail store and mail order
catalog services in the field
of containers and storage
devices4
2 Registration No. 1,448,980, issued July 21, 1987; Section 8
affidavit accepted; Section 15 affidavit received.
3 Registration No. 1,433,336, issued March 17, 1987; Section 8
affidavit accepted; Section 15 affidavit received.
4 Registration No. 1,743,760, issued December 29, 1992; Section
8 affidavit accepted; Section 15 affidavit received. The drawing
is lined for the color red, but color is not claimed as part of
the mark. The registrant is identified in this registration as
Williams-Sonoma, Inc., d/b/a Hold Everything Corporation.
Ser. No. 75/391,891
3
The appeal has been fully briefed, but an oral hearing
was not requested.
We affirm the refusal with respect to all three of the
cited registrations.
Before turning to the substantive issue before us, we
note that applicant has raised objections to materials
submitted by the Examining Attorney with his brief.
Applicant is correct that, as provided by Trademark Rule
2.142(d), the record in the application should be complete
prior to the filing of an appeal. Accordingly, the
Internet materials and third-party registrations will be
given no consideration. Applicant has also objected to the
unpublished cases cited by the Examining Attorney in his
brief. Again, applicant’s objection is well taken. The
fact that the Board stamped these decisions, “This
disposition is not citable as precedent of the T.T.A.B.”
means just that. We have not considered these decisions in
rendering our decision.
In determining whether there is a likelihood of
confusion between two marks, we must consider all relevant
factors as set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis under Section 2(d), two of
Ser. No. 75/391,891
4
the most important considerations are the similarities or
dissimilarities between the marks and the similarities or
dissimilarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976).
The marks are identical in pronunciation and
connotation, and virtually identical in appearance. The
minimal background design elements in two of the cited
marks, and the exclamation point in applicant’s mark, do
not serve to distinguish them. The commercial impressions
of applicant’s mark and the registered marks are the same.
Applicant’s goods and the registrant’s services are
closely related. Applicant’s goods are plastic storage
cases, and registrant’s retail store, distributorship and
mail order catalog services all feature containers and
storage devices. Thus, registrant offers for sale the very
types of goods produced by applicant. Although the
respective identifications are sufficient to demonstrate
the relationship between applicant’s goods and registrant’s
services, the Examining Attorney has also made of record
third-party registrations which further support the
relatedness of the goods and services.5 Third-party
5 See, for example, Registration No. 2,212,237 for, inter alia,
all-purpose containers for household or kitchen use, and
Ser. No. 75/391,891
5
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).
In this case, the third-party registrations serve to
suggest that parties use their marks for both retail store
and mail order catalog services and for the goods which are
sold via those services.
In view of the nature of the goods and services, and
because there are no restrictions in the identifications,
we must assume that they are offered to the public at
large, rather than to a sophisticated segment of that
public.
Applicant itself has conceded that the marks are
similar and the goods and services are related. Brief,
p. 2. However, applicant asserts that confusion is not
likely because the registered marks are entitled to a
limited scope of protection, and because there have been no
instances of actual confusion.
With respect to the first point, applicant argues that
the cited marks “are highly suggestive, if not descriptive,
retail/wholesale mail order catalog services featuring all-
purpose containers for household or kitchen use.
Ser. No. 75/391,891
6
of the services offered under the marks.” Brief, p. 3. We
find this argument to be somewhat surprising, not only
because a claim that a registered mark is descriptive would
be an impermissible collateral attack on a registration,6
but because if the cited marks were to be considered merely
descriptive, applicant’s mark would also suffer from the
same infirmity. However, not only are the cited marks not
merely descriptive, we do not consider them to be
suggestive. This is because, in addition to informing
consumers that the goods registrant sells hold a variety of
things, the marks also have the meaning of “Stop” or “Wait
a minute.” This double entendre gives the cited marks a
catchy and memorable quality, such that they fall much more
on the arbitrary side of the arbitrary-generic continuum
than on the suggestive side. Moreover, even if we were to
consider the registrant’s HOLD EVERYTHING marks to be
suggestive, the suggestive connotation would be the same as
that of the applicant’s mark. Suggestive marks are
entitled to protection against likelihood of confusion, and
given the related nature of the goods and services, even if
6 If an applicant wished to claim that a mark cited against it
were merely descriptive, it would have to do so by way of a
cancellation action. Applicant herein could not bring such a
proceeding in the instant situation, however, because the cited
registrations are all more than five years old, and therefore the
ground of mere descriptiveness cannot be asserted against them.
Ser. No. 75/391,891
7
we were to accord the registered marks a more limited scope
of protection, it would still be broad enough to bar
applicant’s registering the virtually identical mark for
closely related goods.
We find applicant’s second argument, that there have
been no instances of actual confusion, to be similarly
unpersuasive. Applicant asserts that it has used its mark
since 1987, and that the cited registration for HOLD
EVERYTHING in the somewhat rectangular line border claims a
first use date of 1983. (The registration for HOLD
EVERYTHING per se claims a first use date of 1985, and the
registration for HOLD EVERYTHING with the red background
design claims a first use date of 1991.) Applicant argues
that there have been thirteen years of concurrent use of
the marks, and this is strong evidence that confusion is
not likely to occur in the future.
There are several problems with this argument, the
most notable being that, in this ex parte proceeding, we
have had no opportunity to hear from the registrant as to
whether it has encountered any instances of confusion. The
various cases cited by applicant are thus distinguishable,
because they involve inter partes proceedings.
Applicant did cite one ex parte case, In re General
Motors Corp., 23 USPQ2d 1465, 1470-71 (TTAB 1992), in which
Ser. No. 75/391,891
8
the Board gave weight to the fact that applicant had
experienced no confusion in reaching the conclusion that
confusion was not likely between applicant’s use of GRAND
PRIX for automobiles and the cited registrations for GRAND
PRIX and design marks for automotive replacement parts.
However, the Board specifically stated in that case that
the circumstances were very unusual:
We recognize, of course, that the above
is one-sided inasmuch it provides only
applicant’s experience in the
marketplace and not that of registrant.
Normally, in the absence of a detailed
consent agreement, the registrant has
no opportunity to be heard in an ex
parte proceeding of this type and the
Board, therefore, is not in a position
to meaningfully assess whether the
claimed period of contemporaneous use
has provided ample opportunity for
confusion to have arisen. See, e.g.,
In re Jeep Corp., supra [222 USPQ 333
(TTAB 1984)] at 337. The asserted
absence of actual confusion, especially
over a relatively short period of
years, has thus often been asserted to
be of “limited influence” or of
“dubious probative value”. See, e.g.,
In re Barbizon International, Inc., 217
USPQ 735, 737 (TTAB 1983) and In re
Whittaker Corp., 200 USPQ 54, 56 (TTAB
1978), respectively.
In the present case, however, we have a
confluence of facts which persuasively
point to confusion as being unlikely.
Specifically, during a nearly thirty-
year interval of sustained success in
the marketing of what, for the average
consumer, is typically a major and
expensive purchase, applicant has
Ser. No. 75/391,891
9
experienced no reported instances of
actual confusion between its use of
“GRAND PRIX” in connection with almost
2.7 million automobiles and
registrant’s use of its “GRAND PRIX”
marks for related automotive
replacement parts.
In this case, applicant has provided no information
whatsoever about its sales activities, such that we can say
it has experienced an extended interval of “sustained
success.7 Further, the plastic storage cases applicant
sells cannot be considered "a “major and expensive
purchase,"8 such that if any purchasers were confused by the
mark, they are likely to have contacted applicant to report
7 In its reply brief applicant asserts that the Examining
Attorney raised for the first time in his brief that there is no
evidence as to the extent of the use of the applicant’s and
registrant’s marks. Applicant states that if this issue had been
raised during examination, it would have submitted evidence to
demonstrate that there was an opportunity for confusion to occur,
and at the very least the application should be remanded to the
Examining Attorney so that applicant can supplement the record.
Applicant’s request for remand is denied. The Examining Attorney
did not raise a new issue in his brief, merely a new argument
with respect to the factor of “the length of time during and
conditions under which there has been concurrent use without
evidence of actual confusion.” In re E.I. du Pont de Nemours &
Co., supra, 177 USPQ at 567. Since applicant was asserting that
this factor favored its position, applicant should have submitted
any evidence in support of it during the course of prosecution.
Moreover, applicant was obviously aware of the evidence which was
found to be probative in the General Motors case, since it was
applicant that relied on this case not only in its brief but in
the responses it filed during the prosecution of the application.
8 Although we have given no consideration to the Internet
evidence submitted by the Examining Attorney with his brief that
indicates the price at which plastic storage boxes are sold, we
may take judicial notice that plastic storage boxes are
relatively inexpensive items.
Ser. No. 75/391,891
10
their confusion.9 Thus, the General Motors case is not
applicable to the present situation. Rather, we think it
appropriate to follow the general rule that, in an ex parte
situation, the fact that the applicant has not experienced
any instances of actual confusion is entitled to limited
weight.
Accordingly, although we have considered such evidence
in reaching our decision herein, upon review of all of the
relevant factors, and particularly the virtual identity of
the marks and the closely related nature of the goods and
services, the commonality of purchasers and the inexpensive
nature of the purchase, we find that applicant’s mark HOLD
EVERYTHING! for plastic storage boxes for household use is
likely to cause confusion with the three registered marks.
Decision: The refusal of registration is affirmed.
9 In fact, it seems to us more likely that a dissatisfied
consumer would go to one of the registrant’s retail stores to
make a complaint about a problem with a plastic storage case.
Similarly, if a consumer wished to purchase a HOLD EVERYTHING!
plastic storage case, such an inquiry is more likely to be made
to a HOLD EVERYTHING store than to the Soho Corporation.