Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD ON APPEAL

 

 

Applicant:	Towle Manufacturing Company	:	BEFORE THE
Trademark:	CHARLESTON	:	TRADEMARK TRIAL
Serial No:	76/373720	:	AND
Attorney:	Jay H. Begler	:	APPEAL BOARD
Address:	Buchanan Ingersoll 140 Broadway, New York, New York  10005	:	ON APPEAL

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

The applicant has appealed a likelihood of confusion finding under Trademark Act Section 2(d) between its mark CHARLESTON for “sterling silver plated flatware, namely, forks, knives, and spoons” and the registrant’s marks CHARLESTON GARDENS for various household goods including dinnerware and “beverage glassware, tabletop decorative items not of precious metal, namely, serving pieces, namely, bowls, covered casseroles, cake stands, teapots, and platters, cachepots and containers used for floral or fruit centerpieces, napkin rings, place card holders, salt and pepper shakers, candle holders, and candlesticks; serving trays not of precious metal.”

 

STATEMENT OF FACTS

 

The applicant applied to register its mark CHARLESTON for sterling silver plated flatware, namely, forks, knives, and spoons on February 21, 2002.  By Office Actions of May 20, 2002, and December 18, 2002,[1] the examining attorney refused registration pursuant to Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because of the likelihood of confusion between the applicant’s mark and the registered marks CHARLESTON GARDENS in Registration Nos. 2,446,082 and 2,636,128 for various household goods including dinnerware and beverage glassware; tabletop decorative items not of precious metal, namely, serving pieces, namely, bowls, covered casseroles, cake stands, teapots, and platters, cachepots and containers used for floral or fruit centerpieces, napkin rings, place card holders, salt and pepper shakers, candle holders, and candlesticks; serving trays not of precious metal. 

 

The applicant submitted responses to the Office Actions on November 14, 2002, and on May 14, 2003.  A Final Action maintaining the refusal to register was issued on July 22, 2003.  On January 21, 2004, the applicant filed this appeal. 

 

 

ISSUE

 

Whether a likelihood of confusion exists between the applicant’s mark CHARLESTON for sterling silver plated flatware, namely, forks, knives, and spoons and the registrant’s marks CHARLESTON GARDENS for various household goods including dinnerware and beverage glassware, tabletop decorative items not of precious metal, namely, serving pieces, namely, bowls, covered casseroles, cake stands, teapots, and platters, cachepots and containers used for floral or fruit centerpieces, napkin rings, place card holders, salt and pepper shakers, candle holders, and candlesticks; serving trays not of precious metal.

 

 

ARGUMENTS

 

 

Section 2(d) of the Trademark Act bars registration where a mark so resembles a registered mark, that it is likely, when applied to the goods/services, to cause confusion, or to cause mistake or to deceive. TMEP §1207.01.  The Court in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), listed the principal factors to consider in determining whether there is a likelihood of confusion.  Among these factors are the similarity of the marks as to appearance, sound, meaning and commercial impression and the similarity of the goods/services.  The overriding concern is to prevent buyer confusion as to the source of the goods/services.  Miss Universe, Inc. v. Miss Teen U.S.A., Inc., 209 USPQ 698 (N.D. Ga. 1980).  Therefore, any doubt as

to the existence of a likelihood of confusion must be resolved in favor of the registrant.  Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368 (C.C.P.A. 1974). 

 

The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion.  First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely.  In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).  TMEP §§1207.01 et seq. 

 

Marks are Similar

 

The applicant’s mark is confusingly similar to the registered marks.  First, the mere deletion of wording from a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d).  See In re Optical Int’l, 196 USPQ 775 (TTAB 1977) (where applicant filed to register the mark OPTIQUE for optical wear, deletion of the term BOUTIQUE is insufficient to distinguish the mark, per se, from the registered mark OPTIQUE BOUTIQUE when used in connection with competing optical wear).  In the present case, applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark.  The deletion of GARDENS from the registered marks does not significantly change the overall commercial impression of the marks.   

 

Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(i).  The applicant’s and the registrant’s marks contain CHARLESTON.

 

In addition, the examining attorney must consider the marks in their entireties in determining whether there is likelihood of confusion.  A disclaimer does not remove the disclaimed portion from the mark for the purposes of this analysis.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Specialty Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984); In re MCI Communications Corp., 21 USPQ2d 1535 (Comm’r Pats. 1991). 

 

The applicant’s sole argument against the refusal is that the registrant has disclaimed CHARLESTON in its registrations and therefore the wording cannot be considered in the likelihood of confusion analysis.  However, as set forth above, a disclaimer of a wording does not remove the wording from the mark in determining whether marks are similar.  Rather, the marks as a whole must be considered.  In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).  Applicant’s argument would only have merit if the wording CHARLESTON was generic for the goods and therefore has virtually no trademark significance.  This is clearly not the case here.  The disclaimer of CHARLESTON in the registered marks does not obviate the likelihood of confusion between the marks.  In addition, the deletion of GARDENS in the applicant’s mark does not change the overall commercial impressions of the marks.  CHARLESTON and CHARLESTON GARDENS are likely to be viewed by consumers of the relevant household goods as variant marks of a single source.  Most consumers are not aware that a word has been disclaimed in a trademark, let alone the meaning or significance of a disclaimer, and that those words are not to be regarded when encountering similar marks.  See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).  Therefore, even disclaimed words are significant and important aspects of trademarks.  CHARLESTON and CHARLESTON GARDENS are similar and are likely to cause confusion as to the source of the goods.  

 

Goods are Similar

 

As shown by the evidence made of record, the applicant’s and the registrant’s goods emanate from common sources and travel in the same trade channels.  Printouts of articles downloaded from the Internet are admissible as evidence of information available to the general public, and of the way in which a term is being used by the public.  TMEP §710.01(b).   In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76 (TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-1 (TTAB 1998).  In addition, printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case, have probative value to the extent that they serve to suggest that the parties’ goods may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).

 

The applicant does not and has never contested the refusal with respect to the similarity of the goods.  Although the record establishes the similarity of the goods, the Board should consider the applicant’s silence on this issue as an admission that the goods are similar and that they travel in the same trade channels.

 

 

CONCLUSION

 

The applicant’s mark CHARLESTON for “sterling silver plated flatware, namely, forks, knives, and spoons” is confusingly similar to the registrant’s marks CHARLESTON GARDENS for various household goods including dinnerware and “beverage glassware; tabletop decorative items not of precious metal, namely, serving pieces, namely, bowls, covered casseroles, cake stands, teapots, and platters, cachepots and containers used for floral or fruit centerpieces, napkin rings, place card holders, salt and pepper shakers, candle holders, and candlesticks; serving trays not of precious metal.”  For the foregoing reasons, the examining attorney respectfully requests that the Board affirm the refusal to register the applicant’s mark under Trademark Act Section 2(d).

                                   

 

 

 

           

Respectfully submitted,

____________________________________

/Alex S. Keam/ Examining Attorney Law Office 114 (703) 308-9114 ext. 140

                                   

K. Margaret Le Managing Attorney