ESTTA Tracking number: ESTTA943344...

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ESTTA Tracking number: ESTTA943344

Filing date: 12/21/2018

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Proceeding 87450994

Applicant Pacific Crest Industries, Inc.

Applied for Mark VERO

CorrespondenceAddress

ERIK M PELTONERIK M PELTON & ASSOCIATES PLLCPO BOX 100637ARLINGTON, VA 22210UNITED [email protected]

Submission Appeal Brief

Attachments 2018-12-21 VERO Appeal Brief - FINAL.pdf(98223 bytes )

Filer's Name Erik M. Pelton

Filer's email [email protected]

Signature /ErikMPelton/

Date 12/21/2018

http://estta.uspto.gov

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD

Serial No. 87/450,994

Applicant: Pacific Crest Industries, Inc.

Mark: VERO

Examining Atty: Robert N. Guliano

Law Office 105

APPLICANT’S EX PARTE APPEAL BRIEF

Applicant’s Brief | Ex Parte Appeal: SN 87/450,994 ii

TABLE OF CONTENTS

TABLE OF CONTENTS ................................................................................................................ ii

INDEX OF CITATIONS ............................................................................................................... iii

PROSECUTION HISTORY ........................................................................................................... 4

SUMMARY OF EVIDENCE ......................................................................................................... 5

ARGUMENT .................................................................................................................................. 9

I. APPLICANT’S MARK IS DISSIMILAR IN APPEARANCE, SOUND,

CONNOTATION, AND COMMERCIAL IMPRESSION ............................................. 9

A. WHEN COMPARING APPLICANT’S MARK TO THE TRU CABINETRY

MARK, THE DOCTRINE OF FOREIGN EQUIVALENTS IS NOT

APPLICABLE ............................................................................................................ 12

B. THE CITED TRU CABINETRY MARK COEXISTS WITH OTHER

“TRU/TRUE” FORMATIVE MARKS ..................................................................... 14

II. THE GOODS USED IN CONNECTION WITH THE MARKS ARE DIFFERENT .... 15

III. APPLICANT’S GOODS ARE EXPENSIVE AND PURCHASED WITH CARE ...... 17

CONCLUSION ............................................................................................................................ 19

Applicant’s Brief | Ex Parte Appeal: SN 87/450,994 iii

INDEX OF CITATIONS

Cases:

Bd. of Regents, Univ. of Texas Sys. v. Southern Ill. Miners, LLC,

110 USPQ2d 1182 (TTAB 2014) ............................................................................................ 18

Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,

21 USPQ2d 1388 (Fed. Cir. 1992)........................................................................................... 18

In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) ........................................................... 15

In re Davia, 110 USPQ2d 1810 (TTAB 2014) ............................................................................ 19

In re E.I. du Pont de Nemours & Co., 177 USPQ 563 (CCPA 1973) ........................................... 9

In re Hearst Corp., 25 USPQ2d 1238 (Fed. Cir. 1992) ............................................................... 10

In re La Peregrina Limited, 86 USPQ2d 1645 (TTAB 2008) ...................................................... 12

In re Lettuce Entertain You Enterprises, Inc., Serial No. 85291663 (TTAB May 17, 2013).. 12-13

In re HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB 2010) ............................................ 15

In re National Data Corp., 753 F.2d 1056 (Fed. Cir. 1985) ........................................................... 9

In re Thomas, 79 USPQ2d 1021 (TTAB 2006) ........................................................................... 13

In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) ................................................................... 13

In re Sarkli, Ltd., 220 USPQ 111 (Fed. Cir. 1983) ...................................................................... 14

In re Williams-Sonoma, Inc., Serial No. 86092589 (TTAB June 28, 2017) ................................. 18

Recot Inc. v. M.C. Becton, 54 USPQ2d 1894 (Fed. Cir. 2000) ................................................... 19

Sure-Fit Prods. v. Saltzson Drapery Co., 117 USPQ 295 (CCPA 1958) .................................... 14

Statutes:

Trademark Act Section 2(d), 15 U.S.C. § 1052(d) ............................................................... 4, 9, 20

Other:

TMEP § 1207.01(b)(vi) ................................................................................................................ 12

Applicant’s Brief | Ex Parte Appeal: SN 87/450,994 4

Applicant, Pacific Crest Industries, Inc., respectfully appeals the Examining Attorney’s

refusal to register Applicant’s mark, namely the standard character VERO mark in Application

Serial No. 87/450,994 (“Applicant’s Mark”). The Examining Attorney’s refusal on the grounds

that Applicant’s Mark, for use in connection with kitchen cabinets and custom kitchen cabinets

in International Class 20 is likely to be confused with the registered VERO AIR mark

(Registration No. 5,248,295) for sanitary installations in International Class 19 and bathroom and

washroom furnishings in International Class 20, and the registered TRU CABINETRY mark

(Registration No. 4,998,691) for wood kitchen and bath cabinets in International Class 20,

pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), is inappropriate because the three marks

are distinguishable based on appearance, sound, and commercial impression. Applicant’s goods

are also dissimilar from the cited registrations’ goods, further demonstrating that confusion is

unlikely.

PROSECUTION HISTORY

Applicant’s standard character mark application was filed on May 16, 2017, seeking

registration on the Principal Register for the mark VERO for use in connection with “kitchen

cabinets and custom kitchen cabinets” in International Class 20.

On August 17, 2017, the Examining Attorney issued an officiation, refusing to grant

registration on the Principal Register under Section 2(d), 15 U.S.C. § 1052(d) with Registration

No. 5,248,295 for VERO AIR in standard character sanitary installations in International Class

19 and bathroom and washroom furnishings in International Class 20 and Registration No.

4,998,691 for TRU CABINETRY for wood kitchen and bath cabinets in International Class 20.

The Examining Attorney also required a translation statement for the word “VERO.”


On February 18, 2018, Applicant filed an Office Action response arguing against the

Section 2(d) refusal and incorporating a translation statement for the term “VERO.”

On April 12, 2018, the Examining Attorney issued a Final Office Action, maintaining the

Section 2(d) refusal with the VERO AIR and TRU CABINETRY registered mark.

On October 9, 2018, Applicant filed a Request for Reconsideration and a Notice of

Appeal to the Board. In its Request for Reconsideration, Applicant incorporated additional

evidence to demonstrate that its mark is distinguishable from the cited registrations, including

third-party registrations, online articles, and website evidence.

On October 23, 2018, the Examining Attorney denied the Request for Reconsideration.

SUMMARY OF EVIDENCE

• Examining Attorney’s Evidence

1. Office Action of August 17, 2018

• Information for Registration No. 5,248,295 for the mark VERO AIR in standard

characters;

• Kitchen, ADORNUS;

• Bathrooms, ADORNUS;

• Bathroom Design, KITCHEN CABINETS EXPRESS;

• Products & Services – Kitchen Cabinets, NORFOLK KITCHEN & BATH;

• Products & Services – Bath Cabinets – Better Bath Cabinets, NORFOLK KITCHEN

& BATH;

• Bathroom Vanities, Showers and Fixtures, RTA CABINET STORE;

• Ready to Assemble Kitchen Cabinets, RTA CABINET STORE;

• Ready to Assemble Bathroom Vanities, RTA CABINET STORE;

• Products – Rooms – Kitchen, MERILLAT;

• Products – Rooms – Bathroom, MERILLAT;

• Products – Hardware, HOMECREST CABINETRY;

• Kitchen – Innovations, KRAFTMAID;

• Bathroom Collections, KRAFTMAID;

• Definition of “true,” InternetSlang.com;

• Translation of “vero,” Google Translate;

• Translation of “vero,” Microsoft Translator;

• Information for Registration No. 4,998,691 for the mark TRU CABINETRY in

standard characters.


2. Final Office Action of April 12, 2018

• Translation of “vero,” FreeTranslation.com;

• Translation of “vero,” Reverso Context;

• Translation of “vero,” Google;

• Translation of “vero,” Systranet;

• Products – Cabinet, KITCHEN & BATH FACTORY;

• Home page, BRARMAR KITCHEN & BATH;

• Home page, ISLAND CUSTOM FURNITURE;

• About Us, THE CABINET FACTORY.COM;

• Bathroom – Cabinets, CL KITCHENS BATH & CLOSETS;

• Kitchen – Cabinets, CL KITCHENS BATH & CLOSETS;

• Contemporary Walnut Bathroom Vanity, OMEGA CABINETRY;

• White Kitchen with a Custom Blue Kitchen Island, OMEGA CABINETRY;

• Kitchen + Cabinets, BERTCH;

• Hardware Options, BERTCH;

• Organized Bliss – Bath, MEDALLION;

• Organized Bliss – Baking and Cooking, MEDALLION;

• Bath Silhouettes, MEDALLION;

• Custom Cabinets Utah, MOUNTAIN STATES KITCHEN AND BATH;

• Kitchen and Bathroom Sink, MOUNTAIN STATES KITCHEN AND BATH;

• Home page, PIONEER CABINETRY, INC.;

• Custom Bathroom Cabinet Collection, STILLWATER CABINETRY;

• Custom Kitchen Cabinet Collection, STILLWATER CABINETRY;

• Definition of “furniture,” Dictionary.com;

• Kitchen Cabinets, CABINET BOY;

• Bathroom Cabinets, CABINET BOY;

• Products – Kitchen Cabinets – Chantilly VA, BILTMORE DESIGN GALLERIA;

• Products – Vanities, BILTMORE DESIGN GALLERIA;

• Products – Kitchen Sinks, BILTMORE DESIGN GALLERIA;

• Products – Faucets, BILTMORE DESIGN GALLERIA;

• Medicine Cabinets, J. TRIBBLE COLLECTION;

• Bathroom Faucets, J. TRIBBLE COLLECTION;

• Mirror Frames, J. TRIBBLE COLLECTION;

• Custom Kitchen Furniture, J. TRIBBLE COLLECTION;

• Products, SINCERE HOME DECOR;

• About Us, SINCERE HOME DECOR;

• Cabinetry, REICO KITCHEN & BATH;

• Fixtures, REICO KITCHEN & BATH;


• Bath Vanities, BERTCH;

• Home page, FIELDSTONE CABINETRY;

• Definition of “vero,” CollinsDictionary.com;

3. Reconsideration Letter of October 23, 2018

• “Table of Detailed Languages Spoken at Home and Ability to Speak English for

the Population 6 Years and Over for the United States,” UNITED STATES CENSUS

BUREAU (Apr. 2010);

• Definition of “vero,” CollinsDictionary.com;

• Bathroom Cabinets in a Simply White Finish, CRYSTAL CABINET WORKS;

• Find a Dealer, MERIT KITCHENS;

• Definition of “cabinet,” Macmillan Dictionary;

• Gallery, WILCO CABINET MAKERS, INC;

• Our Services, WILCO CABINET MAKERS, INC;

• Products – Bathrooms, FX CABINETS WAREHOUSE;

• Products – Kitchens, FX CABINETS WAREHOUSE;

• About, FX CABINETS WAREHOUSE;

• Home page, FX CABINETS WAREHOUSE;

• About Us, BISCHOFF CABINETMAKING;

• Gallery, STARMARK CABINETRY;

• Portfolio – Kitchen, SIGNATURE CUSTOM CABINETRY, INC.;

• Gallery – Kitchen, STARMARK CABINETRY;

• About, STARMARK CABINETRY;

• Portfolio – Bath and Other Rooms, SIGNATURE CUSTOM CABINETRY, INC.;

• Get Inspired – Bathrooms, R.D. HENRY & CO.;

• Get Inspired – Kitchens, R.D. HENRY & CO.;

• Find a Dealer, SOLLID CABINETRY;

• Home page, SOLLID CABINETRY;

• Cabinet Manufacturer, MERIT KITCHENS;

• Product Lines & Construction, WELLBORN CABINET;

• Kitchen Innovations, KRAFTMAID;

• Bathroom Collections, KRAFTMAID;

• Cabinets, ADVANCED CABINETS CORP.;

Applicant’s Evidence

1. Office Action Response of February 18, 2018

• Exhibit A: Definition of “vero,” wordsense.eu/vero (last visited Feb. 7, 2018).

• Exhibit B: Definition of “air,” Merriam-Webster.com (last visited Feb. 7, 2018);

Acronyms of “tru,” acronyms.thefreedictionary.com/TRU (last visited Feb. 7,


2018); Definition of “cabinetry,” Merriam-Webster.com (last visited Feb. 7,

2018).

2. Request for Reconsideration of October 9, 2018

• Exhibit C: Definition of “vero,” Cambridge Online Dictionary,

https://dictionary.cambridge.org/us/dictionary/italian-english/vero (last visited

Oct. 4, 2018).

• Exhibit D: World Design Rankings 2015, DESIGNBOOM,

https://www.designboom.com/design/world-design-rankings-2015-01-01-2016/

(last visited Oct. 4, 2018).

• Exhibit E: Alison Coleman, “Disrupting In Style: Italian Startup Takes Interior

Design To The Crowd,” FORBES (Dec. 3, 2014),

https://www.forbes.com/sites/alisoncoleman/2014/12/03/disrupting-in-

styleitalian-start-up-takes-interior-design-to-the-crowd/#7cfa49b736b2 (last

visited Oct. 9, 2018).

• Exhibit F: “3 Reasons You Should Invest in Luxury Italian Furniture,” EFFACTO,

https://effacto.com/3-reasons-invest-luxury-italian-furniture/ (last visited Oct. 4,

2018).

• Exhibit G: Third Party Registration Certificate Nos. 1,984,611 and 2,948,740.

• Exhibit H: Custom Kitchen Cabinets, HGTV,

https://www.hgtv.com/design/rooms/kitchens/custom-kitchen-cabinets (last

visited Oct. 5, 2018).

• Exhibit I: Cambria Bold, “Kitchen Cabinet Styles: The Differences Between

Stock, SemiCustom, and Custom,” KITCHN (Oct. 16, 2012),

https://www.thekitchn.com/kitchen-cabinet-styles-the-difference-between-

stocksemi-stock-and-custom-178826 (last visited Oct. 5, 2018).

• Exhibit J: Our Products, TRU CABINETRY, https://www.trucabinetry.com/our-

products/ (last visited Oct. 5, 2018).

• Exhibit K: Our Promise, TRU CABINETRY, https://www.trucabinetry.com/our-

promise/ (last visited Oct. 5, 2018).

• Exhibit L: Vero Air, DURAVIT,

https://www.duravit.us/products/all_series/vero_air.usen.html#article-module


• Exhibit M: How Much Do Custom Cabinets Cost To Install?, HOMEADVISOR,

https://www.homeadvisor.com/cost/cabinets-and-countertops/custom-cabinets/



ARGUMENT

The Examining Attorney has refused registration pursuant to Trademark Act § 2(d), 15

U.S.C. § 1052(d), on grounds that Applicant’s VERO standard character mark for kitchen

cabinets and custom kitchen cabinets is likely to be confused with the VERO AIR registered

mark for sanitary installations and cabinets for bathrooms and washrooms and TRU

CABINETRY registered mark for wood kitchen and bath cabinets. Applicant’s mark is not likely

to be confused with the cited registrations, as Applicant’s mark is different in appearance, sound,

and commercial impression, and Applicant’s goods are distinguishable from both Registrants.

Notably, both VERO AIR and TRU CABINETRY were permitted to co-exist on the register. For

the following reasons, Applicant respectfully disagrees with the Examining Attorney’s finding

and requests that the Board reverse the statutory refusal and allow publication of the Application.

I. Applicant’s Mark is Dissimilar in Appearance, Sound, Connotation, and Commercial Impression. When determining whether marks are similar, it is important to compare the marks in

their entireties “as to appearance, sound, connotation and commercial impression.” In re E.I. Du

Pont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973). A finding of “likelihood of

confusion cannot be predicated on dissection of a mark, that is, on only part of a mark.” See In re

National Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985). The Examining Attorney’s finding

that Applicant’s mark and the cited registrations are substantially similar not only fails to

compare Applicant’s mark and the cited registrations in their entireties, but also fails to

appreciate the significant differences in appearance, sound, connotation and commercial

impression among the marks.

It is not enough to simply note that Applicant’s VERO mark shares a component with the


cited registrations. Rather, marks must be compared in their entireties to determine likelihood of

confusion because likelihood of confusion depends on the overall impression of the marks. The

Federal Circuit in Hearst stated as follows:

The Board, analyzing the marks for confusing similarity, found that “varga” was

the dominant element of the VARGA GIRL mark, and that “girl” was merely

descriptive and thus could not be afforded substantial weight in comparing

VARGA GIRL with VARGAS. The Board erred in its analytic approach.

Although undoubtedly “varga” and “vargas” are similar, the marks must be

considered in the way they are used and perceived. See In re Nat’l Data Corp.,

753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Marks tend to be perceived in

their entireties, and all components thereof must be given appropriate weight. See

Opryland USA Inc. v. Great Am. Music Show, Inc., 970 F.2d 847, 23 USPQ2d

1471 (Fed. Cir. 1992).

The appearance, sound, sight, and commercial impression of VARGA GIRL

derive significant contribution from the component “girl”. By stressing the

portion “varga” and diminishing the portion “girl”, the Board inappropriately

changed the mark. Although the weight given to the respective words is not

entirely free of subjectivity, we believe that the Board erred in its diminution of

the contribution of the word “girl”. When GIRL is given fair weight, along with

VARGA, confusion with VARGAS becomes less likely.

In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238, 1239 (Fed. Cir. 1992). In Hearst, the

Federal Circuit held that the Board failed to give appropriate weight to the term GIRL in

consideration of the relatedness of the VARGA GIRL mark to the VARGAS mark in the cited

registration. The decision in Hearst, therefore, indicates that the mark as applied for must be

considered in its entirety.

Applicant’s VERO mark differs in appearance and sound from the cited VERO AIR and

TRU CABINETRY marks. Applicant’s mark consists of a singular term – VERO – whereas the

cited marks both consist of two distinct terms, and thus Applicant’s mark is visually and

phonetically shorter in length. The cited VERO AIR mark includes the additional term “AIR,”

which is not present in Applicant’s mark and serves to distinguish Registrant’s VERO AIR mark.

Similar to Hearst, the appearance, sound, sight, and commercial impression of VERO AIR


derive significant contribution from the component “AIR.” The Examining Attorney stresses the

“VERO” portion of VERO AIR’s mark, diminishing the term “AIR” (Office Action of Aug. 17,

2017, p.3), which does not adequately take into account the entirety of the mark as the term

“AIR” is a distinguishing feature between the two marks. TRU CABINETRY is also

distinguishable from Applicant’s mark as it does not share any identical terms with Applicant,

and thus there are no visual and/or phonetic similarities between Applicant’s VERO mark and

the cited TRU CABINETRY mark.

Applicant’s mark creates a distinct commercial impression that is different from the cited

marks. The Italian term “VERO” is translated as “true,” “real,” or “genuine.” See Request for

Reconsideration of Oct. 9, 2018, Exhibit C. Applicant’s VERO mark, therefore, conveys the

Applicant’s custom kitchen cabinets are real or genuine Italian products and/or manufactured

from true Italian materials. Alternatively, Applicant’s mark creates the idea that Applicant’s

kitchen cabinets are customizable to the true taste of the consumer.

The cited VERO AIR mark, on the other hand, alludes to the idea that the bathroom

sanitary installations, bathroom and washroom cabinets, and accessories exude a true or genuine

freshness, cleanliness, and purity. The term “AIR” in VERO AIR is defined as “the look,

appearance, or bearing of a person [or thing] especially as expressive of some personal quality or

emotion.” Office Action Response of Feb. 18, 2018, Exhibit B. Hence, VERO AIR carries the

impression that its goods “combine the unmistakable character [or air] of the original [genuine or

true] with a new level of precision and perfect proportions.” Request for Reconsideration of Oct.

9, 2018, Exhibit L.

Finally, the cited TRU CABINETRY mark suggests that Registrant’s collection of

wooden cabinets that are punctuated and trendy, tactically responsive or replaceable and/or that


Registrant only specializes in cabinets for the home. See Request for Reconsideration of Oct. 9,

2018, Exhibits J-K. The spelling of “true” in the cited TRU CABINETRY is also unique and

alludes to the customer, as the omission of the “E” emphasizes the “U” in the term TRU and

draws attention to the purchaser, creating a “TRU” to you impression. Consequently, a consumer

who engages with the three marks is not likely to be confused on the bases of connotation or

commercial impression, and thus this factor weighs against a likelihood of confusion.

a. When Comparing Applicant’s Mark to the TRU CABINETRY Mark, the Doctrine of Foreign Equivalents is Not Applicable.

The Examining Attorney applied the doctrine of foreign equivalents and contended that

Applicant’s mark and the cited TRU CABINETRY mark are equivalent in meaning and

connotation, finding the marks confusingly similar. The Examiner specifically states that “Italian

is a common, modern language, so ordinary American purchasers would stop and translate an

Italian word.” Office Action of April 12, 2018, p. 5. In support of this argument, the Examining

Attorney relies solely on the translation statements made in the cited registration, with particular

emphasis on the translation that fits within the argument. Application of the doctrine of foreign

equivalents, however, turns upon the significance of the foreign mark to the relevant purchasers,

which is based on an analysis of the evidence of record, including, dictionary and Internet

evidence. See generally TMEP § 1207.01(b)(vi) and the authorities cited therein. Here, the

evidence does not demonstrate that an “ordinary American purchaser” would “stop and translate”

Applicant’s mark.

The doctrine of foreign equivalents typically will not be applied where the record

indicates that it is unlikely purchasers would translate the mark because of “marketplace

circumstances or the commercial setting in which the mark is used.” In re La Peregrina Limited,

86 USPQ2d 1645, 1648 (TTAB 2008); see also In re Lettuce Entertain You Enterprises, Inc.,


Serial No. 85291663 (TTAB May 17, 2013) [not precedential] (holding that although STELLA

ROSSA literally translates as RED STAR, the Board must consider Applicant’s mark as a whole,

“and the fact that applicant’s mark comprises both Italian and English words makes it less likely

that the STELLA ROSSA part of applicant’s mark will be translated by consumers, even those

who speak Italian); In re Thomas, 79 USPQ2d 1021, 1026 (TTAB 2006) (finding "MARCHE

NOIR" confusingly similar to "BLACK MARKET MINERALS," but suggesting that a different

conclusion might have been reached if the marketplace circumstances or commercial setting in

which the mark was used were such that it would be unlikely for purchasers to translate

"MARCHE NOIR"); In re Tia Maria, Inc., 188 USPQ 524, 525-26 (TTAB 1975) (holding TIA

MARIA (which translates to "Aunt Mary") for restaurant services, and AUNT MARY’S for

canned fruits and vegetables, not likely to cause confusion, because, inter alia, a person dining at

the TIA MARIA restaurant surrounded by its Mexican décor and Mexican food, would be likely

to accept "TIA MARIA" as it is and not translate it into "AUNT MARY").

Similar to Tia Maria and Lettuce Entertain You Enterprises, a person searching

particularly for Italian-style or Italian custom kitchen cabinets with Applicant’s VERO branding,

exuding an Italian influenced design would likely accept “VERO” as the name of the product,

without translating the mark to English. Consumers would accept Applicant’s mark at face value

because the term “VERO” is prominent and sounds like an Italian word, which is highly valued

by consumers of Italian furniture and cabinetry. According to the 2015 World Design Rankings,

Italy ranked fourth in interior design and is well-known for its creative strengths and quality

furniture. Request for Reconsideration of Oct. 9, 2018, Exhibit D.

In fact, “Italian architecture and interior design is as famous for its style as it is for its

price tag,” and the public is aware of the craftsmanship and quality of Italian furniture and accent


pieces. See Request for Reconsideration of Oct. 9, 2018, Exhibit E. Buying Italian furniture and

cabinetry is desirable as “Italian furnishings are unique in their designs” and are attention

grabbing, so consumers will want to refer to the brand via its Italian name as it exudes luxury

and immediately informs consumers that the product is Italian. See Request for Reconsideration

of Oct. 9, 2018, Exhibit F. Italian furnishings, therefore, are highly regarded and desired, so

consumers would not likely stop and translate Applicant’s VERO mark into English – even those

consumers who speak Italian. That is especially true here because VERO gives the impression of

elegance and prestige, rather than an arbitrary Italian word, and consumers will be inclined to

refer to the custom kitchen cabinets by their Italian name to inform others of the Italian origin

and craftsmanship.

But even to the extent that potential purchasers would translate VERO as “truth,” it is

important to note that the doctrine of foreign equivalents is not conclusive. It is just one way of

understanding the meaning of a mark, which is in turn only one of the considerations used in

determining the similarity of the marks as a whole. “[S]uch similarity as there is in connotation

must be weighed against the dissimilarity in appearance, sound, and all other factors, before

reaching a conclusion on likelihood of confusion as to source.” In re Sarkli, Ltd., 721 F.2d 353,

220 USPQ 111, 113 (Fed. Cir. 1983) (quoting Sure-Fit Prods. v. Saltzson Drapery Co., 254 F.2d

158, 160, 117 USPQ 295, 297 (CCPA 1958)).

Nevertheless, the doctrine of foreign equivalents does not apply here as consumers would

not likely stop and translate Applicant’s VERO mark.

b. The Cited TRU CABINETRY Mark Coexists with Other “TRU/TRUE” Formative Marks.

The two cited marks – TRU CABINETRY and VERO AIR – currently coexist on the

Principal Register, and neither trademark holder has opposed or petitioned to cancel the other’s


mark. There is also no evidence of a consent/coexistence agreement between the cited

Registrants. The only similarity — the Italian translation of “VERO” in Applicant’s mark and

the word “TRU” in the cited TRU CABINETRY mark — is, therefore, unlikely to prompt

potential customers to believe that the goods offered in connection with the respective marks

share a common source. Furthermore, the cited TRU CABINETRY mark coexists on the

Principal Register with Registration No. 2,948,740 for the mark TRUE REFRIGERATION® for

use in connection with refrigeration equipment and various parts in Class 11 and Registration

No. 1,984,611 for the mark TRU LAM® for use in connection with composite wood panels for

cabinet and furniture construction in Class 19. See Request for Reconsideration of Oct. 9, 2018,

Exhibit G, Registration Certificates. The coexistence of these “TRUE/TRU” formative marks

along with the two cited marks evidences that there is no likelihood of confusion when there are

visual and phonetic differences among the marks.

Given that TRU CABINETRY and VERO AIR coexist on the Principal Register without

any evidence of confusion, Applicant’s VERO mark should be able to coexist with the cited

marks.

II. The Goods Used in Connection with the Marks Are Different.

The Examining Attorney further asserts that the marks are likely to be confused in

commerce because Applicant’s mark and the cited marks are used in connection with similar

goods. Similarity is not a binary factor, but is a matter of degree. In re Coors Brewing Co., 343

F.3d 1340, 1344 (Fed. Cir. 2003); In re HerbalScience Group, LLC, 96 USPQ2d 1321 (TTAB

2010) [precedential]. Applicant’s goods are “kitchen cabinets and custom kitchen cabinets”

thereby limiting its cabinets to a specific area of a home or commercial building – the kitchen.


Custom cabinetry items are commonly purchased directly from the woodworker (i.e., the person

who makes the cabinets himself). The woodworker would then work with the consumer to

identify the consumer’s aesthetics and existing space. From measuring, to designing, the

woodworker and the purchaser will work together closely to come-up with a custom, one of a

kind kitchen cabinet that can be found nowhere else. See Request for Reconsideration of Oct. 9,

2018, Exhibit H (“The labor costs of custom cabinetry are significant, as nothing is pre-built and

every cabinet part must be crafted, assembled and then installed.”). Likewise, Applicant’s goods

are handcrafted, labor-intensive, and room-specific (i.e., kitchen), with client consultation to

create plans for building and installing the cabinets.

Conversely, consumers will likely purchase the cited Registrants’ goods online or via the

phone from a mass distributor. There will not likely be the ability to personally customize each

piece and the purchaser will not get the same intimate creative design experience as Applicant’s

consumers. See Request for Reconsideration of Oct. 9, 2018, Exhibit I (“Stock cabinets are

readymade, pre-manufactured cabinets, meaning they're mass-produced in a factory and ready to

ship when ordered.”). Specifically, TRU CABINETRY provides consumers with different

options, such as finishes, styles, and colors, providing consumers with some ability to customize,

such as changing certain dimensions, like resizing the cabinet drawers and door fronts. See

Request for Reconsideration of Oct. 9, 2018, Exhibit J. In fact, TRU CABINETRY describes

itself craft as “the finest American-made cabinetry in the semi-custom category.” See Request for

Reconsideration of Oct. 9, 2018, Exhibit K. Consequently, TRU CABINETRY offers a different

product that does not provide consumers with the same bundle of options. VERO AIR, on the

other hand, is the name of a particular bathroom collection in the Duravit program, and therefore

VERO AIR is not customizable. See Request for Reconsideration of Oct. 9, 2018, Exhibit L. A


consumer would need to buy VERO AIR as-is and can do so online, without any consultation or

preparation. See id. Thus, while the goods are all related to cabinets, they will be not be

encountered by the same person in the same ways, and are not similar enough to create a

likelihood of confusion in the minds of the consumers.

In addition, the VERO AIR goods are for use in bathrooms and washrooms only, and

therefore are different from Applicant’s goods, which are for use in kitchens. These differences

mean that the consumers are not likely to encounter both products side-by-side because a

consumer searching for customizable kitchen cabinetry will not likely find bathroom and

washroom furniture, sinks, toilets, and mirrored cabinets. In fact, the evidence submitted by the

Examining Attorney demonstrates that bathroom cabinets are displayed on a different webpage

than kitchen cabinets. See Reconsideration Letter of Oct. 23, 2018, third-party exhibits. The

goods are for different rooms and likewise in different departments and/or aisles in home

improvements stores. Both Applicant and the cited VERO AIR Registrant have narrowly tailored

descriptions that encompass a particular segment of the home furnishings industry, and thus the

products do not overlap and have completely distinct purposes and uses. For example, a

consumers would not purchase a medicine cabinet for his kitchen glassware.

The differences among Applicant’s goods and the cited Registrants’ goods, therefore, are

enough to avoid a likelihood of confusion.

III. Applicant’s Goods Are Expensive and Purchased with Care.

Applicant’s cabinets are expensive and require consumers to plan and consult with

Applicant prior to purchasing the completed product. The Federal Circuit and the Trademark

Trial and Appeal Board have recognized that where the consumers are sophisticated and the


goods and services are expensive, the consumers are less likely to be confused. Electronic

Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1392 (Fed. Cir. 1992)

(internal quotation marks omitted) (“Where the purchasers are the same, their sophistication is

important and often dispositive because sophisticated consumers may be expected to exercise

greater care.”). “Purchaser sophistication may tend to minimize likelihood of confusion.

Conversely, impulse purchases of inexpensive items may tend to have the opposite effect.” Bd.

of Regents, Univ. of Texas Sys. v. Southern Ill. Miners, LLC, 110 USPQ2d 1182, 1193 (TTAB

2014). The cost differences among the products is significant, so consumers will exercise

different levels of care in purchasing Applicant’s and/or the cited Registrants’ goods.

Consumers of custom kitchen cabinetry would unlikely acquire Applicant’s goods

without concern or awareness as to the particular source. Custom kitchen cabinets are intended to

be used for many years, and thus consumers will likely research which companies provide the

best quality and cost effective products. Further, custom products require a significant amount of

consideration and input on the customer’s part. See In re Williams-Sonoma, Inc., Serial No.

86092589 (TTAB June 28, 2017) (“We agree that custom designed and crafted furniture might

involve some deliberation and care, and involvement with the merchant/designer, and a customer

who goes to the trouble of having furniture designed to order would exercise care.”). The design

experience of custom kitchen cabinetry is highly interactive and requires extensive customer

involvement, from providing specifications to approving the final design. Likewise, customers of

Applicant’s goods must deal directly with the Applicant throughout the design and manufacture

of their custom kitchen cabinets, so the customer is unquestionably well aware of the source of

Applicant’s goods.


Custom kitchen cabinets in the marketplace range from about $500 to $1,200 per linear

foot, whereas stock cabinets (VERO AIR products) cost about $60 to $100 per linear foot and

semi-custom cabinets (TRU CABINETRY products) range from $100 to $650 per linear foot.

See Request for Reconsideration of Oct. 9, 2018, Exhibit M. Given these high prices for custom

cabinetry, there is reason to expect the purchasers of the parties’ products to exercise more than

ordinary care. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir.

2000); Cf. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (“Generally, casual purchasers of

low-cost, every-day consumer items exercise less care in their purchasing decisions and are more

likely to be confused as to the source of the goods.”). Moreover, there are also costs associated

with the labor and installation of Applicant’s custom kitchen cabinets, where such costs do not

exist for the cited Registrants’ goods. See Request for Reconsideration of Oct. 9, 2018, Exhibit

L. Consumers faced with purchasing cabinetry will research the costs associated with the various

options (i.e., stock, semi-custom, and custom cabinets) to select an option feasible for their

desired budget, and therefore consumers are less likely to be confused.

CONCLUSION

In sum, the differences between the commercial impressions, appearance, and sound

created by the cited marks and Applicant’s VERO mark would be sufficient to prevent a

likelihood of confusion, even if the relevant goods were identical. The doctrine of equivalents

does not apply and there is no likelihood of confusion with the cited TRU CABINETRY mark

because consumers would not likely stop and translate Applicant’s VERO mark due to the

popularity and prestige associated with Italian-made and/or Italian-style furnishings. Further,

Applicant’s goods are separate and distinct from the cited Registrants’ goods and are not likely


to be purchased by the same consumers. Applicant’s goods are more labor-intensive and

expensive, so consumers would exercise a higher degree of care when buying custom kitchen

cabinetry. Accordingly, Applicant respectfully requests that the statutory refusal be withdrawn

and that the application be permitted to proceed to publication.

WHEREFORE, Applicant respectfully requests that the Board REVERSE the statutory

refusal pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), and allow the Application

to proceed to publication.

Dated this 21st day of December, 2018.

Respectfully submitted,

Erik M. Pelton

ESTTA Tracking number: ESTTA943344...

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