Pitonyak Machinery Corporationv.Brandt Industries Ltd.

Trademark Trial and Appeal Board

Apr 5, 2010

No. 91171967 (T.T.A.B. Apr. 5, 2010)

Mailed: April 5, 2010
PTH/mb

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Pitonyak Machinery Corporation
v.
Brandt Industries Ltd.
_____

Opposition No. 91171967
_____

Daniel T. Earle of Shlesinger, Arkwright & Garvey LLP for
Pitonyak Machinery Corporation.

Louis K. Ebling of Greenebaum Doll & McDonald PLLC for
Brandt Industries Ltd.
______

Before Hairston, Kuhlke and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Brandt Industries Ltd. (applicant) seeks registration
of the mark BRANDT for the following goods and services:
“grain handling equipment, namely, augers,
conveyors and grain vacuums; spraying equipment,
namely, pull-type and three point sprayers; light
duty tillage equipment, namely, harrows; livestock
feeding and processing equipment, namely, bale
processors,” in International Class 7,

“railroad vehicles, namely road rail vehicles,
locomotives, and railroad vehicles with both rail
and highway drive systems,” in International Class
12, and

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Opposition No. 91171967
2
“custom manufacture and fabrication of machines
and railroad equipment” in International Class
40.1

Pitonyak Machinery Corporation (opposer), filed a
notice of opposition, alleging that it and its predecessor
in interest have used the mark BRANDT “alone and in
combination with other words and designs for agricultural
machines in the United States” prior to the filing date of
applicant’s application (Notice of Opposition, ¶2); that
opposer’s BRANDT mark has gained good will and recognition
through its substantial time and efforts and those of its
predecessor in interest; and that applicant’s mark, when
used in connection with applicant’s goods and services, so
resembles opposer’s mark as to be likely to cause confusion,
mistake, or deception.
Applicant filed an answer in which it denied the
salient allegations of the notice of opposition.
The record consists of the pleadings; the file of the
involved application; the testimony depositions with

1 Serial No. 78211667, based on use in commerce under Trademark
Act Section 1(a), 15 U.S.C. §1051(a), alleging first use of the
mark anywhere and in commerce in 1981 for the goods and services
in International Classes 12 and 40 and first use of the mark
anywhere and in commerce in 1973 for the goods in International
Class 7; said application is also based on ownership of a foreign
registration under Trademark Act Section 44(e) and has a priority
filing date of August 6, 2002 pursuant to Trademark Act Section
44(d). Applicant’s claim that its mark has acquired
distinctiveness under Trademark Act Section 2(f) was accepted by
the examining attorney in an office action dated December 23,
2005.
Opposition No. 91171967
3
accompanying exhibits, of John Henry Brandt, opposer’s
predecessor in interest, and Thomas Edward Pitonyak,
opposer’s president; and opposer’s notice of reliance on
applicant’s answers to several of opposer’s interrogatories
and first request for admissions. Applicant neither took
testimony nor introduced any other evidence.
Both opposer and applicant have filed briefs.
Preliminary Matter
At the outset, we note that applicant states in its
brief that it “does not contest the claim that Applicant is
not entitled to registration of its BRANDT mark in
connection with the goods recited in International Class 7
of its application.” (Applicant’s Brief, p. 3) We view
applicant’s statement as a concession that there is a
likelihood of confusion with respect to applicant’s goods in
Class 7. Accordingly, as indicated below, the opposition is
sustained with respect to applicant’s goods in Class 7.
Thus, we need only determine the issue of likelihood of
confusion with respect to applicant’s goods and services in
Classes 12 and 40.
Standing
To establish standing, opposer must show that it has a
“real interest” in the outcome of the proceeding; that is,
it must show a direct and personal stake in the outcome of
the opposition. See Ritchie v. Simpson, 170 F.3d 1092, 50
Opposition No. 91171967
4
USPQ2d 1023, 1026 (Fed. Cir. 1999); Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021 (Fed. Cir. 1987).
Opposer, by virtue of its use of the BRANDT mark in
connection with agricultural equipment, has established a
real interest in this proceeding and therefore, its standing
to challenge the registration of the involved application.
Priority
BRANDT is a surname, and therefore opposer, to
demonstrate priority with respect to its common law use,
must show that BRANDT acquired distinctiveness as a mark
prior to the filing date of applicant’s application.
Opposer’s evidence demonstrates that, through its
predecessor, opposer has used the mark BRANDT from at least
the 1960’s to the present in connection with agricultural
equipment. In view of opposer’s long use, we find that
opposer’s BRANDT mark, as applied to agricultural equipment,
had acquired distinctiveness prior to applicant’s
application filing date and that opposer therefore has
priority of secondary meaning in the BRANDT designation as
used in connection with agricultural equipment, as well as
priority of use on such goods. See, e.g., Perma Ceram
Enterprises, Inc. v. Preco Industries, Ltd., 23 USPQ2d 1134
(TTAB 1992). We also note that applicant, in its brief
Opposition No. 91171967
5
“does not dispute Opposer’s claim of priority with respect
to agricultural equipment.” (Applicant’s Brief, pp. 4-5).2
Likelihood of Confusion
This bring us to the issue of likelihood of confusion.
Our determination of likelihood of confusion is based on an
analysis of all of the facts in evidence that are relevant
to the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations are
the similarities between the marks and the similarities
between the goods and/or services. Federated Foods, Inc. v
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
As the fame of a mark “plays a ‘dominant’ role in the
process of balancing the DuPont factors,” Recot, Inc. v.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000), we turn first to opposer’s contention that its BRANDT

2 We note that opposer, in its brief, references its priority in
the mark BRANDT for agricultural equipment and “related goods and
services.” (Opposer’s Brief, p. 5). However, in the notice of
opposition, opposer did not allege priority with respect to any
goods and services other than agricultural equipment, and the
parties have not tried by express or implied consent, any issues
arising from any other goods and services. Thus, our likelihood
of confusion determination is limited to opposer’s agricultural
equipment vis-à-vis applicant’s goods and services in Classes 12
and 40.
Opposition No. 91171967
6
mark is entitled to greater protection due to its alleged
fame.
In support of the contention that its mark is famous,
opposer made of record deposition testimony from its
president who testified that: (1) opposer’s average sales of
BRANDT agricultural equipment since acquiring the BRANDT
mark in November, 2002 are about $4,500,000, with sales of
around $6,500,000 for 2008 (Pitonyak Dep., p. 43); (2) the
Brandt name has “been around since 1913” (Id., at 61) and
was used on labels for grain carts, land levelers and quick
hitches since the 1960’s; (3) its goods are advertised in
magazines and at national and international trade shows, and
(4) “[a]ll the farmers knew the [Brandt] name,” Brandt was a
“very well-known company,” and “everybody knew the Brandt
name” in the agricultural community in which he was raised.
(Id., at 12-13).
Famous marks are entitled to a “wide latitude of legal
protection.” Recot, Inc., 54 USPQ2d at 1897. The fame of a
mark is “measured by volume of sales, advertising, and
length of use.” Giant Foods, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 394 (Fed. Cir. 1983); See
also Bose Corp. v. QSC Audio Prods., Inc., 293 F.3d 1367, 63
USPQ2d 1303, 1305 (Fed. Cir. 2002). This information,
however, must be placed in context (e.g., a comparison of
advertising figures with competitive products, market share,
Opposition No. 91171967
7
reputation of the product, etc.). Id. Given the great
deference that is given to a famous mark, one asserting that
its mark is famous must clearly prove it.
Based on the evidentiary record, we find that opposer
has not established the fame of its BRANDT mark. Despite
evidence regarding the length of use of opposer’s mark, the
record contains no evidence of advertising expenditures.
Furthermore, opposer has offered no context for its sales
figures. We cannot conclude from the amount of opposer’s
annual sales figures since 2002 that its mark has the
“extensive public recognition and renown” of a famous mark.
Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963
F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). We note
that determinations that a mark is famous have generally
been supported by evidence of substantial advertising and
sales figures not present in the current proceeding. Cf.
Nina Ricci, S.A.R.L. v. E.T.F. Enters., Inc., 889 F.2d 1070,
12 USPQ2d 1901, 1902 (Fed. Cir. 1989) (NINA RICCI for
perfume, clothing and accessories: $200 million in sales,
over $37 million in advertising over 27 years); Kimberly-
Clark Corp. v. H. Douglas Enter., Ltd., 774 F.2d 1144, 227
USPQ 541, 542 (Fed. Cir. 1985) (HUGGIES for diapers: over
$300 million in sales, $15 million in advertising in one
year); Planters Nut & Chocolate Co. v. Crown Nut Co., 305
F.2d 916, 134 USPQ 504, 506 (CCPA 1962) (MR. PEANUT DESIGN
Opposition No. 91171967
8
for nuts and nut products: $350 million in sales, $10
million in advertising over 10 years); and Motion Picture
Association of America Inc. v. Respect Sportswear Inc., 83
USPQ2d 1555 (TTAB 2007) (RATED R for movies; billions of
dollars in annual sales and advertisements, and widespread
media and internet coverage). Finally, the testimony of
opposer’s president that its mark is “well known” is self-
serving and does not establish the fame of the mark. Thus,
we will accord opposer’s BRANDT mark the normal scope of
protection in our likelihood of confusion analysis.
We next turn to a consideration of the remaining
relevant du Pont factors. With respect to the involved
marks, we examine the similarities and dissimilarities of
the marks in their appearance, sound, meaning, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). The parties’ marks both
consist of the term BRANDT and as such are identical in
sound, appearance, meaning, and commercial impression.3 In

3 Applicant’s argument that opposer’s mark, as a surname, is
entitled to a narrower degree of protection is not well taken.
“Section 2(d)… does not set forth special rules regarding the
registration of marks involving surnames in determining the issue
of likelihood of confusion.” Hunt Foods & Indus., Inc. v. Gerson
Stewart Corp., 367 F.2d 431, 151 USPQ 350, 352 (CCPA 1966); see
also, e.g., Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629,
n.20 (TTAB 2007)(“The fact that ARDEN is a surname does not
automatically render the mark weak or entitled to only a narrow
scope of protection.”)
Opposition No. 91171967
9
view thereof, the du Pont factor regarding the similarities
of the marks weighs in favor of finding a likelihood of
confusion.
The next factors we consider are the similarities
between opposer’s goods and applicant’s goods and services
and the similarities of the channels of trade and
purchasers. Even if the marks are identical, confusion is
not likely if the goods and/or services at issue are not
sufficiently related or marketed such that purchasers
encountering the marks would believe that the goods and/or
services originate from the same source. See, e.g.,
Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha,
77 USPQ2d 1917, 1930 (TTAB 2006); Nautilus Group Inc. v.
ICON Health and Fitness Inc., 372 F.3d 1330, 71 USPQ2d 1173,
1185 (Fed. Cir. 2004).
Opposer established in deposition testimony that its
BRANDT mark was used by its predecessor in interest and
continues to be used in connection with agricultural
machinery, including grain carts, utility levelers, land
levelers, field rollers, stubble rollers, and quick hitches.
(Pitonyak Dep., pp. 12-13). As identified in the involved
application, applicant’s Class 12 goods are “railroad
vehicles, namely road rail vehicles, locomotives, and
railroad vehicles with both rail and highway drive systems,”
Opposition No. 91171967
10
and applicant’s Class 40 services are “custom manufacture
and fabrication of machines and railroad equipment.”
On their face, applicant’s railroad vehicles differ in
nature from opposer’s agricultural equipment. Opposer
argues that its agricultural equipment and applicant’s
railroad vehicles are related because the goods are all
heavy pieces of machinery. However, there is no evidence
that opposer’s agricultural equipment and applicant’s
railroad vehicles serve similar purposes.
With respect to opposer’s agricultural equipment and
applicant’s services of “custom manufacture and fabrication
of machines and railroad equipment,” opposer argues that
these goods and services are related because applicant’s
identification of services is broad enough to encompass
custom manufacture and fabrication of agricultural machines.
Again, however, these goods and services are different in
nature on their face, and opposer has not provided evidence
that consumers encounter agricultural equipment and custom
manufacture and fabrication of machines and railroad
equipment provided by the same source under the same mark,
other than applicant.
Furthermore, while opposer argues that the fact that
applicant offers agricultural equipment, railroad vehicles
and custom fabrication and manufacture services demonstrates
that there is a connection between the parties’ goods and
Opposition No. 91171967
11
services, we are not persuaded that a single instance of one
source providing agricultural equipment, railroad vehicles
and custom fabrication and manufacture services establishes
that the parties’ goods and services are related. In sum,
we cannot conclude from the evidentiary record before us
that the parties’ goods and services are related or
complementary.4 The differences between opposer’s
agricultural equipment, on the one hand, and applicant’s
railroad vehicles and custom fabrication and manufacture
services, on the other hand, are too great to find
likelihood of confusion without evidentiary support.
Therefore, the du Pont factor regarding the similarities of
the goods and/or services weighs against finding a
likelihood of confusion.
Similarly, the evidentiary record does not support a
conclusion that the channels of trade or purchasers of
opposer’s agricultural equipment would be the same as those

4 In its reply brief, opposer requests the Board to take
judicial notice that “the agricultural industry and the railroad
industry are, and have been, connected throughout the history of
the railroad industry.” Opposer’s Reply Brief, p. 6. However,
the Board may only take judicial notice of a fact that is not
subject to reasonable dispute because it is generally known
within the Board’s territorial jurisdiction or capable of being
determined by sources whose accuracy cannot reasonably be
questioned. See TBMP § 704.12(a) (2d ed. rev. 2004) and cases
cited therein. Opposer’s contentions do not qualify, and
therefore opposer’s request for judicial notice is denied. We
should add that even assuming that the two industries are somehow
connected, this does not mean that goods and/or services within
the industries are related for purposes of likelihood of
confusion.
Opposition No. 91171967
12
of applicant’s goods and services. Opposer’s evidence
indicates that its goods are bought by “farmers” and “people
associated with the agricultural industry.” (Pitonyak Dep.,
p. 73). There is no evidence in the record that applicant’s
railroad vehicles and custom fabrication and manufacture
services are purchased by farmers or those in the
agricultural industry, or that the parties’ goods and
services travel in the same channels of trade. Thus, the du
Pont factors pertaining to trade channels and purchasers
weighs against a finding a likelihood of confusion.
We now turn to the factor of the conditions of
purchase. In view of the specialized nature of opposer’s
goods and applicant’s goods and services, purchasers would
be expected to exercise some degree of care in selecting the
respective goods and services. Accordingly, this factor
weighs against a finding likelihood of confusion.
With respect to the du Pont factor regarding the
variety of goods on which a mark is used, opposer argues
that the evidence of record establishes use of its BRANDT
mark in connection with a wide variety of products. This
factor assumes that if the purchasing public is so
accustomed to seeing a wide variety of goods in the
marketplace emanating from a single source and sold under
the same trademark, they will likely assume (correctly or
not) that other goods sold under the same mark share the
Opposition No. 91171967
13
same source – even if they are not closely related goods.
However, the evidentiary record does not reflect use of
opposer’s mark on a wide variety of goods. Moreover, the
uses have been limited to the agricultural field. Thus, we
do not find that the mark has been used with such a wide
variety of goods that this du Pont factor favors opposer.
Finally, turning to opposer’s purported evidence of
actual confusion, to the extent that such evidence is
reliable, it relates to opposer’s agricultural equipment and
applicant’s goods in Class 7, which are also agricultural
equipment. As already indicated, applicant has conceded
likelihood of confusion in connection with its goods in
Class 7. Because the evidence does not relate to opposer’s
agricultural equipment and applicant’s goods and services in
International Classes 12 and 40, the evidence is irrelevant.
Thus, this du Pont factor is neutral.
In conclusion, we find that notwithstanding the
identity of the marks, confusion is not likely because
opposer’s goods and applicant’s goods and services in
International Classes 12 and 40 are different, and the
channels of trade and classes of consumers for the
respective goods and services are likewise different.
Decision: The opposition is sustained and registration
to applicant is refused in connection with the goods in
International Class 7. The opposition is dismissed in
Opposition No. 91171967
14
connection with the goods and services in International
Classes 12 and 40, and the application will go forward in
these classes.