Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE JAMES L. SHIPP, III
Serial No. 538,236
August 19, 1987
Jones and Askew for applicant
Steven R. Foster
Trademark Examining Attorney
Law Office 4
(Thomas Lamone, Managing Attorney)
Before Sams, Rice and Krugman
Opinion by Krugman
James L. Shipp III d.b.a. Puritan Cleaners has applied to register PURITAN and design as depicted below
Registration has been refused under Section 2(d) of the Trademark Act in view of two prior registrations issued to two different entities for the mark PURITAN for commercial dry cleaning machine filters and parts therefor, [FN2] and PURITAN for a variety of cleaning preparations including, inter alia, dry cleaning preparations. [FN3] Specifically, the Examining Attorney contends that the literal portion of applicant's mark is identical to the registered marks and that the design element in applicant's mark comprises the design of a Puritan woman, thus reinforcing the Puritan impression engendered by the word portion. With respect to the goods, the Examining Attorney argues that the cited registrations encompass goods which are utilized in the rendering of dry cleaning services; that purchasers of the pertinent goods encompassed in the two cited registrations would be owners and operators of dry cleaning establishments, a narrow class of customers in direct competition with applicant, and that these competitors, upon seeing applicant's mark used for a dry cleaning service and upon seeing a virtually identical mark used in connection with dry cleaning products used in providing dry cleaning services, would mistakenly believe that the goods and services emanated from a single source or were somehow associated with the same entity.
Applicant has appealed, asserting that its mark, taken in its entirety, is visually distinguishable from the cited marks and, therefore, creates a commercial impression distinct from the impression created by the two cited marks. As to the respective goods and services, applicant argues that its services are rendered to consumers in various professions who are only interested in the cleaning services offered and not in the type of equipment in the cleaning establishment; that, typically, the cleaning is done in a different facility from the one the one where the customer drops off his clothes and there would be no machinery in the dry cleaning store for the customer to observe and that even in the dry cleaning stores that do the cleaning on the premises, the machinery is typically partitioned off from the front of the store and is not in view of the customer. Applicant contrasts its services and customers for its services with the goods in the cited registered marks and the customers for these goods. Applicant notes that the purchasers of the goods in the cited registrations are owners and operators of dry cleaning establishments and not the general public and that there can be no likelihood of confusion since the goods and services move in completely different marketing channels to different classes of customers. Applicant further argues that the cited marks are weak marks as evidenced by the fact that both cited marks cover goods related to the commercial equipment aspect of dry cleaning; that the cited marks are owned by two different entities and that it is more likely that confusion would arise from the contemporaneous use of the cited marks than from the contemporaneous use of applicant's mark with either of the cited marks. Applicant further points to a search of third party 'PURITAN' marks which, applicant asserts, points up the weakness of the term.
*2 With respect to the marks, while applicant's mark contains a design element in addition to the word PURITAN, we are in agreement with the Examining Attorney that applicant's mark is dominated by the literal component PURITAN. That term is how customers will refer to the services and the design of the woman in a Puritan costume serves to reinforce the commercial impression engendered by the word portion of the mark. We are satisfied that applicant's mark is sufficiently similar to the marks in both of the cited registrations such that the contemporaneous use of the marks in connection with the same or related goods and services would be likely to cause confusion for purposes of Section 2(d) of the Act. Moreover, we reject applicant's 'weak mark' argument as being unsupported by the record. The existence of the two cited registrations owned by two different entities is insufficient to demonstrate that PURITAN is a weak mark in the dry cleaning field. Moreover, as the Examining Attorney correctly points out, the list of third party registrations submitted by applicant is insufficient to make said registrations of record. See: In re Duofold, Inc., 184 USPQ 638 (TTAB 1974).
Turning to the goods, we believe that the applicant's services and the goods in the cited registrations, while related in the sense that they are all in the laundry and dry cleaning industry, are not so related that they would come to the attention of the same kinds of purchasers and we believe that confusion as to source or sponsorship, while possible, is not likely. Applicant's services are offered to the general public while the pertinent goods of the cited registrations are for use by owners or operators of laundries or dry cleaning establishments. These goods are not ordinarily sold to the general public and we agree with applicant that it is unlikely that applicant's customers would encounter any of the goods encompassed by the cited registrations sold under the PURITAN mark. See: In re Fesco, Inc., 219 USPQ 437 (TTAB 1983). The Examining Attorney does not appear to dispute this but, nevertheless, maintains that registration must be refused because applicant's competitors in the dry cleaning field would, on the one hand, be familiar with applicant's services and would, on the other hand, be likely to encounter the goods of the cited registrations and mistakenly believe, because of the similarity of the marks, that the services and goods were somehow related as to source. However, while we agree that this prospective class of purchaser is the one class of purchaser having the potential to encounter the respective goods and services and having the potential to be confused, this class of purchaser comprises those owners and operators of dry cleaning establishments, a class of purchaser relatively sophisticated and discriminating in matters pertaining to the dry cleaning industry. We are of the opinion that these dry cleaning professionals are likely to be aware of practices in the dry cleaning industry, are likely to be aware of the source of commercial dry cleaning equipment and are likely to know that a dry cleaning establishment offering laundry and dry cleaning services is not likely to be the source of commercial dry cleaning equipment, even where such services and goods are offered under virtually identical marks. If it is customary or expected that dry cleaning establishments offer such dry cleaning equipment to the industry, it would be the Examining Attorney's burden to show these trade practices and in the absence of evidence on this matter, we conclude that the goods and services are not so related that confusion would be likely. The goods and services would not likely be encountered by applicant's customers and to the extent that they are encountered by customers in the dry cleaning industry, this narrow group is believed to be sufficiently sophisticated such that confusion is unlikely.
*3 Decision: The refusal of registration is reversed and the applicant's mark shall be published for opposition.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 538,236 filed May 17, 1985.
FN3. Registration No. 1,049,860 issued October 5, 1976. Section 8 affidavit accepted. Section 15 affidavit received.