Wal-Mart Stores, Inc.

Trademark Trial and Appeal Board

Mar 4, 2004

No. 75741384 (T.T.A.B. Mar. 4, 2004)

Mailed: March 4, 2004
Paper No. 17
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Wal-Mart Stores, Inc.
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Serial No. 75741384
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Barbara Waite and Mark Harrison of Venable, Baetjer, Howard
& Civiletti for Wal-Mart Stores, Inc.
Susan C. Hayash, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
____________
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Wal-Mart Stores, Inc. has filed an application to
register the mark MAIN STREET on the Principal Register for
“copy paper.”1
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,

1 Serial No. 75741384, in International Class 16, filed June 22, 1999,
based on use in commerce, alleging first use and use in commerce as of
July 21, 1990.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75741384
2
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark MAIN STREET, previously registered in
both typed form and stylized form (shown below) for,
respectively, “greeting cards, calendar cards and imprinted
stationery,”2 and “imprinted stationery, namely, greeting
cards, note cards and postcards; calendars and appointment
books; and stationery embossers,”3 that, when used on or in
connection with applicant’s goods, it will be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d

2 Registration No. 1,598,575, issued May 29, 1990, to New England
Business Service, Inc., in International Class 16. [Sections 8 and 15
affidavits accepted and acknowledged, respectively. Renewed for a 10
year term beginning May 29, 2000.]
3 Registration No. 2,187,933, issued September 8, 1998, also to New
England Business Service, Inc., in International Class 16.
Serial No. 75741384
3
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
The Examining Attorney contends that applicant’s mark
is identical to the registered mark in typed form and to the
literal portion of the stylized registered mark; and that,
therefore, the marks create the identical commercial
impressions. The Examining Attorney discounts applicant’s
evidence of third-party registrations for marks containing
the term MAIN STREET for a variety of goods, some in
International Class 16, as insufficient to establish that
the registered marks are weak.
With respect to the goods, the Examining Attorney
contends that the respective goods are likely to be
encountered by consumers in the same stores; that
applicant’s goods are within a reasonable “expansion of
trade” of the registrant; and that, therefore, confusion as
to source is likely. In support of her position, the
Serial No. 75741384
4
Examining Attorney submitted an excerpt purported to be from
registrant’s Internet web site. The site lists categories
of goods and services available for small businesses,
including “Office Supplies and Equipment.” Under this
heading are listed numerous types of products in
alphabetical order, including “inkjet laser paper” and
“multipurpose paper.” We note that the list does not
include the goods identified in the cited registrations, nor
does the web site page indicate the trademarks used to
identify the goods in each category. The Examining Attorney
also submitted copies of ten use-based third-party
registrations that include, among the goods identified in
each registration, both copy paper and one or more of the
items in the cited registrations.
Applicant contends that, “regardless of any possible
similarities between the Applicant’s mark and the cited
mark, the substantial differences between the respective
goods are such that confusion is clearly not likely.”
(Brief, p. 2.) Regarding the goods, applicant states the
following (Brief, p. 2):
Applicant’s mark covers copy paper. In contrast,
the cited registrations cover imprinted
stationery, greeting cards and calendars. These
goods are different on their face and would not be
confused by the purchasing public. The
registrant’s goods are finished products that
would be purchased in limited quantities for
special occasions. On the other hand, copy paper
is an unfinished product akin to a raw material
for use with copying machines and printers and
Serial No. 75741384
5
often bought in bulk, for example at wholesale
discount stores.
In support of its position, applicant submitted
additional pages purportedly from the cited registrant’s
Internet web site showing that, among the many products
listed, only cards and calendars are identified by the MAIN
STREET trademark. Additionally, applicant claims that the
cited marks are weak and submitted, in support of this
position, copies of numerous registrations of third-party
marks which include as a part of each mark the term “Main
Street” for a variety of goods.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. There is no question
that applicant’s mark is identical to the mark in cited
Registration No. 1,598,575. The design portion of the mark
in Registration No. 2,187,933 consists of a simple banner
upon which the words MAIN STREET appear in large print
beneath a smaller picture of a row of buildings, presumably
facing “Main Street.” This design reinforces the word
portion of the mark. Thus, we find that the commercial
impressions of applicant’s mark and the design mark in
Registration No. 2,187,933 are substantially similar.
Moreover, applicant does not appear to argue otherwise.
Serial No. 75741384
6
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the cited registrations, rather than
what the evidence shows the goods or services actually are.
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom
Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp.
v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
The goods in the cited registrations can all be
categorized, generally, as covering items of stationery
Serial No. 75741384
7
materials. Applicant’s “copy paper” is clearly also an item
of stationery material. The third-party registrations
submitted by the Examining Attorney show that single marks
are registered for a wide variety of items of stationery
materials. Although third-party registrations which cover a
number of differing goods and/or services, and which are
based on use in commerce, are not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, such registrations
nevertheless have some probative value to the extent that
they may serve to suggest that such goods or services are of
a type which may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
We find that this evidence of third-party registrations
weighs in favor of finding the goods herein to be
sufficiently related that, if identified by the same or
substantially similar marks, confusion as to source is
likely. We are not convinced otherwise by the fact that,
while registrant appears to offer copy paper and the goods
in its cited registrations, such goods may be identified by
different trademarks.
We also find that the third-party registrations
incorporating the term MAIN STREET do not establish that
MAIN STREET is a weak mark for the goods involved herein.
Serial No. 75741384
8
The goods in those registrations are quite different from
the goods in this case and are not items of stationery
materials. There is one third-party registration that is no
longer valid for MAIN STREET for copy paper that had
registered subsequent to the cited marks herein. However,
it is well settled that each case must be decided on its own
merits based on the evidence of record. We obviously are
not privy to the record in the file of that third-party
registration, and in any event, the Board is not bound by
decision of an Examining Attorney in another ex parte case.
See, In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994).
Therefore, we conclude that in view of the identical
and substantially similar commercial impressions of
applicant’s mark, MAIN STREET, and registrant’s marks, MAIN
STREET in typed form and with a design element, their
contemporaneous use on the related goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods.
Finally, it is well established that one who adopts a
mark similar to the mark of another for the same or closely
related goods or services does so at his own peril, and any
doubt as to likelihood of confusion must be resolved against
the newcomer and in favor of the prior user or registrant.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re Hyper Shoppes
Serial No. 75741384
9
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988);
and W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc.,
190 USPQ 308 (TTAB 1976).
Decision: The refusal under Section 2(d) of the Act is
affirmed.