ETC of Henderson

Trademark Trial and Appeal Board

Jan 28, 2008

No. 76609003 (T.T.A.B. Jan. 28, 2008)

Mailed:
28 January 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ETC of Henderson
________

Serial No. 76609003
_______

Peter N. Lalos of Stevens, Davis, Miller & Mosher, LLP for
ETC of Henderson.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Walters, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 27, 2004, ETC of Henderson1 (applicant)
applied to register the mark JAGUAR (standard character
form) on the Principal Register for goods identified as
“accessories for floor cleaning machines, namely floor
cleaning pads” in Class 7.2

1 Applicant is sometimes referred to as ETC of Henderson, Inc.
We note that applicant is identified as a North Carolina
corporation.

2 Serial No. 76609003. The application contains an allegation of
a date of first use and a date of first use in commerce of August
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 76609003
2
The examining attorney3 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a registration for the
mark JAGUAR, in typed or standard character form, for
“electric vacuum cleaners” in Class 7.4 When the refusal
was made final, this appeal and a request for
reconsideration followed.
The examining attorney argues that the marks are
identical and that the goods are highly related because
“[s]ingle registrants use the same mark on floor cleaning
machines and/or floor cleaning pads on the one hand and on
vacuum cleaners on the other hand.” Brief at unnumbered p.
5.
Applicant agrees that “the marks in issue are
identical” (Reply Brief at 1), but argues that while “a
manufacturer of electric vacuum machines may also
manufacture electric floor polishing machines and the like,
such a manufacturer is not likely to produce and sell a
highly competitive, consumable commodity product such as a

31, 1993. Applicant amended the application to make it clear
that it was seeking registration for the mark in standard
character form instead of in stylized form.

3 The current examining attorney was not the original examining
attorney in the case.

4 Registration No. 2953206 issued May 17, 2005.
Ser No. 76609003
3
floor pad.” Brief at 3. Further, applicant maintains
that:
Such cleaners essentially consist of a metal housing,
probably a casting, and a suction pump, an electric
motor and certain operating devices mounted on such
housing. Such cleaners are produced by a group of
suppliers separate from pad producing companies, sold
either through a set of distributors different from
cleaning pad distributors or directly to commercial
and domestic consumers, and used by such commercial
and domestic consumers.

Brief at 3.5

In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we

5 With its brief, applicant has attached several exhibits for the
first time in the prosecution of this application. This untimely
evidence will not be further considered. 37 CFR § 2.142(d); In
re First Draft Inc., 76 USPQ2d 1183, 1192 (TTAB 2005)
(“Submission of the TARR printout with its appeal brief, however,
is an untimely submission of this evidence”). Similarly,
applicant’s reference to specific third-party registrations in
its reply brief (footnote 3) is not only untimely but, even if it
were timely (See applicant’s general reference to other
registrations in its request for reconsideration at 3), a simple
reference to a registration is not adequate to make the
registration of record. In re Carolina Apparel, 48 USPQ2d 1542,
1542 n.2 (TTAB 1998) (“The Board does not take judicial notice of
third-party registrations, and the mere listing of them is
insufficient to make them of record”).
Ser No. 76609003
4
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Regarding the first factor, the similarity of the
marks, we note that there is no dispute but that the marks
are identical. The fact that the marks are identical
results in this factor strongly supporting the examining
attorney’s position. In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without a doubt the
word portion of the two marks are identical, have the same
connotation, and give the same commercial impression. The
identity of the words, connotation, and commercial
impression weighs heavily against the applicant”).
Furthermore, “even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to an assumption that there is a common
source.” Id. at 1689. See also Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70, 78 (TTAB 1981) (When both
parties are using or intend to use the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as
Ser No. 76609003
5
close as in the situation where the marks are not identical
or strikingly similar”).
Next, we look to see whether the goods in this case
are related. Applicant’s goods are floor cleaning pads and
registrant’s goods are electric vacuum cleaners.
In order to find that there is a likelihood of
confusion, it is not necessary that the goods or
services on or in connection with which the marks are
used be identical or even competitive. It is enough
if there is a relationship between them such that
persons encountering them under their respective marks
are likely to assume that they originate at the same
source or that there is some association between their
sources.

McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001).
It is clear that applicant’s and registrant’s goods
are not identical. However, the examining attorney has
submitted evidence that suggests that there is a
relationship between these goods. See, e.g., Registration
No. 09403566 (“domestic type vacuum cleaners ... polishing
pads”); No. 1279489 (“dust mops and cleaning and buffing
pads” and “vacuum cleaners”); No. 2511561 (“vacuum cleaners
... floor finishing machines, attachments and accessories
sold therewith, namely, sanding disks, pads, pad

6 The examining attorney attached three other similar
registrations from the owner of this registration.
Ser No. 76609003
6
holders…”); No. 3240257 (“electric vacuum cleaners… pads
for carpet and floor scrubbers and burnishers”); No.
3091441 (“vacuum cleaners … pads for floor polishing
machines”); and No. 3144824 (“vacuum cleaners ... steel
wool pads sold with the machines [buffers, burnishers,
etc.]”). These registrations support the examining
attorney’s argument that the goods of applicant and
registrant are related inasmuch as they are likely to be
marketed under the same entity’s trademark. See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
(Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). This
evidence also rebuts applicant’s argument that the
differences in the nature of the goods, e.g., electric,
permanent vacuum cleaners as opposed to disposable, “low
margin, competitively priced pads,” results in non-related
goods. Reply Brief at 1.
The examining attorney also submitted evidence to show
that the vacuum cleaners and floor cleaning machines were
Ser No. 76609003
7
related. See, e.g., Registration No. 1587455 (“floor
cleaning machines … industrial vacuum cleaners”); No.
2748976 (“combination floor cleaning machines, namely,
combination floor scrubbers and vacuum cleaners”); No.
3125030 (“vacuum cleaners … floor scrubbing machines”); and
No. 2863724 (“vacuum cleaners, carpet extractors, bare
floor cleaning machines, carpet shampooers, floor
polishers”). The relationship between vacuum cleaners and
other floor cleaning machines7 supports the examining
attorney’s position that the pads for these floor cleaning
machines will likely be viewed as goods that are related to
vacuum cleaners.
We add that we must consider the goods as they are
identified in the application’s and registration’s
identifications of goods. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) and Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Therefore, even if applicant’s evidence on this point were
of record, we would not limit our consideration of the
goods to applicant’s or registrant’s current specific types

7 Vacuum cleaners are also referred to as “floor cleaning
machines.” See Registration No. 2898228 (“floor cleaning
machine, namely a cordless vacuum cleaner”) and No. 2823537
(“carpet and floor cleaning machines, namely, commercial wet/dry
vacuums”).
Ser No. 76609003
8
of goods or their current marketing practices. Rather, we
must consider that registrant is using its mark on all
types of electric vacuum cleaners and similarly that
applicant’s goods encompass all types of floor cleaning
pads for floor cleaning machines. In re Elbaum, 211 USPQ
639, 640 (TTAB 1981)(“[W]here the goods in a cited
registration are broadly described and there are no
limitations in the identification of goods as to their
nature, type, channels of trade or classes of purchasers,
it is presumed that the scope of the registration
encompasses all goods of the nature and type described,
that the identified goods move in all channels of trade
that would be normal for such goods, and that the goods
would be purchased by all potential customers”). See also
In re Sawyer of Napa Inc., 222 USPQ 923, 924 (TTAB 1983)
(“Moreover, neither the application nor the registration
limits the channels of trade through which the goods move.
In the absence of such a limitation we must assume that the
goods move through the normal channels for such goods, and
that with respect to these particular goods, these channels
are the same”).
Applying these principles, most of applicant’s
arguments are not relevant. Applicant’s goods are not
limited to goods sold to companies in the “commercial
Ser No. 76609003
9
cleaning and janitorial trades.” Brief at 4. Indeed, it
is not clear why vacuum cleaners and floor cleaning pads
would not be purchased by both commercial and ordinary
purchasers. Homeowners interested in maintaining their
floors could use floor cleaning machines and therefore be
in the market for floor cleaning pads as well as vacuum
cleaners. In addition, nothing restricts the sale of
registrant’s goods to “mass retail accounts” anymore than
applicant’s goods are limited to “commercial cleaning and
janitorial trades.” Brief at 5. Without any restrictions
in the identification of goods, we have no reason to
conclude that electric vacuum cleaners would not be
purchased by both commercial and consumer purchasers.
Regardless of how applicant or registrant is currently
marketing its goods, the purchasers of vacuum cleaners
would overlap with the purchasers of floor cleaning pads
for floor cleaning machines.
While we certainly do not hold that the purchasers of
either of these goods are limited to sophisticated
purchasers, we add that even were we to assume this to be a
fact, these purchasers are still subject to being confused
when identical marks are used on vacuum cleaners and floor
cleaning pads. In re Total Quality Group Inc., 51 USPQ2d
1474, 1477 (TTAB 1999) (“We recognize applicant's
Ser No. 76609003
10
attorney's point that its software is expensive and that
purchasers of it are likely to be sophisticated. Suffice
it to say that no evidence in support of these assertions
was submitted. In any event, even careful purchasers are
not immune from source confusion”). A business purchaser
who is familiar with JAGUAR vacuum cleaners is likely to
assume that JAGUAR floor cleaning pads in some fashion
emanate from the source of the vacuum cleaners.
When we consider that the marks in this case are
identical (JAGUAR) and the goods, vacuum cleaners and floor
cleaning pads, are related, we conclude that there is a
likelihood of confusion.
We also note that in its request for reconsideration
(p. 3), applicant refers to a prior registration that
lapsed. Such an expired registration does not support
applicant’s position that confusion is not likely. As the
examining attorney has pointed out, “there was never any
coexistence of these two marks on the Register.” Brief at
unnumbered p.7, n.3. See also In re Thomas, 79 USPQ2d
1021, 1028 (TTAB 2006) (“To begin with, the fact that the
cited mark and MARCHE NOIR at one time coexisted on the
register does not prove that they coexisted during that
time without confusion in the marketplace. Further, our
Ser No. 76609003
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determination of likelihood of confusion must be based on
the facts and record before us”).
We add that to the extent that we had any doubts about
the likelihood of confusion in this case, we have resolved
them in favor of the registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.