Precedential No. 41: Applicant Loses Third-Party Registration Battle, TTAB Finds Floor Tiles and Roof Tiles Related.

Applicant G.B.I. Tile and Stone, Inc., ran into a brick wall in its attempt to register the mark CAPRI COLLECTION for "stones, ceramic floor tiles, porcelain floor tiles" [COLLECTION disclaimed]. The Board found the mark likely to cause confusion with the registered mark CAPRI for “roofing tiles and trim.” The key issue was the relatedness of the goods, and Applicant’s third-party registration evidence showing that there are registrations for floor tiles that do not include roofing tiles, and vice versa, was not persuasive. In re G.B.I. Tile and Stone, Inc., 92 USPQ2d 1366 (TTAB 2009) [precedential].

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Not surprisingly, the Board found the marks to be 'very similar in sound, appearance, meaning, and commercial impression."

Applicant argued that the goods "differ in nature and are not used for the same purpose," and "do not compete." The Board observed, however, that the goods need not be "identical or even competitive" in order to find confusion likely. "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 same source or that there is some association between their sources."

Examining Attorney Patty Evanko submitted numerous use-based third-party registrations showing that "applicant's and registrant's goods are registered by a single entity under a common mark." Under Mucky Duck, these registrations "may have some probative value to the extent that they serve to suggest that such goods and services are of a type which may emanate from a single source." The Examining Attorney also provided Internet evidence "that roofing tiles and floor tiles originate from a common source."

Applicant submitted hundreds of third-party registrations in arguing that there are "third party roofing tile manufacturers who sell roofing tiles and do not sell floor tiles," and vice versa.

The Board noted that an applicant may submit sets of third-party registrations (to counter the Examining Attorney’s Mucky Duck evidence) to show that the Office has registered the same mark to different parties for the goods at issue. Here, however, Applicant did not submit paired registrations for the same mark. It provided registrations that list one item or the other, but not both. That evidence was given "much less weight."

There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be the sources of the other product. *** Second, the mere fact that some goods are not included in a registration’s identification of goods does not establish that the owner of the mark has not registered the mark for those goods in another registration…. Third, the law recognizes that trademark owners have different marks that are used as a house mark, a mark for a line of products, and a mark for specific items.

In short, Applicant's evidence did not rebut the Examining Attorney’s evidence regarding the relatedness of the goods.

Applicant argued that the purchasers of the goods are both different and sophisticated. The Board pointed out, however, that there was evidence that the purchasers of roofing tiles and flooring tiles overlap: both products would be marketed to architects, general contractors, building owners, and individuals who are construction or remodeling a home. And even if the purchasers are likely to be somewhat careful, they are still susceptible to confusion when very similar marks are used on related goods.

Finally, noting that any doubt must be resolved in favor of applicant, the Board affirmed the refusal to register.

TTABlog comment: When facing a Mucky Duck-based refusal, note the weasely language in that case about "my have probative value" and may "serve to suggest." So don't be afraid to blast away at the Duck. See, for example, this TTABlog posting.

Text Copyright John L. Welch 2009.