Tuesday, March 31, 2015

Precedential No. 10: TTAB Test: Are These Two Marks for Furniture Confusingly Similar?

Applicant sought to register the word + design mark shown below, for "furniture" [FURNITURE, MOTION, and RECLINERS disclaimed], but the examining attorney refused registration under Section 2(d), finding the mark likely to cause confusion with the registered mark BRADLEY HUGHES for "residential and commercial furniture." The goods overlap, but are the marks close enough? How do you think this came out? In re Hughes Furniture Industries, Inc., 114 USPQ2d 1134 (TTAB 2015) [precedential].

Evidentiary issue: The Board first dealt with applicant's objection to certain evidence submitted by Examining Attorney Alicia Collins Edwards. Applicant filed its notice of appeal six months after the final refusal was issued, and then two months later requested a remand to the Office for entry of a disclaimer of the word "motion," in order to moot that issue on appeal. The examining attorney entered the disclaimer but also submitted additional Internet evidence in further support of her likelihood of confusion refusal. Not allowed, said the Board.

The examining attorney improperly treated the request for remand as a request for reconsideration of the entire final refusal. However, the time had expired for a request for reconsideration. The request for remand related only to the disclaimer requirement and not the Section 2(d) refusal. Therefore it was impermissible for the examining attorney to submit new evidence on the latter issue.

The Board noted that the examining attorney could have filed her own request for suspension of the appeal and remand, upon a showing of good cause, for the purpose of submitting new evidence regarding likelihood of confusion.

And so the Board sustained applicant's objection to the additional evidence.

Likelihood of confusion: Applicant contended that it offers goods that are distinct from those of the Registrant, asserting that Registrant serves a niche market for "luxury" and "artisan made" furnishings, whereas applicant offers furniture aimed at a broader market. Applicant also maintained that its goods are sold online, whereas Registrant's furniture is sold in specialty showrooms through design professionals with registered trade accounts. Not so fast, said the Board.

The Board, because it is required to compare the goods as identified in the application and registration at issue, found the involved goods to be legally identical The Board may not, through extrinsic evidence, limit the scope of the identification of goods in either the application or cited registration. Applicant's broadly worded identification (furniture) encompasses registrant's identification (residential and commercial furniture). Moreover, the identifications of goods are not limited as to type, style, or price level, nor are they limited as to channels of trade. The Board therefore must presume that the involved goods travel in the same channels to the same classes of consumers.

Although the evidence showed that registrant's furniture is hand-crafted, the registration is not so limited. The Board therefore must assume that the involved goods encompass furniture of all types, including mass-produced furniture sold to the general public, including the less knowledgeable consumer. Although furniture may not be an "impulse" purchase, there was no evidence to support a finding of any degree of care that would weigh against the likelihood of confusion refusal. The Board found this factor to be neutral.

Turning to the marks, the Board noted once again that when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likelihood of confusion. It agreed with the examining attorney that the surname "Hughes" dominates the applied for mark. The letter "H" merely serves to reinforce the prominence of "Hughes." The disclaimed words and the word EAZE appear in somewhat smaller print, and consumers are likely to pay less attention to the smaller descriptive wording and the generic term FURNITURE. The surname significance of "Hughes" also makes that word more likely to be the focus of prospective customers in calling for the goods.

The design elements of applicant's mark are common shapes that fail to distinguish the marks at issue. Here it is especially true that these design elements merely serve as carriers for the words and do not themselves have any strong source-identifying significance.

Comparing the marks as a whole, consumers are likely to focus on the surname HUGHES and will mistakenly believe that the goods emanate from the same source. [think WINSTON and BRUCE WINSTON - ed.].

The Board concluded that the marks are similar in sound, appearance, connotation, and commercial impression. Finding that a likelihood of confusion exists between the two marks, the Board affirmed the refusal to register.

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TTABlog note: How did you do? Assuming that B&B/Hargis is applicable in an ex parte context, is this a good example of a case where issue preclusion would not apply in an infringement action? Do you think opposer would win in a civil action?

Text Copyright John L. Welch 2015.


At 1:59 PM, Anonymous Anonymous said...

The problem I have with the decision is that the TTAB is granting the registrant of BRADLEY HUGHES surname protection despite the fact that if the entity filed for HUGHES alone, it would have been refused under Section 2(e)(4). So it seems that the way to get the protection of a surname without the refusal of a surname is to file the entire name. Seems to contradict the whole purpose of 2(e)(4).


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