World of Leather, Inc.

Trademark Trial and Appeal Board

Sep 17, 2001

No. 75549080 (T.T.A.B. Sep. 17, 2001)

9/17/01

Paper No. 21
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re World of Leather, Inc.
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Serial No. 75/549,080
_______

L. Lawton Rogers, III of Rogers & Killeen for World of
Leather, Inc.

Mary R. Henely, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______

Before Simms, Walters and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

In this appeal, World of Leather, Inc. (applicant)
seeks to register the mark shown below for services
ultimately identified as “retail store services featuring
leather furniture” in International Class 35:1

1 Application Serial No. 75/549,080 was accorded a filing date of
July 20, 1999. The application alleges a date of first use of
April 1, 1997 and a date of first use in commerce of June 1,
1997. It also contains a disclaimer of the word “leather.”

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/549,080
2

The design element on the left of the drawing consists of a
sofa. A clearer copy of the drawing is now in the file.
The Examining Attorney has refused to register
applicant’s mark because of a prior registration for the
mark LEATHER WORLD (in typed form) for services identified
as a “retail furniture store featuring leather goods”2 under
Section 2(d) of the Trademark Act. 15 U.S.C. § 1052(d).
The registration disclaims the word “leather.”
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested. We affirm the Examining
Attorney’s refusal to register.
The Examining Attorney argues that the marks are a
simple transposition of the words “leather” and ”world.”
When the words are transposed as “leather world” and “world
of leather,” they have the same commercial impression. The
Examining Attorney submits that the commercial impression
is that of a “large selection of leather furniture.”

2 Registration No. 2,099,198, issued September 23, 1997.

Ser No. 75/549,080
3
Examining Attorney’s Br., p. 5. The Examining Attorney was
not persuaded that the design of a sofa for a retail store
featuring leather furniture would be the dominant element
such that it would make confusion between the marks
unlikely. In addition, the Examining Attorney submits that
the services are “virtually identical.” Examining
Attorney’s Br., p. 10.
Applicant, on the other hand, maintains that the
services are not identical. It also argues that the design
is important since the words “leather” and “world” are weak
because they are either descriptive or highly suggestive.
Therefore, applicant submits that the marks create
different commercial impressions and there is no likelihood
of confusion.
Determining whether there is a likelihood of confusion
requires consideration of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973. In considering the evidence of
record on these factors, we must keep in mind that “[t]he
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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Ser No. 75/549,080
4
We begin our analysis by considering the similarities
and dissimilarities between the marks in the application
and registration. Registrant’s mark is for words LEATHER
WORLD while applicant’s mark is for the words WORLD OF
LEATHER and the design of a sofa. Both marks contain the
words “leather” and “world.” Applicant has taken the only
two elements of registrant’s mark and transposed the words
with the word “of” between them. In addition, it has added
a border with a design of a sofa. While there are
differences, we find that these difference are outweighed
by the similarities of the marks. First, the words
“leather” and “world,” the identical words from
registrant’s mark, are prominently featured in its mark.
They are depicted in much larger type than the only other
word applicant adds, the preposition “of.” We agree with
the Examining Attorney that the words create the same
commercial impression, i.e., a large selection of leather
furniture.
Applicant does argue that the design element is
important here because the words “leather” and “world” are
descriptive or highly suggestive. The mere fact that a
mark consists of descriptive and highly suggestive terms
does not mean that the words would not be the dominant part
of the mark. In re National Data Corporation, 753 F.2d
Ser No. 75/549,080
5
1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Assuming CASH
MANAGEMENT is generic or at least highly descriptive in
both marks, as urged by National, does not, however, lead
to a reversal in this case.” CASH MANAGEMENT EXCHANGE held
confusingly similar to CASH MANAGEMENT ACCOUNT). In the
present case, there are even fewer significant differences
between the marks.
In addition, the design of a sofa for a store selling
furniture is hardly unusual, and it is highly unlikely that
the design would dominate the mark in this case. The
Federal Circuit held that the addition of the words “The”
and “Cafe” and a diamond-shaped design to registrant’s
DELTA mark still resulted in a likelihood of confusion. In
re Dixie Restaurants, 105 F.3d 1405, 1406, 41 USPQ 1531,
1534 (Fed. Cir. 1997) (more weight given to common dominant
word DELTA). See also In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988)
(BIGG’S and design for grocery and general merchandise
store services found likely to be confused with BIGGS and
different design for furniture); Giant Foods, Inc. v.
Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983)(Differences between GIANT HAMBURGERS
and design and GIANT and GIANT FOODS and designs not
sufficient to overcome the likelihood of confusion); Wella
Ser No. 75/549,080
6
Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ
419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design
likely to be confused with CONCEPT for hair care products).
We are also not persuaded that the reversing of the
order of the words in the marks makes a significant
difference.
Further, the reversal in one mark of the essential
elements of another mark may serve as a basis for a
finding of no likelihood of confusion only if the
transposed marks create distinctly different
commercial impressions. See: Bank of America National
Trust and Savings Assn. v. American National Bank of
St. Joseph, 201 USPQ 842 (TTAB 1978), and cases cited
therein. Here, where the goods are legally identical,
and where both marks, when applied to the goods in
question, are likely to be perceived by purchasers as
signifying that the product sold thereunder busts
through, or breaks up, rust, we agree with the
Examining Attorney that the marks create substantially
similar commercial impressions, and that there is a
likelihood of confusion. Cf. In re Inco, 154 USPQ 629
(TTAB 1967) ["GUARDIAN OF POSTURE" for mattresses
versus "POSTURGUARD" for mattresses -- registration
refused], and McNamee Coach Corp. v. Kamp-A-While
Industries, Inc., 148 USPQ 765 (TTAB 1965) ["KING
KAMPER" for camping trailers versus "KAMP KING
KOACHES" for campers -- registration refused].

In re Nationwide Industries Inc., 6 USPQ2d 1882, 1884 (TTAB
1988) (RUST BUSTER for rust-penetrating spray lubricants
confusingly similar to BUST RUST for penetrating oil).
While applicant disagrees with the Examining
Attorney’s determination that applicant’s and registrant’s
marks have the same commercial impression, its argument on
this point is unpersuasive. “[T]he registrant’s mark does
Ser No. 75/549,080
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not mean that ‘leather or leather products are available in
a large selection’ but that ‘furniture which may or may not
be leather is available in large selection.’ In contrast,
applicant’s mark suggests that leather goods, which may or
may not be furniture are available in large amounts.’”
Applicant’s Reply Br., pp. 3-4 (reference and emphasis
omitted). We disagree. LEATHER WORLD for retail furniture
store featuring leather goods and WORLD OF LEATHER for
retail store services featuring leather furniture would
have the same commercial impression. Both would indicate
that the stores feature a large selection of leather
furniture.
Marks do not have to be identical to be confusingly
similar. Canadian Imperial Bank of Commerce v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816-17 (Fed. Cir.
1987) (Marks "Commcash" and "Communicash" not identical but
strikingly similar). In addition, more or less weight can
be given to a particular feature of a mark for rational
reasons. National Data, 224 USPQ at 751. While the marks
must be considered in their entireties, in this case the
marks are similar in sound, appearance, and meaning and,
therefore, unless the services of the application and
registration are different, confusion will be likely.
Ser No. 75/549,080
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Applicant seeks to register its mark for services that
it now identifies as “retail store services featuring
leather furniture.” The services in the cited registration
are “retail furniture store featuring leather goods.” To
determine whether the services are related, we must look to
the identification of services in the application and
registration. Dixie Restaurants, 41 USPQ2d at 1534;
Canadian Imperial Bank, 1 USPQ2d at 1815; Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973). Here, it is clear that applicant’s and
registrant’s services include the retail sale of leather
furniture in addition to other things. At the very least,
there is an overlap in the services at this point. We see
very little difference between a retail store featuring
leather furniture and a retail furniture store featuring
leather goods. Both identification of services involve
retail stores that feature leather furniture. While other
goods could be sold in the stores, there would be an
overlap to the extent that the services include the sale of
leather furniture. Hyper Shoppes, 6 USPQ2d at 1026
(“Confusion is likely for the “reason that applicant’s
‘general merchandise store services’ would include the sale
of furniture … What else it sells is irrelevant; there is
overlap”). Also, because the marks are used, at least in
Ser No. 75/549,080
9
part, on virtually identical services, there is a greater
likelihood that when similar marks are used in this
situation, confusion would be likely. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992) (“When marks would
appear on virtually identical goods or services, the degree
of similarity necessary to support a conclusion of likely
confusion declines”).
Applicant also included printouts from a private
trademark database, which referred to two registrations for
COFFEE WORLD and WORLD OF COFFEE for different goods and
services, with its response to the first Office Action.
The Examining Attorney objected to this evidence, and we
note that these printouts are not from the Office’s
database. Even if we considered them, they do not change
the outcome here. The Examining Attorney has pointed out
that the goods and services in the registration to which
applicant refers were not virtually identical as they are
in this case. Examining Attorney’s Appeal Br., p. 9 n.6.
Furthermore, we do not have the files of those
registrations before us so that it is not clear what lead
to the registrations of those marks. Certainly, the
registration of two marks for different goods and services
hardly justifies the registration of applicant’s mark over
Ser No. 75/549,080
10
the cited registration. In re Hub Distributing, Inc., 218
USPQ 284, 285 (TTAB 1983) (“[E]ven were we to consider the
search report credible evidence…, absent evidence of actual
use of the marks subject of the third-party registrations,
they are entitled to little weight on the question of
likelihood of confusion”).
Decision: The Examining Attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with the cited registration under
Section 2(d) of the Trademark Act is affirmed.