Emerson Electric Co.

Trademark Trial and Appeal Board

Jan 16, 2002

No. 75494057 (T.T.A.B. Jan. 16, 2002)

1/16/02

Paper No. 11
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Emerson Electric Company
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Serial No. 75/494,057
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Anthony Martin of Harness, Dickey & Pierce for Emerson
Electric Company.

Won T. Oh, Trademark Examining Attorney, Law Office 104.
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Before Cissel, Quinn and Drost, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On June 1, 1998, applicant filed the above-referenced
application to register the mark “MONTEREY” on the
Principal Register for “electric fans and parts therefor,”
in Class 11. The basis for the application was applicant’s
assertion that it possessed a bona fide intention to use
the mark in commerce in connection with these products.
This case is now before the Board on appeal from the
September 13, 2000 final refusal to register based on
Section 2(d) of the Lanham Act. The Examining Attorney
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/494,057
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maintains that if applicant were to use the mark “MONTEREY”
in connection with “electric fans not having associated
electric lighting fixtures, and parts therefor,” as the
application was subsequently amended to identify the goods
with which applicant intends to use the mark, confusion
would be likely in view of the prior registration of the
same mark, “MONTEREY,” for “electric lighting fixtures for
indoor and outdoor use,” in Class 11.1
Both applicant and the Examining Attorney filed briefs
on appeal, but applicant did not request an oral hearing
before the Board.
Based on careful consideration of the record and the
arguments presented in the briefs, we find that the refusal
to register is well taken.
The factors to be considered in determining whether
confusion would be likely were set forth by the predecessor
to our primary reviewing court in In re E. I. duPont de
Nemours, 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Chief
among those factors are the similarities between the marks
and the relatedness of the goods with which the marks are,
or are intended to be, used. If the marks are identical,

1 Reg. No, 2,292,967, issued on the Principal Register to Alpan,
Inc. on November 16, 1999. The registration claims use since
August of 1996.
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the relationship between the goods in question does not
need to be as close to support a finding that confusion
would be likely as would be the case if there were
differences between the marks. Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70 (TTAB 1981). Any doubts as
to whether confusion would be likely must be resolved in
favor of the prior user and registrant. In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir.
1988).
In the instant case, confusion would clearly be likely
if applicant were to use the mark it seeks to register.
Applicant’s mark is identical to the registered mark, and
the goods set forth in the application, as amended, are
commercially related to those specified in the cited
registration in such a way that the prospective purchasers
would be likely to view the use of the same mark on both
products as an indication of common source.
In support of the refusal to register, the Examining
Attorney made of record a copy of a page from the Northern
Virginia Yellow Pages directory wherein there appear
several advertisements for businesses which offer both
electric fans and lighting products. This evidence
indicates that purchasers of these goods have reason to
expect both fans and lights to be available from the same
Ser No. 75/494,057
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place. Additionally, the Examining Attorney made of record
a large number of third-party federal trademark
registrations based on use wherein the goods listed include
both electric fans and lighting fixtures. Such
registrations serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. In re Albert Trostel & Sons, 29 USPQ2d 1783 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988). Together with the directory mentioned above,
the evidence submitted by the Examining Attorney
establishes that the goods specified in the application are
related to those set forth in the cited registration in
such a manner that the use of the same mark in connection
with both would be likely to cause confusion.
Applicant’s arguments to the contrary are not well
taken. Applicant argues that the existence of a number of
third-party registrations for the mark “MONTEREY” show that
confusion is not likely in this case. As the Examining
Attorney notes, however, the registration information
submitted by applicant does not show that any of these
registrations lists goods of the type identified in either
this application or the cited registration. That the same
mark may be registered for goods such as “prefabricated
shower receptors,” “bathing suits,” “shingles for building
Ser No. 75/494,057
5
purposes,” “sheets and pillowcases” and “knocked-down metal
awnings and parts therefor” is irrelevant to our inquiry in
the instant case. Applicant has not shown that the mark it
seeks to register is weak in connection with the goods
involved in this appeal.
In summary, confusion is likely because the mark
applicant seeks to register is identical to the cited
registered mark and the goods with which applicant intends
to use this mark are commercially related to those set
forth in the cited registration such that prospective
purchasers would expect the use of the same mark on both
products to indicate that they emanate from the same
source. Accordingly, the refusal to register under Section
2(d) of the Lanham Act is affirmed.

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