Tuesday, May 30, 2006

TTAB Affirms Another 2(d) Refusal: Appellants Batting .088 in 2006

In the first 20 weeks of 2006, the TTAB has affirmed 62 out of 68 Section 2(d) likelihood of confusion refusals. That's a 91% affirmance rate, which means that Appellants are batting .088 in 2(d) appeals this year -- well below the legendary Mendoza line. Hunter Fan Company was added to the roster of failed applicants when the Board affirmed a 2(d) refusal to register WEST INDIES COLLECTION for "ceiling fans, electric light fixtures and portable lamps," finding the mark likely to cause confusion with the registered mark AMERICAN SIGNATURE WEST INDIES COLLECTION for furniture [AMERICAN and WEST INDIES COLLECTION disclaimed]. In re Hunter Fan Co., Serial No. 78196829 (May 15, 2006) [not citable].


Examining Attorney Karen K. Bush relied on twenty database "hits" revealing retailers that sell furniture, ceiling fans, and lamps, and on third-party registrations for marks that cover the goods of both parties. She argued that the involved goods are complementary in that "an interior designer or home owner, for example, may coordinate ceiling fans, electric light fixtures, and/or portable lamps with a home's furniture." [I guess she hasn't seen the TTABlog House]. The Board agreed that the goods are related.

Hunter contended that the purchasers of the goods are sophisticated, but the Board wasn't buying. Because there are no limitations in the identifications of goods, it must be presumed that the goods move in all channels of trade to all classes of purchasers that would be normal for such goods.

As to the marks, Hunter asserted that the inclusion of the house mark AMERICAN SIGNATURE in the registered mark creates a commercial impression that is sufficiently distinct from Applicant's mark. Again, the Board disagreed.

"[E]ach of the marks, due to the shared phrase WEST INDIES COLLECTION, connotes a similar theme of a collection of West Indies-style items. The additional words AMERICAN SIGNATURE in the registered mark do not change that meaning. *** Even assuming that the phrase WEST INDIES COLLECTION is suggestive or geographically descriptive or geographically misdescriptive, the respective marks have essentially the same connotation, and when used on related goods, the marks are likely to cause confusion among purchasers."

The Board therefore affirmed the Section 2(d) refusal.

TTABlog comment: In light of the disclaimers of AMERICAN and WEST INDIES COLLECTION, isn't the dominant part of Registrant's mark the word SIGNATURE? Of course, even with the disclaimers, the registered mark must be considered as a whole, but are these two marks confusingly similar? Do they really convey the same commercial impression? I don't think so.

See these two cases cited at Section 12.07.01(b)(iii) of the TMEP: In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics).

Text Copyright John L. Welch 2006.


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