G.B.I. Tile and Stone, Inc.

THIS OPINION IS A

PRECEDENT OF THE TTAB

Mailed:

16 October 2009

AD

UNITED STATES PATENT AND TRADEMARK OFFICE

________

Trademark Trial and Appeal Board

________

In re G.B.I. Tile and Stone, Inc.

________

Serial No. 77369073

_______

Natu J. Patel of Patel Law Firm, P.C. for G.B.I. Tile and

Stone, Inc.

Patty Evanko, Trademark Examining Attorney, Law Office 117

(Loretta C. Beck, Managing Attorney).

_______

Before Seeherman, Drost, and Cataldo, Administrative

Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On January 10, 2008, G.B.I. Tile and Stone, Inc.

(applicant) filed an application (No. 77369073) to register

the mark CAPRI COLLECTION, in standard character form, on

the Principal Register for “stones, ceramic floor tiles,

porcelain floor tiles” in Class 19. The application is

based on applicant’s assertion of a bona fide intention to

use the mark in commerce and it contains a disclaimer of

the term “Collection.”

Ser No. 77369073

The examining attorney has refused to register

applicant’s mark under Section 2(d) of the Trademark Act

(15 U.S.C. § 1052(d)) because of a registration for the

mark CAPRI, in typed or standard character form, for

“roofing tiles and trim” in Class 19.1 When the refusal was

made final, a request for reconsideration and this appeal

followed.

In a case where the issue is likelihood of confusion,

we analyze the facts as they relate to the relevant factors

set out in 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,

1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d

1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In

considering the evidence of record on these factors, we

must keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper

Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

We begin our analysis by looking at “‘the similarity

or dissimilarity of the marks in their entireties as to

appearance, sound, connotation and commercial impression.’”

1

Registration No. 1701802 issued July 21, 1992 (renewed).

2

Ser No. 77369073

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.

Cir. 2005) (quoting du Pont, 177 USPQ at 567). In this

case, the marks are CAPRI and CAPRI COLLECTION. The marks

are presented in typed or standard character form so there

are no differences between the displays of the marks.

Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d

1842, 1847 (Fed. Cir. 2000) (“Registrations with typed

drawings are not limited to any particular rendition of the

mark and, in particular, are not limited to the mark as it

is used in commerce”); and In re Cox Enterprises Inc., 82

USPQ2d 1040, 1044 (TTAB 2007)(“We must also consider that

applicant’s mark, presented in typed or standard character

form, is not limited to any special form or style as

displayed on its goods”).

The only difference between the marks is applicant’s

addition of the disclaimed word “Collection” to

registrant’s mark. Disclaimed matter is often “less

significant in creating the mark’s commercial impression.”

In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB

2001). “Regarding descriptive terms, this court has noted

that the ‘descriptive component of a mark may be given

little weight in reaching a conclusion on the likelihood of

confusion.’” Cunningham, 55 USPQ2d at 1846, quoting, In re

3

Ser No. 77369073

National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.

Cir. 1985). However, while a disclaimed term … may be

given little weight … it may not be ignored.” M2 Software

Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d

1944, 1948-49 (Fed. Cir. 2006). The examining attorney has

pointed out that a “collection” is defined as “‘a group of

things’ and thus, immediately describes a feature of the

stones and tiles, namely, that they are part of a group of

related things.” First Office Action at 3.

Applicant argues that the “additional term

‘COLLECTION’ serves to visually distinguish the Applicant’s

Mark and the Cited Mark. Thus, consumers who view the mark

will see the entire phrase ‘CAPRI COLLECTION,’ and consider

the mark in its entirety.” Brief at 12. We must, of

course, consider applicant’s mark in its entirety, but we

cannot agree that this additional term distinguishes the

marks. The only term in registrant’s mark is the term

CAPRI and it is the only distinctive term in applicant’s

mark. This common identical term in both marks results in

marks that are very similar in sound, appearance, meaning,

and commercial impression. The presence of the additional

term “Collection” would not be likely to distinguish the

marks since it would merely indicate that applicant offers

a group of products under its mark. See In re

4

Ser No. 77369073

Jewelmasters, Inc., 221 USPQ 90 (TTAB 1983) (JEWELMASTERS

for retail jewelry store services held likely to be

confused with MASTER JEWELER’S COLLECTION for jewelry); and

Drexel Enterprises, Inc. v. Prescolite Mfg. Corp., 148 USPQ

92 (TTAB 1965) (HERITAGE COLLECTION, Collection disclaimed,

for lighting fixtures confusingly similar to HERITAGE for a

line of furniture). See also Hewlett-Packard Co. v.

Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004

(Fed. Cir. 2002) (“Given the dominance of the word

‘Packard’ in PACKARD TECHNOLOGIES and HP’s heavy

involvement in the technology field, this court agrees with

the Board that the similarities in the marks [PACKARD

TECHNOLOGIES and HEWLETT PACKARD] outweigh the differences.

Substantial evidence supports the Board’s finding that the

marks are similar in their entireties”).

The next du Pont factor that we will consider is

whether applicant’s stones, ceramic floor tiles, and

porcelain floor tiles are related to registrant’s roofing

tiles and trim. Based on the evidence that it submitted,

applicant argues:

Roofing tiles and trim are used for roofing purposes,

and are too fragile to be used for floors. On the

other hand, floor tiles are used for floors and are

durably designed for foot traffic, yet cannot be used

for roofing purposes. Since the goods differ in

nature and are not used for the same purpose, they are

not substitutes for each other. In fact, purchasers

5

Ser No. 77369073

understand that floor tiles and roofing tiles are

constructed for entirely different purposes, and

cannot be used interchangeably. Therefore, again, as

established by the Applicant based on the competent

evidence, the goods do not compete and consumers are

not likely to be confused between the two trademarks.

Applicant’s Brief at 8 (citations to record omitted).

First, we must consider the goods as they are

described in the application and registration. 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”). See also Paula Payne

Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ

76, 77 (CCPA 1973) (“Trademark cases involving the issue of

likelihood of confusion must be decided on the basis of the

respective descriptions of goods”). We also do not read

limitations into the identification of goods. Squirtco v.

Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.

1983)(“There is no specific limitation and nothing in the

inherent nature of Squirtco’s mark or goods that restricts

6

Ser No. 77369073

the usage of SQUIRT for balloons to promotion of soft

drinks. The Board, thus, improperly read limitations into

the registration”). Therefore, we must presume that

registrant’s roofing tiles could include all types of

roofing tiles regardless of their material composition.2

More importantly in this case, while applicant points

out that floor tiles and roofing tiles are different goods

and not interchangeable, goods may nonetheless be related

even if they are not identical, competitive, or combinable.

“[G]oods that are neither used together nor related to one

another in kind may still ‘be related in the mind of the

consuming public as to the origin of the goods. It is this

sense of relatedness that matters in the likelihood of

confusion analysis.’” Shen Mfg. Co. v. Ritz Hotel Ltd.,

393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004)

(citing Recot, Inc. v. Becton, 54 USPQ2d at 1898). See

also McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898

(TTAB 1989) (“In order to find that there is a likelihood

of confusion, it is not necessary that the goods or

services on or in connection with which the marks are used

be identical or even competitive. It is enough if there is

2

Applicant emphasizes that the “Cited Mark is specifically

restricted to ‘Roofing Tiles,’ not tiles in general” (Reply Brief

at 3), a point not in dispute.

7

Ser No. 77369073

a relationship between them such that persons encountering

them under their respective marks are likely to assume that

they originate at the same source or that there is some

association between their sources”).

Here, the examining attorney has submitted numerous

trademark registrations to show that applicant’s and

registrant’s goods are registered by a single entity under

a common mark.

No. 1938175 for wall, floor and roofing tiles made of

limestone or marble

No. 2391924 for wall, floor, ceiling, outdoor and

roofing tiles of clay, gypsum, ceramic, earthenware,

marble and stone

No. 2450417 for roofing tiles, mosaic roofing tiles

and non-metal floor tiles and mosaic floor tiles made

primarily of non-metal

No. 2843455 for tiles of clay or earthenware for wall,

floor or ceiling; roofing tiles

No. 3419475 for stone roofing tiles, wood tile floors,

wall tiles, earthenware tiles, clay roofing tiles,

ceramic enamel tiles, cement mortar roofing tiles,

glass roofing tiles

No. 3494848 “non-metal roofing tiles” and “tiles of

clay, gypsum, ceramic or earthenware for wall, floor

[and] ceiling”

No. 2940894 for non-metal floor tiles; ceramic wall

tiles; ceramic floor tiles and non-metal roofing tiles

No. 3395750 for “roofing tiles” and “floor tiles”

No. 3424718 for cement mortar roofing tiles; ceramic

enamel tiles; ceramic roofing tiles; ceramic tiles;

ceramic tiles for flooring and facing; ceramic tiles

8

Ser No. 77369073

for flooring and lining; ceramic tiles for tile floors

and coverings

No. 2551530 for roofing tiles, stucco tiles, vinyl

tiles, wall tiles, floor tiles, ceiling tiles; natural

and artificial stones

No. 3135425 for “ceramic tiles for tile floors and

coverings” and “stone roofing tiles”

No. 3291737 for tiles of clay for roofing; tiles of

clay, glass, gypsum, ceramic or earthenware for

floors; and non-metal flooring tiles

“Third-party registrations which cover a number of

differing goods and/or services, and which are based on use

in commerce, although not evidence that the marks shown

therein are in use on a commercial scale or that the public

is familiar with them, may nevertheless have some probative

value to the extent that they may serve to suggest that

such goods or services are of a type which may emanate from

a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d

1467, 1470 n.6 (TTAB 1988). See also In re Infinity

Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB

2001). These registrations support the examining

attorney’s argument that registrant’s roofing tiles and

applicant’s stones, ceramic floor tiles and porcelain floor

tiles are likely to originate from a common source. In re

Association of the United States Army, 85 USPQ2d 1264 (TTAB

2007) (“We find, first, that applicant’s ‘association

services’ are related to the Class 35 and Class 42 services

9

Ser No. 77369073

recited in the ‘479 and ‘969 registrations. The Trademark

Examining Attorney has made of record six use-based third-

party registrations…”).

The examining attorney also included internet evidence

that roofing tiles and floor tiles originate from a common

source (emphasis added).

MarbleMaster sells and fabricates natural stone floor

tiles and slab building materials made from the finest

granite, marble, travertine and slate. We specialize

in hospitality, high end commercial and residential

building projects serving customers across America.

Roof slate and slate tile is an excellent choice for

construction projects. Our product line includes

travertine moldings, roof slate tiles and custom

granite countertops direct to home builders and

remodelers. We offer a wide selection of Porcelain

tile flooring making it a high performance choice for

your home.

www.marblemaster.com

Our fine quality stone, expert craftsmanship and ever-

expanding production facilities have made Camara Slate

a national leader in all types of architectural,

flooring and roofing products.

www.camaraslate.com

Zion Tile Corporation

Floor Tiles

Roof Tiles

www.ziontile.com

Handmade, Wood Fired Terra Cotta Tile Floors…

Handmade Tellacotta [sic] Clay Tile Roofs – Wood

Fired…

Reclaimed Antique Clay Roof Tile…

Specialty Clay Floor Tiles and Decorative Floor Tile

Design

www.barronica.com

10

Ser No. 77369073

We must also address applicant’s evidence that,

according to applicant, shows that the goods are not

related. Applicant has submitted copies of numerous

registrations and argues that:

[T]here are third party roofing tile manufacturers who

sell roofing tiles and do not sell any floor tiles.

There are over thirty-five (35) USPTO trademark

registrations specifically for floor tiles and not

roofing tiles. Similarly, there are over thirty-six

(36) USPTO registrations specifically for roofing

tiles and not floor tiles. Furthermore, there are

over three hundred (300) live, use-based registrations

for floor tiles, but not roof tiles, in international

class 019, and over one hundred (100) live, use-based

registrations for roofing or roof tiles, but not floor

or flooring tiles, in international class 019.

Brief at 5 (citations to record omitted).

As we indicated above, third-party registrations can

be used by examining attorneys to suggest that the goods

are related because the same party has registered a common

mark for the goods at issue in a likelihood of confusion

case. Similarly, applicants may submit sets of third-party

registrations to suggest the opposite, i.e., that the

Office has registered the same mark to different parties

for the goods at issue. See In re Thor Tech, Inc., 90

USPQ2d 1634, 16 (TTAB 2009) (“On the other hand, applicant

has submitted copies of 13 sets of registrations for the

same or similar marks for different types of trailers owned

by different entities arguing, in essence, that the third-

11

Ser No. 77369073

party registrations serve to suggest that the listed goods

are of a type which may emanate from different sources”).

See also Helene Curtis Industries v. Suave Shoe Corp., 13

USPQ2d 1618, 1624 (TTAB 1989) (“In connection with its

related goods arguments, plaintiff has made of record

numerous third-party registrations and exhibits to show

that it is common in the trade for the same mark to appear

both on personal care products and wearing apparel

emanating from the same source. Defendant, on the other

hand, has introduced registrations and exhibits to show

registration and use of the same or similar marks on these

same types of products, but emanating from different

sources”).

Applicant’s evidence does not consist of third-party

registrations issued for the same or similar marks to

different parties for the goods of applicant and

registrant. It simply consists of registrations that list

one of applicant’s goods but do not include any goods that

are in the cited registration, or registrations that list

one of the goods in the cited registration but do not

include any of applicant’s identified goods. We give this

evidence much less weight. There is no requirement for

goods to be found related that all or even a majority of

the sources of one product must also be sources of the

12

Ser No. 77369073

other product. Therefore, evidence showing only that the

source of one product may not be the source of another

product does not aid applicant in its attempt to rebut the

evidence of the examining attorney. Second, the mere fact

that some goods are not included in a registration’s

identification of goods does not establish that the owner

of the mark has not registered the mark for those goods in

another registration since, for example, the registrant may

have begun using the mark on those goods at a later date.

Third, the law recognizes that trademark owners have

different marks that are used as a house mark, a mark for a

line of products, and a mark for specific items. It is,

therefore, to be expected that many registrations for marks

would not cover all of a party’s goods and services.

Indeed, many of the registrations that applicant submitted

contain only a single item. See, e.g., Registration Nos.

27980687, 2789848, 2799331, 2805904, 2870717, 2912907,

2743604, 2788725, 2841899, 2955456, 2932544, 2988806, and

3042379. The fact that applicant was able to find and

submit for the record these registrations of marks for

individual items does not rebut the examining attorney’s

evidence showing the existence of numerous third-party

registrations using the same marks on a variety of items,

including applicant’s and registrant’s goods. Therefore,

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Ser No. 77369073

contrary to applicant’s argument (Reply Brief at 7), while

this evidence provides some indication that there are many

trademarks that are not registered for both products, it

does not rebut the examining attorney’s evidence that the

goods are related.

We have also considered applicant’s evidence that

registrant3, and two other entities, “only sell roofing

tiles and do not sell any floor tiles” (Gonzalez dec. at 2-

3) and that applicant does not sell roofing tiles. Again,

as set out earlier, goods can be related even if they are

not identical, interchangeable, or combinable. There is no

requirement that either applicant or registrant also be the

source of the other’s goods before the goods can be held to

be related. See Recot, 54 USPQ2d at 1898 (citations to

record omitted):

The Board found that the FIDO LAY dog treats were not

identical or closely related to the FRITO-LAY human

snacks, and further found that none of Recot’s

collateral or licensed goods were related to dog

treats. The Board declined to consider the lay

testimony of both parties’ witnesses that several

companies produce and sell both pet and human foods,

because it deemed the evidence of no persuasive value.

The Board erred when it refused to consider the lay

evidence that several large companies produce and sell

both pet and human food in deciding whether a consumer

would reasonably believe that FIDO LAY dog treats

3

Applicant argues that “[y]et to date, the Registrant has not

amended the Cited Mark to include floor tiles.” Reply Brief at

6. However, we note that a registrant would not be permitted to

expand the scope of the identification of goods.

14

Ser No. 77369073

originated from the same source as FRITO-LAY human

snacks.

Indeed, goods can be related even if there is no evidence

that any entity, much less the applicant or registrant, is

the source of both applicant’s and registrant’s goods. In

re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,

1204 (Fed. Cir. 2003) (“Although the PTO apparently found

no evidence of any manufacturer who both brews malt liquor

and distills tequila, Majestic has not shown that the PTO’s

lack of evidence in that regard is relevant. Unless

consumers are aware of the fact, if it is one, that no

brewer also manufactures distilled spirits, that fact is

not dispositive”). The evidence here clearly demonstrates

that there are entities that are the source of roofing

tiles and floor tiles.

The evidence of record convinces us that the goods,

while different and not interchangeable, are nonetheless

related.

Regarding prospective purchasers, applicant’s

declarant maintains that the “average purchaser of roofing

tile is a professional contractor or other construction

professional,” (Gonzalez dec. at 1), and that the customers

of applicant’s and registrant’s goods are different. See

Gabrielson dec. at 2 (“Both products are marketed towards

15

Ser No. 77369073

completely different customer bases, with Capri Roofing

Tiles being marketed to professionals in the roofing tile

industry, and Capri Collection Floor Tiles being marketed

to professionals in the floor tile industry”). While this

may be true with respect to these two specific entities,

there is evidence that the purchasers of roofing tiles and

flooring tiles overlap. Both types of products would be

marketed to architects, general contractors, building

owners, and even individuals who are constructing or

remodeling a home. See e.g., www.camaraslate.com (“We hope

our site is helpful to the architect specifying our

products [roofing slate and floor tiles], the supplier or

contractor using our products, or most importantly the

homeowner choosing our products”); and www.marblemaster.com

(“Our product line includes travertine moldings, roof slate

tiles… We offer a wide selection of Porcelain tile flooring

making it a high performance choice for your home… No

middlemen, no distributors, no marketing channel markups …

just direct to you at tremendous savings”). Therefore, the

purchasers of these goods would at least overlap. While

the purchasers of these products are likely to be

professionals or at least somewhat careful purchasers, this

would not mean there is no likelihood of confusion when the

very similar marks CAPRI and CAPRI COLLECTION are used on

16

Ser No. 77369073

products that have been shown to originate from a common

source. In re Hester Industries, Inc., 231 USPQ 881, 883

(TTAB 1986) (“While we do not doubt that these

institutional purchasing agents are for the most part

sophisticated buyers, even sophisticated purchasers are not

immune from confusion as to source where, as here,

substantially identical marks are applied to related

products”). See also In re Total Quality Group Inc., 51

USPQ2d 1474, 1477 (TTAB 1999) (“[E]ven careful purchasers

are not immune from source confusion”).

In addition, the examining attorney has also submitted

evidence that the channels of trade for roofing tiles and

floor tiles at least overlap. See www.builddirect.com

(“BuildDirect is able to offer high-quality building

materials at unbeatable pricing. For flooring, decking,

countertops, roofing, siding and more”); www.ziontile.com

(“Zion Tile is a prestigious company representing

manufacturers of various clay and ceramic roof tiles, floor

tiles, pavers, bricks, and pool copings… For additional

information and or samples, simply tour our site and make

your selections”).

Applicant also points out that “the declarations of

two experts … have attested under oath that there is no

likelihood of consumer confusion between the Cited Mark and

17

Ser No. 77369073

the Applicant’s mark.” Brief at 6. These experts are

applicant’s senior vice-president and its director of

operations. Request for Reconsideration, Exhibits A and B.

We are not convinced that these declarations, when viewed

against the entire record, show that there is no likelihood

of confusion. As the Court of Customs and Patent Appeals

held:

The opinion of an interested party respecting the

ultimate conclusion involved in a proceeding would

normally appear of no moment in that proceeding.

Moreover, it is known at the outset. One may assume,

for example, that an opposer believes confusion likely

and that a defending applicant does not… Under no

circumstances, may a party’s opinion, earlier or

current, relieve the decision maker of the burden of

reaching his own ultimate conclusion on the entire

record.

Interstate Brands Corp. v. Celestial Seasonings, Inc., 576

F.2d 926, 198 USPQ 151, 154 (CCPA 1978).

One other principle we must consider is that, to the

extent that we have any doubt, we must resolve this doubt

in favor of the registrant. In re Chatam International

Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1948 (Fed. Cir. 2004)

and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6

USPQ2d 1025, 1026 (Fed. Cir. 1988). Accordingly, we find

that the marks are very similar and that the goods are

related. Furthermore, the purchasers and channels of trade

18

Ser No. 77369073

are overlapping. Therefore, we hold that confusion is

likely here.

Decision: The examining attorney’s refusal to

register applicant’s CAPRI COLLECTION mark under Section

2(d) of the Trademark Act is affirmed.

19