CAPRI COLLECTIONS for tiles hits brick wall

United States of America

In In re GBI Tile and Stone Inc (Case 77369073, October 16 2009), in a precedential decision, the Trademark Trial and Appeal Board (TTAB) has held that alleged differences in the goods covered by conflicting marks can be refuted with evidence that other parties hold registrations for marks that cover the 'different' goods in a single registration.

GBI Tile and Stone Inc applied to register the mark CAPRI COLLECTIONS for “stones, ceramic floor tiles, porcelain floor tiles” in Class 19 of the Nice Classification. The examining attorney refused the application on the grounds that there was a likelihood of confusion with a third-party registration for the trademark CAPRI for “roofing tiles and trim” in Class 19.

The TTAB confirmed the examining attorney’s refusal, finding that:

  • the marks were confusingly similar, as the only distinctive term in GBI’s mark was 'capri';
  • the goods were related; and
  • the purchasers and channels of trade overlapped because the goods were marketed to the same type of purchasers (ie, architects and general contractors), albeit sophisticated.

GBI attempted to argue that the goods of each party were different and not interchangeable, claiming that the nature and purpose of roofing tiles are different from floor tiles, the former being fragile and not designed to withstand foot traffic. The TTAB disagreed, finding that based on the goods recited in the application, the cited registrant’s roofing tiles included all types of roofing tiles, “regardless of their material composition”.

Second, the TTAB found that the cited registrant’s and GBI’s goods were related and likely to be perceived as originating from the same source, even though they were not “identical, competitive or combinable”. The examining attorney had submitted a number of use-based registrations showing that both GBI’s goods and the cited registrant’s goods were included in the same registration of third parties. GBI submitted numerous third-party registrations attempting to argue the opposite. However, relying on In re Mucky Duck Mustard Co, the TTAB noted that third-party registrations covering a number of differing goods or services have “some probative value to the extent that they may serve to suggest that such goods or services are of a type that may emanate from a single source”. Therefore, the TTAB gave lesser weight to GBI’s rebuttal evidence of third-party registrations for the same marks covering one of the two goods, but not both.

Dennis S Prahl, Ladas & Parry LLP, New York, with the assistance of Deepica Capoor Warikoo

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