Millers Falls Tool Co.

Trademark Trial and Appeal Board

Jul 30, 1997

EX (T.T.A.B. Jul. 30, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB JULY 30, 97
Paper No. 15
JER
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Millers Falls Tool Company
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Serial No. 74/587,902
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B. Joseph Schaeff of Killworth, Gottman, Hagan & Schaeff for
applicant.
Cindy B. Greenbaum, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
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Before Rice, Cissel, and Hohein, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
An intent-to-use application has been filed by Millers
Falls Tool Company to register the mark MOHAWK-SHELBURNE for
hand powered construction tools, namely, saws, saw frames,
saw blades and drill bits.1
Registration has been finally refused under Section
2(d) of the Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when used in connection with its specified
goods, so resembles the mark MOHAWK, registered for hand

1 Application Serial No. 74/587,902, filed October 20, 1994
under Section 1(b) of the Trademark Act of 1946, 15 U.S.C.
§1051(b), based on applicant's allegation of its bona fide
intention to use the mark in commerce.
operated tools, namely, spur gear drill, sander, floor jack,
die grinder, impact wrench and ratchet,2 as to be likely to
cause confusion, or to cause mistake, or to deceive.
In support of the refusal to register, the Examining
Attorney has made of record a number of third-party
registrations and applications to show that third parties
have registered, or sought to register, their marks both for
one or more items of the type specified in applicant's
application, and for one or more items of the type listed in
the cited registration.3

2 Registration No. 1,197,128 issued to Pacific Freight Supply,
Inc., a.k.a. Certified Tool Co., on June 8, 1982; Sec. 8
affidavit accepted; Sec. 15 affidavit received.
The Examining Attorney initially cited two additional
registrations, both issued to Precision Twist Drill Co. The
first, Registration No. 1,565,493, issued November 14, 1989 for
the mark MOHAWK for carbide tipped and high speed steel standard
and special cutting tools, namely, end mills, counter borers,
reamers, bull nose centers, full and half centers; cobalt high
speed steel standard and special cutting tools, namely, end
mills; solid carbide standard and special cutting tools, namely,
end mills, drills, reamers, routers, grinding tools, slitting
saws, and countersinks; and high speed steel aircraft tooling.
During the course of the prosecution of this application,
Registration No. 1,565,493 was cancelled under the provisions of
Section 8 of the Act and was therefore withdrawn as a reference.
The second registration, Registration No. 1,641,034, issued
April 16, 1991 for the mark MOHAWK for drill bit blanks and
reamer blanks; Sec. 8 affidavit accepted; Sec. 15 affidavit
received. In her appeal brief, the Examining Attorney withdrew
this registration as a reference against applicant's mark.
3 Examples of these applications and registrations, and the
pertinent goods in each, include application Serial No.
74/600,982--saw blades, drill bits, and drills; application
Serial No. 74/597,457--nonelectric hand-held tools, namely,
drills and drill bits; application Serial No. 74/482,090--hand-
operated tools, namely, wrenches, saws and saw blades, and drill
bits; Registration No. 1,818,748--hand tools, namely, wrenches,
saw blades, bits for hand drills, and hand saws; Registration
No. 1,824,770--cutting tools for hand operated tools, namely,
drills and drill bit; Registration Nos. 1,847,996 and 1,853,966
(owned by same third-party registrant)--hand tools, namely,
drills, drill bits, manually-operated jacks for motor cars, saws
Applicant, in turn, relies upon approximately 100
active and inactive federal registrations and applications4
for marks which consist of or include the term MOHAWK.5

and blades therefor, and wrenches; Registration No. 1,776,931--
hand tools and hand tool accessories, namely, drills and drill
bits for hand drills; Registration No. 1,772,214--manually
operated hand tools, namely, wrenches, saws, drills and drill
bits; and Registration No. 1,824,896--hand tools, namely,
wrenches, saws, and drill bits.
4 To make the applications and registrations of record,
applicant submitted printouts of registration and application
information from the CompuMark trademark search database. The
Board ordinarily will not consider copies of a search report or
information taken from a private company's database as credible
evidence of the existence of the registrations and applications
listed therein. In order to make third-party registrations of
record, soft copies thereof, or the electronic equivalent
thereof, i.e., printouts of the registrations taken from the
electronic records of the Patent and Trademark Office's own
database, must be made of record. See In re Smith and Mahaffey,
31 USPQ2d 1531 (TTAB 1994). The same is true with respect to
third-party applications. However, the Examining Attorney,
after noting that the registrations and applications relied on
by applicant had not been properly made of record, waived this
objection to them. Accordingly, we have considered them in our
determination of this case.
5 The applications and registrations are for a wide variety of
goods, most of which are totally unrelated to the goods in this
case. The registrations with goods most pertinent to this case
(in addition to the two registrations originally cited herein
and withdrawn) are Registration No. 218,857, issued to Hudson
Mfg. Company in 1926 and now expired, for the mark MOHAWK for
portable and hand-operated sprayers and parts thereof;
Registration No. 829,739, issued to Mohawk Equipment Company in
1967 and now expired, for the mark MOHAWK EQUIPMENT CO. TEMPLE,
TEXAS QUALITY MACHINERY for mechanized rotary brush and weed
cutters of the type designed to be drawn by farm tractors,
tractor-drawn plant and crop cutters and shredders, etc.;
Registration No. 1,369,824, issued to Mohawk Resources, Ltd. in
1985 and still subsisting, for MOHAWK for hydraulic lifts;
Registration No. 1,376,538, issued to Mohawk Wire and Cable
Corporation in 1985 and still subsisting, for MOHAWK for
electrical and electronic cables and wires; Registration No.
375,932, issued to Behr-Manning Corporation in 1940 and now
expired, for MOHAWK FLINT for coated abrasives; Registration No.
574,078, issued to Behr Manning Corporation in 1953 and now
expired, for MOHAWK for flexible and inflexible abrasives;
Registration No. 255,333, issued to F.W. Steadman Co. in 1929
and now expired, for MOHAWK for lubricating oils and compounds;
and Registration No. 1,013,993, issued to Ranger Tool Co., Inc.
These registrations and applications are offered by
applicant in support of its argument that MOHAWK is a weak
mark because it "has been diluted by widespread use and
registration by a very large number of companies" (page 3 of
applicant's request for reconsideration filed May 9, 1996).
Turning first to the goods, the third-party
registrations made of record by the Examining Attorney are
probative to indicate that applicant's goods and at least
some of the goods listed in the cited registration are of a
type which may emanate from a single source under the same
mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993), and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988). Applicant argues, however, that its goods
are sold to building contractors and carpenters, as
reflected in its identification of goods (i.e., "hand
powered construction tools, ..."); that applicant's goods
are sold directly to these purchasers through applicant's
catalogs; that goods of this type are also sold in hardware
stores; that the goods identified in the cited registration
are of a type used for industrial and/or automotive repair
applications, not by building contractors; and that the
goods of applicant and registrant travel through different
channels of trade to different purchasers.
It is well settled that when evaluating the likelihood
of confusion in proceedings involving the registrability of

in 1975 and renewed, for the mark MOHAWK for metal pipeline
valves, namely, control valves.
marks, we must consider the identification of goods set
forth in the relevant application and registration(s),
regardless of what the evidence adduced (or which might have
been adduced) may show as to the particular nature of the
goods, their actual channels of trade, or the class of
purchasers to which they are, in fact, sold. See Octocom
Systems Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian Imperial Bank
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198
(Fed. Cir. 1983); and cases cited in the foregoing.
While applicant's identification in the present case is
limited to hand powered construction tools, the
identification is not limited to sales only through
applicant's catalog. Moreover, registrant's registration
contains no limitations as to channels of trade or classes
of purchasers, and applicant's arguments do not persuade us
that all of the goods listed in the cited registration are
inherently inappropriate for use in the construction field.
Under the circumstances, we find that the goods
specified in applicant's application and registrant's
registration, or at least some of them, are related in
nature, and that the contemporaneous marketing of these
goods by applicant and registrant under the same or similar
marks would be likely to cause confusion.
We turn then to the marks. Applicant's mark, MOHAWK-
SHELBURNE, encompasses registrant's mark MOHAWK in its
entirety. We agree with applicant that its mark must be
considered in its entirety, and that neither element thereof
is more dominant than the other. At the same time, we
cannot ignore the fact that MOHAWK appears at the beginning
of applicant's mark, and hence is quite likely to be
remembered.
Moreover, the third-party registrations relied upon by
applicant in support of its "weak mark" argument are
insufficient, in and of themselves, to establish that the
marks shown therein are in use, or that purchasers are
familiar with them. We also note that with the exception of
the two registrations issued to Precision Twist Drill Co.,
which were cited by the Examining Attorney and then later
withdrawn (one for unstated reasons, and the other due to
its cancellation pursuant to Section 8 of the Act), none of
the third-party registrations is for goods similar to those
involved in this case. In short, the third-party
registrations are insufficient to establish that the mark
MOHAWK, which is arbitrary (insofar as the record shows)
when applied to goods of the type specified in applicant's
application and the cited registration, is a weak mark for
tools.
Considering the relationship of the goods, and the
similarities between the marks, we conclude that purchasers
familiar with registrant's mark for the listed hand operated
tools will be likely to believe, upon encountering goods of
the type specified in applicant's application bearing the
mark MOHAWK-SHELBURNE, that the mark MOHAWK-SHELBURNE
designates another line of hand powered tools emanating
from, or licensed by or otherwise associated with,
registrant. Accordingly, we agree with the Examining
Attorney that there is, in this case, a likelihood of
confusion.
Decision: The refusal to register is affirmed.
J. E. Rice
R. F. Cissel
G. D. Hohein
Administrative Trademark
Judge, Trademark Trial
and Appeal Board