IN RE BERY-PRODUCTS KFT. (LIMITED), 77713634 (TTAB 5-19-2011)
Serial No. 77713634United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: May 19, 2011Page 1
Martin P. Hoffman of Stein McEwen LLP for Bery-Products Kft. (limited).
Eugenia K. Martin, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney).
Before Zervas, Cataldo and Wolfson, Administrative Trademark Judges.
Opinion by Cataldo, Administrative Trademark Judge:
An application was filed by Bery-Products Kft. (limited) to register the mark shown below on the Principal Register for “impact absorbers for doors, drawers, and windows, namely, plastic and wooden door stops” in International Class 20.[fn1]Page 2
The trademark examining attorney refused registration under Section 2(d) of the Trademark Act on the ground that applicant’s mark, as intended to be used in connection with its goods, so resembles the mark SAFE’N SOUND, previously registered on the Principal Register in typed or standard characters for “non-metal solid doors” in International Class 19,[fn2] as to be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed. Applicant and the examining attorney submitted briefs on the issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in 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 Co.,Inc., 315 F.3d 1311,Page 3
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis two key, though not exclusive, considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. FortHoward Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie Restaurants Inc.,105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first turn our attention to a comparison of the marks. In determining the similarity or dissimilarity of the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm BayImports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source of the goods offered under the respective marks is likely to result.
In this case, applicant’s mark,
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is highly similar to the cited mark, SAFE’N SOUND, in that both include the identical words “SAFE” and “SOUND.” Further, the examining attorney has made of record dictionary definitions of the ampersand in applicant’s mark, which is defined as “a character typically standing for the wordand”[fn3] and `N in the registered mark, which is defined as a “variation of `N’ conjunction:AND fish ‘n’ chips”[fn4]
Thus, the word portion of applicant’s mark is identical in meaning or connotation to registrant’s mark in that both mean “safe and sound.” For the same reasons, the marks are highly similar in appearance and sound. It is well settled that there “is no correct pronunciation of a trademark, and it obviously is not possible for a trademark owner to control how purchasers will vocalize its mark.” Centraz Industries Inc. v. SpartanChemical Co., 77 USPQ2d 1698, 1701 (TTAB 2006). However, there is no logical reason, and certainly no evidence, that consumers would vocalize applicant’s mark differently from that of registrant. The wording is essentially identical and the design in applicant’s mark will not be verbalized by consumers. Finally, while we do not discount the rectangle design in the background of applicant’s mark, we recognizePage 5
that it is a relatively minor geometric pattern that does not significantly distinguish applicant’s mark from that of registrant. Generally, when both words and a design comprise a mark, the wording is normally accorded greater weight because it would be used by purchasers to request the goods or services. See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). For this reason, we consider the word portion, i.e., “SAFE SOUND,” to be the dominant feature of applicant’s mark. As discussed above, this dominant feature of applicant’s mark is nearly identical to the mark in the cited registration.
As a result of the foregoing, we find that the marks are nearly identical in sound and connotation, are highly similar in appearance, and, when viewed in their entireties convey highly similar commercial impressions. Accordingly, this duPont factor favors a finding of likelihood of confusion.
Applicant argues that the mark in the cited registration is weak and, as support for this contention, attaches to its brief a copy of a third-party registration not made of record during prosecution of its application. The examining attorney objected in her brief to this evidence on the ground that it was not timely made of record. We agree that the exhibit is untimely, and it hasPage 6
not been considered. See Trademark Rule 2.142(d) (the record in the application should be complete prior to the filing of an appeal). We note in any event that the “existence of [third party] registrations is not evidence of what happens in the market place or that customers are familiar with them.”AMF Inc. v. American Leisure Prods., Inc.,474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Without evidence of the extent to which the mark therein is in use in commerce, the third-party registration possesses very limited probative value.
The Goods
We turn now to our consideration of the identified goods, noting that it is not necessary that the goods at issue be similar or competitive, or even that they move in the same channels of trade, to support a holding of likelihood of confusion. It is sufficient instead that the respective goods are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same producer. See In re International Telephone Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).Page 7
In this case, applicant’s goods are “impact absorbers for doors, drawers and windows, namely, plastic and wooden door stops.” Registrant’s goods are “non-metal solid doors.” The examining attorney has made of record the following information from applicant’s Internet web site:
Safe and Sound Prevents the slamming of doors and drawers. ? Cushioning is efficient even with large doors. ? Installation of the anti-slam device does not require any special professional skills. Once installed devices mounted according to the installation guide included in the package are ready for use immediately. Normally, fitting a single SafeSound to a door is sufficient for optimal closing. (bery_products.eu)
Thus, information from applicant’s own website supports a finding that its door stops are intended to be used with various types of doors, which are presumed to include registrant’s “non-metal solid doors.” In addition, the examining attorney has submitted evidence from informational and commercial Internet web sites suggesting that both applicant’s and registrant’s types of goods may be used and sold together. The following samples are illustrative:
Byrcon Wood Products Manufacturers and Distributors of Solid Wood Doors Prehung Doors Our prehung kit includes jambs, hinges and attached door stops. (www.nobleintl.com/business.asp);Page 8
Prehungdoors.info is your information source for prehung doors in the Internet. When purchasing a prehung door one should understand not only what the term prehung means, but also what a prehung door unit package should consist of. An assembled prehung door unit is a door unit package that is factory built with frame (jamb), applied door stop, hinges, beveling, bore, and backset, all completed, assembled and ready to be installed as a single unit. (prehungdoors.info);
Patio Door Hardware Available in more styles and finishes than most other manufacturers, our patio door hardware is bound to match what you’re looking for. ? Additional Hardware Options Exterior Gliding Door Keyed Lock Interior Gliding Door Auxiliary Floor Lock Exterior Hinged Door Keyed Lock Adjustable Hinges Inswing Patio Door Panel Stop (andersenwindows.com); and
Assembled pre-hung doors come with the jambs fastened together, the door stop applied to the jambs, the hinges installed to the jambs, lock prep completed and the door beveled and hung on the hinges. Sometimes the door casing is also applied to one side of the jambs or both sides in the case of split jambs but we will not concern ourselves with split jambs or door casings at this time. ? (door.cc/How-To-Install-A-Door).
The foregoing evidence suggests that applicant’s door stops may be used and encountered together with registrant’s non-metal solid doors. In other words,Page 9
applicant’s goods may be installed and used as stops for registrant’s goods.
In addition, the examining attorney has made of record a number of use-based third-party registrations which show that various entities have adopted a single mark for goods of a type similar to those identified in the involved application and cited registration. See, for example:
Registration No. 3342805 for, inter alia, metal doors; door stops of metal;
Registration No. 3434361 for, inter alia, metal clad doors; wood-framed metal doors; door closers, doors stops, door levelers sold as integral components of metal doors; and
Registration No. 3107496 for, inter alia, panel door stops; non-metal patio doors, gliding doors, exterior doors.
Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re AlbertTrostel Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). The evidence of record establishes that applicant’s goods are closely related to the goods identified in the cited registration, and further may be identified under the same mark. As such, this du Pont factor favors a finding of likelihood of confusion.Page 10
Applicant argues that the classification of its goods in a different International Class from the goods in the cited registration must be taken into account in our likelihood of confusion determination. By statute, the “Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights.”15 U.S.C. ? 1112. However, it is settled that the “fact that goods are found in different classes has no bearing on the question of likelihood of confusion.” In re SailerbrauFranz Sailer, 23 USPQ2d, 1719, 1720 (TTAB 1992). Although the relationship (if any) of the goods and services is an important factor, see In re E.I. du Pont de Nemours andCo., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), their classification is not.
Applicant further argues that its goods are far less expensive than those of registrant and, as such, are not likely to be confused by consumers. However, our determination of the issue of likelihood of confusion is not based upon confusion between the goods themselves, but rather confusion as to the source of the goods under the marks under consideration. As discussed above, the examining attorney has demonstrated that applicant’s goods may be used and encountered together with those ofPage 11
registrant and identified by the same marks. Thus, while applicant’s door stops are not likely to be confused with registrant’s doors, confusion as to the source of those goods is likely to result.
Channels of Trade
In making our determination regarding the relatedness of the parties’ goods, we must look to the goods as identified in the involved application and cited registration. See OctocomSystems, Inc. v. Houston 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.”) Seealso Paula Payne Products v. Johnson Publishing Co.,473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods.”) As identified, neither applicant’s nor registrant’s goods contain any limitations as to trade channels or intended consumers. Accordingly, both applicant’s and registrant’sPage 12
goods are presumed to move in all normal channels of trade and be available to all classes of potential consumers, including consumers of each other’s goods. See In reElbaum, 211 USPQ 639, 640 (TTAB 1981).
Summary
In summary, weighing all of the evidence of record as it pertains to the relevant du Pont factors, we find that a likelihood of confusion exists.
Decision: The refusal of registration is affirmed.
[fn1] Application Serial No. 77713634 was filed on April 14, 2009, based upon applicant’s assertion of a bona fide intent to use the mark in commerce, and including the following color statement and description of the mark: “The color(s) blue, green and white is/are claimed as a feature of the mark. The mark consists of the words “SAFE” and “SOUND” in green. Between the words is a green rectangle with a white ampersand in it. Behind the word “SOUND” are seven rectangles. The first is a solid green rectangle followed by decreasingly smaller rectangles with green outlines and white centers.” [fn2] Registration No. 1879770 issued on February 21, 1995. Section 8 and 15 affidavits accepted and acknowledged. First renewal. [fn3] Merriam-Webster Online Dictionary, 2010. [fn4] Id.