Hughes Furniture Industries Inc

Key Facts

Issues

• Whether there is a likelihood of confusion between Applicant's applied-for mark 'HUGHES' and Registrant's registered mark 'BRADLEY HUGHES' for furniture goods under Section 2(d) of the Trademark Act of 1946, considering the du Pont factors including similarity of marks, relatedness of goods, and channels of trade.
• Whether the Examining Attorney's February 2, 2014 submission of additional evidence was untimely and properly considered after Applicant filed notice of appeal on October 23, 2013, and request for remand on December 23, 2013, when a request for reconsideration must be filed prior to the expiration of the time for filing an appeal.

Holdings

Legal Principles

• Trademark Rule 2.63(b)(3) governing the timing of requests for reconsideration - must be filed prior to expiration of time for filing an appeal. A request for remand and amendment is distinct from a request for reconsideration. Examiners may not submit additional evidence after receiving a request for remand unless they file their own request for remand showing good cause.
• Legal presumption that goods identified identically in applications and registrations travel in the same ordinary trade and distribution channels and will be marketed to the same potential consumers, regardless of actual commercial use patterns or evidence regarding channels of trade.
• The du Pont factors framework for likelihood of confusion analysis in trademark cases, including comparison of marks and goods, channels of trade, conditions of purchase, and consumer sophistication. Marks must be compared in their entireties rather than dissected into components. When goods are legally identical, less similarity is needed to establish likelihood of confusion. Disclaimed matter generally does not constitute the dominant part of a mark.

Precedent Name

• Coach Services v. Triumph Learning - mark comparison test
• Stone Lion Capital Partners - scope of goods identification
• E. I. du Pont de Nemours & Co. - foundational likelihood of confusion case
• In re Nat'l Data Corp. - mark dissection prohibition
• Chatam Int'l Inc. - goods similarity in likelihood of confusion
• In re Dixie Restaurants Inc. - goods scope limitations
• Majestic Distilling Company - likelihood of confusion precedent
• Federated Foods v. Fort Howard Paper Co. - goods and marks similarity
• In re Viterra Inc. - identical goods presumption
• Palm Bay Imports v. Veuve Clicquot Ponsardin - mark similarity analysis

Cited Statute

• Trademark Act of 1946
• Trademark Rule 2.63(b)(3)

Judge Name

• Judge Mermelstein
• Judge Lykos
• Judge Hightower

Passage Text

• We find that Applicant's mark is similar in sound, appearance, connotation and commercial impression to the cited registered mark BRADLEY HUGHES. This first du Pont factor weighs in favor of finding a likelihood of confusion as well.
• After considering all of the evidence properly of record and arguments pertaining to the du Pont likelihood of confusion factors, we find that there is a likelihood of confusion between Applicant's applied-for and Registrant's registered mark. Decision: The Section 2(d) refusal to register Applicant's mark is affirmed.
• We acknowledge the differences in the marks pointed out by Applicant. Nonetheless, we agree with the Examining Attorney's determination that the surname 'Hughes' as it appears in Applicant's mark in relatively larger sized, bold lettering is dominant. The letter 'H' which appears in the left corner of Applicant's mark, as the first initial in the surname 'Hughes,' merely serves to reinforce the prominence of that portion of the mark.