Rohl, LLC

Trademark Trial and Appeal Board

Jan 7, 2013

No. 77909828 (T.T.A.B. Jan. 7, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: January 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rohl, LLC
________

Serial No. 77909828
_______

Matthew A. Newboles of Stetina Brunda Garred & Brucker for
Rohl, LLC.

Douglas M. Lee, Trademark Examining Attorney, Law Office
111 (Robert Lorenzo, Managing Attorney).
_______

Before Cataldo, Greenbaum and Gorowitz,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Rohl, LLC, filed an application to register
on the Principal Register the mark VERONA SERIES in
standard characters
for
Plumbing and shower fixtures, namely, faucets,
shower heads, rests for shower heads, hand
showers, thermostatic control valves for showers,
and shower mixers

Ser. No. 77909828
2
in International Class 11.1 Applicant disclaimed SERIES
apart from the mark as shown.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with applicant’s
goods, so resembles the mark VERONA (in typed or standard
characters), previously registered on the Principal
Register, for
plumbing products namely faucets and replacement
parts therefor

in International Class 11,2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d

1 Application Serial No. 77909828 was filed January 12, 2010,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.

2 Registration No. 2958014 issued May 31, 2005. Section 8
affidavit accepted; Section 15 affidavit acknowledged.

Ser. No. 77909828
3
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 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 and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Goods
Our likelihood of confusion determination is based
upon the goods as they are identified in the application
and registration at issue. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981); and In re William Hodges & Co., Inc., 190 USPQ
47, 48 (TTAB 1976). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
Ser. No. 77909828
4
We observe in this case that applicant’s
identification of goods includes “faucets” among its
“plumbing and shower fixtures.” These goods are identical
to registrant’s goods, identified in part as “plumbing
products namely faucets.” Because these goods are
identical, we need not determine whether the remainder of
applicant’s goods are similar to those of registrant. If
there is likelihood of confusion with respect to any of
applicant’s identified goods, the refusal of registration
must be affirmed. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA
1981).
Nonetheless, the examining attorney made of record
approximately 10 use-based, third-party registrations
reciting, inter alia, the goods identified in the cited
registration and various goods identified in the involved
application. These registrations suggest, in general, that
applicant’s other recited “plumbing and shower fixtures”
are related to registrant’s “plumbing products namely
faucets and replacement parts therefor.” See In re
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001). Although these registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nevertheless have
Ser. No. 77909828
5
probative value to the extent that they serve to suggest
that the services listed therein are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
The examining attorney further made of record evidence
from commercial Internet websites showing both applicant’s
and registrant’s goods offered under the same marks. These
websites include pricepfister.com, showerbuddy.com,
calfaucets.com, danze.com and deltafaucets.com. Such
evidence serves to demonstrate that third parties are using
a single mark to identify applicant’s types of goods as
well as those of registrant.
Based upon the evidence made of record by the
examining attorney and the nature of the goods themselves,
we find that applicant’s goods are identical in part and
otherwise closely related to those provided by registrant.
As a result, this du Pont factor favors a finding of
likelihood of confusion.
Channels of Trade and Classes of Consumers

When identical goods or services, in this case,
“faucets,” are recited in an application and registration
with no limitations as to their channels of trade or
Ser. No. 77909828
6
classes of consumers, such channels of trade and classes of
consumers must be considered to be legally identical. See
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”). We find,
therefore, that registrant’s and applicant’s legally
identical goods would be marketed in the same trade
channels and to the same classes of purchasers.
These du Pont factors accordingly weighs in favor of a
finding of likelihood of confusion.
The Marks
We now consider the similarities and dissimilarities
between the marks. In coming to our determination, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result.
Ser. No. 77909828
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In our consideration of the marks at issue, we note
initially that, “[w]hen marks would appear on virtually
identical ... [goods or] services, the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines.” See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also
ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In comparing the two marks, we note that the
applicant’s mark incorporates the entirety of registrant’s
mark. Likelihood of confusion is often found where the
entirety of one mark is incorporated within another. In re
Denisi, 225 USPQ 624, 626 (TTAB 1985)(PERRY’S PIZZA for
restaurant services specializing in pizza and PERRY’S for
restaurant and bar services); Johnson Publishing Co. v.
International Development Ltd., 221 USPQ 155, 156 (TTAB
1982)(EBONY for cosmetics and EBONY DRUM for hairdressing
and conditioner); and In re South Bend Toy Manufacturing
Company, Inc., 218 USPQ 479, 480 (TTAB 1983)(LIL’ LADY
BUGGY for toy doll carriages and LITTLE LADY for doll
clothing).
Applicant argues that its mark is distinguishable from
that of registrant due to the presence of the term SERIES
Ser. No. 77909828
8
in its mark, which creates differences in appearance, sound
and connotation. However, we find that the presence of the
term SERIES in applicant’s mark is insufficient to create a
commercial impression that is separate from that created by
applicant’s mark for the following reasons.
First, the term SERIES is disclaimed in applicant’s
mark, and appears to describe a feature of the recited
goods, namely, that they include a related group – or
series – of plumbing and shower fixtures. Our primary
reviewing court instructs us that “[t]here is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, (Fed.
Cir. 1985). For instance, “that a particular feature is
descriptive or generic with respect to the involved goods
or services is one commonly accepted rationale for giving
less weight to a portion of a mark….” Id at 244 USPQ 751.
Thus, we find SERIES to be a less significant feature in
determining the commercial impression created by
applicant’s mark than the term VERONA.
Second, we note that VERONA, which is the entirety of
registrant’s mark, and the only distinctive word in
Ser. No. 77909828
9
applicant’s VERONA SERIES mark, is also the first word
therein. Presto Products, Inc. v. Nice-Pak Products Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692
(“The presence of this strong distinctive term as the first
word in both parties’ marks renders the marks similar,
especially in light of the largely laudatory (and hence
non-source identifying) significance of ROYALE.”). In
addition, consumers are often known to use shortened forms
of names, and it is highly likely that applicant and its
goods are referred to as “VERONA.”
In sum, we conclude that applicant’s mark and the
registered are substantially similar in terms of sound,
appearance, connotation and overall commercial impression.
Accordingly, this du Pont factor weighs in favor of finding
a likelihood of confusion.
Sophistication of Purchasers
Finally, applicant urges us to consider consumer
sophistication. There is nothing in the record that would
give us insight as to the possible sophistication of
consumers of the relevant goods. To the extent we accept
Ser. No. 77909828
10
that such fixtures are not purchased routinely and may last
for many years, we expect that with highly similar marks
used on goods that are identical in part and otherwise
related, even a careful, sophisticated consumer of these
goods is not likely to note the differences in the marks.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-949 (Fed.
Cir. 2000). Furthermore, given the descriptive nature of
the term SERIES, which is the sole difference between the
marks, even careful purchasers who do notice the difference
in the marks will not ascribe it to differences in the
source of the goods, but will see the marks as variations
of each other, pointing to a single source. Accordingly,
we deem this du Pont factor to be neutral.
Conclusion
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under the applied-
for mark, that the goods originated with or are somehow
associated with or sponsored by the same entity.
Decision: The refusal of registration under Trademark
Act Section 2(d) is affirmed.