This Opinion is Not a Precedent of the TTAB
Mailed: January 11, 2017
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
In re Tandem Arbor LLC
Serial No. 86796352
Scott M. Thomas of Thomas Law Firm LLC For Tandem Arbor LLC
Hanna Cho, Trademark Examining Attorney, Law Office 105, Susan Hayash, Managing Attorney.
Before Wellington, Adlin, and Larkin, Administrative Trademark Judges.
Opinion by Wellington, Administrative Trademark Judge:
Tandem Arbor LLC (?Applicant?) applied to register the mark TANDEM ARBOR, in standard characters, for the following goods and services:
Couches; sofas; sofa beds; reclining chairs; ottomans; chaise lounges in International Class 20; and
Computerized on-line retail store services in the field of couches, sofas, sofa beds, reclining chairs, ottomans, chaise lounges; on-line retail store services featuring couches, sofas, sofa beds, reclining chairs, ottomans, chaise lounges in International Class 35.
The Examining Attorney has refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. ? 1052(d), on the ground that use of Applicant?s mark is likely to cause confusion with the standard character mark TANDEM? for goods that include, in relevant part, ?furniture, in particular kitchen furniture? in International Class 20.
Applicant filed a request for reconsideration which was denied. Applicant then filed a second request for reconsideration concurrent with its appeal of the refusal. On remand, the Examining Attorney denied the second request for reconsideration, and the appeal resumed. The appeal has been briefed.
As a preliminary matter, we address the Examining Attorney?s objection to evidence submitted by Applicant for the first time with its brief. The Examining Attorney asserts that Applicant?s submission of ?other trademark registrations, applications, and charts summarizing these registrations and applications, all as exhibits,? is untimely because these materials were not submitted prior to appeal.
Many of the exhibits in question are copies of materials already entered into the record. In particular, copies of photographs of Applicant?s goods were submitted with its response to an Office action; copies of printouts from various third-party websites were submitted with its first request for reconsideration; and printouts of lists of applications and registrations from the Office?s TESS electronic database were submitted with its second request for reconsideration. However, the Examining Attorney is correct that Applicant first filed some evidence with its appeal brief, and, as a result, that evidence is untimely. Trademark Rule 2.142. The untimely materials consist of a ?Summary of Third Party Registrations ?? and copies of applications and registrations for marks containing the term TANDEM, many of which are cancelled. These materials have not been considered. Trademark Rule 2.142(d) (?The record in the application should be complete prior to the filing of an appeal.?); see also,
TBMP ? 1207.01 and cases cited therein.
Likelihood of Confusion
We turn now to the substantive issue on appeal. Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, hereinafter the ?du Pont factors?); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the relatedness of the goods or services. See
In re Chatam Int?l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004); 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 [services] and differences in the marks.?).
Turning first to the degree of similarity or dissimilarity of the involved marks, TANDEM ARBOR and TANDEM, we find them to be extremely similar. Applicant?s mark contains the registrant?s mark TANDEM in its entirety, and adds the term ARBOR. Although there is no absolute rule that a likelihood of confusion is present where an applicant’s mark contains the whole of the registered mark and additional matter, the fact that Applicant?s mark includes the entirety of the cited registered mark increases the similarity between the two. See, e.g., In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus is similar to TITAN for medical ultrasound diagnostic apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS for food items is similar to MACHO for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB
1985) (RICHARD PETTY’S ACCU TUNE for automotive service centers is similar to ACCU-TUNE for automotive testing equipment). The similarity is enhanced by the fact that TANDEM appears first in Applicant?s mark. This causes the marks to sound and appear more alike, as well as to create similar commercial impressions.? See, e.g., Century 21 Real Estate Corp., 23 USPQ2d at 1700 (stating that consumers will first notice the identical lead word on encountering the marks); Presto Prods. Inc. v. NicePak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating that ?it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered?).
Applicant argues that consumers will focus on the ARBOR element of its mark, and less on TANDEM, and that ARBOR has more source-identifying significance. Applicant specifically contends that ?TANDEM merely serves as a prefix.? Applicant also suggests that the significance of ARBOR is reinforced due to Applicant?s use of a tree logo, but admits the logo is not part of the applied-for mark. Applicant argues that its mark ?was designed to evoke a since [sic] of strength and durability that could be expected from purchasing well constructed, fully assembled wooden furniture? and that ?the use of the word ?tandem? in the Mark was conceptualized by the idea of two entities, the Tandem Arbor Company and their clients, growing together, and thus becoming stronger and more durable over time as the two grow together.?
We disagree. We see no reason how or why TANDEM would be understood
differently as used by the registrant and Applicant in their respective marks. Rather, their use of the term TANDEM, viewed in connection with the involved goods and services, appears to be arbitrary. The term has no shown or apparent meaning in the context of furniture and retail furniture services. At most, Applicant?s addition of the term ARBOR may be perceived as suggestive of being in a place of relaxation or, perhaps, furniture made of wood. Regardless, such a meaning would not necessarily distinguish the two marks; indeed, consumers already familiar with the registrant?s TANDEM mark may mistakenly believe that Applicant?s TANDEM ARBOR mark is merely an offshoot denoting a wood furniture line from the same source.
As to Applicant?s argument that its mark is intended to convey the ?idea of two entities? (Applicant and its customers), there is no evidence showing that consumers are aware of this asserted meaning. We see no reason why an ordinary customer of furniture would perceive the mark in this manner. As explained above, TANDEM is more likely to be understood as arbitrary and ARBOR as suggesting wood and thus, wood furniture.
In sum, the du Pont factor involving the similarity of the marks, TANDEM and TANDEM ARBOR, weighs in favor of finding a likelihood of confusion.
Applicant also argues that a likelihood of confusion is not present because the registrant?s mark TANDEM is diluted and weak as a result of third-party use of this term in marks in connection with ?similar home goods and retail services.? However, there is almost no evidence supporting the argument. The record consists merely of printouts of search results listing applications and registrations, some ?live? and some ?dead,? from the Office?s TESS electronic database and a copy of only one registration for a mark containing the term TANDEM that is owned by an unrelated entity covering goods that do not include furniture. The strength or weakness of a mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods or services. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 157980, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); du Pont, 177 USPQ at 567. A single irrelevant registration and the lists, neither of which show that any of the marks have actually been used in commerce, falls well short of showing weakness. Cf., Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (evidence of the extensive registration and use of a term by others can be powerful evidence of the term’s commercial weakness); see also, Olde Tyme Foods, Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (thirdparty registrations such as those offered by Applicant are not evidence of use of the marks). Ultimately, we do not find TANDEM weak in connection with furniture. Accordingly, the sixth du Pont factor is neutral.
We turn now to the relatedness of the involved goods and services. The application covers various pieces of furniture, such as couches, sofas, sofa beds, reclining chairs, ottomans, and chaise lounges, as well as online retail store services featuring those goods. The registered mark covers, inter alia, kitchen furniture. Applicant argues in its brief that there is no similarity between these goods and services by limiting the comparison to the registrant?s ?high-end custom cabinet hinges, drawer systems, control arms, metal drawer slides, trap doors, and lift systems.? However, from the onset, the Examining Attorney repeatedly specified ?kitchen furniture? as being the goods in the registration that are most similar to Applicant?s goods and services. Although the cited registration covers other goods, including furniture hardware, it was not improper for the Examining Attorney to base the likelihood of confusion refusal solely on the identified ?kitchen furniture.? It is not required that all of the goods listed in the cited registration be related to Applicant?s goods and services to support a finding of likelihood of confusion; rather, we may find confusion is likely for each class of goods and services in the application based on any item that comes within the description of goods in the registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Bond v. Taylor, 119 USPQ2d 1049, 1052-53 (TTAB 2016).
In support of the refusal, the Examining Attorney submitted printouts from over a dozen third-party retail furniture websites featuring the same types of furniture identified in both the cited registration and the application.16 For example:
- Attached to Office Actions that issued on February 17, 2016, on April 8, 2016, and on May 21, 2016.
- From the website www.afgstores.com.
Additional examples include printouts from websites from some furniture retailers, such as Arhaus, Ikea, Pier 1 Imports, Pottery Barn and Ethan Allen.
This evidence shows that consumers are accustomed to encountering furniture items such as those identified in the application promoted and offered together with kitchen furniture on the same websites. Entities that render services like those described in the application, namely, online retail services featuring sofas, couches, ottomans, etc., may also carry kitchen furniture. In other words, consumers are accustomed to finding kitchen furniture offered through online retail sites that also offer the furniture identified in the application.
In addition, the Examining Attorney introduced a significant number of thirdparty registrations for marks covering both the registrant?s kitchen furniture and Applicant?s goods and services. These include:
Reg. No. 3631824 for the mark WINDSOR SMITH HOME for ?Indoor furniture, namely, dining room, living room, kitchen ?furniture?;
Reg. No. 3737409 for the mark SAXON MOSS (stylized with design) for
?furniture? and ?online retail store services featuring furniture?;
Reg. No. 3563535 for the mark CATHY HOBBS for ?furniture for dining rooms, living rooms, kitchens and bedrooms?;
Reg. No. 4657490 for the mark AMERICAN ARTISAN for ?Home furniture for residential use, namely, living room furniture, dining room furniture, bedroom furniture, and home office furniture? and ?online retail store services featuring furniture?; and
Reg. No. 3769538 for the mark REHAB VINTAGE INTERIORS for ?furniture? and ?online retail store services featuring furniture.?
These registrations suggest that the types of goods and services identified in the application may emanate from the same source as the registrant?s goods under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
In sum, the record supports a finding that Applicant?s goods and services are related to the registrant?s goods. The online retail store services featuring furniture identified in the application have also been shown to be related to the registrant?s kitchen furniture. Although Applicant does not currently offer ?kitchen furniture? online or otherwise, this does not mean that the goods and services are not related. The evidence clearly shows that the same sources promote and offer both living room furniture and kitchen furniture. Consumers may therefore expect living room and kitchen furniture to come from the same source and online retail services to feature both types of furniture.
Accordingly, this du Pont factor also favors a finding of likelihood of confusion.
The record also establishes that the involved goods and services move in the same trade channels and are offered to the same classes of purchasers, and this, too, favors a finding of likelihood of confusion. Applicant tries to distinguish the channels of trade for the goods by arguing that the registrant?s goods ?cannot be purchased at any of the common online furniture retailers? and are ?specialty hardware components marketed in a business-to-business fashion.? Applicant concludes that the registrant?s goods ?travel through different channels of trade, and which are ultimately purchased by different consumers.? To reiterate a point made by the Examining Attorney during the prosecution of the application and which seems to have been lost on Applicant, a likelihood of confusion analysis must be made based on the goods and services as they are identified in the application and the registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant?s argument regarding the registrant?s actual trade channels, even if supported by evidence, is irrelevant given that the recitation goods in the cited registration, as well as the recitation of goods and services in the application, are unrestricted. Accordingly, we must presume that the respective goods and services are marketed in all usual trade channels and to all normal classes of purchasers for such goods and services. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000) (affirming Board finding that where the identification is unrestricted, ?we must deem the goods to travel in all appropriate trade channels to all potential purchasers of such goods?); In re Wilson, 57 USPQ2d 1863, 1865 (TTAB 2001). Here, the evidence, as discussed supra, shows that online retailers often market and offer for sale both living room furniture and kitchen furniture. The same classes of customers, namely, home furniture shoppers, will encounter these goods offered by the same sellers in the same stores or through the same websites.
Finally, Applicant has argued that consumers of its goods and services, as well as buyers of the registrant?s goods, are ?highly sophisticated and therefore confusion is not likely to occur.? However, as the Examining Attorney once more correctly pointed out in response, there are no restrictions with respect to classes of purchasers in the application?s or registration?s identifications of goods and services. Consumers of kitchen and living room furniture, as well as online retail services featuring those goods, would include the ordinary homeowner.? Even when the relevant consumer would be both professionals and the general public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. See Stone Lion, LP, 746 F.3d. at 1325. Thus, Applicant?s argument is not persuasive and the fourth du Pont factor, involving the conditions under which buyers make purchases, remains neutral in our analysis.
Because Applicant?s TANDEM ARBOR mark is so similar to the registrant?s mark TANDEM, Applicant?s goods and services are related to the registrant?s goods, albeit involving different types of furniture, and the channels of trade and consumers are ?the same, confusion is likely.
Decision: The refusal to register Applicant?s mark is affirmed.
 Application Serial Number 86796352, filed October 22, 2015, is based on an allegation of first use anywhere and in commerce for both classes on April 1, 2015, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C ? 1051(a).
 Registration No. 4680348 issued on February 3, 2015. The Examining Attorney originally cited three additional registrations as bases for the likelihood of confusion refusal. Two of these registrations (Reg. Nos. 4680350 and 2718795) issued to the same owner as Reg. ‘348 and include the term TANDEM in the mark. The fourth registration, Reg. No. 4105888, also for the mark TANDEM, is owned by a different entity and covers ?window coverings, namely, cellular shades, pleated shades, roman shades, woven shades, grass shades, soft fabric shades, y-pleat shades, and double shades? in International Class 20. With her final Office Action, issued on April 8, 2016, the Examining Attorney maintained her refusal only with respect to Regs. ‘348 and ‘888. Then, in response to Applicant?s first request for reconsideration, the Examining Attorney withdrew the latter registration as a basis for the refusal, citing to Reg. ‘348 as the sole basis. See Office Action issued on May 21, 2016.
 9 TTABVUE 4.
 Response filed March 17, 2016.
 Request filed April 29, 2016.
 Request filed June 14, 2016; 4 TTABVUE.
 4 TTABVUE 34.
 Id. at 35-56. We note one exception. Included in these materials is a copy of Reg. No. 4105888. As explained in footnote 2, this registration was previously cited and a copy was introduced by the Examining Attorney as basis for refusal. Accordingly, this registration has been considered.
 7 TTABVUE 8.
 Id. at 9.
 The Examining Attorney attached a definition of ?Arbor? as ?a shady resting place in a garden or park, often made of latticework on which plants such as climbing shrubs or vines are grown.? See definition attached to Office Action issued on May 21, 2016, taken from The American Heritage Dictionary of the English Language, 5th Edition (2015). The same term is defined in botany as a ?tree.? Random House Dictionary, Random House, Inc. (2016).
 7 TTABVUE 8.
 As the Examining Attorney pointed out in denying the second request for reconsideration (5 TTABVUE), the mere submission of lists of registrations does not make such registrations part of the record. In re Jump Designs, LLC, 80 USPQ2d 1370, 1372 (TTAB 2006); see also, TBMP ?1208.02. In fact, Applicant was instructed that in order to make them part of the record it must submit copies of the registrations, or the complete electronic equivalent from the USPTO?s automated systems, prior to appeal. See TBMP ?1208.02. Applicant did not do so.
 See footnote 2.
 7 TTABVUE 10.
 From the website www.wayfair.com.
 Attached to Office Action that issued on April 8, 2016.
 7 TTABVUE 11.
 7 TTABVUE 12.