The TTAB affirmed this refusal to register the mark MANHATTAN for "upholstered furniture," finding the mark likely to cause confusion with the registered mark MANHATTAN CABINETRY for "custom designed and crafted furniture" [CABINETRY disclaimed]. Applicant argued that the identification of goods in the registration is unclear, and therefore that external evidence may be considered regarding the actual use of the marks, but the Board found no vagueness. In re Williams-Sonoma, Inc., Serial No. 86092589 (June 28, 2017) [not precedential]. (Opinion by Judge Albert Zervas).

The goods of applicant and the cited registrant overlap, since upholstered furniture may be hand crafted, and hand crafted furniture may be upholstered. Third-party evidence showed that the involved goods are sold in the same channels of trade under the same mark. And applicant itself offers "made to order" and "special order" furniture.

Applicant contended that a maker of custom designed furniture works closely with its customers, and this distinguishes the goods. The Board, however, observed that "consumers of both Applicant’s and registrant’s goods are ultimately purchasing furniture which suits their unique needs."

Applicant contended that the cited mark is entitled to a narrow scope of protection because the word MANHATTAN is a geographic term, and the cited registration was obtained under Section 2(f). The Board pointed out, however, that "[h]aving acquired distinctiveness, the mark MANHATTAN CABINETRY is entitled to the same trademark protection as any other validly registered trademark." Moreover, there was no evidence that MANHATTAN is a weak term for furniture.

The Board found the marks to be substantially similar: "any distinction in the marks caused by the additional term CABINETRY is outweighed by the overall similarity resulting from the shared identical term MANHATTAN."

The Board agreed with applicant that customers for custom designed and crafted furniture might involve some deliberation and would care in the purchasing decisions. But consumers of applicant's furniture (an upholstered chair may cost as little as $119.99), would exercise no more than ordinary care. [But what about the goods that overlap with registrant's goods? - ]

Applicant pointed to the lack of actual confusion despite 17 years of co-existence on the mark, but the Board pointed out that likelihood of confusion is the test. "[W]hile examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not compelling in support of a finding of no likelihood of confusion." In any case, there was no evidence of the extent of use of the involved marks, or whether there have been meaningful opportunities for confusion to have occurred.

Finally, applicant pointed to a third-party registration for MANHATTAN LOFT, now expired, which co-existed with the cited registration. However, the Board is not bound by the actions of examining attorneys in other cases, and in any event, that mark is not as close to the cited mark as MANHATTAN.

Balancing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.