Oldenstadt Enterprises, Inc.

Trademark Trial and Appeal Board

Sep 28, 2000

No. 75323590 (T.T.A.B. Sep. 28, 2000)

Paper No. 14
HRW
9/28/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Oldenstadt Enterprises, Inc.
________
Serial No. 75/323,590
_______
Christopher C.S. Blattner of Nunn Motschenbacher & Blattner
for Oldenstadt Enterprises, Inc.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Oldenstadt Enterprises, Inc. has filed an application
to register the mark MOTION MARINE for “custom boats
constructed of welded aluminum.”1
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the registered mark MARINE MOTIONS, INC. and

1 Serial No. 75/323,590, filed July 14, 1997, claiming a first
use date of January 15, 1988 and a first use in commerce date of
March 1, 1988. A disclaimer has been made of the word MARINE.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/323,590
2
design, as shown below, for “electromechanical controls for
use in lowering and raising antennas on boats.”2
The refusal has been appealed and both applicant and the
Examining Attorney have filed briefs. An oral hearing was
not requested.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors3 which are
relevant under the circumstances at hand. Two key
considerations in our analysis are necessarily the
similarity or dissimilarity of the respective marks and the
similarity or dissimilarity of the goods in connection with
which the marks are being used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
The Examining Attorney maintains that applicant’s mark
MOTION MARINE is merely a transposition of the significant
terms in registrant’s mark MARINE MOTIONS, INC., and that
these transposed terms create the same commercial

2 Registration No. 1,836,624, issued May 17, 1994; Section 8 & 15
affidavits accepted and acknowledged, respectively. A disclaimer
has been made of MARINE and INC.
3 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/323,590
3
impression. Thus, considering the fallibility of
purchasers’ memories and the ease of transposing the
elements of a mark, the Examining Attorney considers
confusion likely, when the marks are used on related goods.
Applicant, on the other hand, argues that although the
marks contain the same words, the marks are not only
different in sound because of the reverse order, but are
even more different in appearance, because of the design
element present in registrant’s mark. Applicant’s major
contention, however, is that the transposition of the words
MARINE MOTIONS of registrant’s mark results in a
significantly different overall commercial impression for
applicant’s mark MOTION MARINE.
Applicant argues that its mark MOTION MARINE stresses
the “marine” portion, which is being used as a noun to
refer to the business of selling boats or nautical
material. By contrast, applicant insists that in
registrant’s mark MOTIONS is the stressed portion, which is
being used to refer to the “motion” of its product, which
is used in a “marine” setting. Applicant has submitted
evidence to support its argument that the term “marine” has
a trade meaning in the boating industry and is frequently
used by boat-dealing companies in a “noun-like fashion” as
the last word in their trade names. Applicant further
Ser No. 75/323,590
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argues that since both “marine” and “motion” are highly
suggestive when used with nautical products, both marks are
weak and even slight differences should be sufficient to
avoid confusion.
Where the sole significant difference between marks
being used with similar goods or services is the
transposition of the words composing the marks and where
the transposition does not change the overall commercial
impression of the marks, likelihood of confusion may not be
precluded. See In re Wine Society of America Inc., 12
USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc.,
6 USPQ2d (TTAB 1988); Bank of America National Trust and
Savings Association v. American National Bank of St.
Joseph, 201 USPQ 842 (TTAB 1978) and the cases cited
therein.
Here the two marks, for purposes of comparison as
indicators of source, are reversals of each other. As
noted by the Examining Attorney, the term INC. in
registrant’s mark is an entity designation with no
trademark significance. See In re Packaging Specialists,
Inc., 221 USPQ 917 (TTAB 1984). The design feature of
registrant’s mark is minimal and would not be used by
purchasers to refer to the goods, if remembered at all.
See In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
Ser No. 75/323,590
5
1987). The significant elements are MOTION MARINE and
MARINE MOTIONS, the same words (the additional “S” being
inconsequential), albeit in reverse order, with the same
alliteration. Insofar as the connotations of the two marks
are concerned, we agree with the position ultimately taken
by the Examining Attorney that both marks are capable of
more than one meaning or interpretation. In either mark
the term “marine” might be viewed by purchasers as a
reference to the boating or nautical business or to the sea
itself. While “motions” may be seen as a reference to the
antenna movement in registrant’s mark, it is equally
capable of other interpretations. Purchasers’ perception
of the connotation of “motion” in applicant’s mark is even
more uncertain. Although applicant attempts to draw a
comparison between the terms “marine life” and “life
marine”, there is no such clear difference in meaning
because of the change of position of “marine” in the
present marks. All in all, we find no marked distinction
in the commercial impressions created by the two marks,
when used with the involved goods.
While we would agree that both marks are suggestive
when used with boats or boat accessories, applicant has
failed to submit any evidence of third-party use of similar
marks for similar goods to support its argument that the
Ser No. 75/323,590
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marks are weak and entitled to a limited scope of
protection. Moreover, we cannot ignore the fact that the
average person is not infallible in his recollection of
trademarks and may well transpose the two elements of these
marks in his mind, particularly if not viewing the marks
side-by-side. See in re Wm. E. Wright Co., 185 USPQ 445
(TTAB 1975); In re Atlantic Gulf Service, 184 USPQ 828
(TTAB 1974). Thus, contrary to applicant’s argument, we do
not consider this to be a situation where small differences
would be discerned by purchasers. Instead, we find that
the similarities in sound and appearance, considering the
ease of transposition, and particularly the similarity in
overall commercial impression of the marks, are likely to
lead to confusion, if the marks are used in connection with
related goods.
Looking to the involved goods, the Examining Attorney
argues that a viable relationship exists, in that
registrant’s electromechanical controls for use in lowering
or raising antennas on boats are accessories which would be
found on custom boats such as applicant’s. She has made of
record information obtained from the Internet showing
offerings by boat makers of custom boats in which one of
the features is either a powered antenna or antenna mounts,
masts or wiring conduits for antennas. She further argues
Ser No. 75/323,590
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that both types of goods would travel in the same channels
of trade to the same purchasers, namely, boat owners. As
evidence in support of this argument, she has made of
record Nexis articles showing that boat antennas and the
controls therefor are available to boat owners themselves
for self-installation on their boats to improve television
reception.
Applicant argues that, in general, while transposition
of elements in marks may contribute to likelihood of
confusion, such confusion appears to be likely only when
the transposed marks are used with identical or
substantially similar goods. Here, applicant insists, the
goods are, at best, related in a complementary way and
while applicant’s boats are sold to the ultimate consumers,
registrant’s antenna controls are sold to the persons who
install the antennas on the boats. Applicant argues that
the mere fact that both goods are related to the boating
industry, or that one may be used as an accessory on the
other, is not sufficient to establish a viable relationship
between the goods. Applicant further argues that these are
not impulse purchases, with boats in particular being
expensive items, and that purchasers would exercise care of
the selection thereof.
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In the first place, we find no reason to conclude
that confusion is likely to occur only when two marks which
are transpositions of each other are used on identical or
substantially similar goods. As a general principle, it
is sufficient to support a holding of likelihood of
confusion if there is a viable relationship between the
goods and/or the conditions surrounding their marketing are
such that they would be encountered by the same persons
under circumstances that could, because of the similarity
of the marks used therewith, give rise to the mistaken
belief that they emanate, or are associated with, the same
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993) and the cases cited therein. No
distinction should be made simply because the similarity of
the marks arises from the transposition of the elements of
which they are composed and, in fact, the Board has found
likelihood of confusion in cases of this nature wherein the
goods are clearly not identical. See, for example, In re
Wm. E. Wright Co., supra (FLEXI-LACE for garment findings,
seam bindings, and hem tapes vs. LACE–FLEX for laces in the
piece); In re Atlantic Gulf Service, 184 USPQ 828 (TTAB
1974) (ATLANTIC GULF SERVICE for cargo transportation by
ship vs. GULF ATLANTIC for distribution services, namely,
public commercial warehousing, ship-side terminal
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operations, and common carrier and contract trucking
services).
In the present case, we believe that the Examining
Attorney has provided sufficient evidence that purchasers
of custom boats such as applicant’s would be familiar with
the offering of antennas and controls therefor as a
featured accessory. In addition, the evidence shows that
antennas and the electronic controls therefor are also
separately available to boat owners for installation in
boats already purchased. Thus, the goods of applicant and
registrant are not just complementary, in that applicant’s
boats when purchased may have been outfitted with antennas
and electronic controls therefor. The same purchasers of
custom boats such as applicant’s are potential purchasers
of the antenna controls such as registrant’s for
installation on boats already owned. Contrary to
applicant’s arguments, sale of registrant’s goods is not in
any way restricted to boat-makers or the like, rather than
to the ultimate consumer. Not only is there no limitation
in the identification of goods in the registration as to
the channels of trade but also there is evidence of record
to substantiate common channels of trade.
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Under these circumstances, we find it likely that
purchasers would mistakenly assume that the MARINE MOTIONS
antenna controls and the MOTION MARINE custom boats emanate
from the same source. Even though these are far from
impulse purchases, the evidence showing that not only the
boats but also the antennas are expensive items, purchasers
are not immune to confusion when marks so readily open to
transposition are used therewith.
Accordingly, upon review of all relevant du Pont
factors, we find that confusion would be likely with
applicant’s use of the mark MOTION MARINE on the custom
boats recited in the application.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
C. E. Walters
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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