New York Trademark Attorney Blog
It appears that more often than not the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) issues favorable decisions for the big corporations. However, this one came down against Williams-Sonoma Inc. (the “Applicant”) last month. See In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017), where the Applicant filed an application for the mark MANHATTAN in standard characters for upholstered furniture in international class 20. The Examining Attorney refused the application and the Board affirmed the refusal based on the registration for MANHATTAN CABINETRY in standard characters for custom designed and crafted furniture in class 20 on grounds of likelihood of confusion. To overcome these types of refusals, see our webpage entitled, Overcoming Likelihood Of Confusion Refusals.
One of the Applicant’s arguments as to why the mark MANHATTAN for upholstered furniture should be allowed to register was that the Registrant’s mark MANHATTAN CABINETRY for custom designed furniture was weak. The Applicant argued that since Manhattan is a geographic term, it is only entitled to a narrow scope of protection. This argument backfired on Williams-Sonoma because the Registrant’s mark registered under the provision of Section 2(f) of the Lanham Act. This means that the mark was held to have acquired distinctiveness. It is important to note that marks having acquired distinctiveness under §2(f) of the Lanham Act (also known as the Trademark Act of 1946) are entitled to the same trademark protection as inherently distinctive marks. The board cited E.I. du Pont de Nemours & Co. v. Societe Dupont, 161 USPQ 489, 491 (TTAB 1969) for this proposition. The Board also pointed out that there was no evidence that the term Manhattan was commonly used in the relevant field. Therefore, there was no basis for the Applicant to argue that the mark was entitled to a narrow scope of protection.
The Board compared both marks and held that based on the standard that a consumer does not retain a specific impression but instead a general impression, a consumer will find the marks substantially similar. The Board determined that if the two marks are used on overlapping goods, then there will be confusion, mistake or deception. In the case at bar, the term Manhattan is the dominant element of both marks. When comparing the goods, the Board held that both identifications (upholstered furniture and custom designed and crafted furniture) are broadly worded so that each respective mark encompasses custom designed and upholstered furniture. Therefore, the Board held that the goods were overlapping in scope. When goods of the parties overlap, then the degree of similarity required between the marks is not as great as it would be if the goods were diverse.
In addition, the Examining Attorney placed evidence into the record that third parties sell both custom designed and finished upholstered furniture under the same brand. Moreover, Applicant itself sells not only finished upholstered furniture, but also “special order” furniture. The next conclusion drawn by the Board is that because the goods overlap and there are no restrictions in the identifications of either party, the goods are presumed to travel in overlapping trade and distribution channels and will be marketed to the same potential consumers. The Examining Attorney’s evidence showing the same entities offering both custom designed furniture and upholstered furniture on their websites and on the same webpages was persuasive evidence that the goods maintain a commercial relationship.
Once the Board finds that there are substantial similarities of the marks, relatedness of the goods, and overlap of trade channels (the three most significant du Pont factors), there has to be strong evidence in connection with at least one of the other factors to avoid finding likelihood of confusion. The next factor the Board examined was sophistication of the consumers and conditions at the time of purchase. This factor does seem to favor no likelihood of confusion, since furniture is expensive and typically not an impulse purchase. Next Applicant argues that there has been 17 years of co-existence and no actual confusion. However, a party simply asserting there is no confusion in the market place is of little evidentiary value. See In re Integrated Embedded, USPQ2d 1504 (TTAB 2016). Williams-Sonoma states that it sells its goods in its Pottery Barn stores nationwide, but does not address the extent of use of its MANHATTAN branded goods. Therefore, the “actual confusion” factor is neutral.
In the end, the Board concluded that the probative factors in evidence bearing on likelihood of confusion weighed in favor of finding confusion between the mark MANHATTAN CABINETRY for custom designed and crafted furniture and MANHATTAN for upholstered furniture. The only factor favoring finding “no likelihood of confusion” was the care exercised by the customer at the time of purchase. However, in the past, the Board has held that “even careful purchasers are not immune from source confusion”. If you have questions regarding likelihood of confusion or trademark infringement, please feel free to contact us for a courtesy consultation.