MDG Tools, Inc.

Trademark Trial and Appeal Board

Jun 2, 2010

No. 76673145 (T.T.A.B. Jun. 2, 2010)

June 2, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MDG Tools, Inc.
________

Serial No. 76673145
_______

Jonathan O. Owens of Haverstock & Owens LLP for MDG Tools,
Inc.

Yat-sye I. Lee, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Mermelstein and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

MDG Tools, Inc. filed an application for the mark
MAGNOGRIP, in standard character form, for goods ultimately
identified as follows:
(Based on intent to use) accessory,
namely, tool belt clip containing
magnet, for holding work pieces,
namely, screws, nails, bolts and nuts
for convenience of the wearer during
work; (Based on use in commerce) wrist
bands containing magnet, for holding
work pieces, namely, screws, nails,
bolts and nuts for convenience of the
wearer during work, in Class 8; and

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76673145
2
(Based on intent to use) work gloves
containing magnet, for holding work
pieces, namely screws, nails, bolts and
nuts for convenience of the wearer
during work, in Class 21.

The Trademark Examining Attorney refused registration
on the ground of likelihood of confusion under Section 2(d)
of the Trademark Act of 1946, 15 U.S.C. §1052(d), because
applicant’s mark MAGNOGRIP, when used in connection with
tool belt clips, wrist bands and work gloves “for holding
work pieces,” so resembles the mark MAGNAGRIP, in typed
drawing form, for “holders for articles of magnetic
material such as knives, kitchen utensils, and hand tools,”
in Class 21, as to be likely to cause confusion.1
Preliminary Issue
In applicant’s May 14, 2009 response, it argued that
there were 15 registrations for marks containing the prefix
“MAGNA” in Classes 21 and 41. Applicant neither referred
to any specific marks nor did it list any of those
registrations. The examining attorney issued her final
refusal on June 8, 2009. In the final refusal, the
examining attorney responded to applicant’s argument
regarding the 15 third-party registrations by searching the
Trademark Office database and finding only seven live

1 Registration No. 0519152, issued December 27, 1949; third
renewal.
Serial No. 76673145
3
registrations containing the letter string M-A-G-N
preceding the word “Grip.” The examining attorney made
those registrations of record and asserted that they were
of little relevance because none of them were for similar
goods.
In its September 4, 2009, request for reconsideration,
applicant repeated its argument that the mark in the cited
registration is weak and, therefore, entitled to only a
narrow scope of protection because there are “15 marks that
contain the prefix ‘MAGNA,’ in addition to the cited
reference MAGNAGRIP in International Class (sic) 021 and
41” and this time applicant listed the marks, but still did
not provide copies of the registrations. In an Office
Action dated October 5, 2009, the examining attorney denied
the request for reconsideration without referencing
applicant’s list of “Magna” registrations.
In its appeal brief, applicant repeated the argument
regarding the weakness of the mark in the cited
registration and referenced the third-party “Magna”
registrations. In her brief, the examining attorney lodged
an objection to the list of third-party registrations in
applicant’s brief on the ground that the registrations were
not properly made of record. The objection is overruled.
Serial No. 76673145
4
The Trademark Trial and Appeal Board does not take
judicial notice of registrations, and the submission of a
list of registrations does not make these registrations
part of the record. In re Duofold Inc., 184 USPQ 638, 640
(TTAB 1974). To make registrations of record, soft copies
of the registrations or the complete electronic equivalent
(i.e., complete printouts taken from any of the USPTO’s
automated systems (X-Search, TESS, TARR, or TRAM)) must be
submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370
(TTAB 1998); In re Volvo Cars of North America Inc.,
46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Smith &
Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994).
However, if the applicant submits improper evidence of
third-party registrations, the examining attorney should
object to the evidence in the next Office action (in this
case, the September 4, 2009 Office Action denying the
request for reconsideration), or the Board may consider the
objection to be waived. See In re 1st USA Realty
Professionals, 84 USPQ2d 1581, 1583 (TTAB 2007) (Board
considered applicant’s own registration, provided for the
first time on appeal, because it had been referred to
during prosecution and the examining attorney addressed the
issue without objection; Board also allowed evidence of a
list of third-party registrations because the examining
Serial No. 76673145
5
attorney did not advise applicant of the insufficiency of
the list while there was still time to correct the
mistake); In re Broyhill Furniture Industries, Inc., 60
USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence
waived where it was not interposed in response to
applicant’s reliance on listing of third-party
registrations in response to initial Office action). If
the applicant files an appeal, the examining attorney
should continue the objection to the evidence in her appeal
brief.
As indicated above, in the September 4, 2009 Office
Action, the examining attorney should have lodged an
objection to the applicant’s list of third-party
registrations and advised applicant regarding the proper
procedure for introducing the registrations into evidence.2
Had the examining attorney followed the proper procedure
set forth above, and in TMEP §710.03 (6th ed. 2010),
applicant would have had until December 8, 2009 to properly
make the third-party registrations of record. In view of
the foregoing, the examining attorney’s objection to the
third-party registrations is overruled and we will consider

2 In her June 8, 2009 “final” office action, the examining
attorney could have advised applicant that the argument it made
in its May 14, 2009 response was unsupported by any evidence and
instructed applicant as to the proper way to make the third-party
registrations of record.
Serial No. 76673145
6
the registrations for whatever probative value they may
have.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. 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 Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
goods and/or services. See Federated Foods, Inc. v. Fort
Howard Paper 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. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Serial No. 76673145
7
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
the test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression so that confusion as to the
source of the goods offered under the respective marks is
likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished,
No. 92-1086 (Fed. Cir. June 5, 1992). The proper focus is
on the recollection of the average customer, who retains a
general rather than specific impression of the marks.
Winnebago Industries, Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The marks MAGNOGRIP and MAGNAGRIP are similar in terms
of appearance and sound because both marks begin with the
letters “M-A-G-N” and end with the word “GRIP.” The only
difference between the marks is the letter “O” in the
Serial No. 76673145
8
middle of applicant’s mark instead of the letter “A.”
Because both marks are compound terms (MAGNA or MAGNO and
GRIP), many purchasers may fail to notice the different
vowel in the middle of applicant’s mark. Thus, the
difference between the marks is not likely to overcome the
similarities. See Russell Chemical Co. v. Wyandotte
Chemicals Corp., 337 F.2d 660, 143 USPQ 252, (CCPA 1964)
(SENTOL for industrial detergents adapted for cleaning
dairy equipment held likely to be confused with SEN-TROL
for detergents used in power dishwashing machines because
“[d]eletion of the ‘r’ from SEN-TROL has but little effect
… upon the eyes of the viewer”); In re Great Lakes Canning,
Inc., 227 USPQ 483, 485 (TTAB 1985) (CAYNA is confusingly
similar to CANA); General Electric Co. v. Raychem Corp.,
184 USPQ 766, 767 (TTAB 1974) (FLAMTROL for insulated wire
likely to be confused with FLAMENOL for electric wires,
cables and conductors); Sterling Drug, Inc. v. Sun Chemical
Corp., 142 USPQ 330, 333 (TTAB 1964) (WARCOCIDE for
industrial germicidal chemicals is likely to cause
confusion with WARFICIDE for rodenticide).
Likewise, applicant’s use of the letter “O” instead of
the letter “A” in the middle of the mark is not sufficient
to distinguish the marks aurally. The registered mark is
Serial No. 76673145
9
likely to be pronounced MĂG NŌ GRĬP and applicant’s mark is
likely to be pronounced MĂG NĂ GRĬP; and the slight
difference in the pronunciations is not likely to have any
effect upon consumers.
While both marks appear to be coined terms, they
engender the identical commercial impression: magnetic
grip.
In considering the marks in their entireties, we find
that the similarities between the marks outweigh the
differences because in the normal marketing environment,
purchasers would not have the luxury of examining the marks
in minute detail. Also, as noted above, the memory of the
average purchaser is not infallible, and he/she may retain
only a hazy, rather than a specific, recollection of the
marks. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1468
(TTAB 1988). Considering the similarities between the
marks, a purchaser who sees one mark and later encounters
the other is likely to think that the second mark is
related to the first mark. See Hercules Inc. v. National
Starch & Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984)
(“it is a fundamental tenet of our trademark law that exact
similitude is not required to conclude that two marks are
confusingly similar. Thus, when there are small
differences between the marks, the differences may be
Serial No. 76673145
10
insignificant in obviating the likelihood of confusion when
compared to the marks’ overall similarities”).
B. The similarity or dissimilarity and nature of the
goods.

It is well settled that likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981); In re William Hodges & Co.,
Inc., 190 USPQ 47, 48 (TTAB 1976). In analyzing the
similarity or relatedness of the goods, it is not necessary
that the respective goods be identical or even competitive
to find that they are related for purposes of likelihood of
confusion. The issue is not whether consumers would
confuse the goods themselves, but rather whether they would
be confused as to the source of the goods. In re Rexel
Inc., 223 USPQ 830, 831 (TTAB 1984). The goods need only
be sufficiently related that consumers would be likely to
assume, upon encountering the goods under similar marks,
that the goods originate from, are sponsored or authorized
by, or are otherwise connected to the same source. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
Serial No. 76673145
11
223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386, 1388 (TTAB 1991); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, applicant’s goods are a tool belt clip,
wrist band, and work gloves containing a magnet for holding
work pieces, namely screws, nails, bolts and nuts, while
the registered mark is for “holders for articles of
magnetic material such as knives, kitchen utensils, and
hand tools.” For our purposes, the goods listed in the
registration are holders for hand tools.3 The goods at
issue are related because they are all used for holding
tools and equipment: registrant’s goods are tool holders
and applicant’s goods are for holding fasteners and the
like. Thus, both sets of goods could be encountered by the
same consumers or users (e.g., carpenters, mechanics, non-
professional do-it-yourselfers) under circumstances likely
to give rise to the mistaken belief that they emanate from
the same source because of the similarity of the marks.
The examining attorney submitted third-party
registrations to show the relatedness of the goods. Third-
party registrations which individually cover a number of

3 Likelihood of confusion may be found based on any item that
comes within the identification of goods in the involved
application and registration. Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 209 USPQ 986, 988 (CCPA 1981); In re Davey
Products Pty Ltd., 91 USPQ2d 1198, 1202 (TTAB 2009).
Serial No. 76673145
12
different goods that are based on use in commerce may have
some probative value to the extent that they serve to
suggest that the listed goods are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d at 1470 n.6. The registrations listed below
are representative.4
Mark Reg.
No.
Goods

SIGNATURE
SERIES
3275631 Tool holders; tool pouches for
attachment to tool belts

GRIP TIGHT
TOOLS
3313101 Tool holders; tool pouches for
attachment to tool belts; work
gloves

IRWIN 2978383 Tool holders; tool pouches for
attachment to tool belts

WORKSMART 2978757 Tool holders; tool pouches for
attachment to tool belts

CHIX CAN FIX 3325961 Tool holders; tool pouches for
attachment to tool belts;
protective work gloves

CLC 3203569 Tool holders; tool pouches for
attachment to tool belts

PROWARE 3321388 Tool holders; tool pouches for
attachment to tool belts

4 Applicant’s goods include tool belt clips, not tool belts per
se. Accordingly, we did not include registrations that listed
tool belts without clips or some other type of tool belt
attachment. Also, we only listed the relevant goods.
Serial No. 76673145
13
The examining attorney submitted excerpts from the
SEARS website advertising the sale of CRAFTSMAN magnetic
tool storage mat and CRAFTSMAN tool holders that attach to
a tool belt and CRAFTSMAN work gloves. Also, the examining
attorney submitted excerpts from the Overstock.com website
advertising GRIP magnetic mechanics gloves and the
Amazon.com website advertising GRIP magnetic tool holders.
Amazon.com also advertised both a MASTER MAGNETICS belt
magnet for holding drill bits and fasters as well as a
MASTER MAGNETICS magnet tool holder.
Applicant argues the description of goods contains
inherent restrictions which distinguish the goods for
purposes of determining likelihood of confusion.
Registrant’s mark is for holders for
articles of magnetic materials such as
knives, kitchen utensils, and hand
tools in International Class 21. In
contrast, the Applicant’s registration
(sic) is limited to accessory, namely
[tool belt clip, work gloves and wrist
bands] containing magnet, for holding
work pieces, namely screws, nails,
bolts and nuts for convenience of the
wearer during work. The limitations of
the marks differ with respect to
purpose and scope as the Applicant’s
mark does not contemplate holding
knives, kitchen utensils, or other hand
tools with its magnets insomuch as the
Registrant’s mark does not contemplate
holding small work pieces.5

5 Applicant’s Reply Brief, pp. 10-11.
Serial No. 76673145
14
First, we would not describe the identification of
goods at issue as containing restrictions or limitations.
Generally, we refer to limitations or restrictions in the
identification of goods as referring to restrictions in the
channels of trade or classes of consumers. In the
application, the purported limitation does not address how
or to whom the products are sold; it defines the products
with specificity. Second, applicant’s argument that the
goods are not related is based on the false premise that
because the products are different, consumers will not
believe that the products emanate from the same source
despite the similarity of the marks. As indicated above,
the issue is not whether consumers will confuse the
products, but whether consumers will confuse the source of
the products because of the similarity of the marks. In
this case, very similar marks are being used to identify a
magnetic tool holder by registrant and a tool belt clip,
wrist band, and work gloves with a magnetic feature for
holding fasteners or drill bits by applicant that could be
used in connection with the tools stored on the magnetic
tool holder. We find that there is a sufficient nexus
between the goods that when sold under similar marks,
consumers will mistakenly believe that they emanate from
the same source.
Serial No. 76673145
15
In view of the foregoing, we find that the nature of
the goods is similar, thus, supporting a likelihood of
confusion.
C. The similarity or dissimilarity of likely-to-continue
trade channels and the buyers to whom sales are made.

As state above, there are no restrictions or
limitations in the description of goods for the application
or the cited registration. Absent such restrictions or
limitations, we must assume that the goods travel in “the
normal and usual channels of trade and methods of
distribution.” CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); see also In re Elbaum,
211 USPQ at 640. Because registrant’s goods are tool
holders and applicant’s goods are a tool belt clip, wrist
band, and work gloves containing a magnet for holding work
pieces, namely screws, nails, bolts and nuts, the goods may
be sold to anyone who has hand tools and does work
requiring tools, screws, nails, bolts and nuts (e.g.,
carpenters, mechanics, non-professional do-it-yourselfers).
With respect to the channels of trade, the examining
attorney submitted excerpts from websites showing that the
products of applicant and registrant are sold by the same
Serial No. 76673145
16
retailers (e.g., Sears, Home Depot, Lowe’s, ACE Hardware,
and Hechinger).6
In view of the foregoing, we find that the same
consumers would purchase both registrant’s magnetic tool
holders and applicant’s tool belt clips, wrist bands, and
work gloves, and that the goods would be sold in the same
channels of trade.
D. The number and nature of similar marks in use on
similar goods.

Applicant asserts that its mark is in a “crowded
field.” Specifically, applicant argues that there are 15
“Magna” marks registered in Classes 21 and 41, including,
but not limited to, MAGNABLOC for knife blocks, MAGNA
WONDER KNIFE for magnetic knives and MAGNACOOK for kitchen
tools including chopping boards.
Clearly, the cited reference
“MAGNAGRIP” is hemmed in on all sides
by similar marks for similar goods. …
In such a market, customer have learned
to carefully pick one product from the
other. Such third party (sic) usage

6 The excerpts from Amazon.com are not probative that the
products at issue move in same channels of trade because it is
common knowledge that virtually all products are sold through
Amazon.com. With respect to the channels of trade factor, the
fact that products are sold through Amazon.com is no more
probative than saying that products are sold through the
Internet. See Sheller-Globe Corp. v. Scott Paper Co., 204 USPQ
329, 335 (TTAB 1979) (not everything that is sold by large retail
establishment selling plethora of otherwise unrelated goods is
necessarily connected, within the meaning Section 2(d), to every
other product that happens to be displayed or offered under same
roof).
Serial No. 76673145
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demonstrates that customers have become
so conditioned by so many similar marks
that customers have been educated to
distinguish between different marks on
the basis of minimal distinctions.7

The problem with applicant’s argument is that third-
party registrations do not prove that the registered mark
MAGNAGRIP is a weak mark. Absent evidence of actual use,
third-party registrations have little probative value
because they are not evidence that the marks are in
use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party
(sic) registration evidence proves
nothing about the impact of the third-
party marks on purchasers in terms of
dilution of the mark in question or
conditioning of the purchasers as their
weakness in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.

7 Applicant’s Brief, p. 9.
Serial No. 76673145
18
While third-party registrations may be used in the
manner of a dictionary to show that a mark or a portion of
a mark is descriptive or suggestive of goods and services,
the third-party registrations submitted by applicant do not
prove that the registered mark MAGNAGRIP is so weak and
diluted that applicant’s substitution of the letter “O” in
the middle of the term is sufficient to distinguish the
marks when they are used in connection with related
products.
Even if we were to concede that MAGNAGRIP is a weak
mark, it is well established that even the owner of a weak
mark is entitled to be protected from a likelihood of
confusion with another’s use of the same or confusingly
similar mark. Giant Foods, Inc. v. Ross and Mastracco,
Inc., 218 USPQ 521, 526 (TTAB 1982). Moreover, in this
case, applicant’s mark MAGNOGRIP is closer to the
registered mark MAGNAGRIP than any of the third-party
registrations referenced by applicant. In this regard, the
examining attorney introduced the seven live registrations
comprising the letter string M-A-G-N preceding the word
“Grip.”8 We find that only one of the registrations is
arguably relevant: Registration No. 1080186 for the mark

8 June 8, 2008 Office Action.
Serial No. 76673145
19
MAGNA-GRIP for “two-part fasteners comprising pins and
collars,” in Class 6.
Based on the evidence of record, including the
registrations applicant referenced but did not submit, we
are not persuaded that the cited registration for the mark
Serial No. 76673145
20
MAGNAGRIP is so highly suggestive and diluted as to justify
the registration of applicant’s mark.
E. The conditions under which and buyers to whom sales
are made (i.e., impulse vs. careful, sophisticated
purchasing).

Applicant contends that its products are used by
professional users of small hand tools such as carpenters,
seamstresses, auto mechanics, electricians, plumbers,
construction workers, as well as non-professional do-it-
yourselfers and, therefore, “a purchaser is more likely to
look at the goods closely to determine the source.”9
There are a number of problems with applicant’s
argument. First, applicant does not explain why the wide
variety of potential consumers, including non-professional
do-it-yourselfers will exercise a high degree of care in
their purchasing decisions. Second, “non-professional do-
it-yourselfers” include ordinary consumers who will
exercise ordinary care in making their purchasing decision.
Because there are no restrictions in the channels of trade
or classes of consumers in the identification of goods for
the application and registration, there is no basis for
asserting that that purchasers at issue exercise a high
degree of care. See In re Bercut-Vandervoort & Co., 229

9 Applicant’s Brief, p. 9; Applicant’s Reply Brief, p. 12.
Serial No. 76673145
21
USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are
expensive wines sold to discriminating purchasers must be
disregarded given the absence of any such restrictions in
the application or registration). We must presume that
both applicant’s and registrant’s products would be sold to
all consumers including those that would exercise only
ordinary care.
F. Balancing the factors.
In view of our determination that the marks and goods
are similar and that channels of trade and classes of
consumers are identical, we find that applicant’s mark
mark MAGNOGRIP, when used in connection with tool belt
clips, wrist bands and work gloves “for holding work
pieces,” so resembles the mark MAGNAGRIP for “holders for
articles of magnetic material such as knives, kitchen
utensils, and hand tools” as to be likely to cause
confusion
Decision: The refusal to register is affirmed.