Staats Enterprises, Inc.

Trademark Trial and Appeal Board

Feb 2, 2016

No. 85943499 (T.T.A.B. Feb. 2, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 2, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Staats Enterprises, Inc.
_____

Serial No. 85943499
_____

Garland A. Brown, Jr. of Weiss Brown, PLLC,
for Staats Enterprises, Inc.
Julie M. Guttadauro, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Bergsman, Gorowitz and Pologeorgis,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Staats Enterprises, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark ACTION GARAGE DOOR REPAIR SPECIALISTS (in
standard characters) for “installation and repair of garage doors and garage door
openers,” in Class 37.1 Applicant disclaimed the exclusive right to use the phrase
“Garage Door Repair Specialists.”

1 Application Serial No. 8543499 was filed on May 28, 2013, based upon Applicant’s claim
of first use anywhere at least as early as May 1, 1984 and use in commerce since at least as
early as January 15, 1985.
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The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark ACTION DOOR
(standard characters) for the “installation, maintenance and repair of overhead
garage doors and operators,” in Class 37, as to be likely to cause confusion.2
Registrant disclaimed the exclusive right to use the word “Door.”
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
In Applicant’s March 24, 2014 Response to an Office Action, Applicant submitted a
table listing 337 registered marks comprising in whole or in part the word “Action,”
of which 10 were purportedly registered for services in Class 37. The table included
the serial number, registration number, mark, and status. It did not include the
goods and/or services and Applicant did not attach copies of the registrations. In her
April 21, 2014 Office Action, the Trademark Examining Attorney did not object to
the list of marks displayed in the table.
In Applicant’s October 21, 2014 Response to an Office Action, Applicant
submitted a table of eight registered marks comprising in whole or in part the word
“Action” purportedly to show that “the word ‘Action’ is so generic that there is no

2 Registered January 17, 2006; renewed.
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likelihood of confusion based on the use of the word ‘Action’ in the marks.” The table
included the mark, registration number, International Class, and goods or services.
Applicant did not attach copies of the registrations. In her December 10, 2014 Office
Action, the Trademark Examining Attorney did not object to the list of
registrations; in fact, the Trademark Examining Attorney addressed Applicant’s
argument regarding the registration of multiple “Action” marks.
The examining attorney disagrees with this particular
analysis based on the consumers and channels of trade of
the particular marks. For example, the source of
“ACTION CARD” used in connection with “printed
instructional, educational, and teaching materials in the
field of Health Care” would not likely be confused with
the source of “ACTION WOBBLE GREETING CARD”
used in connection with “greeting cards”. The consumer
base and channels of trade are different. See copies of the
attached registrations.
Despite the fact that Applicant, in its brief, did not argue that ACTION-
formative marks are weak and, therefore, entitled to only a narrow scope of
protection or exclusivity of use, the Trademark Examining Attorney, in her brief,
objected to the list of registrations Applicant submitted in its March 24, 2014
Response. The Trademark Examining Attorney did not object to the list of
registrations Applicant submitted in its October 21, 2014 Response. The Trademark
Examining Attorney’s objection is overruled because it was not timely raised.
If the applicant's response includes improper evidence of
third-party registrations, the examining attorney must
object to the evidence in the first Office action following
the response. Otherwise the Board may consider the
objection to be waived. See In re Houston, 101 USPQ2d
1534, 1536 (TTAB 2012) (finding that the examining
attorney's failure to advise applicant of the insufficiency
of the list of registrations when it was proffered during
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examination constituted a waiver of any objection to
consideration of that list); In re 1st USA Realty Prof'ls, 84
USPQ2d [1581]at 1583 [TTAB 2007] (allowing evidence of
a list of third-party registrations because the examining
attorney did not advise applicant of the insufficiency of
the list while there was still time to correct the mistake);
In re Broyhill Furniture Indus., Inc., 60 USPQ2d 1511,
1513 n.3 (TTAB 2001) (finding examining attorney's
objection to a listing of third-party registrations waived
because it was not raised in the Office action immediately
following applicant's response in which applicant’s
reliance on the listing as evidence was indicated). If the
applicant files an appeal, the examining attorney should
continue the objection to the evidence in his or her appeal
brief.
TMEP §710.03 (October 2015). See also TBMP §1208.02 (June 2015).
We will consider the list of registrations for whatever probative they have. In
this regard, the Board will not consider more than the information provided by the
applicant. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1264 n.6 (TTAB 2011)
(Board considered TESS listings for whatever probative value they had); In re 1st
USA Realty Prof'ls, 84 USPQ2d at 1583 (Board treated listing of particulars of
third-party applications/registrations submitted by applicant as stipulated into
record only to the extent that the specific data provided by applicant was
considered); In re Broyhill Furniture Industries Inc., 60 USPQ2d at 1513 n.3 (listing
of registration information considered for whatever probative value it might have,
with Board noting that the listing did not indicate whether registrations issued on
the Principal or the Supplemental Register).
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II. Applicable Law
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 issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the services. See 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. The similarity or dissimilarity and nature of the services.
Applicant is seeking to register its mark for “installation and repair of garage
doors and garage door openers.” The mark in the cited registration is registered for
“installation, maintenance and repair of overhead garage doors and operators.” The
services are identical.
B. The similarity or dissimilarity of established, likely-to-continue channels of
trade.
Where, as here, the services are identical, we must presume that the channels of
trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to
travel in same channels of trade to same class of purchasers); In re Yawata Iron &
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Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally
identical goods, the channels of trade and classes of purchasers are considered to be
the same); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011).
Applicant argues that because Applicant and Registrant render their services “at
the location of the customer’s residence,” “Applicant’s services are targeted to
different customers and travel through different trade and marketing channels than
the services identified in the cited registration.”3 We interpret this as an argument
that because the parties render their services in different geographic trading areas,
the services move in different channels of trade. However, because Applicant seeks
a geographically unrestricted registration under which it might expand throughout
the United States, it is not proper to limit our consideration to the likelihood of
confusion in the areas presently occupied by the parties. Section 7(b) of the
Trademark Act of 1946, 15 U.S.C. §1057(b), creates a presumption that the
registrant has the exclusive right to use its mark throughout the United States.
Therefore, the geographical distance between the present locations of the respective
businesses of the two parties has little relevance in this case. See Giant Food, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983).
C. The number and nature of similar marks in use in connection with similar
services.

3 4 TTABVUE 6.
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As noted above, Applicant submitted a table of third-party, ACTION-formative
marks and a table listing eight Action Garage Door companies found in an Internet
search.4 “[E]vidence of third-party use bears on the strength or weakness of an
opposer’s mark. … The weaker an opposer's [or registrant’s] mark, the closer an
applicant's mark can come without causing a likelihood of confusion and thereby
invading what amounts to its comparatively narrower range of protection.” Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015), quoting Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed.
Cir. 2015). See also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005) (“Evidence
of third-party use of similar marks on similar goods is relevant to show that a mark
is relatively weak and entitled to only a narrow scope of protection.”). “The purpose
of a defendant [or applicant] introducing third party uses is to show that customers
have become so conditioned by a plethora of such similar marks that customers
‘have been educated to distinguish between different [such] marks on the bases of

4 March 24, 2014 Response to an Office Action. Applicant proffers that the eight listed
companies are the first of “many links.” The table lists the name of the company, its
location, and the url. Applicant did not attach copies of the relevant webpages showing the
use of the name “Action.” Providing only a website address or hyperlink to Internet
materials is insufficient to make such materials of record. In re Powermat Inc., 105
USPQ2d 1789, 1791 (TTAB 2013); In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269,
1274 (TTAB 2012). Because of the transitory nature of Internet postings, websites
referenced only by address or hyperlinks may be modified or deleted at a later date without
notification. See Safer Inc., 94 USPQ2d 1031, 1039 (TTAB 2012). Thus, information
identified only by website address or hyperlink would not be available for verification by
the applicant or the Trademark Office to corroborate or refute. See In re HSB Solomon
Assocs. LLC, 102 USPQ2d at 1274.
Serial No. 85943499
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minute distinctions.’” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1694.
Where the “record includes no evidence about the extent of [third-party] uses …
[t]he probative value of this evidence is thus minimal.” Id. at 1693, quoting Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir.
2001) (emphasis added). However, if there is extensive evidence of third-party use
and registrations, such evidence may be “powerful on its face,” even if the specific
extent and impact of the usage has not been established. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d
at 1136; Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d at 1674-75.
In addition, “[a] real evidentiary value of third party
registrations per se is to show the sense in which … a
mark is used in ordinary parlance.” 2 McCarthy on
Trademarks and Unfair Competition § 11:90 (4th ed.
2015) (emphasis added). “Third party registrations are
relevant to prove that some segment of the composite
marks which both contesting parties use has a normally
understood and well recognized descriptive or suggestive
meaning, leading to the conclusion that that segment is
relatively weak.” Id.; see Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 917 [189 USPQ 693] (CCPA 1976)
(even if “there is no evidence of actual use” of “third-party
registrations,” such registrations “may be given some
weight to show the meaning of a mark in the same way
that dictionaries are used”). Marks that are descriptive or
highly suggestive are entitled to a narrower scope of
protection, i.e., are less likely to generate confusion over
source identification, than their more fanciful
counterparts. See, e.g., Nat'l Data Corp. v. Computer Sys.
Eng'g, Inc., 940 F.2d 676, at *2 (Fed. Cir. 1991)
(unpublished); Drackett Co. v. H. Kohnstamm & Co., 404
F.2d 1399, 1400 [160 USPQ 407] (CCPA 1969) (“The scope
of protection afforded such highly suggestive marks is
necessarily narrow and confusion is not likely to result
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from the use of two marks carrying the same suggestion
as to the use of closely similar goods.”).
Id. at 1675.
The list of 337 third-party registrations has little probative value because it does
not identify the goods and/or services. The additional list of eight third-party
registrations that provides the goods and services has little probative value because
the descriptions of goods and services are not related to garage doors. In re Thor
Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (the third-party registrations are of
limited probative value because the goods identified in the registrations appear to
be in fields which are far removed from the goods at issue). See also Nat’l Cable
Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19
USPQ2d 1424, 1430 (Fed. Cir. 1991) (“None of the third party marks and uses of
ACE made of record are nearly as closely related to the activities of the parties as
the virtually identical uses of the parties are to each other. Thus, we agree with the
Board that nothing in the record shows a narrowing of Editors’ identification with
A.C.E./ACE by third party marks with respect to the relevant public, namely, the
film industry or even the broader entertainment industry. In sum, Cable's
argument that it can use ACE because ACE is a “weak” mark, as an abstract
proposition, is not only unpersuasive but essentially meaningless.”); Key Chemicals,
Inc. v. Kelite Chemicals Corp., 464 F.2d 1040, 175 USPQ 99, 101 (CCPA 1972) (“Nor
is our conclusion altered by the presence in the record of about 40 third-party
registrations which embody the word “KEY”. The great majority of those registered
marks are for goods unrelated to those in issue, and there is no evidence that they
Serial No. 85943499
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are in continued use. We, therefore, can give them but little weight in the
circumstances present here”).
Applicant’s list of third-party entities purportedly using ACTION DOOR also
has limited value because Applicant did not present any excerpts from the
webpages showing the use of ACTION DOOR as part of a mark, nor did Applicant
submit any evidence regarding the extent of the third-party use necessary to show
that consumers are aware of companies using ACTION DOOR as part of a
trademark.
Nevertheless, the third-party use and registrations show the word “Action” used
in ordinary parlance. When the word “Action” is used as part of a mark, it
engenders the commercial impression that the trademark owner will accomplish
something (i.e., perform) on behalf of the customer. Accordingly, we find that the
word “Action” when used in connection with the installation and repair of garage
doors and garage door openers is suggestive, but not so weak that Registrant’s mark
should be given a narrow scope of protection or a restricted exclusivity of use when
used in connection with the relevant services.
D. The similarity or dissimilarity of the marks.
We now turn to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “two marks may be found to be confusingly
similar if there are sufficient similarities in terms of sound or visual appearance or
Serial No. 85943499
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connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d
1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation
omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519
(TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”)).
In analyzing the marks, we are mindful that where, as here, the services are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the services. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough HealthCare Products Inc. v. Ing-
Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at
1721. See also San Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed.
Cir. 1992). The proper focus is on the recollection of the average customer, who
Serial No. 85943499
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retains a general rather than specific impression of the marks. L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver
& Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975). Because the services at issue are the
installation and maintenance of garage door openers, the average customer is, inter
alia, an ordinary homeowner.
Applicant’s mark is ACTION GARAGE DOOR SPECIALISTS and the registered
mark is ACTION DOOR. The dominant element of both marks is the word “Action.”
The word “Door” in the registered mark and the term “Garage Door Specialists” in
Applicant’s mark are descriptive. It is well-settled that disclaimed, descriptive
matter may have less significance in likelihood of confusion determinations. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“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.’”), quoting In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1985); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41
USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the
mark’s commercial impression”).
Further, consumers’ attention will be focused on the word “Action” because it is
the first word in both marks. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
Serial No. 85943499
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(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to appear on the label);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first
notice the identical lead word); Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”).
Finally, Applicant and Registrant present the word “Action” as the dominant
part of their marks as shown by the way they display their marks. The relevant
portion of Applicant’s specimen of use filed with its application is displayed below:

Registrant’s mark as displayed on its website is shown below:5

We may look to the trade dress to determine the commercial impression engendered
by the marks. Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669,
223 USPQ 1281, 1284 (Fed. Cir. 1984) (trade dress may provide evidence of
commercial impression). See also American Rice, Inc. v. H.I.T. Corp., 231 USPQ 793,
796 (TTAB 1986) (“we may take into account whether the trade dress of packages or
labels in the application file as specimens, or otherwise in evidence, may

5 April 21, 2014 Office Action.
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demonstrate that the trademark projects a confusingly similar commercial
impression.”); Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB
1985) (“Evidence of the context in which a particular mark is used on labels,
packaging, etc., or in advertising is probative of the significance which the mark is
likely to project to purchasers.”).
While we have identified the word “Action” as the dominant element of both
marks, we are cognizant that our decision must be based on the entire marks, not
just part of the marks. On the other hand, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). As noted above, we focus on the recollection of the average purchaser, an
ordinary homeowner, who normally retains a general rather than a specific
impression of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438
(TTAB 2012).
In this regard, consumers are likely to refer to the parties’ services as ACTION
DOOR because they will shorten ACTION GARAGE DOOR SPECIALISTS to
ACTION GARAGE DOOR, ACTION DOOR, or just ACTION. “[U]sers of language
have a universal habit of shortening full names – from haste or laziness or just
economy of words. Examples are: automobile to auto; telephone to phone; necktie
to tie; gasoline service station to gas station.” In re Abcor Development Corp., 588
F.2d 511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring).
Serial No. 85943499
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[C]ompanies are frequently called by shortened names,
such as Penney’s for J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially changed its name to
Sears alone), Ward’s for Montgomery Ward’s, and
Bloomies for Bloomingdales.
Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992).
See also Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983) (“Although the record does not indicate that applicant's
business is commonly referred to as “Giant”, it does indicate that people have called
it by that name, omitting the word “Hamburgers”. Thus, in a conversation between
two consumers in opposer’s area about a place of business called “Giant”, there
likely would be confusion about which “Giant” they were talking about.”); Big M Inc.
v. The United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore
the propensity of consumers to often shorten trademarks and, in the present case,
this would be accomplished by dropping the ‘T.H.’ in referring to registrant's stores
[T.H. MANDY].”).
Because Applicant’s mark ACTION GARAGE DOOR SPECIALISTS is so similar
to the registered mark ACTION DOOR, the third-party registrations and use of
ACTION-formative marks noted in the previous section do not provide a basis upon
which consumers would be able to distinguish the marks.
In view of the foregoing, we find that Applicant’s mark ACTION GARAGE
DOOR SPECIALISTS is similar to the registered mark ACTION DOOR in terms of
appearance, sound, connotation and commercial impression.
E. The conditions under which and buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing.
Serial No. 85943499
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Applicant argues, without any corroborating evidence, that “[t]he care and
discretion exercised by those who are considering purchasing either Applicant’s
services or Registrant’s services make it highly unlikely any confusion as to source
between Applicant’s mark and Registrant’s mark would occur.”6 Setting aside that
there are no facts upon which we can analyze the degree of care potential
consumers will exercise when selecting a company to install and/or maintain their
garage doors and garage door openers, and assuming that such consumers will
exercise a high degree of care selecting such a company, the similarities of the
marks and identity of the services outweigh careful purchasing decisions. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d,
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840,
1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods). Thus, this factor is
neutral.
F. Balancing the factors.
Because the marks are similar, the services are identical, and there is a
presumption that the services move in the same channels of trade, we find that
Applicant’s mark ACTION GARAGE DOOR SPECIALISTS for the “installation and
repair of garage doors and garage door openers” is likely to cause confusion with
ACTION DOOR for “installation and repair of garage doors and garage door
openers,” as to be likely to cause confusion.

6 4 TTABVUE 6.
Serial No. 85943499
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Decision: The refusal to register Applicant’s mark ACTION GARAGE DOOR
SPECIALISTS is affirmed.