Hendrickson USA, LLC

Trademark Trial and Appeal Board

Jun 16, 2016

No. 86421996 (T.T.A.B. Jun. 16, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Hendrickson USA, LLC
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Serial No. 86421996
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David P. Dureska of Dureska Kennedy & Moore LLC,
for Hendrickson USA, LLC
David Yontef, Trademark Examining Attorney, Law Office 118,
Thomas G. Howell, Managing Attorney.
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Before Quinn, Greenbaum and Gorowitz,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Hendrickson USA, LLC (“Applicant”) seeks registration on the Principal Register
of the mark MONUMAAX (in standard characters) for
Suspension systems for heavy-duty land vehicles in
International Class 12.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s

1 Application Serial No. 86421996 was filed on October 13, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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mark, when used on or in connection with Applicant’s goods, is likely to cause
confusion with the mark MONOMAX (in standard characters) for “Shock absorbers
for light trucks and sport utility vehicles” in International Class 12.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Likelihood of Confusion - Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
likelihood of confusion analysis, two key considerations are the similarities between
the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort
Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”).
A. Comparison of the Marks.
We first address the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,

2 Registration No. 2511090 issued on November 20, 2001. Renewed.
Serial No. 86421996
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connotation and commercial impression.’” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted).
The marks MONUMAAX and MONOMAX are highly similar in appearance and
sound. Both are three-syllable terms that begin with the letters “MON,” followed by
a single vowel, and end with the phonetically equivalent terms “MAAX” and MAX.”
The only differences in appearance between the two marks are the double “A” and
the presence of the letter “U” in place of the letter “O” in Applicant’s mark. These
differences in appearance are relatively minor, especially since they are embedded in
the middle of each mark. Given the overall visual similarity in the terms, as well as
the similarity in sound discussed below, it is unlikely that consumers will notice the
different letters, or treat them as a distinguishing feature.
In terms of sound, we recognize that there is no correct pronunciation of a mark
that, like each of the marks before us, is not a recognized word. StonCor Grp., Inc. v.
Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014);
Viterra, 10 USPQ2d at 1912. Nonetheless, the facts that Applicant’s mark and
Registrant’s mark share the same structure and differ by only two letters creates
Serial No. 86421996
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aural similarity. See Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862,
1863 (TTAB 2002) (finding similarity between LEGO and MEGO). Moreover, even if
Applicant is correct that “in all examples Applicant has found of words using the
prefix ‘Monu,’ the prefix is always pronounced ‘män-ye’”3 whereas “the prefix “Mono”
is pronounced as ‘mon-oh’,”4 the difference between the “U” and O” sound is slight, at
best, especially when combined with the phonetically equivalent final syllables
MAAX and MAX. Thus, consumers are likely to pronounce the marks MONUMAAX
and MONOMAX similarly, and to the extent any minor difference in pronunciation
exists, consumers who hear the marks spoken by others are not likely to even notice
the difference. See Viterra, 101 USPQ2d at 1912 (XCEED and X-SEED similar).
Slight differences in the sound of similar marks do not avoid a likelihood of confusion.
In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 352 (TTAB 1983).
Applicant asserts that the prefix “mono” “has a specific meaning for shock
absorbers used with small trucks and SUVs … [which] typically are manufactured
with either a twin tube design or a monotube design, as is shown by Registrant’s own
website.”5 Applicant posits that the combination of MONO and MAX in Registrant’s
mark connotes shock absorbers that feature a monotube design, while the
combination of MONU and MAAX in Applicant’s mark creates the commercial
impression that Applicant’s shock absorbers are “very important,” “very great,”

3 17 TTABVUE 7.
4 14 TTABVUE 9.
5 14 TTABVUE 10.
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“highly significant” or “outstanding.”6 However, Applicant’s mark MONUMAAX and
Registrant’s mark MONOMAX are coined terms with no known meanings. And
because the marks look and sound so similar, consumers who ascribe one of the
asserted meanings to one of the marks are equally likely to ascribe the same asserted
meaning to the other mark. The commercial impressions of the marks therefore are
the same.
While there are some specific differences between the two marks, we find that in
their entireties, Applicant’s mark MONUMAAX and Registrant’s mark MONOMAX
are highly similar in appearance and sound. The similarity in sound and overall
appearance is sufficient to find that the first du Pont factor favors a finding of
likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (a
finding of similarity as to any one factor (sight, sound or meaning) alone may be
sufficient to support a holding that the marks are confusingly similar). Additionally,
marks both create similar overall commercial impressions.
B. Relatedness of the Goods, Channels of Trade and Conditions of
Purchase.
With regard to the goods, channels of trade and conditions of purchase, we must
make our determinations under these factors based on the goods as they are
identified in the application and registration. See In re Dixie Rests., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v.

6 14 TTABVUE 11, referring to the definition of “monumental” from http://www.merriam-
webster.com/dictionary/monumental attached to September 14, 2015 Request for
Reconsideration (4 TTABVUE 27).
Serial No. 86421996
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Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may
perceive [the respective goods and services of the parties] as related enough to cause
confusion about the source or origin of the goods and services.’” In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62
USPQ2d at 1004).
When analyzing the similarity of the goods, “it is not necessary that the products
of the parties be similar or even competitive to support a finding of likelihood of
confusion.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. Am. Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (The goods need not be
identical or even competitive to find a likelihood of confusion). Rather, “likelihood of
confusion can be found ‘if the respective products are related in some manner and/or
if the circumstances surrounding their marketing are such that they could give rise
to the mistaken belief that they emanate from the same source.’” Coach Servs., 101
USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there
is a likelihood of confusion as to the source of the goods, not whether purchasers would
confuse the goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In
re Rexel Inc., 223 USPQ 830 (TTAB 1984).
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As noted above, Applicant’s goods are identified as “suspension systems for heavy-
duty land vehicles,” and Registrant’s goods are identified as “shock absorbers for light
trucks and sport utility vehicles.” The DICTIONARY OF AUTOMOTIVE TERMS defines
“suspension system” as “a system that cushions the passenger compartment of the
vehicle from the bumps and shocks caused by the wheels moving over irregular road
surfaces … includes springs, shock absorbers, steering linkage, upper and lower
control arms, torsion bars, stabilizers, etc.,” and it defines “shock absorber” as “an oil
filled device used to control spring oscillation in the suspension system. At least one
shock absorber is found at each wheel.”7 Thus, the goods are inherently related to the
extent that shock absorbers are a component part of vehicular suspension systems.
The question is whether the different vehicle types identified in the application and
registration sufficiently distinguish the identified goods.
As an initial point, we note that Applicant and the Examining Attorney disagree
as to the meaning of “heavy duty trucks” and “light trucks/SUVs,” with the former
contending that they are classified according to the maximum weight of the vehicle,
and the latter contending that they are classified based on the maximum load the
vehicle can carry. For purposes of this decision, we adopt Applicant’s definition, as
the listing for “Light truck” from the DICTIONARY OF AUTOMOTIVE TERMS, which the
Examining Attorney made of record, comports therewith.8

7 http://www.motorea.com/dictionary/sh.htm attached to December 9, 2014 Office Action.
8 6 TTABVUE 11. http://www.motorea.com/dictionary/li.htm. We acknowledge that this
source defines “Light-duty” as “Something that is built for light loads or non-severe use.
Opposite to Heavy-Duty.” However, the shock absorbers identified in the registration are for
“light trucks and sport utility vehicles,” not for “light-duty trucks.” The listing for “Light
truck” defines the term as “1. A vehicle weighing less than 14,000 lbs. 2. Typically a vehicle
Serial No. 86421996
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Applicant argues that heavy-duty vehicles are “specialized” and comprise “a
distinct class of vehicles with specialized parts, designed to accommodate the
significant increase in vehicle weight compared to smaller vehicles such as light
trucks and sport utility vehicles.”9 As such, parts for such vehicles, including
suspension systems, “are unlikely to be sold and marketed with non-heavy-duty
parts, such as those for use in light trucks and sport utility vehicles as described in
the ‘090 registration.”10 Rather, Applicant posits that Applicant’s identified goods are
sold specifically through authorized distributors which specialize in heavy-duty
vehicle parts.11 Applicant acknowledges that some of Applicant’s distributorships,
such as Volvo, sell parts for automotive and heavy-duty vehicles, but argues that the
trade channels are distinct because separate divisions in the distributorships handle
the sales.12
We do not find Applicant’s arguments persuasive. Although the record contains
only one third-party registration covering goods of the type identified in the

under 3 tons, which includes pickups, passenger vans, and most 4WD vehicles and for which
one does not need a special license. Compare HGV. 3. Department of Transportation
definition: All single unit two-axle, four-tire trucks, including pickup trucks, sport utility
vehicles, vans, motor homes, etc. 4. Energy information definition: all trucks weighing 8,500
pounds or less.” 6 TTABVUE 13. None of the definitions of “Light truck” pertain to the weight
of the load.
9 14 TTABVUE 13.
10 Id.
11 Applicant provided a list of its distributorships with its Request for Reconsideration. 4
TTABVUE 60-62.
12 Applicant attached to its Request for Reconsideration printouts from www.volvotrucks.com
and www.volvopartswebstore.com. 4 TTABVUE 64-68.
Serial No. 86421996
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application and registration13 (see In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993) (copies of use-based, third-party registrations may serve to suggest
that the goods are of a type which may emanate from a single source)), the Examining
Attorney also submitted printouts from various third-party websites showing that
companies such as Bilstein14, Gabriel15 and Sachs16 manufacture shock absorbers for
heavy duty trucks and light trucks/SUVs, and companies such as Link17 and
WABCO18 manufacture suspensions for heavy duty trucks and light trucks/SUVs.
Moreover, the record establishes that the types of goods in the application and
registration move in the same trade channels. For example,
Truckcomponentsonline.com offers suspensions for heavy duty trucks and pickups,
vans, RVs and cars, plus “suspension vehicle shocks,”19 Beattie Spring “Michigan’s
Leading Suspension Specialists” offers “full suspension service and suspension parts
sales” for cars, light duty trucks, and heavy duty trucks, and also provides shock and
strut installation20, Dendoff Spring supplies original and aftermarket suspension
components for automotive and heavy duty trucks as well as shock absorbers, and

13 Reg. No. 2768882 for the mark POWER HEAVY DUTY for “automotive, vehicle and heavy
duty truck parts and accessories, namely, … shock absorbers, suspensions …”, attached to
March 31, 2015 Final Office Action.
14 11 TTABVUE 13-16.
15 10 TTABVUE 2-9.
16 12 TTABVUE 18-20.
17 7 TTABVUE 6-12.
18 6 TTABVUE 13-16.
19 9 TTABVUE 2-8, 10 TTABVUE 12-13.
20 12 TTABVUE 9.
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markets itself as “[m]ore than spring makers, we are also resellers of suspension
parts for most lines of automobiles and trucks around the world,”21 and NFS Truck
Parts Specialists sells, installs and repairs suspensions for light, medium, and heavy-
duty trucks, and also sells shock absorbers.22
Even if, as Applicant contends, distributors such as Volvo sell heavy duty and light
duty vehicle parts through separate divisions, we agree with the Examining Attorney
that consumers who already are familiar with Volvo’s use of its mark with suspension
parts for heavy duty vehicles, and who encounter Volvo’s mark on suspension parts
for light duty trucks/SUVs, are likely to believe that Volvo is a house mark applied to
many types of automotive parts, and that the suspension parts emanate from, are
sponsored by, or are affiliated with, the same company.
Based upon the evidence of record, we find that consumers would believe that
Applicant’s identified “suspension systems for heavy-duty land vehicles” are related
to Registrant’s identified “shock absorbers for light trucks and sport utility vehicles,”
and the channels of trade are the same or similar.
As to purchasing conditions, Applicant argues, without evidentiary support, that
purchasers of the goods identified in the application and registration are
sophisticated. Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 27 USPQ2d
1846, 1849 (Fed. Cir. 1993) (“mere attorney arguments unsubstantiated by record
evidence are suspect at best”). Despite the lack of evidence, we recognize that at

21 12 TTABVUE 10-11.
22 12 TTABVUE 23.
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minimum, these goods would not be considered impulse purchases. On the other
hand, the record does not support a finding that the conditions of sale would outweigh
the other du Pont factors. As the Examining Attorney correctly observed, even
sophisticated purchasers are not necessarily immune from source confusion.
Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 34 USPQ2d 1526, 1530 (Fed.
Cir. 1995) (“the record shows that the buyers of Imagineering’s and Van Klassens’
furniture are sophisticated. While a sophisticated purchaser might more easily
discern distinctions between Van Klassens’ and Imagineering’s furniture, the record
in this case shows that even a trained furniture salesman could not distinguish the
two products.”); HRL Assoc., Inc. v. Weiss Assoc., Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods
and marks outweigh sophisticated purchasers, careful purchasing decision, and
expensive goods).
II. Conclusion
We have carefully considered all evidence of record and Applicant’s arguments,
even if not specifically discussed herein, as they pertain to the relevant du Pont
factors. We treat as neutral any du Pont factors for which there is no evidence.
Because the marks are highly similar when viewed in their entireties, and the goods
identified in the application and registration are related and move in the same trade
channels, we find that confusion is likely between Applicant’s mark MONUMAAX
and Registrant’s mark MONOMAX.
Decision: The refusal to register Applicant’s mark MONUMAAX is affirmed.