Sound Inter-national, Inc.

Trademark Trial and Appeal Board

Jan 28, 2005

No. 76337681 (T.T.A.B. Jan. 28, 2005)

Mailed: January 28, 2005
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sound International, Inc.
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Serial No. 76337681
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Lex Mathis of Sound Law Group PLLC for Sound International,
Inc.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Hairston, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark BOSTON HARBOR for goods identified in the
application as “oscillating portable fans, stand fans,
table fans, wall fans, ceiling fans, electric household and
portable fans.”1
1 Application Serial No. 76337681, filed on November 15, 2001,
which is based on an allegation of a bona fide intention to use
the mark in commerce. The word “BOSTON” has been disclaimed
apart from the mark as shown.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76337681
2
Applicant has appealed the trademark examining
attorney’s refusal to register applicant’s mark. The
refusal was made under Trademark Act Section 2(d), 15
U.S.C. §1052(d), on the ground that applicant’s mark, as
applied to applicant’s goods, so resembles the mark BOSTON,
previously registered for “fans,”2 as to be likely to cause
confusion.
The appeal has been fully briefed, but applicant did
not request an oral hearing. We affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) of the Trademark Act is based on an analysis
of all of the probative facts in evidence that are relevant
to the likelihood of confusion factors set forth in In re
E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
2 Registration No. 1,911,191 issued August 15, 1995 under Section
2(f) of the Act; renewed. Although the registration covers other
goods, the refusal is based on “fans.”
Ser No. 76337681
3
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We turn first to a consideration of the respective
goods. We agree with the examining attorney that the goods
must be considered to be legally identical. The cited
registration lists “fans” and this term encompasses the
applicant’s more specifically identified “oscillating
portable fans, stand fans, table fans, wall fans, ceiling
fans, electric household and portable fans.”
Applicant maintains that it currently sells ceiling
mounted fans whereas registrant sells fans that rest on
surfaces. Further, applicant argues that its goods “are
marketed and sold exclusively through Orgill Worldwide
Sourcing to independent hardware stores and home
improvement stores”, whereas registrant’s goods “are sold
in office supply stores.” (Brief, p. 10). In support of
these arguments, applicant submitted the declarations of
its president and its attorney’s legal assistant who spoke
with a representative of registrant.
It is well-settled that the question of likelihood of
confusion must be determined based on an analysis of the
goods identified in applicant’s application vis-à-vis the
goods identified in the cited registration, rather than
Ser No. 76337681
4
what the evidence shows the goods actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1992). Thus, in this case, we must
assume that applicant will use its mark on all the fans
listed in its application and we must assume that
registrant uses its mark on all kinds of fans, including
the fans listed in applicant’s application. Moreover, in
the absence of specific limitations in applicant’s and
registrant’s respective identifications, we must assume
that the products set forth therein are sold in all normal
channels of trade for goods of that type. Thus, for
purposes of determining whether confusion is likely, the
trade channels also must be considered the same.
This brings us to a consideration of the marks. As
our principal reviewing court, the Court of Appeals for the
Federal Circuit, has pointed out, “[w]hen marks would
appear on virtually identical goods or services, 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). In this case, applicant seeks to
register BOSTON HARBOR, while the cited mark is BOSTON.
Obviously, because applicant’s mark consists of one of the
words of the cited mark, there are consequent similarities
Ser No. 76337681
5
in appearance and pronunciation. Applicant argues that the
fact that both marks contain the word BOSTON is not a
sufficient basis for finding likelihood of confusion,
pointing out that there are over fifty third-party
registrations of marks that include the word BOSTON.
Applicant submitted with its brief a printout from the
Patent and Trademark Office’s TESS database which lists
marks that include the word “Boston”.3
As pointed out by the examining attorney, third-party
registrations are entitled to little weight on the question
of likelihood of confusion. See In re Hub Distributing,
Inc., 218 USPQ 284 (TTAB 1983). Such registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, and the existence on the
register of arguably similar marks cannot aid an applicant
in its effort to register another mark which so resembles a
3 Under Trademark Rule 2.142(d), evidence submitted for the first
time with a brief on the case is normally considered by the Board
to be untimely and therefore would usually be given no
consideration. Moreover, in order to make third-party
registrations of record, soft copies of the registrations
themselves, or the electronic equivalent thereof, i.e., printouts
of the registrations taken from the Patent and Trademark Office’s
own database generally must be submitted. However, we note that
where, as here, the examining attorney has not only failed to
object to the evidence, but has discussed it in his brief, the
Board will treat the evidence as being of record.
Ser No. 76337681
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registered mark as to be likely to cause confusion. See
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268 (CCPA 1973). Furthermore, the evidence
furnished by applicant is of very limited probative value
because it consists simply of marks listed by registration
number, and thus it fails to indicate the particular goods
in connection with which the marks are registered.
In any event, “Boston” obviously is a geographic term.
The term, as used in both marks, has the same geographic
significance, and the additional word HARBOR in applicant’s
mark does not change that meaning or the commercial
impression of the marks.
Under actual marketing conditions, consumers generally
do not have the luxury of making side-by-side comparisons.
The proper test in determining likelihood of confusion is
not a side-by-side comparison of the marks, but rather must
be based on the similarity of the general overall
commercial impressions engendered by the involved marks.
See Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255
(TTAB 1980).
In this case, the addition of the word HARBOR does not
serve to distinguish the marks. Purchasers are unlikely to
remember the specific differences between the marks due to
the recollection of the average purchaser, who normally
Ser No. 76337681
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retains a general, rather than a specific, impression of
trademarks encountered in the marketplace. That is, the
purchaser’s fallibility of memory over a period of time
must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); and Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir. 1992).
Two additional arguments made by applicant require
comment. Applicant argues that its product packaging is
different from that of registrant and submitted photographs
to illustrate this. However, the issue of likelihood of
confusion must be determined by comparing applicant’s mark
as it appears in the application and the cited mark as it
appears in the registration. We cannot consider either
applicant’s or registrant’s product packaging because such
packaging is not part of the marks in the application and
the cited registration. Moreover, applicant and registrant
are free to change their respective product packages at any
time. Thus, for purposes of determining likelihood of
confusion, any differences in product packaging are
irrelevant. See Kimberly-Clark Corp. v. H. Douglas
Enterprises, 774 F.2d 1144, 227 USPQ 541 (Fed. Cir. 1985);
and The Quaker Oats Company v. Acme Feed Mills, Inc, 192
USPQ 653 (TTAB 1976).
Ser No. 76337681
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Further, we note that at page 9 of its brief,
applicant states that it is willing to restrict its
identification of goods to “ceiling mounted fans” to avoid
a likelihood of confusion. Apart from the fact that such
an offer to restrict the identification of goods is
untimely, it would not serve to obviate the likelihood of
confusion because registrant’s broadly identified fans
encompass ceiling mounted fans.
We conclude that in view of the substantial similarity
in the commercial impressions of applicant’s mark BOSTON
HARBOR and registrant’s mark BOSTON, their contemporaneous
use on the legally identical goods involved in this case
would be likely to cause confusion as to the source or
sponsorship of such goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.