IN RE MILLENNIUM SCAFFOLDING SYSTEMS INC., 78634849 (TTAB 2007)

IN RE MILLENNIUM SCAFFOLDING SYSTEMS INC., 78634849 (TTAB 2007)

In Re Millennium Scaffolding Systems Inc.

Serial No. 78634849United States Patent and Trademark OfficeTrademark Trial and Appeal Board
Mailed: 13 September 2007Page 1

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B.

John P. Courtney of Andrews Kurth LLP for Millennium Scaffolding Systems Inc.

Cory Boone, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney).

Before Hairston, Grendel, and Drost, Administrative Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

Applicant Millennium Scaffolding Systems Inc. applied to register the mark MILLENNIUM (in standard character form) on the Principal Register for goods identified as “materials of metal for scaffolds” in Class 6. The application (Serial No. 78634849) contains an allegation of dates of first use anywhere and in commerce of February 2000.Page 2

The examining attorney[fn1] has refused to register applicant’s mark under Section 2(d) of the Trademark Act (15 U.S.C. ? 1052(d)) because of a registration for the mark MILLENNIUM (in typed or standard character form) for “metal goods, namely corrugated, perforated metal panels for structures” in Class 6.[fn2]

When the refusal was made final, applicant filed this appeal.

In a case involving a refusal under Section 2(d), we analyze the facts as they relate to the relevant factors set out inIn re E. I. du Pont de Nemours Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re MajesticDistilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). 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).Page 3

Regarding the first du Pont factor, the similarity of the marks, we note that the marks are identical, and therefore, there are no discernable differences between them. The identical nature of the marks is a factor that “weighs heavily against the applicant.” In re Shell Oil Co.,992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993). When comparing applicant’s and registrant’s goods, “even when goods or services are not competitive or intrinsically related, the use of identical marks can lead to an assumption that there is a common source.” Id. at 1689. See also Amcor, Inc.v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (“[W]here both parties are using the identical designation, the relationship between the goods on which the parties use their marks need not be as great or as close as in the situation where the marks are not identical or strikingly similar”) (mark omitted).

Applicant does argue that “Registrant’s mark is extremely weak. There are literally thousands of federal applications and registrations for marks that contain the word MILLENNIUM.” Brief at 4. To support its argument, applicant has submitted seven registrations for the marks:

MILLENNIUM for metal coating in the nature of a color finish sold as a component of metal building panelsPage 4

MILLENNIUM SUNROOMS for non-metal manufactured residential additions, sunrooms, solarium enclosures or screen rooms

NEW MILLENNIUM BUILDING SYSTEMS, LLC. for fabricated steel and metal decks used in construction of buildings

MILLENNIUM METALS for metal fabrication services

MILLENNIUM COLLECTION for, inter alia, metal bathroom accessories, namely, grab bars, tumbler holders and hooks

MILLENNIUM for metallic bearing isolator seals

MILLENNIUM for, inter alia, key chains

The first problem with applicant’s argument is that registrations are not evidence of use and an applicant cannot use these registrations to justify the issuance of a registration that is otherwise confusingly similar to the cited registration. In re Jump Designs LLC, 80 USPQ2d 1370,1375 (TTAB 2006) (“[T]he registrations are not evidence of use of the marks shown therein. Thus, they are not proof that consumers are familiar with such marks so as to be accustomed to the existence of similar marks in the marketplace, and as a result are able to distinguish between the JUMP marks based on slight differences between them”) and Plus Products v.Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird party registrations relied on by applicant cannot justify the registration of another confusingly similar mark”).Page 5

Another problem with the third-party registrations is that they either contain additional wording or they are for goods or services that appear to be much less related than the goods in the cited registration. As such, even if they were relevant on the issue of likelihood of confusion, they would not demonstrate that the mark MILLENNIUM is so weak that it is entitled to only an extremely narrow scope of protection.

The next factor we consider concerns the applicant’s and registrant’s goods. Applicant’s goods are “materials of metal for scaffolds,” while registrant’s are “metal goods, namely corrugated, perforated metal panels for structures.” The examining attorney makes two arguments in support of the relatedness of the goods. The first argument (Brief at unnumbered p. 4) is set out below.

The examiner noted that the “materials of metal” in applicant’s identification may encompass the “metal panels” in the registration, and that “scaffolds” in the application are particular forms of the “structures” identified in the registration. The examiner thus found these key terms identifying the parties’ broadly identified goods may in fact be the same, beyond being simply closely related.

In response to applicant’s argument that the examining attorney was reading the identification of goods too broadly and that its goods do not fit within the commonly accepted definition of a structure, the examining attorney,Page 6
without conceding the correctness of this argument, offered that even under applicant’s narrower descriptions of the goods, they are still related. The examining attorney argues that both applicant and registrant produce metal goods with rigid structures that are used in the construction industry.

Many consumers purchasing goods within this industry are likely to encounter the goods in this case at some point in the construction process, whether they are planners or laborers. Construction planners may be of mind to order both scaffolds and wall and ceiling panels before beginning construction. And laborers installing metal panels for walls and ceilings may have good reason to use scaffolds.

Brief at unnumbered p. 7.

Applicant, on the other hand maintains that it “sells scaffolds” and the “identification of its goods as `materials of metal for scaffolds’ was a result of utilizing theAcceptable Identification of Goods and ServicesManual. . . Reliance on the Acceptable Identificationof Goods and Services Manual has resulted in an identification of Applicant’s goods that is not entirely accurate.” Brief at 1-2. At this point, we note that applicant chose to proceed through the examination process with the identification of goods it originally submitted without attempting to clarify them. 37 CFR ? 2.71(a) (“The applicant may amend the application to clarify or limit,Page 7
but not to broaden, the identification of goods and/or services”). Therefore, it is this identification of goods that we will consider. Octocom Systems, Inc. v. HoustonComputers 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”).

Applicant goes on to argue that the goods in this case are “non-competitive and non-related” because “applicant’s goods are temporarily used by contractors as an aid to construction, but corrugated, perforated metal panels comprising Registrant’s goods become part of the finished structure itself.” Brief at 2-3. The facts that applicant points to do not demonstrate that the goods are unrelated. The board has set out the following principles to consider in relatedness determinations.

In order to find that there is a likelihood of confusion, it is not necessary that the goods or services on or in connection with which the marks are used be identical or even competitive. It is enough if there is a relationship between them such that persons encountering them under their respective marks are likely to assume that they originate at the samePage 8
source or that there is some association between their sources.

McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).

Here, we agree with the examining attorney that even with the narrower descriptions of the identifications of goods, it is likely that construction managers and contractors who are installing metal panels for structures may at the same time need scaffolds (and the materials of metal for scaffolds) to use during the installation process. A scaffold is defined as: “framework to support workers; a temporary framework of poles and planks that is used to support workers and materials during the erection, repair, or decoration of a building.”See Response to First Office Action, MSN Encarta attachment. Thus, construction managers and contractors are likely to encounter both marks when they would purchase metal panels to install and the metal scaffolds or scaffolding materials that they use to help them install the metal panels in elevated locations. For example, registrant’s website indicates that its product is “a 3-dimensional metal surface that creates unique visual opportunities for the creative architect.” Response to First Office Action,Page 9
Millennium attachment. Furthermore, in the same attachment, the applications for the product are identified as:

? Flat or curved ceiling systems

? Flat or curved wall systems

? Decorative column covers

? Corner guards

Thus, even applicant’s evidence suggests that scaffolds would be used to install registrant’s goods for ceiling, walls, and columns in buildings with rooms with elevated ceilings. Purchasers who are familiar with registrant’s MILLENNIUM metal panels are likely to assume that there is some association with applicant’s MILLENNIUM metal materials for scaffolds or even the scaffolds themselves.

In addition, applicant has submitted a definition (Response to First Office Action, MSN Encarta attachment) for “structure” that includes “something built or erected: a building, bridge, framework, or other object that has been put together from many different parts.” For “Scaffold,” one definition that the examining attorney submitted includes “a temporary structure or platform for workmen to stand or sit on when working in high places.”[fn3] Defined in this way, registrant’s corrugated, perforated metal panels for structures could include metal panels thatPage 10
are used with scaffolds, which are temporary structures. With this broader definition, the goods are even more closely related, if not overlapping.

Applicant also argues that the respective purchasers are sophisticated and that there has been no actual confusion. However, neither argument persuades us that there is no likelihood of confusion. The board has previously noted that while “we do not doubt that these institutional purchasing agents are for the most part sophisticated buyers, even sophisticated purchasers are not immune from confusion as to source where, as here, substantially identical marks are applied to related products.” In re Hester Industries,Inc., 231 USPQ 881, 883 (TTAB 1986). Regarding the declaration from applicant’s president that supports its argument that there has been no actual confusion, this type of evidence is seldom persuasive.

With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidencePage 11
of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.

Here, there is little evidence that there was a substantial opportunity for confusion to occur and, of course, we have not had an opportunity to hear from registrant on this subject. Therefore, we give this evidence little weight.

When we consider all the evidence in relationship to the relevant du Pont factors, we conclude that there is a likelihood of confusion when the same term, MILLENNIUM, is used on applicant’s and registrant’s goods. We add that to the extent that we had any doubts about the likelihood of confusion here, we resolved them in the registrant’s favor. In reHyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

Decision: The examining attorney’s refusal to register applicant’s mark MILLENNIUM for materials of metal for scaffolds on the ground that it is likely to cause confusion with the identical mark for metal goods, namely corrugated perforated metal panels for structures under Section 2(d) of the Trademark Act is affirmed.

[fn1] The current examining attorney was not the original examining attorney in this application. [fn2] Registration No. 2850272, issued June 8, 2004. [fn3] www.contractorreferral.com.