Tuesday, July 12, 2011

Finding Household Linens and Furniture Related, TTAB Cancels LEXINGTON Registration Under Section 2(d)

Here's one for the insomniacs among us. The Board granted a petition for cancellation of a registration for the mark LEXINGTON & Design for household linens, on the ground of likelihood of confusion with the registered and previously-used marks LEXINGTON, LEXINGTON FURNITURE INDUSTRIES, and LEXINGTON HOME BRANDS for furniture [FURNITURE INDUSTRIES and BRAND disclaimed]. Lexington Furniture Industries, Inc. v. The Lexington Company, AB, Cancellation No. 92048578 (June 22, 2001) [not precedential].

Rule 2.122(j)(4): The Board first addressed a procedural issue regarding Respondent's submission of excerpts from the discovery deposition of its own CEO. Petitioner, via notice of reliance, had submitted portions of the deposition, and Respondent claimed that the additional excerpts "should in fairness be considered." However, Rule 2.122(j)(4) requires that a party who submits such additional excerpts explain why it needs to rely on excerpts from its own witness's discovery deposition:

If only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. A notice for reliance filed by an adverse party must be supported by a written statement explaining why the adverse party needs to rely upon each additional part listed in the adverse party’s notice, failing which the Board, in its discretion, may refuse to consider the additional parts.

The Board ruled that Respondent had failed to show how the portions of the testimony submitted by Petitioner were misleading, and so the Board sustained Petitioner's objection to admission of these additional deposition excerpts.

Priority: The Board pointed out that in a cancellation proceeding in which both petitioner and respondent are owners of registrations, the petitioner must prove priority of use. Respondent could rely on the priority date of its Madrid Protocol application that issued into its registration, but the filing dates for Petitioner's applications for registration were earlier than that date. And so Petitioner enjoyed priority.

The marks: The Board found that the word portion of Respondent's mark is dominant "because consumers would use it to call for the products." It rejected Respondent's contention that the flag design is dominant and that the stacked arrangement of the word LEXINGTON distinguishes the marks.

Lexington, Massachusetts
(Click on photo for larger picture)

The goods: To show the relatedness of the goods, Petitioner submitted a significant number of third-party registrations. However, the Board gave no probative value to the registrations that were based on Section 44 rather than on use, and little value to those directed to house or designer marks. As to the latter:

Because house marks and designer brands are used on such a wide variety of goods, consideration of registrations for house marks and designer brands to show that the goods at issue are related could create a situation where widely disparate goods are considered related.

Petitioner also introduced persuasive testimony of witnesses in the furniture industry, showing that furniture manufacturers sell both furniture and household linens under the same mark, and that consumers would encounter the marks under circumstances (e.g., in showrooms) likely to lead to confusion as to source.

Channels of trade: The witnesses established that both parties sell their products in department stores, in close proximity to each other. Retailers sell furniture "by creating how it looks in the home: that is, as an ensemble with all the elements of a decorated room."

Strength of petitioner's marks: Respondent argued that the LEXINGTON marks are not strong, since "Lexington" is a well know geographical name for several cities. The Board, however, pointed out that Petitioner's registrations are more than five years old and thus immune to a Section 2(e)(2) challenge. Moreover, even if weak, Petitioner's marks are still entitled to protection against confusion, especially when the marks, as here, are very similar.

And so, balancing the duPont factors, the Board granted the petition for cancellation.

Text Copyright John L. Welch 2011; photograph Copyright John L. Welch 2003.


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