Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE ALBERT TROSTEL & SONS COMPANY
Serial No. 74/186,695
November 3, 1993
Charles T. Weigell
Trademark Examining Attorney
Law Office 15
(Paul E. Fahrenkopf, Managing Attorney)
Before Sams, Rice, and Hohein
Administrative Trademark Judges
Opinion by Rice
Administrative Trademark Judge
Registration has been finally refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), on the ground that applicant's mark, as applied to leather sold in bulk, so resembles the mark PHOENIX, as shown below,
registered by another for all-purpose sports bags, luggage, attache cases, portfolio briefcases, and handbags, as to be likely to cause confusion, or to cause mistake, or to deceive. [FN2]
Applicant concedes that the cited mark is identical to its mark. Hence, the issue of likelihood of confusion presented in this case hinges upon a comparison of the goods recited in applicant's application and the cited registration.
In this regard, the Examining Attorney has made of record copies of advertisements appearing in the March/April 1992 and May/June 1992 issues of the magazine Showcase, to show that luggage, attache cases, portfolio briefcases, and handbags are items which are "typically and commonly fashioned from leather, wholly or in part." The Examining Attorney has also made of record copies of five third-party registrations, each of which includes, in its identification of goods, both leather sold in bulk and/or animal skins and hides, on the one hand, and luggage, attache cases, briefcases, and/or handbags, on the other. The copies of the magazine advertisements and third-party registrations are offered as evidence of the close relationship between the involved goods of applicant and registrant.
The Examining Attorney contends, inter alia, that bulk leather is commonly used to fashion luggage and bag items of the type listed in the cited registration; that purchasers of applicant's bulk leather are likely to include manufacturers of leather goods; that these purchasers could certainly have encountered registrant's luggage and case products in the course of their business; that wholesalers and retailers who deal with manufacturers are likely to be aware of the constituent materials contained in the goods they buy, because the constituent materials often dictate such factors as quality, price, etc.; that consumers, the ultimate purchasers of handbags, attache cases, and luggage, also base purchasing decisions on the quality of the product and its component materials; and that clearly, notoriety with regard to the quality of applicant's PHOENIX leather would not stop at the factory door but would penetrate to any goods manufactured therefrom and travel along with them.
*2 Applicant, in turn, asserts that on January 1, 1951, it was granted Registration No. 535,727 for the mark PHOENIX for leather; that the registration was inadvertently allowed to lapse on January 2, 1991; that in 1987, while the registration was still in force, Phoenix International Company, owner of the registration cited as a reference herein, filed the application which eventually matured into the cited registration; that registration to Phoenix International Company was refused under Section 2(d) of the Act on the basis of the then-subsisting registration owned by applicant herein, namely, Registration No. 535,727, as well as another registration owned by a third party; that counsel for Phoenix International Company argued that there was, in fact, no likelihood of confusion; and that the registration now cited as a reference against applicant's present application was thereupon issued.
As evidence of these facts, applicant has made of record a copy of its expired registration, as well as a copy of the file of the application which matured into the cited registration. The latter shows that when registration to Phoenix International Company was refused under Section 2(d) on the basis, inter alia, of Registration No. 535,727, counsel for Phoenix International Company responded with the following argument:
The Examiner has refused registration on the basis of likelihood of confusion with Registration Nos. 1,217,346 and 535,727. Applicant has considered the Examiner's refusal, and it is Applicant's position that there is no likelihood of confusion.
The simpler case is the latter mark, which is registered only for leather. In other words the goods covered by the registration are unfinished goods-- raw materials. These goods clearly are used to create finished leather products--perhaps luggage, perhaps shoes, or watchbands, or furniture. Thus, they are sold to manufacturers of leather products, not to retailers or consumers of the finished goods. Obviously the leather is marketed in an entirely different stream of commerce from that of Applicant's goods, particularly if the leather is used for goods other than luggage and sports bags. (And there is no evidence that the leather is used for these goods.) Thus there is no likelihood of confusion between the two trademarks and the cited mark should not bar Applicant's registration.
Applicant herein, like the owner of the cited registration, argues that there is no likelihood of confusion because the goods of applicant and registrant move through different channels of trade to different classes of purchasers. Specifically, applicant asserts that its leather is sold only to entities which use the leather to manufacture finished products, while registrant's goods are finished products which are sold either to retailers or directly to consumers of such goods. Applicant also maintains that the opinion of the registrant, as expressed in the application that matured into the cited registration, that there is no likelihood of confusion because of the differences in trade channels and classes of purchasers, is entitled to substantial weight.
*3 It is not necessary, in a proceeding such as this, that the goods and/or services of applicant and registrant be similar or competitive to support a holding of likelihood of confusion, it being sufficient for the purpose that the respective goods and/or services are related in some viable manner, and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarities of the marks used therewith, give rise to the mistaken belief that they emanate from or are in some way associated with the same source. See, for example: In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992); Chemical New York Corp. v. Conmar Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986); and In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986).
The five third-party registrations made of record by the Examining Attorney, as evidence of the asserted relatedness of the differing goods involved herein, indicate that four entities (two of the registrations have the same owner) have registered their marks both for goods of the type listed in applicant's application and for goods of the type recited in registrant's registration. Although third-party registrations are not evidence that the marks shown therein are in commercial use, or that the public is familiar with them, nevertheless third-party registrations which individually cover a number of different items and which are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See: In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988), and cases cited therein. However, as noted in the cited case, third-party registrations which have issued under Section 44(e) of the Act, 15 U.S.C. 1126(e), without any use in commerce basis, have very little persuasive value on this point. In the present case, four of the five third-party registrations made of record by the Examining Attorney issued under the provisions of Section 44(e) of the Act, based only upon ownership of a foreign registration. Accordingly, while we have considered the third-party registration evidence, its probative value is very limited.
As to the copies of advertisements from the magazine Showcase, they clearly show that luggage, attache cases, portfolio briefcases, and handbags are items which may be made of leather, in whole or in part. Indeed, this is a fact so commonly known that we could take judicial notice of it, even had the magazine advertisements not been made of record. What is missing from the record is convincing evidence that finished products of this nature commonly carry not only the trademark of their manufacturer but also the trademark of the producer of the leather from which they are made. That is, even assuming (as we must, in the absence of a contrary indication in registrant's identification of goods) that registrant's products encompass luggage, attache cases, portfolio briefcases, and handbags of all kinds, including those made of leather, there is no convincing evidence that the ultimate purchasers of registrant's goods are likely to encounter applicant's mark as well as registrant's. None of the advertisements made of record by the Examining Attorney carries a trademark which is clearly a trademark of the producer of the component leather, rather than a trademark of the manufacturer of the finished product. [FN3]
*4 It is true that we must presume, in the absence of any limitations in applicant's identification of goods as to channels of trade or classes of purchasers, that the purchasers of applicant's leather sold in bulk include all of the normal purchasers for such goods, including manufacturers of leather goods such as luggage, attache cases, portfolio briefcases, and handbags. Moreover, we do not disagree with the Examining Attorney's arguments to the effect that such manufacturers, as well as the wholesalers and retailers who buy their products, may encounter the marks of both applicant and registrant in the course of their business. However, these manufacturers, wholesalers, and retailers are knowledgeable about the products in the field and the sources thereof. Thus, the likelihood that they would be confused by the use of the identical marks of applicant and registrant on the differing goods here involved is much less than would be the case if both marks were encountered by the ultimate purchasers of registrant's goods. We reiterate that the record contains no convincing evidence that ultimate purchasers would be likely to encounter both marks.
Further, there are other factors which we must consider in determining the issue of likelihood of confusion presented herein. First, there is the fact that the cited registration was allowed over applicant's then-subsisting registration of the mark PHOENIX for leather. Second, and more significantly, there is the fact that not only applicant, but also registrant itself (through its counsel), has expressed the opinion that there is no likelihood of confusion. Considering the differences in the goods, trade channels, and classes of purchasers of applicant and registrant, we are not inclined "to second-guess the conclusions of those most familiar with the marketplace" on the issue of likelihood of confusion. See, in this regard: In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.Cir.1993).
For the foregoing reasons, we conclude that applicant's mark PHOENIX, when applied to its leather sold in bulk, does not so resemble registrant's mark PHOENIX, when applied to all-purpose sports bags, luggage, attache cases, portfolio briefcases, and handbags, as to be likely to cause confusion, or to cause mistake, or to deceive.
Decision: The refusal to register is reversed.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Application Serial No. 74/186,695, filed July 19, 1991, with a claimed date of first use and first use in interstate commerce of "at least as early as 1888."
FN2. Registration No. 1,520,926, issued January 17, 1989 from an application filed September 16, 1987, with a claimed date of first use and first use in commerce of May 17, 1986.
FN3. For example, one ad bears at its top the mark BUGATTI, with a picture thereunder of two handbags, and, at the bottom, the notation "Bugatti(R) Toscano TM SaddlehideTM full grain belting leather." There is no legend indicating that either the mark "Toscano" or the mark "Saddlehide" is owned by someone other than the owner of the mark "Bugatti", i.e., the mark which identifies the finished products, and the commercial impression is that all of the marks are owned by the same entity, namely, the source of the handbags.