Viwinco, Inc.

Trademark Trial and Appeal Board

Dec 24, 2008

No. 77057102 (T.T.A.B. Dec. 24, 2008)

Mailed:
December 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Viwinco, Inc.
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Serial No. 77057102
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Michael Leonard of Pepper Hamilton LLP for Viwinco, Inc.

Steven Fine, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Bergsman and Ritchie, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Viwinco, Inc. (“applicant”) filed a use-based
application on the Principal Register for the mark VIWINCO,
in standard character form, for the following goods and
services:
Vinyl windows and doors, replacement parts and
accessories, namely, casings, j-channel pocket
fillers, fixes and trimboards, in Class 19; and,

Custom manufacture of windows and doors, replacement
parts and accessories, namely, casings, j-channel
pocket fillers, fixes and trimboards to the order and
specification of others, in Class 40.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77057102
2
The Trademark Examining Attorney refused to register
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 is likely to cause confusion with the registered mark
ViWinTech WINDOWS & DOORS A QUALITY MANUFACTURER OF HIGH
PERFORMANCE VINYL WINDOWS & DOORS and design, shown below,
for “vinyl windows and doors and parts therefor,” in Class
19.1

Our determination of likelihood of confusion 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion

1 Registration No. 2472326, issued July 24, 2001; Sections 8 and
15 affidavits accepted and acknowledged. Registrant disclaimed
the exclusive right to use “Windows & Doors” and “A Quality
Manufacturer Of High Performance Windows & Doors.”
Serial No. 77057102
3
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or 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
goods and services described in the application and
registration.

Applicant contends that its vinyl windows and doors
are different from the registrant’s vinyl windows and doors
because applicant’s vinyl windows and doors are custom
manufactured. “The custom manufacture of anything implies
the manufacture of individualized and/or unique goods, thus
[they are] incapable of competing with ordinary and common
vinyl windows.”2 However, likelihood of confusion is
determined on the basis of the goods and services as they
are identified in the application and the cited
registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981);
In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB
1976). See also Octocom Systems, Inc. v. Houston

2 Applicant’s Brief, p. 13.
Serial No. 77057102
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Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
As the Court of Customs and Patent Appeals, the
predecessor of our primary reviewing court, explained in
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Likewise, in this case, we must also analyze the
similarity or dissimilarity and nature of the goods and
services based on the description of the goods and services
set forth in the application and the cited registration.
In other words, we may not limit applicant’s vinyl doors
and windows to custom made vinyl doors and windows; rather,
the identification must be deemed to include all vinyl
Serial No. 77057102
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doors and windows including pre-made as well as custom made
doors and windows.
Under this standard, we find that applicant’s “vinyl
windows and doors, replacement parts and accessories,
namely, casings, j-channel pocket fillers, fixes and
trimboards” are legally identical to registrant’s “vinyl
windows and doors and parts therefor.”
With respect to applicant’s custom manufacturing of
windows and doors, it is well recognized that confusion is
likely to occur from the use of the same or similar marks
for goods, on the one hand, and for services involving
those goods, on the other. See, e.g., Dresser Industries,
Inc. v. Safety-Kleen Corp., 181 USPQ 726, 729 (TTAB 1974),
aff’d, 518 F.2d 1399, 186 USPQ 476 (CCPA 1975) (the use of
similar marks for cleaning equipment components and
cleaning apparatus leasing services is likely to cause
confusion); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433,
435 (TTAB 1983) (STEELCARE for refinishing of furniture,
office equipment and machinery is likely to cause confusion
with STEELCASE for office furniture and accessories); In re
Solar Energy Corp., 217 USPQ 744, 745 (TTAB 1983) (manuals
for designing solar heating systems are related to solar
energy engineering and consulting services).
Serial No. 77057102
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In this case, there is a clear relationship between
vinyl windows and doors and replacement parts therefor, and
the custom manufacture of windows and doors and parts
therefor, as the service results in the production of the
goods.
In addition, we note that applicant, itself, uses the
mark at issue to identify vinyl windows and doors and the
custom manufacturing of those products. Moreover, the
Examining Attorney has submitted three (3) use-based,
third-party registrations for windows and/or doors and the
custom manufacture of windows and doors as evidence that a
single source may use one mark to identify windows and
doors and the custom manufacture of those products.
Although use-based, third-party registrations are not
evidence that the marks shown therein are in commercial
use, they have some probative value to the extent that they
may serve to suggest that the listed services are of a type
which may emanate from a single source. In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993);
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).3 We acknowledge that three such registrations is a

3 The Examining Attorney also submitted a copy of an intent-to-
use application and an application based on a foreign application
under Section 44(d) of the Trademark Act of 1946. These
applications have no probative value because they are not based
on use, see In re Mucky Duck Mustard Co., 6 USPQ2d at 1470 n.6,
Serial No. 77057102
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limited number, but taken together with the other evidence
and the nature of the goods and services, they provide
further support that applicant’s custom manufacture of
windows, doors, and replacement parts are closely related
to vinyl windows, doors, and parts therefor. Purchasers
encountering these goods and services under the same or
similar marks may reasonably conclude that they originate
from a single source.
In view of the foregoing, we find that applicant’s
goods are identical to registrant’s goods and that
applicant’s services are closely related to registrant’s
goods.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Applicant argues that because its vinyl windows and
doors are custom manufactured, they are not sold to “mass-
market big-box home improvement retail store type[s] found
at a local Home Depot,” but to the individual purchaser,4
and that, on the other hand, the vinyl windows and doors
manufactured by the registrant are sold through
professional installers.5 However, both applicant’s and

and because third-party applications are evidence only of the
fact that they have been filed. Interpayment Services Ltd. v.
Docters & Thiede, 66 USPQ2d 1463, 1467 n.6 (TTAB 2003); In re
Juleigh Jeans Sportswear, Inc., 24 USPQ2d 1694, 1699 (TTAB 1992).
4 Applicant’s Brief, p. 13.
5 Id.
Serial No. 77057102
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registrant’s vinyl windows, doors, and parts therefor are
identified without any limitations as to the channels of
trade or classes of consumers. Likewise, applicant’s
custom manufacturing of windows, doors, and parts therefor
is not restricted as to any channels of trade or classes of
consumers. Moreover, as indicated above, applicant’s
custom manufacture of windows and doors and parts therefor
results in the production of those products. Because there
are no restrictions in the description of services,
applicant’s services and the resulting products may be sold
to end-users, professional installers, or retailers as may
registrant’s products. When there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that
the goods and services move in all channels of trade normal
for those goods and services, and that the goods and
services are available to all classes of purchasers for the
listed goods and services. See In re Linkvest S.A., 24
USPQ2d 1716, 1716 (TTAB 1992). Accordingly, because there
are no limitations in either applicant’s description of
goods and services or registrant’s description of goods, we
must presume that the goods and services move in the same
channels of trade and that they are sold to the same
classes of consumers.
Serial No. 77057102
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Moreover, specifically with respect to the goods at
issue, because the vinyl windows, doors and parts
identified in the application and the cited registration
are identical, we must presume that the channels of trade
and classes of purchasers are the same. See Genesco Inc.
v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-
part identical and in-part related nature of the parties’
goods, and the lack of any restrictions in the
identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold
to the same classes of purchasers through the same channels
of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade,
and be sold to the same class of purchasers”).
Accordingly, there is a presumption that applicant’s
vinyl windows and doors and custom manufacture of windows
and doors and registrant’s vinyl windows and doors move in
the same channels of trade and are sold to the same classes
of purchasers.
Serial No. 77057102
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C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

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., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are in part 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 goods. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate
100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981);
ECI Division of E-Systems, Inc. v. Environmental
Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, in comparing the marks, the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
Serial No. 77057102
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impression so that confusion as to the source of the goods
and services offered under the respective marks is likely
to result. 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 unpublished, No. 92-
1086 (Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than a specific impression of the marks. 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).
It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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). Thus, we find
that the name ViWinTech is that part of registrant’s mark
that consumers will remember and use to call for
registrant’s vinyl windows and doors. In other words,
Serial No. 77057102
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ViWinTech, which is the largest word element in the mark,
is the dominant portion of the registered mark.
The other elements of the registrant’s mark are not as
significant because they are descriptive and will not be
used or perceived as source indicators. The term “Windows
& Doors” is generic for the products, and the phrase “A
quality manufacturer of high performance vinyl windows &
doors” is a highly descriptive, informational statement.
The window design is at the very least highly suggestive of
registrant’s goods. Moreover, when a mark consists of
words and a design, the words are normally given greater
weight because they would be used by purchasers to request
the goods or services. In re Dakin’s Miniatures Inc., 59
USPQ 1593, 1596 (TTAB 1999); In re Appetito Provisions Co.,
3 USPQ2d 1553, 1554 (TTAB 1987). In view of the foregoing,
it is the ViWinTech part of the registrant’s mark that
consumers will remember.
ViWinTech, which is the dominant part of the
registrant’s mark, and VIWINCO are similar to the extent
that they share the same first two syllables VI and WIN,
but differ because of the different suffixes “Tech” and CO.
However, we find that the similarities outweigh the
differences. Both marks suggest “vinyl windows,” and
therefore have the same connotation. The terms “tech” and
Serial No. 77057102
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CO signify the descriptive words “technology” and
“company,” and do not alter the meaning or commercial
impression of the marks. Although the registrant's mark
would appear to be derived from the words "vinyl window
technology," there is no evidence of third-party use of
similar marks. Moreover, even suggestive marks are
entitled to protection against the likelihood of confusion,
and here applicant's mark has a similar suggestive
significance and is used for identical goods and related
services. See Maytag Co. v. Luskin’s, Inc., 228 USPQ 747,
750 (TTAB 1986) (“there is nothing in our trademark law
which prescribes any different protection for suggestive,
nondescriptive marks than that which is accorded arbitrary
and fanciful marks”); In re Great Lakes Canning, Inc., 227
USPQ 483, 485 (TTAB 1985) (“the fact that a mark may be
somewhat suggestive does not mean that it is a ‘weak’ mark
entitled to a limited scope of protection”). Accordingly,
we find that the marks are similar in appearance and
pronunciation to the extent that they both begin with the
same syllables VI WIN.
As indicated above, the marks also have similar
meanings and engender similar commercial impressions:
ViWinTech suggests vinyl window technology while VIWINCO
suggests vinyl window company.
Serial No. 77057102
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In view of the foregoing, we find that when the marks
are compared in their entireties, they are similar in terms
of appearance, sound, meaning and commercial impression.
D. Balancing the factors.

When we consider that the marks are similar, that
applicant’s goods and registrant’s goods are identical,
that applicant’s services and registrant’s goods are
closely related, and the presumption that the goods and
services move in the same channels of trade and are sold to
the same classes of consumers, we find that applicant’s
mark VIWINCO for vinyl windows and doors and replacement
parts and the custom manufacture of those products is
likely to cause confusion with the mark ViWinTech WINDOWS &
DOORS A QUALITY MANUFACTURER OF HIGH PERFORMANCE VINYL
WINDOWS AND DOORS and design for “vinyl windows and doors
and parts therefor.”
Decision: The refusal to register is affirmed.