Stiffel Co.v.Mustaki, S. A.

Trademark Trial and Appeal Board

May 1, 1997

CANC (T.T.A.B. May. 1, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB May 1, 1997
Paper No. 12
GDH/gdh
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
The Stiffel Company
v.
Mustaki, S.A.
_____
Cancellation No. 23,845
_____
Ik Hyun Seo and Gerald T. Shekleton of Welsh & Katz, Ltd. for The
Stiffel Company.
Claudia Cantarella of Fried, Frank, Harris, Shriver & Jacobson
for Mustaki, S.A.
_____
Before Seeherman, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Stiffel Company has petitioned to cancel the
registration owned by Mustaki, S.A. for the mark "STIFEL" for
"rugs, carpets and other textile floor coverings; namely, mats and
scatter rugs, linoleum floor coverings, tapestries not of textile,
Cancellation No. 23,845
2
and wallpaper not made of textiles".1 As grounds for
cancellation, petitioner alleges that for many years, it has
engaged in the business of designing, manufacturing and selling of
lamps; that it is the owner of registrations for the marks
"STIFFEL"2 and "STIFFEL" and design,3 as reproduced below,

which have each been continuously used, from a long time prior to
the September 3, 1990 date of first use anywhere alleged in
respondent's registration, for "electric portable lamps--namely,
table, floor and pendant"; that petitioner has expended large
sums of monies in advertising and promoting its "STIFFEL" marks
for lamps and has enjoyed extensive sales of its goods under such
marks; that by reason of its advertising, promotion and sales,
petitioner's "STIFFEL" marks have become well-known to the
public; that respondent's products "are marketed, or are likely

1 Reg. No. 1,880,269, issued on February 21, 1995 from an application filed on
on the Principal Register on September 15, 1993 and amended to the
Supplemental Register on July 22, 1994, and which sets forth a date of first
use anywhere of September 3, 1990 and a date of first use in commerce of
December 20, 1991.
2 Reg. No. 1,078,331, issued on November 29, 1977 from an application filed on
the Principal Register on February 2, 1977, and which sets forth dates of
first use of 1934; combined affidavit §§8 and 15.
3 Reg. No. 1,180,021, issued on December 1, 1981 from an application filed on
the Principal Register on January 7, 1981, and which sets forth dates of first
use of August 1, 1979; combined affidavit §§8 and 15.
Cancellation No. 23,845
3
to be marketed[,] under the term 'STIFEL' to the identical class
of customers to whom Petitioner markets its products under its
STIFFEL mark[s]"; and that respondent's registration should be
canceled because its "STIFEL" mark, when used on or in connection
with respondent's goods, so resembles petitioner's previously
registered "STIFFEL" marks for lamps as to be likely to cause
confusion, mistake or deception.
Respondent, in its answer, has denied the salient
allegations of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; and, pursuant to its timely filed notice
of reliance thereon, certified copies of petitioner's pleaded
registrations showing that the registrations are subsisting and
owned by petitioner. Neither party took testimony or introduced
any other evidence. Only petitioner filed a brief. An oral
hearing was not requested.
Priority is not in issue since the record shows that
the filing dates of the applications which matured into
petitioner's pleaded registrations for its "STIFFEL" marks are
earlier than the filing date of the application which resulted in
respondent's involved registration for its "STIFEL" mark.
Petitioner, therefore, has priority vis-a-vis the respective
marks of the parties. See, e.g., Hilson Research Inc. v. Society
for Human Resource Management, 27 USPQ2d 1423, 1428-29 (TTAB
1993) at n. 13; and American Standard Inc. v. AQM Corp., 208 USPQ
840, 842 (TTAB 1980). Thus, the only issue to be determined is
whether respondent's "STIFEL" mark, when used in connection with
Cancellation No. 23,845
4
"rugs, carpets and other textile floor coverings; namely, mats
and scatter rugs, linoleum floor coverings, tapestries not of
textile, and wallpaper not made of textiles", so resembles
petitioner's "STIFFEL" marks for its portable electrical table,
floor and pendant lamps that confusion is likely as to the source
or sponsorship of the parties' products.
Upon consideration of the pertinent factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973), for determining whether a likelihood of
confusion exists, we find that, on this record, petitioner has
failed to satisfy its burden of demonstrating that confusion as
to source or sponsorship is likely to occur. Here, the sole du
Pont factor in petitioner's favor is the similarities in the
respective marks. Specifically, we agree with petitioner that,
as argued in its brief, the literal portions of the respective
marks are "nearly identical" and that the only difference
therein, namely, the single letter "F" in respondent's mark
instead of the double letter "F" in petitioner's marks, simply
does not sufficiently serve to differentiate and distinguish the
respective marks in sound, appearance, or overall commercial
impression. Nevertheless, this record contains no evidence (such
as sales figures, advertising expenditures and/or length of use)
to support the allegation in the petition to cancel that
petitioner's marks are well known and thus would be entitled to
"a wide latitude of legal protection." See, e.g., Kenner Parker
Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992), cert. denied, 113 S.Ct. 181 (1992).
Cancellation No. 23,845
5
Moreover, with respect to whether any of respondent's
goods are so related to petitioner's products as to be likely,
when sold under the nearly identical marks "STIFEL" and
"STIFFEL," to cause confusion or mistake or deception, there is
no evidence in the record to support petitioner's contentions in
its brief that "[i]t is common for the types of home furnishings
at issue in the present case to be displayed together in
groupings at retail stores" and that "[t]his common display
practice further increases the likelihood that a consumer seeing
a STIFFEL lamp displayed so closely with a STIFEL rug would be
confused as to the origin of the goods" (emphasis in original).
In any event, even if we were to assume that the
respective goods may broadly be considered as "home furnishings"
which would be sold through the same channels of trade to the
same classes of purchasers, the mere fact that a term may be
found which encompasses the parties' products does not mean that
customers will view the goods as related in the sense that they
will assume that they emanate from or are associated with a
common source. See, e.g., General Electric Co. v. Graham
Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977) and Harvey Hubbell
Inc. v. Tokyo Seimitsu Co., Ltd., 188 USPQ 517, 520 (TTAB 1975).
Here, respondent's goods are various kinds of floor and wall
coverings, such as rugs, carpets, linoleum flooring, tapestries
and wallpaper, while petitioner's products are electrical
lighting apparatus. Merely because such items are subsumed under
the broad rubric of decorative "home furnishings" does not mean,
absent supporting evidence, that such diverse products as floor
Cancellation No. 23,845
6
and wall coverings, on the one hand, and portable electrical
lamps, on the other, would be regarded by prospective purchasers
as coming from or sponsored by the same source.
Accordingly, and in the absence of proof of the alleged
strength of petitioner's "STIFFEL" marks, the fact that
respondent's "STIFEL" mark is nearly identical thereto does not
mean that petitioner has met its burden of demonstrating that
contemporaneous use of such marks, in connection with goods which
on their face are so plainly different in nature as portable
electrical lamps and floor and wall coverings, is likely to cause
confusion, mistake or deception as to origin or affiliation.
Decision: The petition to cancel is denied.
E. J. Seeherman
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board