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Precedential Board Decision Refusing To Consider Evidence Of Marketplace Usage

Hughes Furniture Industries, Inc. (“Applicant”) was seeking to register a stylized mark H HUGHES FURNITURE -MOTION EAZE RECLINERS for furniture. The application was refused and the Applicant appealed to the Trademark Trial and Appeal Board (“Board”). The application was refused under Section 2(d) of the Trademark Act on the grounds that it would cause a likelihood of confusion with the registered mark BRADLEY HUGHES (in standard characters) for residential and commercial furniture. See In re Hughes Furniture Industries, Inc., Serial No. 85627379 (March 27, 2015) [precedential]. The two key considerations in a likelihood of confusion analysis are the similarities between the marks and the similarities between the goods or services.

Applicant argues that the parties offer distinct goods targeted to different segments of the consuming public. Applicant offers screenshots of the parties’ websites to demonstrate that the Registrant serves a niche market of the furniture industry offering luxury furnishings while his company offers massed produced furniture to a broad segment of the public. The Board found this evidence to be irrelevant because it determined that the identifications (furniture and residential and commercial furniture) were legally identical. The Board refused to limit the scope of use by considering extrinsic evidence. Once it determines that the goods are identical, it is presumed that the trade channels are the same and the goods will be marketed to the same potential consumers. Regarding conditions of purchase, due to the price points of most furniture, it is logical to assume consumers are not impulse shopping. However, the record did not contain sufficient evidence to prove a high degree of care would be exercised, weighing against a finding of confusion. Given the absence of restrictions in the identifications, the Board deemed this factor neutral.

Next the Board examined the similarities of the marks. The analysis starts with the premise that when the goods are identical typically less similarity is needed between the marks to create a likelihood of confusion. Although, there are some differences in the marks, the differences impact the minor elements of the mark and not the dominant element of the marks. The Board considered the size of the lettering and whether or not the terms were disclaimed to determine which portion of the mark was dominant. It concluded that the surname Hughes played a dominant role in the mark due to the size of the lettering in relationship to the sized lettering of the other terms in the mark. In addition, the Board stated that consumers are more likely to call for the goods with a surname. Since both marks share a common surname, consumers are likely to believe the goods emanate from a common source. The Board cited numerous cases to support this proposition. In the end, the Board affirmed the refusal to register the mark HUGHES FURNITURE and gave no weight to the evidence that the parties targeted different market segments.

This case is significant for its timing. It was issued two days after the U.S. Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc. To review the prior proceedings leading up to the Supreme Court decision, see our blog post entitled Should Federal Courts Be Bound By TTAB Rulings. B&B Hardware determined that when the Board does not consider marketplace usage of trademarks, the Board’s decision would not be given preclusive effect in subsequent district court proceedings.

The Applicant made a common error in the presentation of his evidence before the Board. The Applicant submitted evidence of marketplace usage even though it wasn’t relevant to the parties’ identifications. When preparing a trademark application, one of the most critical elements is the identification of goods or services. If an applicant has completed its due diligence by conducting a full U.S. trademark clearance search, then potentially conflicting marks should have been revealed in the search report along with their identifications of goods and services.

If there is risk that an Examining attorney will refuse an application under 2(d) of the Trademark Act, the Applicant should restrict its identification to particular styles, price points, types of consumers, specific trade or distribution channels so that the Applicant can introduce relevant market place usage should there be an office action. However, keep in mind that if the potentially conflicting mark contains a broad identification, depending on how similar the marks are there may not be a way to avoid a 2(d) refusal. If you need assistance tailoring your identification of goods in your trademark application or have other trademark related questions, please contact our office and consult with one of our trademark attorneys.