A & I Bolt and Nut, Inc.

Trademark Trial and Appeal Board

Jun 1, 1999

No. 75001298 (T.T.A.B. Jun. 1, 1999)

Paper No. 13
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re A & I Bolt and Nut, Incorporated
________
Serial No. 75/001,298
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David F. Zinger of Sheridan Ross & McIntosh, P.C. for A & I
Bolt and Nut, Incorporated.
Richard A. Straser, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Simms, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by A & I Bolt and Nut,
Incorporated to register the mark SQUARE MAX for “metal
threaded fasteners.”1

1 Application Serial No. 75/001,298 filed October 3, 1995, based
on a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege a date of first use and
first use in commerce of April 1996. At the Examining Attorney’s
request, applicant submitted a disclaimer of the word “SQUARE”
apart from the mark as shown.
Ser No. 75/001,298
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the previously registered
mark MAX as shown below,
for metal threaded fasteners2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs.
At the outset, we note that the goods of applicant and
registrant are identical. We will focus, therefore, as
have applicant and the Examining Attorney, on the involved
marks.
Applicant, in urging reversal of the refusal to
register, argues that there are specific differences in the
marks, i.e., the cited mark is in stylized form and does

2 Registration No. 1,756,419 issued March 9, 1993.
Ser No. 75/001,298
3
not include the word “SQUARE.” Also, applicant contends
that marks consisting of or containing the term “MAX” are
weak marks which are entitled to a limited scope of
protection. In particular, applicant maintains that the
term “MAX,” as applied to fasteners, is highly suggestive,
and is frequently used in marks for such goods. In this
regard, applicant submitted a list of six registrations of
marks which include the term “MAX” for various kinds of
fasteners.3 Finally, applicant submitted the affidavit of
David Carr, its chief financial officer, who states that he
is aware of no instances of actual confusion.
After careful consideration of applicant’s arguments,
we nonetheless agree with the Examining Attorney that
confusion is likely. In articulating reasons for reaching
a conclusion on the issue of likelihood of confusion,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests
on a consideration of the marks in their entireties.” In
re National Data Corp., 753 F.3d 1056, 224 USPQ 749, 751

3 Generally, the submission of a mere list of third-party
registrations would be insufficient to make the registrations
properly of record. However, the Examining Attorney who was
handling the case at the time the list was submitted did not
object thereto, and discussed the registrations in her Office
Action. Under the circumstances, we will likewise consider the
registrations.
Ser No. 75/001,298
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(Fed. Cir. 1985). For instance, “that a particular feature
is descriptive . . . with respect to the involved goods . .
. is one commonly accepted rationale for giving less weight
to a portion of a mark . . .” 224 USPQ at 751.
In light of the descriptive significance of the word
“SQUARE,” the more prominent or distinguishing element of
applicant’s mark, when considered as a whole, is the term
“MAX,” which is virtually identical to registrant’s mark
“MAX” in stylized form. As the Examining Attorney notes,
the word “SQUARE” in applicant’s mark SQUARE MAX simply
indicates that applicant’s fasteners can be driven using a
“square drive.” Thus, the addition of this word to MAX
does not serve to distinguish the marks. Also, the fact
that registrant’s mark is in stylized form is of little
consequence since applicant, in seeking to register its
mark in typed form, would be free to use stylization
similar to that of registrant. When applicant’s and
registrant’s marks are used in connection with identical
goods, purchasers and potential purchasers are likely to
believe that the metal threaded fasteners emanate from the
same source, and that SQUARE MAX fasteners are a line of
registrant’s MAX fasteners.
Ser No. 75/001,298
5
In reaching our decision, we have not overlooked the
suggestive nature of the term “MAX,” when used in
connection with fasteners. This fact, however, does not
help to distinguish MAX and SQUARE MAX because the term
“MAX,” as used in both marks, conveys the same suggestive
significance. Moreover, even weak marks are entitled to
protection against the registration by a subsequent user of
a substantially similar mark for identical goods.
With respect to the third-party registrations, we note
that three of the registrations are for marks which contain
“MAX” within the prefix “MAXI,” i.e., MAXI-BIN, MAXICOIL,
and MAXIHEAD. These marks create very different commercial
impressions from registrant’s mark MAX. Further, neither
of the other three registered marks, i.e., ALLMAX,
CHERRYMAX, and MAXLOX is as similar to registrant’s mark as
is SQUARE MAX.
Finally, we are not persuaded by applicant’s assertion
that there have been no instances of actual confusion. We
note that at the time of Mr. Carr’s affidavit, applicant
had used its mark for only about eighteen months, a
relatively short period of time. Also, we do not know the
nature and extent of use by registrant of its mark. Thus,
we do not know if there has been ample opportunity for
confusion to have arisen, and in this ex parte setting,
Ser No. 75/001,298
6
there is no opportunity to hear from registrant. Also, we
note that the involved goods are inexpensive, and it is
possible that purchasers will not bother to report
instances when they are confused by marks when buying
inexpensive products.
Accordingly, we conclude that purchasers and potential
customers familiar with the registered mark “MAX” in
stylized form for metal threaded fasteners, would be likely
to believe, upon encountering the substantially similar
mark SQUARE MAX for identical goods, that the goods emanate
from or are associated with the same source.
Ser No. 75/001,298
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Decision: The refusal to register is affirmed.
R. L. Simms
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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