Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE FIELDCREST CANNON, INC. BY CHANGE OF NAME FROM FIELDCREST MILLS,
Serial No. 569,647
September 28, 1987
Hearing: July 21, 1987
Charles E. Baxley for applicant
Stephen J. Keller
Trademark Examining Attorney
Law Office 8
(Sidney Moskowitz, Managing Attorney)
Before Rice, Krugman and Seeherman
Fieldcrest Cannon, Inc., by change of name from Fieldcrest Mills, Inc., has appealed the Examining Attorney's refusal to register WOOL CLASSICS for 'floor coverings--namely residential carpeting made of wool.' [FN1] The word 'wool' has been disclaimed apart from the mark as shown. Registration was refused on the ground that applicant's mark, as applied to its goods, so resembles the previously registered mark WOOL CLASSICS for 'floor coverings--namely, carpet made of wool for commercial/institutional use [FN2] as to be likely to cause confusion or mistake or to deceive. Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d).
In support of its application, applicant has submitted an agreement dated September 19, 1985 between applicant and Stratton Industries, Inc., the owner of the cited registration. This agreement was entered into to settle an opposition proceeding brought by applicant against registration of the mark which has been cited herein. The parties agreed that Stratton would amend the identification of goods in its application to 'floor coverings--namely commercial and contract carpeting made of wool,' and that applicant would withdraw its opposition and not interfere with Stratton's use of the mark on such goods. It was also agreed that applicant would file an application for WOOL CLASSICS for 'floor coverings--namely residential carpeting made of wool,' disclaiming any exclusive right to 'wool' apart from the mark, and Stratton agreed not to challenge the application or interfere with applicant's use of the mark on such goods.
The Examining Attorney takes the position that confusion is likely because the parties use the identical mark WOOL CLASSICS and because applicant's and registrant's goods are sold in the same channels of trade. He has made of record telephone directory listings/advertisements which indicate that many carpet dealers sell both residential and commercial carpeting. The Examining Attorney argues that such carpet dealers constitute a common class of purchasers for commercial and residential carpeting, and further that consumers may purchase 'commercial' carpeting for use in their homes, or that individuals who purchase carpeting for installation in an institution, such as a church, are nonexpert purchasers who would also purchase carpeting for their own homes.
Applicant, on the other hand, argues that the parties' goods are noncompetitive, and are sold to different groups of purchasers. It characterizes respondent's goods as commercial carpeting which is used in large institutions, and is different from the commercial carpeting sold by carpet dealers who also sell residential carpeting. Because of the nature of registrant's goods, applicant argues that they would be advertised and sold only to the trade, and that the buyers of such carpeting, which would be used in large buildings and institutions such as airports and shopping malls, are highly sophisticated and knowledgeable about carpeting and its sources.
*2 Applicant asserts that the 1982 agreement was entered into because the parties recognized the differences in the goods and their respective trade channels, and that as a result believed that no likelihood of confusion would result from the contemporaneous use of the mark for each party's goods.
It is obvious that the Examining Attorney and the applicant have different concepts of the nature of the registrant's goods, and that this has influenced their views on the issue of likelihood of confusion.
Determinations of likelihood of confusion must be based on the goods as they are identified in the application and the cited registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 1 USPQ 2d 1813 (Fed. Cir. 1987). While applicant does not dispute this, it argues that the cited registration does not cover all commercial carpeting, but is limited to commercial and contract carpeting, a specific category. At oral argument applicant pointed out that 'commercial and contract carpeting' was the amended identification on which the parties had agreed in settlement of the opposition, and that the registration had issued for 'carpets made of wool for commercial/institutional use' only because the Examining Attorney had required this change. In any event, applicant argues that any ambiguity in the identification should be construed against the party asserting it, in this case the Examining Attorney.
We agree with the applicant that no confusion is likely to occur from the registration of its mark. We base this determination not only on the ambiguity of the identification of the goods in the cited registration, but on the settlement agreement which led to the registration of that mark, which clarifies the identification and from which we can conclude that there are differences in the parties' goods and, because of these differences, differences in their channels of trade as well.
Further, it is clear from the cases involving consent agreements that a great deal of weight must be given to the parties' assessment as to whether or not confusion is likely to occur. See Bongrain International (American) Corp. v. Delice de France Inc., 1 USPQ 2d 1775 (Fed. Cir. 1987); In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969 (Fed. Cir. 1985); In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The Examining Attorney has criticized the agreement submitted by applicant because there is no provision regarding future efforts to ensure confusion will not occur, and because there is no statement of a belief that there is no likelihood of confusion or that the parties are not aware of any instances of actual confusion. While in certain circumstances the presence or absence of such provisions may affect the weight to be accorded a consent agreement, there is no per se rule as to the provisions which must be in a consent agreement. In re N.A.D. Inc., supra. In this case, we can assume from the language in the agreement that the parties did not believe confusion would result from their respective use of the marks as indicated in the agreement.
*3 The Examining Attorney also questions the weight to be accorded the consent agreement because applicant had earlier dates of use than had the registrant. However, the agreement was made prior to the filing of this application, and such an application was contemplated and consented to in the agreement. In such circumstances, and considering that the asserted dates of use of the parties are only months apart and that the agreement was entered into not long after use commenced, we are not persuaded that the fear of 'losing all its rights and accumulated good will in the mark' was the only reason Stratton consented to applicant's use and registration. The mere fact that the agreement also settled litigation between parties who would eventially be in the position of an applicant and an owner of a cited registration does not make the consent automatically suspect. See In re N.A.D. Inc., supra.
Finally, the mark itself, WOOL CLASSICS, must be considered a weak mark which is not entitled to a broad scope of protection. 'Wool' is obviously descriptive of the goods, and 'classics' is highly suggestive of the laudatory term 'classic.'
Given the totality of the circumstances--the somewhat ambiguous identification of goods, the agreement between the parties which clarifies the identification and from which we can extrapolate the parties' views on whether confusion is likely, and the weakness of the mark--we conclude that there is no likelihood of confusion between applicant's and registrant's marks, as used on the goods identified in the application and registration.
Decision: The refusal to register is reversed.
J. E. Rice
G. D. Krugman
E. J. Seeherman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 569,647, filed November 21, 1985, asserting a date of first use on July 14, 1983.
FN2. Registration No. 1,382,457, issued February 11, 1986, asserting a date of first use in November, 1983.