Northern Safety Co., Inc.

Trademark Trial and Appeal Board

Aug 16, 2005

No. 76462786 (T.T.A.B. Aug. 16, 2005)

Oral Hearing Held: Mailing Date:
April 27, 2005 August 16, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Northern Safety Co., Inc.
________

Serial No. 76462786
_______

G. Franklin Rothwell, Carla C. Calcagno, and Anne M. Sterba of
Rothwell, Figg, Ernst & Manbeck P.C. for Northern Safety Co.,
Inc.

Julie A. Watson, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Hohein, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Northern Safety Co., Inc. has filed an application to
register on the Principal Register the mark "NORTHERN SAFETY CO.
INC." and design, as reproduced below,

for "retail and wholesale store services in the field of
industrial and safety equipment, products and supplies via a
catalog, mail orders and the Internet."1

1 Ser. No. 76462786, filed on October 25, 2002, which is based on an
allegation of a date of first use anywhere and in commerce of November
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 76462786
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
following marks, which are registered by the same registrant on
the Principal Register for the services set forth below, as to be
likely to cause confusion, or to cause mistake, or to deceive:2
(i) the mark "NORTHERN TRACTOR & POWER"
and design, as illustrated below,

which is registered for "retail store
services and mail order catalog services in
the fields of tractors, forklifts, machinery,
hydraulic equipment and parts and accessories
therefor, gas generators and parts and
accessories therefor, diesel generators and
parts and accessories therefor, log
splitters, agricultural and landscape
equipment and parts and accessories therefor,
material handling products, lawn and garden
products, water pumps, pressure washers and
parts and accessories therefor, tires and
trailers";3

1998. The words "SAFETY CO. INC." are disclaimed. The stippling is
for shading purposes only and does not represent color.

2 Registration also has been finally refused on the basis of Reg. No.
1,368,651, which issued to a different registrant on November 5, 1985
for the mark "NORTHERN BLOWER" and design for "industrial air handling
equipment; namely, blowers and parts therefor." However, while such
registration has been renewed and thus is subsisting, the Examining
Attorney states in her brief that, "[a]fter further consideration of
the applicant's arguments, the refusal to register applicant's mark
under Section 2(d) of the Trademark Act on the grounds that it so
resembles Registration No. 1368651 is WITHDRAWN." In view thereof, no
further consideration will be given to such registration as a possible
bar to the mark which applicant seeks to register.

3 Reg. No. 2,541,529, issued on February 19, 2002, which sets forth a
date of first use anywhere and in commerce of March 2000. The terms
"TRACTOR & POWER" are disclaimed. The mark is described as consisting
of the terms "'NORTHERN TRACTOR & POWER' and a stylized design of a
tire and lightning bolt."

Ser. No. 76462786
3
(ii) the mark "NORTHERN," in standard
character form, which is registered for
"retail store services and mail order catalog
services in the fields of hand tools,
electric power tools, air-powered tools,
abrasives, machinery, hydraulic equipment and
parts and accessories therefor, gas engines
and gas generators and parts and accessories
therefor, diesel engines and diesel
generators and parts and accessories
therefor, electric motors, inverters, wind
turbines, log splitters, log splitting wedges
and parts and accessories therefor,
agricultural and landscape equipment and
parts and accessories therefor, solar lights
and panels, material handling products,
kerosene, propane and electric heaters,
chainsaws, pet and pest control products,
lawn and garden products, work clothing,
gloves, tarpaulins and accessories therefor,
straps and tie downs, air compressors and
accessories therefor, parts washers,
sandblasting tools and accessories therefor,
welders and welding parts and accessories,
metal fabrication products, parts and
accessories, lighting products, painting
products, propane products, outdoor, camping
and recreational products and clothing, two-
way radios, go karts and parts and
accessories therefor, parts and accessories
for all terrain vehicle[s], recreational
vehicles and parts and accessories therefor,
automotive products, parts and accessories,
bearing drives and accessories, water pumps,
pressure washers and parts and accessories
therefor, tires, cleaning and maintenance
equipment and supplies, testing equipment,
trailers and parts and accessories therefor,
toys and accessories, security equipment and
accessories, [and] meat processing equipment
and accessories";4

(iii) the mark "N NORTHERN TOOL &
EQUIPMENT CO." and design, as depicted below,

4 Reg. No. 2,441,069, issued on April 3, 2001, which sets forth a date
of first use anywhere and in commerce of January 1981.

Ser. No. 76462786
4
which is registered for "retail store
services and mail order catalog services in
the fields of hand tools; electric power
tools; air-powered tools; machinery;
hydraulic equipment and parts and
accessories; gas engines and gas generators
and parts and accessories therefor; diesel
generators, parts and accessories therefor;
electric motors; inverters; wind turbines;
log splitters; log wedges and parts and
accessories therefor; agricultural and
landscape equipment and parts and accessories
therefor; solar lights and panels; material
handling products; kerosene, propane and
electric heaters; chainsaws; pet and pest
control products; lawn and garden products;
work clothing; gloves; tarpaulins; air
compressors and accessories; parts washers;
sandblasting tools and accessories; welders
and welding parts and accessories; metal
fabrication products, and parts and
accessories; lighting products; painting
products; propane products; outdoor, camping,
hunting and recreational products and
clothing products therefor; two-way radios;
go-karts and parts and accessories therefor;
all terrain vehicle and recreational vehicle
products, parts and accessories; automotive
products, parts and accessories; water pumps;
pressure washers, and parts and accessories;
tires[;] maintenance and testing equipment;
and, trailers, and parts and accessories";5
and

(iv) the mark "NORTHERN TOOL & EQUIPMENT
CO." and design, as shown below,

which is likewise registered for the same
retail store services and mail order catalog
services as set forth above with respect to
the registration for the mark "N NORTHERN
TOOL & EQUIPMENT CO." and design.6

5 Reg. No. 2,289,006, issued on October 26, 1999, which sets forth a
date of first use anywhere and in commerce of August 1, 1998. The
terms "TOOL & EQUIPMENT CO." are disclaimed.

6 Reg. No. 2,289,007, issued on October 26, 1999, which sets forth a
date of first use anywhere and in commerce of August 1, 1998. The
terms "TOOL & EQUIPMENT CO." are disclaimed.

Ser. No. 76462786
5

Applicant has appealed. Briefs have been filed and an
oral hearing was held. We reverse the refusal to register with
respect to the three cited "NORTHERN" and design marks but affirm
such refusal as to the cited "NORTHERN" mark in standard
character form.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations which are usually involved are
the similarity or dissimilarity in the goods and/or services at
issue and the similarity or dissimilarity of the respective marks
in their entireties.7 Nonetheless, inasmuch as applicant, as
pointed out by the Examining Attorney in her brief, "does not
dispute the similarities of the services"8 and, "[i]n fact, the
services [at issue] are identical at least in part,"9 the primary

7 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods [and/or services] and
differences in the marks." 192 USPQ at 29.

8 Applicant, as discussed later herein, emphasizes instead the du Pont
factor concerning the conditions under which and buyers to whom sales
are made, asserting that customers for the respective services are
careful, sophisticated purchasers rather than impulsive buyers.

9 Specifically, the Examining Attorney notes in her brief that
(emphasis in original):

Ser. No. 76462786
6
focus of our inquiry is accordingly on the similarity or
dissimilarity of the respective marks in their entireties.
Applicant argues in its initial brief that, in view of
the evidence which it has made of record, confusion is not
likely. Specifically, applicant maintains that not only do it
and the cited registrant "use NORTHERN in their marks to suggest
their businesses' regional origin," but the record shows that
"[b]ecause of this, twenty-seven different parties have used or
registered thirty (30) trade names and marks for the same goods"
sold by the cited registrant through its retail store services
and mail order catalog services (italics in original). Citing
also, for the first time in its initial brief, a definition from
Webster's II New Collegiate Dictionary (1999) which at 747
defines "northern" as "1. Located toward, in, or facing the
north. 2. Coming from the north, as a wind. 3. Growing in the
North,"10 applicant contends that because such term "projects an
ordinary meaning in the English language," purchasers of
applicant's and the cited registrant's services will assume that

As the excerpts from the applicant's website and
attached to the final Office action ... indicate, the
industrial and safety equipment sold by applicant includes
the following goods (all sold by the registrant): electric
power tools, hydraulic tools, material handling equipment,
industrial work clothing and gloves, power washers
generators, drive motors, lighting equipment and painting
equipment.

10 While such definition is technically untimely under Trademark Rule
2.142(d), we have nonetheless considered it inasmuch as it is settled
that the Board may properly take judicial notice of dictionary
definitions. See, e.g., Hancock v. American Steel & Wire Co. of New
Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953); University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983); and Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852,
860 n. 7 (TTAB 1981).
Ser. No. 76462786
7
the term "NORTHERN" is being used in the respective marks to
suggest regional origin. Consequently, and as shown by the
appreciable number of third-party registrations and/or uses of
marks which consist of or include such term, applicant insists
that when encountering the marks at issue herein, "purchasers
will rely on elements other than NORTHERN to distinguish source."
In particular, applicant relies in its initial brief on
the following propositions, citing as support therefor the
sections of the TMEP noted below (italics in original):
Precedent teaches that a party may rely
on evidence of third[-]party registrations to
show that a shared portion of two marks is
inherently weak or diluted. Specifically,
TMEP Section 1207.01(d)(iii) teaches that:

Third-party registrations may be
relevant to show that the mark or a
portion of the mark is descriptive,
suggestive, or so commonly used
that the public will look to other
elements to distinguish the source
of the goods or services.

Precedent also teaches that where, as
here, a term is weak or highly suggestive,
consumers can easily distinguish between
marks containing a common term by even
descriptive additions to the term. Id.
Specifically, TMEP §1207.01(b)(iii) states
that:

Exceptions to the above stated
general rule [that adding a term to
a common portion of two marks does
not prevent confusion] [...] may
arise if: ... (2) the matter common
to the marks is not likely to be
perceived by purchasers as
distinguishing source because it is
merely descriptive or diluted.
[...]

Ser. No. 76462786
8
Here, applicant asserts, it has shown that the term "NORTHERN" is
diluted, and hence weak, by making of record Internet
advertisements from "twenty-one different entities" in allegedly
the same fields as those of the cited registrant, e.g., NORTHERN
SUPPLY for safety and tooling supplies; NORTHERN LIGHTS for
electrical generator power sets; and NORTHERN LIGHTS VEHICLES for
safety supplies" (italics in original). Applicant stresses that
"[m]ost, if not all, of these numerous listed entities which are
using 'NORTHERN' in their trade names originate in Canada, the
Northern United States or the northern part of a State" and thus
such entities "use the term in their marks and names in its
regional sense, i.e., to refer to the fact that the respective
businesses and organizations are located in the Northern United
States or Canada."
Based thereon, applicant further urges in its initial
brief that:
This evidence shows that the public has
been exposed to references to NORTHERN in
both trade names and marks. From this, the
Board can infer that the public would not
regard NORTHERN as such an unusual term in a
trade name or mark that they would expect all
companies with NORTHERN in their names to be
related, or all products or services with
NORTHERN in their marks to emanate from a
single source.

Applicant also cites therein the following language from In re
Broadway Chicken Inc., 38 USPQ2d 1559, 1565-66 (TTAB 1996), in
arguing in favor of the registrability of its mark: "Evidence of
widespread third-party use, in a particular field, of marks
containing a certain shared term is competent to suggest that
Ser. No. 76462786
9
purchasers have been conditioned to look to other elements of the
marks as a means of distinguishing the source of goods or
services in the field."
In light of all of the above, applicant asserts that
its mark and the cited registrant's marks, when considered in
their entireties, "neither look alike nor sound alike," "[n]or do
they project the same meaning." Noting, moreover, that such
marks overall "project differing commercial impressions,"
applicant specifically points out that its mark "is a stylized
version of the word 'Northern' together with the words 'Safety
Co. Inc.' in a distinctive design," while the cited registrant's
composite marks include either the terms "'Northern Tractor &
Power' ... accompanied by a tractor wheel in motion representing
power and even friction" or simply feature the terms "Tool &
Equipment" with or without a stylized depiction of the letter
"N." As such, applicant insists that in its mark the terminology
"'Northern Safety' implies a company selling devices that
protect" or "a company selling safety devices," while in the
cited registrant's composite marks it is respectively the case
that the phrase "'Northern Tractor' implies a company selling
tractors and tractor supplies" and likewise the language "Tool &
Equipment" denotes a company marketing those kinds of products.
Lastly, applicant contends in its initial brief that,
"[m]ost importantly, purchasers will not confuse NORTHERN SAFETY
CO. INC and Design and the [cited] registered marks because
Applicant sells only to discriminating purchasers." Applicant
argues that as proof that it "sells to sophisticated consumers,
Ser. No. 76462786
10
one need only refer to the Applicant's recitation of services,"
asserting that purchasers of "industrial and safety equipment"
would "exercise great care in selecting such equipment as lives
and health will depend on it." In particular, applicant contends
that (italics in original):
The reason that sophisticated consumers
will not be confused is that no reason to
correlate the ... [respective] marks exists.
Except for the term NORTHERN, the marks
neither look alike, nor sound alike, nor have
the same meaning. The Examiner has failed to
present any theory why sophisticated
purchasers will confuse the marks.

The Examining Attorney, on the other hand, asserts in
her brief that confusion is likely because the marks at issue
"all share the identical dominant word NORTHERN." Applicant, the
Examining Attorney notes, does not argue to the contrary but,
instead, "argues that the term NORTHERN is weak and diluted" and
that the respective marks "create different overall commercial
impressions." However, as to the third-party registrations
relied upon by applicant as evidence of the weakness of the term
"NORTHERN," the Examining Attorney maintains that (underlining in
original):
Prior decisions and actions of other ...
examining attorneys in registering different
marks are without evidentiary value and are
not binding upon the Office. Each case is
decided on its own facts, and each mark
stands on its own merits. AMF Inc. v.
American Leisure Products, Inc., 177 USPQ
268, 269 (C.C.P.A. 1973); ... In re National
Novice Hockey League, Inc., 222 USPQ 638, 641
(TTAB 1984) ....

Moreover, a review of these third party
registrations indicates that all but one of
them are for specific goods and not for
Ser. No. 76462786
11
retail or wholesale store services. The one
third[-]party registration that is for retail
services ... was cancelled on July 3, 2004.
Still further, several of these marks when
considered as a whole present a completely
different commercial impression. For
example, Registration No. 1232499 for the
mark NORTHERN LIGHTS is a third[-]party
registration containing the word NORTHERN but
when viewed as a whole creates its own
separate overall meaning and commercial
impression.

.... In the present case, all of the
third[-]party registrations containing the
word NORTHERN (but for one cancelled
registration) are for various goods but NO
specific retail services for industrial and
safety equipment, products and supplies
similar to either the applicant['s] or [the
cited] registrant[']s. In fact, the only
marks containing the word NORTHERN for highly
similar [and identical in part] retail and/or
wholesale services are the applicant['s] and
the cited registrant[']s.

In addition, as to the Internet advertisements relied
upon by applicant to further demonstrate the asserted weakness of
the term "NORTHERN," the Examining Attorney urges that:
By doing this, applicant seeks to introduce
collateral evidence that is of little
probative value. This is inappropriate in an
ex parte proceeding. TMEP §1207.01(d)(iv).
Section 7(b) of the Trademark Act, 15 U.S.C.
§1057(b), provides that a certificate of
registration on the Principal Register shall
be prima facie evidence of the validity of
the registration, of the registrant's
ownership of the mark and of the registrant's
exclusive right to use the mark in commerce
in connection with the goods or services
specified in the certificate. During ex
parte prosecution, an applicant will not be
heard on matters that constitute a collateral
attack on the cited registration. See In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997); In re Calgon Corp. 435
F.2d 596, 168 USPQ 278 (C.C.P.A. 1971) ....

Ser. No. 76462786
12
However, as applicant correctly points out in its reply brief, it
is simply not the case that "considering evidence of third-party
use in a ex parte proceeding impermissibly collaterally attacks
the cited registrations." Applicant plainly is not arguing that
the cited registrations are invalid because the marks which are
the subjects thereof are, for instance, either primarily
geographically descriptive or deceptively misdescriptive; rather,
applicant contends that such marks are weak, and hence entitled
to a narrow scope of protection, because the term "NORTHERN"
therein is highly geographically suggestive, as shown by the
dictionary meaning thereof, the numerous third-party
registrations of marks which consist of or contain such term, and
the not insubstantial number of third-party usages of such marks.
Accordingly, it is proper to consider the Internet advertising
made of record by applicant along with the dictionary and third-
party registration evidence.
In any event, the Examining Attorney additionally
argues that, "[e]ven if applicant has shown that the [term
NORTHERN in the] cited mark[s] is 'weak,' such marks are still
entitled to protection against registration by a subsequent user
of the same or similar mark for the same or closely related goods
or services." Here, the Examining Attorney insists, "[t]he term
NORTHERN is not weak with regard to the relevant services"
inasmuch as the cited "registrant's marks are the only marks on
the register that contain the term NORTHERN in relationship to
the applicant's and registrant's recited services." Furthermore,
the Examining Attorney contends that:
Ser. No. 76462786
13
The overall commercial impression of the
marks is the same. Registration No. 2441069
is [for] the typed drawing [of the mark]
NORTHERN. Registration of a mark in typed or
standard character form means that the mark
may be displayed in any lettering style. 37
C.F.R. §2.52(a). The rights associated with
a mark in typed or standard character form
reside in the wording itself, and the
registrant is free to adopt any style of
lettering, including lettering identical to
that used by applicant. Therefore,
applicant's presentation of its mark in
special form will not avoid likelihood of
confusion with a mark that is registered in
typed or standard character form because the
marks presumably could be used in the same
manner of display. See ... In re Pollio
Dairy Prods. Corp., 8 USPQ2d 2012 (TTAB
1988); ... [s]ee also TMEP §1207.01(c)(iii).

With regard to Registration Nos.
2541529, 2289007 and 2289006, a review of the
marks [which are the subjects thereof] ...
demonstrates that the marks DO create the
same overall commercial impression. The
applicant's mark and the registrant's marks
all have the dominant word NORTHERN appearing
in larger font and on top of highly
descriptive and/or generic wording that
appears directly below and in smaller font.

In view of the above, and citing, inter alia, Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992), for the proposition, as
stated therein, that "[w]hen marks would appear on virtually
identical goods or services, the degree of similarity necessary
to support a conclusion of likely confusion declines," the
Examining Attorney concludes that confusion is likely from
contemporaneous use of the marks at issue herein in connection
with services which are not only highly similar but in fact are
identical at least in part. The Examining Attorney, moreover,
adheres to her conclusion, notwithstanding applicant's argument
Ser. No. 76462786
14
that the customers for its services and those of the cited
registrant are generally careful and discriminating buyers.
Specifically, citing In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB
1988); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983); and TMEP §1207.01(d)(vii), she maintains that "[t]he fact
that purchasers are sophisticated or knowledgeable in a
particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks [or
service marks] or immune from source confusion." Finally, citing
In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988), the Examining Attorney adds that "[a]ny
doubt regarding a likelihood of confusion must be resolved in
favor of the prior registrant."
Upon consideration of the evidence and arguments
presented, we concur with applicant that contemporaneous use of
its "NORTHERN SAFETY CO. INC." and design mark in connection with
"retail and wholesale store services in the field of industrial
and safety equipment, products and supplies via a catalog, mail
orders and the Internet" is not likely to cause confusion with
any of the cited registrant's "NORTHERN" and design marks for
various "retail store services and mail order catalog services."
Specifically, we agree that in view of both (i) the demonstrated
weakness of the term "NORTHERN," as shown by its geographical
suggestiveness as well as the use thereof in an appreciable
number of marks by third parties, and (ii) the differences in the
design elements and associated descriptive wording, in each
instance, between applicant's mark and the cited registrant's
Ser. No. 76462786
15
"NORTHERN TRACTOR & POWER" and design mark, its "N NORTHERN TOOL
& EQUIPMENT CO." and design mark and its "NORTHERN TOOL &
EQUIPMENT CO." and design mark, such marks are distinguishable.
Thus, and given that the respective services, although identical
in part and otherwise commercially related as applicant has
conceded, would indeed be sold principally to sophisticated and
discriminating purchasers, the overall differences in appearance,
sound, connotation and commercial impression in applicant's mark
and the cited registrant's "NORTHERN" and design marks are
sufficient to preclude a likelihood of confusion.
We are constrained to find, however, that confusion is
likely from the use by applicant of its mark for its services
contemporaneously with the use by the cited registrant of its
mark "NORTHERN" in standard character form for its identical in
part and otherwise commercially related "retail store services
and mail order catalog services." In particular, we note in this
regard that the cited registrant's "NORTHERN" mark must be
considered substantially similar in appearance to applicant's
"NORTHERN SAFETY CO. INC." and design mark, given that such marks
must be considered identical in their manner of display of the
term "NORTHERN." The reason therefor is that the cited
registrant's "NORTHERN" mark, being registered in standard
character or typed format, covers the display of the term
"NORTHERN" in any reasonable stylization of lettering--including
a slanted display of all capital block letters of the same size
except for a significantly larger first letter "N"--utilized by
applicant in its mark for the same term. See, e.g., Phillips
Ser. No. 76462786
16
Petroleum Co. v. C. J. Webb, Inc. 442 F.2d 1376, 170 USPQ 35, 36
(CCPA 1971) [a mark registered in typed or standard character
form is not limited to the depiction thereof in any special
form]; and INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992) ["[a]s the Phillips Petroleum case makes clear,
when [an] applicant seeks a typed or block letter registration of
its word mark, then the Board must consider all reasonable
manners in which ... [the word mark] could be depicted"]. It
consequently is not a valid argument to contend that there is a
distinguishable difference in appearance between applicant's mark
and the cited registrant's "NORTHERN" mark. See, e.g., Squirtco
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983)
(italics in original):
[T]he argument concerning a difference
in type style is not viable where one party
asserts rights in no particular display. By
presenting its mark merely in a typed
drawing, a difference cannot legally be
asserted by that party. .... Thus, ... the
displays must be considered the same.

Moreover, applicant's mark and the cited registrant's
"NORTHERN" mark are substantially similar in sound, connotation
and commercial impression. While it is indeed the case that such
marks must be considered in their entireties, including the
descriptive words "SAFETY CO. INC." in applicant's mark, our
principal reviewing court has indicated 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 [that] the ultimate
Ser. No. 76462786
17
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"that a particular feature is descriptive ... with respect to the
involved ... services is one commonly accepted rationale for
giving less weight to a portion of a mark ...." Id.
Here, in light of the descriptive words "SAFETY CO.
INC." in applicant's mark, we agree with the Examining Attorney
that, when such mark is considered as a whole, the dominant and
distinguishing portion thereof is the word "NORTHERN," which is
identical to the entirety of the cited registrant's "NORTHERN"
mark. Furthermore, because the latter mark contains no
additional element by which even sophisticated purchasers could
differentiate such mark from applicant's mark, the marks overall
are substantially similar in sound, appearance and connotation
and project essentially the same commercial impression. Thus,
even though the term "NORTHERN," as demonstrated by applicant, is
considered a weak term due to its geographical suggestiveness, it
is still the case that, when used in connection with services
which are identical in part and otherwise commercially related,
confusion as to the source or sponsorship of such services is
likely to occur.
Moreover, as noted previously, while purchasers of the
respective services would undoubtedly be sophisticated in that
they would be knowledgeable as to their equipment needs and
safety requirements, it nevertheless is well settled that the
fact that buyers may exercise care and deliberation in their
Ser. No. 76462786
18
choice of services and the goods offered thereby "does not
necessarily preclude their mistaking one ... [service mark] for
another" or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Such would
especially be the case where, as here, applicant's "NORTHERN
SAFETY CO. INC." and design mark and registrant's "NORTHERN" mark
are so substantially similar that they basically differ only as
to the presence of the descriptive words "SAFETY CO. INC." in
applicant's mark. Confusion is thus likely from the use thereof
in connection with services which are identical in part and
otherwise commercially related. As indicated in In re Research &
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986):
Appellant's argument that purchasers of
safety devices would not be confused because
of the care they would be expected to
exercise in the selection of that equipment
is not persuasive in view of the very close
similarity between the marks. That the
relevant class of buyers may exercise care
does not necessarily impose on that class the
responsibility of distinguishing between
similar trademarks for similar goods. "Human
memories even of discriminating purchasers
... are not infallible." Carlisle Chemical
Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 1406, 168 USPQ 110, 112 (CCPA
1970). Sophistication of buyers and
purchaser care are relevant considerations
but are not controlling on this factual
record.

Decision: The refusal under Section 2(d) is reversed
with respect to the three cited "NORTHERN" and design marks but
Ser. No. 76462786
19
such refusal is affirmed as to the cited "NORTHERN" mark in
standard character form.