Standard Plywoods

Trademark Trial and Appeal Board

May 16, 2001

No. 75415276 (T.T.A.B. May. 16, 2001)

5/16/01
Paper No. 18
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Standard Plywoods, Inc.
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Serial No. 75/415,276
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Richard M. Manning and Timothy D. St. Clair of Dority &
Manning for applicant.
Richard R. Alves, Jr., Trademark Examining Attorney, Law
Office 104 (Sidney I. Moskowitz, Managing Attorney).
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Before Seeherman, Quinn and Walters, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Standard Plywoods,
Inc., doing business as Anderson Hardwood Floors, to
register the mark JACKSON PLANK (“PLANK” disclaimed) for
“wood flooring.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
1 Application Serial No. 75/415,276, filed January 8, 1998, based
on an allegation of a bona fide intent to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/415,276
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ground that applicant’s mark, if applied to applicant’s
goods, so resembles the previously registered mark JACKSON
SQUARE for “wood flooring”2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing originally was requested, but the request was
later withdrawn.
We affirm the refusal to register.
The Examining Attorney maintains that the marks are
similar, with both marks dominated by the identical
“JACKSON” portion, and that even if the cited mark were
viewed as weak, the scope of protection of the cited mark
extends to include applicant’s mark when the marks are
applied to identical goods. The Examining Attorney also
discounts the argument that consumers of wood flooring are
sophisticated. The Examining Attorney submitted excerpts
retrieved from the NEXIS database showing descriptive uses
of the term “plank” in connection with wood flooring.
Applicant contends that the cited registration is weak
and entitled to a narrow scope of protection. In this
regard, applicant asserts that the term “Square” in
2 Registration No. 1,478,721, issued March 1, 1988; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/415,276
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registrant’s mark is “either generic or highly descriptive
for the registered goods or should be regarded as a
suggestive term and therefore substantively distinguishing
from other marks not including such terminology.” (brief,
p. 8) Applicant also contends that “Jackson” is a surname
and adds to the weakness of the cited mark. Applicant
further asserts that wood flooring is the subject of a
sophisticated purchase “based upon investigation, counsel
and advice of professionals, and most commonly involving
professional installation.” (brief, p. 10) Applicant
states that wood flooring is “most typically professionally
installed by ‘Contractors and Installers’ after being
selected directly or in consultation with ‘Architects,
Designers, Decorators, and Other Specifiers.” (brief, p.
10) In support of its position, applicant submitted the
file wrapper of the cited registration, excerpts from a
telephone directory with “Jackson” surname listings,
excerpts from applicant’s marketing material, and one
third-party registration.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
Ser No. 75/415,276
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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).
The goods in the application and the cited
registration are identical, namely “wood flooring.” It is
presumed that the goods move in the same channels of trade
and are purchased by the same classes of purchasers. In re
Elbaum, 211 USPQ 639 (TTAB 1981). In this connection, we
note that if the goods are identical, as they are here,
“the degree of similarity [between the marks] 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).
Insofar as the marks are concerned, we find that the
marks JACKSON PLANK and JACKSON SQUARE engender similar
overall commercial impressions as applied to identical
goods (wood flooring). The respective marks clearly are
dominated by the identical term “JACKSON.” Being the first
word in each of the marks, the term “JACKSON” is the
portion that is most likely to be remembered by consumers
and to be used in calling for the goods. Further, although
we have considered the marks in their entireties, “there is
nothing improper in stating that, for rational reasons,
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more or less weight has been given to a particular feature
of a mark, provided [that] the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). For example, “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...” Id. at 751.
In the case at hand, the term “PLANK” in applicant’s
mark is disclaimed and, as shown by the NEXIS evidence, is
descriptive as applied to wood flooring. The term “SQUARE”
in registrant’s mark, while not disclaimed, is at least
highly suggestive. Registrant’s specimens show that its
wood flooring is sold in square size. Thus, as in the case
of applicant’s mark, this term is subordinate to the term
“JACKSON.” The fact that “Jackson” may be a surname or a
geographical term does not diminish the likelihood of
confusion between the two marks.
In sum, the general overall commercial impression
engendered by the marks is similar. Purchasers familiar
with registrant’s wood flooring sold under the mark JACKSON
SQUARE would be likely to believe, upon encountering
applicant’s mark JACKSON PLANK for wood flooring, that
applicant’s mark identified a line extension of the JACKSON
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SQUARE brand flooring, or that it identified a different
type of wood flooring (plank versus square) emanating from
registrant.
Although we find it reasonable for applicant to assert
that the purchase of wood flooring involves a fairly
sophisticated purchasing decision, this would not ensure
against confusion here given the similarity of the marks
and the identity of the goods. In any event, the
identifications of goods are not restricted as to class of
purchasers, and we therefore must presume that the flooring
is bought not only by those knowledgeable in the trade, but
by do-it-yourselfers as well.
The one third-party registration of the mark JACKSON
does not dictate a different result. The registration is
of little probative value on the specific question of
likelihood of confusion presented in this case, given that
the registration covers goods (power wood working machines
and tools) different from the wood flooring of applicant
and registrant, not to mention the fact that there is no
evidence that the registered mark is in use.
Decision: The refusal to register is affirmed.
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