Mannington Mills, Inc.

Trademark Trial and Appeal Board

Nov 29, 2010

No. 77568761 (T.T.A.B. Nov. 29, 2010)

Mailed:
11/29/2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mannington Mills, Inc.
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Serial No. 77568761

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Sherry H. Flax of Saul Ewing LLP, for Mannington
Mills, Inc.

Myriah A. Habeeb, Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
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Before Seeherman, Grendel, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Mannington Mills, Inc. filed an application to
register the mark SIMPLICITY in standard character
format for “non-metal cove bases; rubber cove bases;
rubber floor tiles; rubber flooring,” in International
Class 19.1 The trademark examining attorney refused
registration of the mark under Section 2(d) of the
Trademark Act of 1946, 15 U.S.C. §1052(d), on the

1 Application Serial No. 77568761, filed September 12, 2008,
pursuant to Section 1(b) of the Trademark Act, 15 USC
§1051(b), alleging a bona fide intent to use in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77568761

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ground that applicant’s mark so resembles the
registered mark SIMPLICITY, also in standard character
form, for “non-structural building materials, namely
slab stock made from methacrylate resin for commercial
applications, including counter tops and vanity tops,”
in International Class 19,2 that when used in
connection with applicant’s identified goods, it will
be likely to cause confusion, mistake, or to deceive.
Upon final refusal of registration, applicant
filed a timely appeal. Both applicant and the
examining attorney filed briefs, and applicant filed a
reply brief. After careful consideration of the
arguments and evidence of record, we affirm the
refusal to register.
We base our determination under Section 2(d) on
an analysis of all of the probative evidence of record
bearing on a likelihood of confusion. In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
goods or services. See Federated Foods, Inc. v. Fort
Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)

2 Registration No. 3110098, issued June 27, 2006, based on
first use and first use in commerce of August 20, 2004.
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(“The fundamental inquiry mandated by §2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”). We consider each of the factors as to which
applicant or the examining attorney presented
arguments or evidence.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in
their entireties. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The
marks are identical. Accordingly, they have the same
appearance and sound. In the context of the goods,
they also have the same connotation and commercial
impression.
In view of the foregoing, the first du Pont
factor weighs heavily in favor of finding a likelihood
of confusion.

The Goods and Channels of Trade

Preliminarily, we note that the more similar the
marks at issue, the less similar the goods need to be
for the Board to find a likelihood of confusion. In
re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Moreover, goods or services need not be identical or
even competitive in order to support a finding of
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likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such
that they would be likely to be seen by the same
persons under circumstances which could give rise,
because of the marks used or intended to be used
thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer
or that there is an association between the producers
of each parties’ goods or services. In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
The examining attorney submitted evidence of
various websites that show companies offering for sale
both “flooring,” or even more specifically “rubber
flooring,” and various custom-made “counter tops,”
under their same mark. For example, Midwest Interiors
LLP advertises “rubber flooring,” as well as custom
countertops, on www.midwestinteriors.com;
ForemostInteriors advertises “rubber flooring,” as
well as custom countertops, on
www.foremostinteriors.com; In-Pro Corporation
advertises “vinyl/rubber cove bases,” as well as
custom countertops, on www.inprocorp.com; and Select
Interiors advertises various types of “flooring,” as
Serial No. 77568761

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well as custom (including specifically plastic)
countertops, on www.selectinteriors.com. These
Internet advertisements show that the goods identified
in both the application and the cited registration are
produced by the same manufacturers, which serves to
suggest that consumers would expect such goods to
emanate from a single source.
The examining attorney also submitted a number of
third-party registrations that include both goods
identified in the application (such as “non-metal
floors,”) on the one hand and goods identified in the
cited registration (such as “non-metal counter tops,”)
on the other.3 These registrations further suggest
that the goods are of a type which may emanate from a
single source. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993). Altogether, we find the
evidence submitted by the examining attorney to be
probative that the goods listed in the application and
those in the cited registration are related. We find
this second du Pont factor to weigh in favor of
finding a likelihood of confusion.

3 The term “non-metal” includes the materials set out in the
application (such as “rubber flooring” and “rubber floor
tiles”) as well as in the cited registration (“counter
tops” made from “methacrylate resin”).
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Regarding the channels of trade, the cited
registration specifies that the goods are “for
commercial applications.” The goods in the
application, as identified, may also be sold for
commercial applications. Accordingly, we find this
third du Pont factor to favor finding a likelihood of
confusion as well.
Consumer Sophistication
Applicant argues that its consumers are
sophisticated and would recognize the difference
between the SIMPLICITY mark as used by registrant for
its identified goods and the SIMPLICITY mark as used
by applicant for the goods identified in the
application. As discussed above, the goods identified
by both applicant and registrant are sold by some of
the same manufacturers, through some of the same
channels of trade. Although the developers who might
designate, or the contractors who might purchase,
construction materials such as those at issue herein
must be considered sophisticated purchasers, even a
careful, sophisticated consumer of these goods is not
likely to note the difference of source when the
identical mark is used for both. Cunningham v. Laser
Golf Corp., 222 F.3d 943, 948-949 (Fed. Cir. 2000).
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Accordingly, the fourth du Pont factor is at most
neutral.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that the
marks are identical; the goods are related; and they
are likely to be sold through the same channels of
trade to the same classes of purchasers. Accordingly,
we find a likelihood of confusion between applicant’s
mark and the cited registration.
Decision: The refusal to register is affirmed.