KTS Co. LTD

Trademark Trial and Appeal Board

Dec 19, 2007

No. 79009205 (T.T.A.B. Dec. 19, 2007)

Hearing: Mailed:
September 19, 2007 December 19, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re KTS Co., LTD
________

Serial No. 79009205
_______

Thomas J. Moore of Bacon & Thomas, PLLC for KTS Co., LTD

Richard F. White, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney)
_______

Before Seeherman, Quinn and Holtzman, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

KTS Co., LTD has appealed from the final refusal of
the Trademark Examining Attorney to register POWER MAGNUM,
in the stylized form shown below, and with POWER
disclaimed, for goods which were ultimately amended to
“air-operated hand-held tools, namely, air-operated impact
wrenches, and air-operated ratchet wrenches.”1

1 Application Serial No. 79009205, filed June 3, 2004, based on
Section 66(a) of the Trademark Act, claiming a priority date of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79009205
2

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark MAGNUM (in
typed form), previously registered for “electrically
powered tools—namely, drills and screwdrivers,”2 that it is
likely, when used on applicant’s identified goods, to cause
confusion or mistake or to deceive.
The appeal has been fully briefed, and applicant and
the Examining Attorney appeared at an oral hearing before
the Board.
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

January 20, 2004. It is noted that in the various responses in
which applicant amended its identification of goods, applicant
included a separate paragraph in which it stated that the
amendment was made “without surrendering any of the scope of the
previous identification of goods,” and that applicant was
therefore entitled to the full scope of the previous
identification of goods. However, once an applicant has
expressly amended the identification of goods and services to
delete an item it may not be reinserted in a later amendment.
See In re Swen Sonic Corp., 21 USPQ2d 1794 (TTAB 1991). Thus,
applicant cannot “reserve” its previous identifications of goods,
and we have treated the identification of goods, as amended in
applicant’s request for reconsideration submitted on October 18,
2006, as the operative identification.
2 Registration No. 1175844, issued November 3, 1981; Section 8
affidavit accepted; Section 15 affidavit received; renewed.

Ser No. 79009205
3
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, 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 and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Applicant’s mark is POWER MAGNUM in stylized form.
The cited mark is MAGNUM. Obviously the marks are similar
in appearance and pronunciation to the extent that they
both contain the identical word MAGNUM. Although
applicant’s mark is shown in stylized form, this is not
sufficient to distinguish the marks. The particular type
font used for the mark, and with POWER placed above MAGNUM
and offset slightly to the left, is not so distinctive that
consumers are likely to note or remember it. Moreover, the
cited registration is for the mark in typed form, which
means that the protection to be accorded the mark is not
limited to any particular type font, and would extend to
the font in which applicant’s mark is shown. Nor does the
descriptive word POWER in applicant’s mark serve to
Ser No. 79009205
4
distinguish it from the registrant’s mark. This word,
which has been disclaimed, is descriptive of applicant’s
goods. Consumers will view the term as merely providing
information about the goods, rather than as having source-
indicating significance. Thus, the overall connotation and
commercial impression of the marks, in addition to the
similarities in appearance and pronunciation, are virtually
the same. It is a well-established principle that, 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.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). For the reasons
we have given, we accord greater weight to the word MAGNUM
in applicant’s mark.
Accordingly, when the marks are compared in their
entireties, they are similar in appearance, pronunciation,
connotation and commercial impression. This du Pont factor
favors a finding of likelihood of confusion.
As for the goods, there are specific differences
between them, as applicant’s goods are identified as “air-
operated hand-held tools, namely, air-operated impact
Ser No. 79009205
5
wrenches, and air-operated ratchet wrenches” and the goods
identified in the cited registration are “electrically
powered tools—namely, drills and screwdrivers.” As
applicant points out, applicant’s goods and the
registrant’s goods have specifically different purposes:
drills may drill holes for screws and screwdrivers may
drive a screw into a hole, while wrenches are used to grip
nuts and bolts. Brief, p. 13. We agree that consumers
will readily be able to tell the difference between drills
and screwdrivers, on the one hand, and air-operated
wrenches and ratchet wrenches on the other. However, it is
not whether consumers are likely to confuse the goods, but
whether they are likely to confuse the source of the goods
that is the issue. Thus, it is not necessary that the
goods or services of an applicant and a registrant be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Ser No. 79009205
6
Here, both applicant’s and the registrant’s goods are
tools. Although they are specifically different, they can
be used together, and both can be found in the same
workroom. In view of the complementary nature of the
goods, the du Pont factor of the similarity of the goods
favors a finding of likelihood of confusion. We also note,
as further support for this conclusion, that the Examining
Attorney has made of record Internet evidence showing that
third parties sell both air-operated tools and electrically
powered tools. The website for Milwaukee products,
www.milwaukeeconnect.com, shows both electric drills and
pneumatic nailers and staplers; and the DeWalt website,
www.dewalt.com, advertises, inter alia, drills, a pneumatic
nailer trigger valve kit and pneumatic staplers. In
addition, third-party registrations show that a single mark
has been adopted for “pneumatic and electric tools for
blowing air and driving nails, screws and staples”
(Registration No. 2681753). In particular, there are
third-party registrations for the same types of goods that
are listed applicant’s identification and that of the cited
registration. See Registration No. 2872274 for, inter
alia, pneumatic tools including impact wrenches, wrenches
and ratchets, and for power screwdrivers and drills;
Registration No. 2900086 for, inter alia, power tools,
Ser No. 79009205
7
including drills and screwdrivers, and pneumatic tools,
including impact wrenches and drive ratchet wrench;
Registration No. 2764298 for, inter alia, electric tools
including drills and pneumatic tools, including wrenches
and drills; Registration No. 3175161 for, inter alia,
maintenance and power tools, including hammer drills and
impact wrenches; and Registration No. 3176607 for, inter
alia, cordless electric handheld power tools including
drills, screw drivers and impact wrenches. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
With respect to the channels of trade, the websites
that are of record do not show the specific items that are
identified in applicant’s identification as being offered
for sale along with goods identified in the cited
registration.3 However, the goods are all tools, and thus
are items which can be sold in home improvement stores and
the like. Moreover, there is no question that the goods

3 At the time the Examining Attorney submitted the Internet
evidence, applicant’s identification of goods was much broader,
and the evidence did show items that were included in the
identification at the time the evidence was made of record.

Ser No. 79009205
8
can be sold to and used by some of the same classes of
customers; applicant acknowledged at the oral argument that
its goods can be bought and used by homeowners/do-it-
yourselfers. To this extent, at the very least, this du
Pont factor favors a finding of likelihood of confusion.
Although neither applicant nor the Examining Attorney
has discussed the factor of the conditions of purchase, we
accept that these goods would be bought with some degree of
care and, although they may be purchased by the general
public, the consumers of power tools such as drills, and
air-operated impact wrenches, would have some degree of
knowledge about these items. Although to this extent this
factor favors applicant, even a careful purchaser is not
likely to distinguish between MAGNUM marks on the basis
that one contains the descriptive term POWER.
This brings us to applicant’s primary argument, which
is that MAGNUM is a suggestive and “dilute” term, and that
consumers can distinguish among various MAGNUM marks. In
support of this argument, applicant has submitted copies of
third-party MAGNUM marks, taken from the USPTO’s TESS
database, and excerpts from Internet websites. Applicant
also has submitted a dictionary definition of “magnum,” as
meaning “high-powered due to a larger case and larger
powder charge than other cartridges of approximately the
Ser No. 79009205
9
same caliber—used of cartridges and of weapons designed to
use the cartridge,” and “magnum opus” as meaning “the
greatest achievement of an artist.”
Of the eighteen third-party registrations made of
record by applicant for MAGNUM per se marks, applicant has
highlighted the following in its brief, presumably because
applicant considers them the most relevant and persuasive:
air-applied friction disc brake units
and parts therefor used for industrial
machinery (Registration No. 2892316);

machines parts, namely, valves for
industrial fluid compressors
(Registration No. 2858248);

portable slurry pumps for construction
and restoration (Registration No.
2586581);

drilling jar amplifier tools
(Registration No. 2185428);

grinding tools for grinding machines
(Registration No. 2115877);

high performance segmented diamond
wheels for sawing, grooving and
grinding concrete/asphalt pavement and
gasoline, diesel and hydraulic powered,
liquid cooled saws for receiving said
diamond wheels (Registration No.
1418933); and

power operated airless paint sprayers,
power operated HVLP (high volume low
pressure paint sprayers), power
operated texture sprayers and parts for
the foregoing, namely airless spray
tips, airless spay guns, pressure
rollers and airless hose sold in the
Ser No. 79009205
10
home center channel (Registration No.
2745601).

The Examining Attorney pointed out at the oral argument
that the last listed registration has been cancelled
because the registrant did not file a Section 8 affidavit
of use.
Third-party registrations may be used in the same
manner as dictionary definitions, to show the meaning of a
mark or a portion of a mark in the same way that
dictionaries are employed. Mead Johnson & Company v. Peter
Eckes, 195 USPQ 187 (TTAB 1977). Here, the marks that are
the subject of the third-party registrations, and the
evidence of third-party use, indicate that MAGNUM may have
certain suggestive connotations. However, the goods listed
in the third-party registrations, and which are the subject
of the third-party uses, are so varied that it is not clear
that MAGNUM has a single significance for such goods.
Applicant argues that because “magnum opus” means the
greatest achievement of an artist, MAGNUM per se “used as
an adjective is suggestive of a great achievement.” Brief,
p. 9. In its reply brief, applicant takes this argument
further, and says that because “magnum” suggests a great
achievement, “magnum” in a trademark suggests a great
product. We do not find this position particularly
Ser No. 79009205
11
persuasive, since it would require consumers to view MAGNUM
as suggesting MAGNUM OPUS, then extrapolating from the
meaning of MAGNUM OPUS in terms of artistic achievement
that it means great achievement when applied to any
product, and from this that MAGNUM suggests a great
product.4 However, even if we were to accept that MAGNUM
has a suggestive significance of a great achievement when
it is used in connection with tools, the term can be
considered only slightly suggestive. Even suggestive marks
are entitled to protection against the use of similar marks
for similar goods. Thus, the scope of protection of the
registrant’s mark extends to prevent applicant
appropriating the registrant’s mark in its entirety and
merely adding the descriptive word POWER to it, and using
it for tools that are complementary to the registrant’s
goods.
Third-party registrations, of course, are not evidence
of the use of the marks shown therein or that the public is
familiar with them. In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993), supra. Applicant has, however,
submitted Internet evidence that shows some third-party use

4 Based on the cartridge definition of "magnum," the term could
just as easily suggest "high-powered." Also, another meaning of
"magnum" is "a large wine bottle holding about 2/5 of a gallon."
Thus, in some of the trademarks "MAGNUM" may suggest a larger
size.
Ser No. 79009205
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of MAGNUM.5 The webpages show or list a Quickpoint 1971
Power Caulker Magnum Quart Gun, www.epinions.com;
Thunderbolt Magnum AA alkaline batteries, AAA alkaline
batteries, 9V alkaline batteries, D alkaline batteries and
C alkaline batteries, www.harborfreight.com; the STIHL
chain saw price list which lists, as model numbers, the
MS440 MAGNUM, MS260 MAGNUM, MS660 MAGNUM and MS088 MAGNUM,
www.powerzoneinc.com; “Waterloo Tool Boxes MG5612BK 12
Drawer Magnum Cart-Black” for a tool cart with 3600 pound
load capacity, www.toolrage.com; MAGNUM for a variety of
dryer cords, www.sjgreatdeals.com; and Smith & Wesson
Safety Eyewear, Magnum 3G Clear and Magnum 3G Yellow,
www.professionalequipment.com.
There are also some websites which appear to be
located in foreign countries, e.g., the listing for Stanley
Screwdrivers Magnum Pozidriv Standard, Stanley Screwdrivers
Mangum Pozidriv Long Reach and Stanley Screwdrivers Magnum
Pozidriv Instrument for screwdrivers, www.shop4tools.co.uk,

5 In his brief the Examining Attorney sates that these
submissions should not be afforded any evidentiary consideration
because "internet evidence introduced for the purpose of
demonstrating dilution of a mark is not something that the
examining attorney can consider in ex parte prosecution." p. 8.
Although Examining Attorneys do not consider the ground of
dilution, Internet evidence going to third-party use of a term or
mark is relevant to the determination of likelihood of confusion,
and we have considered applicant's evidence in our determination
of this issue.

Ser No. 79009205
13
is a website with a United Kingdom url; and the BOSCH
Magnum Impact Drill is from a website which appears to be
located in India, www.boschindia.com. Thus, there is some
question as to whether the goods listed in those webpages
are sold in the United States, or whether U.S. consumers
would be familiar with them. In addition, the webpage
www.metabousa.com lists, under “Services,” an explanation
of “Magnum” as “The Metabo program of stationary and semi-
stationary woodworking machines”; another webpage about the
Metabo Group brand names says that “Metabo Magnum not yet
available in the United States.” Id.
Finally, there are pages from two other websites that
applicant has made of record. The first,
www.smallenginewarehouse.com, shows Kohler engines, made by
Kohler, and lists an “18 HP Magnum Vertical 1" shaft
Electric start with Muffler for Aztec, LP SETUP,” which
sells for $1000.00. The second website,
www.lincolnelectric.com, has several pages on the “Power
MIG 215,” which states that it “offers the autobody and
sheet metal fabrication industries top welding
performance.” The base unit for this welding apparatus
includes a “Magnum 250L gun”, and recommended general
options include a “Magnum Connection Kit and Magnum Spool
Gun with Adapter Module & Gun Holder.”
Ser No. 79009205
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If it can be shown that the relevant purchasing public
for the applicant’s and registrant’s goods have been
exposed to numerous third-party marks using a common
element, then an inference can be drawn that the public
does not assume that all such goods and services emanate
from a single source because of the common element, and
that they will look to other elements of the marks to
distinguish them. Based on the evidence of record herein,
we are not persuaded that consumers will look to the word
POWER in applicant’s mark to distinguish it from the
registrant’s mark. First, many of the third-party uses are
for goods that are different from applicant’s and the
registrant’s goods, e.g., engines, welding apparatus for
those in the autobody and sheet metal fabrication
industries, and dryer cords. Second, many of the third
parties use MAGNUM in the manner of a product mark or model
number, such that consumers can differentiate among the
different MAGNUM marks by another trademark that is used
with MAGNUM. See, THUNDERBOLT MAGNUM batteries; WATERLOO
MAGNUM tool carts; STIHL chain saws which specifically
identify the MAGNUM listings as model numbers.
In the present case, however, registrant’s mark is
MAGNUM per se. As registered, there is no house mark or
other mark appearing with it that consumers can look to as
Ser No. 79009205
15
a source-indicator. Similarly, applicant seeks
registration for POWER MAGNUM, without any house mark.
Although applicant’s mark does contain the additional word
POWER, for the reasons we have previously discussed,
consumers are not likely to view this word as a
distinguishing element, but will regard it as merely
providing further information about the nature of the
goods. Accordingly, the du Pont factor of the number and
nature of similar marks in use on similar goods does not
favor applicant.
The final du Pont factor on which there has been
argument or evidence is that of the lack of actual
confusion. With its notice of appeal applicant submitted a
declaration by its president, dated November 29, 2006,
stating that he was unaware of any instances of confusion.
However, because applicant is a Japanese company whose
application is based on Section 66(a) of the Trademark Act,
and there is no indication that it has made any use of its
mark in the United States, we can give no weight to the
fact that there is no evidence of actual confusion. This
du Pont factor, thus, is neutral.
After reviewing all the evidence and arguments with
respect to the du Pont factors, we find that applicant’s
mark POWER MAGNUM in stylized form so resembles the mark
Ser No. 79009205
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MAGNUM, registered as a typed drawing, that applicant’s use
of its mark on its identified goods is likely to cause
confusion or mistake or to deceive with respect to the
cited registration. To the extent that there is any doubt
on this issue, it is well established that such doubt must
be resolved in favor of the registrant and prior user. In
re Pneumatiques, Caoutchouc Manufacture et Plastiques
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.