From: Capshaw, Daniel
Sent: 8/10/2009 11:49:06 AM
To: TTAB EFiling
CC:
Subject: U.S. TRADEMARK APPLICATION NO. 77413887 - MANCHESTER - 445- 3393-T
************************************************* Attachment Information: Count: 1 Files: 77413887.doc UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 77/413887
MARK: MANCHESTER *77413887* CORRESPONDENT ADDRESS: EDGAR A. ZARINS GENERAL TRADEMARK INFORMATION: MASCO CORPORATION http://www.uspto.gov/main/trademarks.htm 21001 VAN BORN RD TAYLOR, MI 48180-1300 TTAB INFORMATION: http://www.uspto.gov/web/offices/dcom/ttab/index.html APPLICANT: Liberty Hardware Mfg. Corp.
CORRESPONDENT’S REFERENCE/DOCKET NO: 445-3393-T CORRESPONDENT E-MAIL ADDRESS:
EXAMINING ATTORNEY'S APPEAL BRIEF
The Applicant, Liberty Hardware Mfg. Corp., has appealed the examining
attorney’s refusal to register the mark “MANCHESTER” in standard characters under
§2(d) of the Trademark Act of 1946 (as amended) (hereinafter “the Trademark Act”), 15
U.S.C. §1052(d). This refusal is the only issue on appeal.
FACTS
On March 5, 2008 Applicant applied to register the mark MANCHESTER in
standard characters based on its Intent to Use the mark in commerce, §1(b) of the
Trademark Act, for goods amended to read:
Class 21-- BATHROOM ACCESSORIES NAMELY, TOWEL BARS, TOWEL RINGS, TOILET TISSUE HOLDERS AND TUMBLER- TOOTHBRUSH HOLDERS
In an office action dated May 28, 2008 the previous examining attorney refused
registration under Section 2(d) of the trademark act with registration 1754857 for the
identical mark MANCHESTER in typed form, for the following goods:
Class 6-- DOOR HARDWARE; NAMELY, LOCKS, LATCHES, KNOBS AND HINGES.
On November 11, 2008 Applicant responded to the office action arguing against a
likelihood of confusion. On November 12, 2008 the application was re-assigned to the
undersigned examining attorney after the first examining attorney took temporary leave from the Office. On November 28, 2008 the current examining attorney issued a final refusal under §2(d) of the Trademark Act based on the aforementioned registration. The
Applicant timely filed a Notice of Appeal on May 8, 2009.
ISSUE ON APPEAL
Whether Applicant’s standard character mark MANCHESTER creates a likelihood of confusion with the Registrant’s typed mark MANCHESTER where each party provides, or intends to provide, common household hardware items.
LIKELIHOOD OF CONFUSION ANALYSIS
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).
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, to cause confusion, or to cause mistake or to deceive. 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. The overriding concern is to prevent buyer confusion as to
the source of the goods. 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). Moreover, the test under Section 2(d) of the
Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show
actual confusion in establishing likelihood of confusion. See Weiss Associates Inc. v.
HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990),
and cases cited therein.
ARGUMENT
1. THE MARKS ARE IDENTICAL
The marks at issue are identical. The marks are:
MANCHESTER MANCHESTER
2. THE GOODS ARE RELATED
Here, the evidence of third party registrations and web pages attached to the first
and final office actions shows that it is common for producers of bathroom hardware,
such as the Applicant, to also produce door hardware, under a single mark. Thus, the
goods are related. A review of the internet web pages shows the following:
The retail webpage www.knobsandhardware.com provides for sale the goods of a variety of household hardware producers including:
• KWIKSET brand towel bars and towel rings, such as provided by the
Applicant, as well as KWIKSET brand door hardware, such as provided
by the Registrant.
• BALDWIN brand toothbrush holders and toilet tissue holders such as
provided by the Applicant as well as BALDWIN brand door hardware
such as provided by the Registrant. See also attached pages from the
BALDWIN official site evidencing the same.
• HAMILTON SINKLER brand toilet tissue holders and towel bars such as
provided by the Applicant as well as HAMILTON SINKLER brand door
hardware such as provided by the Registrant.
• CIFIAL brand towel rings and toilet paper holders such as provided by the
Applicant and CIFIAL brand door hardware such as provided by the
Registrant. • ACORN brand towel bars and toilet tissue holders such as provided by the
Applicant and ACORN brand door hardware such as provided by the
Registrant.
• VOGA brand tumbler/toothbrush holders and toilet tissue holders such as
provided by the Applicant and VOGA brand door hardware such as
provided by the Registrant.
The internet evidence also includes pages from www.directdoorhardware.com showing
the following producers/brands:
• EMTEK brand towel bars, toilet paper holders and towel rings such as
provided by the Applicant and EMTEK brand door hardware such as
provided by the Registrant.
• SURE-LOC brand bathroom hardware and accessories including images
of tissue holders, towel bars and towel rings such as provided by the
Applicant as well as SURE-LOC brand door hardware such as provided
by the Registrant.
Finally, attached are pages from the Applicant’s website www.libertyhardware.com. The pages show that Applicant sells both door hardware such as door hinges as well as bathroom hardware including toilet paper holders.
The third party registrations of record also prove that the goods are related. 27 registrations are included in the record. A sample of the registrations are highlighted below: • Registration 1590477 (owned by Harrow Products) for towel bars, towel rings,
toilet paper holders, toothbrush and tumbler holders and towel racks such as
provided by the Applicant as well as a variety of door hardware including door
knobs and levers such as provided by the Registrant.
• Registration 1899435 (owned by Fair Boss Company) for towel bars, towel rings,
tissue roll holders, toothbrush holders and towel racks such as provided by the
Applicant as well as door hardware including knobs and locks such as provided
by the Registrant.
• Registration 1999952 (owned by Taymor Industries) for paper holders, toothbrush
and glass holders, towel bars and towel rings such as provided by the Applicant as
well as door hardware including hinges and locks such as provided by the
Registrant.
• Registration 2303499 (owned by EZ-FLO International) for towel bars,
toothbrush holders and toilet paper roll holders such as provided by the Applicant
as well as door hardware including locks, hinges and knobs such as provided by
the Registrant.
• Registration 2538694 (owned by Delaney Company) for towel bars and rings and
toothbrush holders such as provided by the Applicant as well as door hardware
including locks and hinges such as provided by the Registrant.
• Registration 2563498 (owned by Rocky Mountain Hardware) for towel bars,
towel rings, and toilet paper holders such as provided by the Applicant as well as
door hardware including door knobs and locks such as provided by the Registrant. • Registration 2802935 (owned by Black & Decker Corporation which is the owner
of the cited registration) for towel bars, towel rings, tissue holders and toothbrush-
tumbler holders such as provided by the Applicant as well as door hardware
including locks, latches, hinges and knobs such as provided by the Registrant.
• Registration 3064196 (owned by Emtek Products) for towel bars such as provided
by the Applicant as well as door hardware including knobs and hinges such as
provided by the Registrant.
• Registration 3019534 (owned by Sale Builders Hardware, Ltd.) for towel bars,
towel holders, towel rings, cup holders, toilet paper and toilet tissue holders such
as provided by the Applicant as well as door hardware including knobs, hinges
and locks such as provided by the Registrant.
• Registration 3524672 (owned by Pamex Inc.) for cup holders, toothbrush holders,
towel bars, towel rings and toilet paper holders such as provided by the Applicant
as well as door hardware including locks and hinges such as provided by the
Registrant.
• Registration 2788879 (owned by Waterwood LLP) for towel rings and bars such
as provided by the Applicant as well as door hardware including knobs such as
provided by the Registrant.
• Registration 2997699 (owned by Premiere Lock Company LLC) for toilet paper
holders, towel bars, and towel rings such as provided by the Applicant as well as
door hardware including door hinges and knobs such as provided by the
Registrant. These printouts have probative value to the extent that they serve to suggest that the
goods listed therein are of a kind that may emanate from a single source. In re Infinity
Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
The internet evidence and third party registrations overwhelmingly establish that it is common for producers of bathroom hardware items, such as provided by the
Applicant, to also produce door hardware items, such as provided by the Registrant, under a single mark. Thus, the goods are related and refusal to register should be affirmed.
Finally, where the marks of the respective parties are identical, as here, the relationship between the goods of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v.
Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).
3 APPLICANT’S ARGUMENTS ARE UNPERSUASIVE
Applicant argues, essentially, that the goods are different in kind. However, the
fact that the goods or services of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods or services, but likelihood of confusion as to the source of those goods or services.
In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993);
Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01. Here, the evidence or record overwhelmingly
establishes that the goods are highly related. Thus, despite the fact that the goods may be different, they remain related.
Applicant also attempts to limit the channels of trade of the Applicant and
Registrant. However, a determination of whether there is a likelihood of confusion is
made solely on the basis of the goods and/or services identified in the application and
registration, without limitations or restrictions that are not reflected therein. In re
Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii).
If the cited registration describes the goods and/or services broadly and there are no
limitations as to their nature, type, channels of trade or classes of purchasers, then it is
presumed that the registration encompasses all goods and/or services of the type
described, that they move in all normal channels of trade, and that they are available to all
potential customers. In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii). Furthermore, the
evidence of record shows, despite Applicant’s unsupported assertions, that the goods
occur in common channels of trade and are related.
Finally, any doubt regarding a likelihood of confusion determination is resolved
in favor of the Registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).
CONCLUSION The marks at issue, “MANCHESTER,” are identical. The goods at issue are common household hardware items. Thus, confusion is likely and registration must be denied.
Respectfully submitted,
/Daniel Capshaw/ Trademark Attorney Law Office 110 571.272.9356
Chris A. F. Pedersen Managing Attorney Law Office 110