Nupo Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 75141607 (T.T.A.B. Mar. 30, 1999)

Paper No. 12
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Nupo Inc.
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Serial No. 75/141,607
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Robert A. Vanderhye of Nixon & Vanderhye for Nupo Inc.
John E. Michos, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Nupo Inc. has filed an application to register the
asserted mark set forth below
Ser No. 75/141,607
2
for “electrically powered flea traps and adhesive pad
refills for flea traps.”1
Registration was finally refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1), on the
ground that the mark is merely descriptive of applicant’s
identified goods.2 Also, registration was finally refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark, if used in
connection with the identified goods, would so resemble the
registered mark set forth below
for “flea cleaning comb with flea trap,”3 as to be likely to

1 Application Serial No. 75/141,607 filed June 25, 1996 alleging
a bona fide intention to use the mark in commerce. Applicant has
disclaimed the “illustration of the flea” apart from the mark as
shown.
2 We note that pursuant to TMEP §1105.01(a)(iii), Examining
Attorneys are not to refuse registration in the case of an
intent-to-use application on the basis of failure to function as
a mark.
3 Registration No. 2,041,149 issued February 25, 1997. The
registration states that: “No claim is made to the exclusive
Ser No. 75/141,607
3
cause confusion, mistake, or to deceive.
Section 2(e)(1) Refusal
We turn first to the refusal to register on the ground
that the mark is merely descriptive of the identified
goods. In urging reversal of the refusal to register on
this ground, applicant argues that there are literally
thousands of ways of representing a flea and that its
particular representation is distinctive; that its mark
includes an outer ring, such that the mark consists of more
than simply the representation of a flea and the universal
prohibition symbol; and that applicant’s mark is registered
in Canada, a country which applies the same standards as
the United States in determining whether a mark is merely
descriptive.
While we have carefully considered applicant’s
arguments, we nonetheless agree with the Examining Attorney
that the asserted mark is merely descriptive of the
identified goods. First, we should point out that the fact
that applicant’s mark has been registered in Canada is of
no consequence in the determination of mere descriptiveness

right to use the representation of the universal prohibition
symbol apart from the mark as shown.”
Ser No. 75/141,607
4
under the Trademark Act in this country. Also, as noted by
the Examining Attorney, the outer circle in applicant’s
mark has little trademark significance and would not
detract from any merely descriptive significance. See
e.g., Dena Corp. v. Belvedere International Inc., 950 F.2d
1555, 21 USPQ2d 1047 (Fed. Cir. 1991). Because applicant
has disclaimed the illustration of a flea in its mark, it
has conceded that the illustration is descriptive matter as
used in connection with its goods. In any event, we
disagree with applicant that its representation of a flea
is distinctive. We see nothing fanciful or cartoon-like
about this particular representation. It appears to us to
be a rather realistic depiction of a flea. Further, as
noted by the Examining Attorney, the universal prohibition
symbol means “no.” Thus, when this symbol is used in
connection with a realistic representation of a flea, it
would immediately convey to prospective purchasers that the
purpose or use of applicant’s electrically powered flea
traps and refills therefor is to trap and eliminate fleas
from the home or other area. Stated differently, when one
uses applicant’s goods, there will be “no fleas.” And
because a mark which directly conveys information regarding
the purpose or use of the goods is considered merely
descriptive, applicant’s mark is not entitled to
Ser No. 75/141,607
5
registration. See In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978).
Section 2(d) Refusal
This brings us to the refusal to register based on
Section 2(d) of the Act (likelihood of confusion).4
Applicant maintains that the marks are very different
because the registered mark includes the words LAST STOP
and the flea is seen from the rear, whereas in applicant’s
mark the flea is seen from the side. Also, applicant
argues that the goods are very different, i.e., the
registrant’s comb is a relatively small item which requires
active participation by the user, whereas applicant’s flea
trap is electrically powered and does not require active
participation by the user. In addition, applicant points
out that there is no evidence that flea cleaning combs and
electrically powered flea traps are manufactured by the
same companies.
Turning then to the respective marks, we find that
they convey similar meanings and engender similar
commercial impressions. We recognize that it is generally
appropriate to give more weight to the word than the design

4 For purposes of this refusal, we are assuming that the design
applicant here seeks to register is a “mark” under the provisions
of Section 2(d) of the Trademark Act.
Ser No. 75/141,607
6
portion of a mark. However, marks must be considered in
their entireties and the design portion in registrant’s
mark cannot be ignored.5 In finding that the marks are
similar, we have kept in mind the normal fallibility of
human memory over time and the fact that the average
consumer retains a general rather than a specific
impression of trademarks encountered in the marketplace.
Turning next to the goods, it is well settled that
they need not be identical or even competitive in nature to
support a finding of likelihood of confusion. Instead, it
is sufficient that the goods are related in some manner
and/or that the circumstances surrounding their marketing
are such that they would be likely to be encountered by the
same persons under situations that would give rise, because
of the marks employed in connection therewith, to the
mistaken belief that they originate from or are in some way
associated with the same producer or provider. See, e.g.,
In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).
In this case, both applicant’s electrically powered
flea traps and registrant’s flea cleaning combs are used
for the same purpose, i.e., to trap fleas. Moreover, these

5 We should note that, contrary to applicant’s argument, in the
registered mark, the flea is seen from the side and not the rear.
Ser No. 75/141,607
7
goods would be purchased by the same class of purchasers,
namely, pet owners. In addition, the products are
complementary, that is, an individual may purchase
registrant’s flea cleaning comb to use on his/her pet and
an electrically powered flea trap to use in the home.
These kinds of goods are sold to ordinary consumers and
because of their inexpensive nature, it is unlikely that
consumers will exercise a great deal care in purchasing
them. Under the circumstances, we find that the goods are
sufficiently related that, when sold under substantially
similar marks, confusion is likely to occur among
purchasers.
In reaching our decision, we have not overlooked the
highly suggestive nature of registrant’s mark.
Nonetheless, suggestive marks are entitled to protection
against the registration by a subsequent user of a
substantially similar mark for related goods.
One additional matter raised by applicant requires
comment. Applicant maintains that likelihood of confusion
and mere descriptiveness are mutually exclusive refusals.
Applicant states that it has not located a single case
wherein both grounds are upheld. We would simply direct
applicant’s attention to In re Copytele Inc., 31 USPQ2d
Ser No. 75/141,607
8
1540 (TTAB 1994) and In re Home Builders Association of
Greenville 18 USPQ2d 1313 (TTAB 1990).
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, it is settled that such
doubt must be resolved in favor of the prior registrant.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993).
In sum, purchasers familiar with registrant’s flea
cleaning comb sold under the mark LAST STOP and design,
would be likely to believe, upon encountering applicant’s
substantially similar design mark for electrically powered
flea trap and refills therefor, that the respective
products originated with or were somehow associated with or
sponsored by the same entity.
Decision: The refusals to register under Sections
2(d) and 2(e)(1) are affirmed.
R. L. Simms
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board