Sealtite Building Fasteners

Trademark Trial and Appeal Board

Jun 8, 2004

No. 75162108 (T.T.A.B. Jun. 8, 2004)

Mailed:
June 8, 2004
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Sealtite Building Fasteners
________
Serial No. 75162108
_______
Walter D. Ames for Sealtite Building Fasteners.
Mitchell Front, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Sealtite Building Fasteners seeks registration on the
Principal Register of the mark shown below:
for goods identified in the application, as amended, as
“self-piercing and self-drilling metal screws for use in
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75162108
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the manufacture of metal and post-frame buildings,” in
International Class 6.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
has held that applicant’s mark, when used in connection
with the identified goods, so resembles the mark shown
below:
registered for goods identified as “metal threaded
fasteners,” also in International Class 6,2 as to be likely
to cause confusion, to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
fully briefed the case. Applicant did not request an oral
hearing before the Board.
We affirm the refusal to register.
1 Application Serial No. 75162108 was filed on September 6,
1996, based upon applicant’s allegation of use in commerce at
least as early as July 7, 1992.
2 Registration No. 1756419 issued on March 9, 1993; section 8
affidavit accepted and section 15 affidavit acknowledged;
renewed.
Serial No. 75162108
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In arguing for registrability, applicant contends
that, given the nature of the goods, the Trademark
Examining Attorney has incorrectly placed a
disproportionate emphasis on the phonetic similarity of
these marks; that applicant’s industry-specific goods are
different from the goods of the cited registration and
travel in different channels of trade; that applicant’s
customers are sophisticated purchasers; that MAX-formative
marks are not that strong in the field of fasteners; and
that applicant is unaware of any instances of actual
confusion during more than ten years of contemporaneous
usage of these two marks.
By contrast, the Trademark Examining Attorney argues
that the involved marks create nearly the same commercial
impressions; that the goods are closely related, if not
identical products, and would move through the same
channels of trade to the same class of consumers; and that
applicant’s claim that there has been no actual confusion
is not meaningful in the context of this ex parte dispute.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
Serial No. 75162108
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1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Accordingly, we turn first to the du Pont factor
focusing on the similarity or dissimilarity of the marks in
their entireties as to appearance, sound and connotation.
As to appearance, as argued by applicant, both marks
are displayed in different special formats:
Registrant’s mark Applicant’s mark
Applicant characterizes registrant’s mark as drawn in “a
puerile scrawl” and placed in close proximity to an image
of “a whimsical, friendly lion” used on registrant’s
specimens. Additionally, applicant emphasizes that its
mark is a coined, four-letter word made by adding a second
letter “X” to the end of the more familiar term, MAX. When
placed side by side, as shown above, the addition of the
additional letter “X” does create a visual difference.
However, the test to be applied in determining
likelihood of confusion is not whether the marks are
Serial No. 75162108
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distinguishable upon side-by-side comparison, but rather
whether the marks, as they are used in connection with the
registrant’s and applicant’s goods, so resemble one another
as to be likely to cause confusion. Under actual marketing
conditions, consumers do not necessarily have the
opportunity to make side-by-side comparisons between marks.
Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller Derby
Skate Corporation, 206 USPQ 255 (TTAB 1980). The proper
emphasis is thus on the recollection of the average
customer, and the correct legal test requires us to
consider the fallibility of human memory. The average
purchaser normally retains a general rather than a specific
impression of trademarks. See Grandpa Pidgeon's of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973) [the figure of a stooped, elderly man holding a
cane and the words “G•R•A•N•D•P•A PIDGEON” v. the figure of
a seemingly more spry but elderly man in a mark having no
wording, both used with retail store services]; Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB
1991), affirmed in unpublished opinion, Appeal No. 92-1086
(Fed. Cir. June 5, 1992) [“SILVER SPOON CAFÉ” and “SILVER
SPOON BAR & GRILL” for "restaurant and bar services" v.
“SPOONS,” “SPOONBURGER,” “SPOONS with cactus design,” and
Serial No. 75162108
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“SPOONS within a diamond logo design”3; Envirotech Corp. v.
Solaron Corp., 211 USPQ 724, 733 (TTAB 1981); and Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Accordingly, we find that the difference in
stylization between these two marks is not legally
significant, and that the only other visual difference
between these marks is a single letter coming at the end of
otherwise identical words. Given the composition of these
two words, applicant’s mark is much closer in overall
appearance to registrant’s mark than applicant would have
us conclude.
As noted by the Trademark Examining Attorney, it seems
unquestionable that these two marks have identical
pronunciations. To the extent consumers might find
themselves calling for these goods by speaking the marks,
there is no way to distinguish them phonetically.
As to connotation, applicant argues that while its
“Maxx” trademark is totally arbitrary, registrant’s mark,
3
and
Serial No. 75162108
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“Max,” will be perceived as a man’s given name, a surname
or an abbreviation for the term “maximum.” However, even
if it is the case that “Max” would be viewed as a name or
as a shortened form of the word “maximum,” it remains an
arbitrary term in this context, and hence a fairly strong
mark, for registrant’s “metal threaded fasteners.”
Having reviewed the similarities in sound, meaning and
appearance of these two marks, we conclude that they are
quite similar in their overall commercial impressions.
We turn then to the relatedness of the goods as listed
in the cited registration and in the instant application.
Registrant’s goods are listed as “metal threaded
fasteners.” At the very least, they are closely related to
applicant’s goods. However, registrant’s identification of
goods must be read broadly to include all types of metal
screws. Specifically, registrant’s goods must be construed
as including applicant’s self-drilling metal screws having
a particular application. Under this construction, we must
conclude that registrant’s goods overlap with applicant’s
goods despite the limitation of applicant’s goods to use in
the manufacture of metal and post-frame buildings. Thus,
we find that applicant’s goods are closely related to
registrant’s goods, if not identical thereto.
Serial No. 75162108
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As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, applicant
contends that the relevant purchasers for its identified
goods would be sophisticated purchasers:
As applicant’s customers are contractors and
builders of metal and post-frame buildings,
it will be clear that they do not purchase
small quantities of screws at their local
hardware store. Instead, applicant’s
customers are purchasers of large quantities
of metal fasteners, enough to hold an entire
building together. Applicant’s customers
who make large purchases of screws know
applicant well.
(Applicant’s appeal brief, p. 9). We note that although
applicant’s goods have a very particularized purpose,
applicant’s identification of goods is not explicitly
restricted to specific classes of purchasers. Hence, even
if applicant’s screws would in most instances be marketed
to and bought by sophisticated purchasers, the Board must
consider that this kind of item could be offered to all
normal purchasers of the goods, and that this might well
include ordinary consumers needing self-drilling screws
available at the local hardware store. Moreover, the fact
that contractors would typically be knowledgeable and
discriminating consumers who may be expected to exercise
greater care in their selection of applicant’s products
“does not necessarily preclude their mistaking one
Serial No. 75162108
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trademark for another” or demonstrate that they otherwise
would be entirely immune from confusion as to source or
sponsorship when highly similar marks are used on related
goods. See Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); Wincharger Corporation v. Rinco, Inc., 297 F.2d 261,
132 USPQ 289 (CCPA 1962); and In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
As to the du Pont factor focusing on the nature and
extent of any actual confusion, applicant asserts that the
respective goods have been offered under the involved marks
contemporaneously since registrant allegedly adopted its
mark in July 1992, and that applicant is not aware of any
instances of actual confusion.
However, applicant’s lack of knowledge of incidents of
actual confusion is not particularly probative on the
question of likelihood of confusion. We have not been
provided with information regarding the geographic extent
of use of the marks or the dollar volume of the advertising
of applicant’s or registrant’s goods during the past
decade. In addition, we have not heard from registrant as
to whether it is aware of any incidents of actual
confusion. Finally, while solid evidence of actual
Serial No. 75162108
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confusion is the best evidence of likelihood of confusion,
any confusion about mutual sponsorship or affiliation is
difficult to obtain and would not necessarily be brought to
the attention of either applicant or registrant. See In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1205 (Fed. Cir. 2003) [“The lack of evidence of
actual confusion carries little weight … especially in an
ex parte context”]. Accordingly, we find this to be a
neutral factor in our balancing of the du Pont factors
herein.
As to the number and nature of similar marks in use on
similar goods, applicant argues that six third-party
registrations demonstrate that MAX-formative marks are so
common as applied to fasteners that members of the public
are conditioned to look to other distinguishing factors to
discover the source of the goods, citing to AMF
Incorporated v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268 (CCPA 1973). However, the cited AMF
Incorporated case itself notes that third-party
registrations do not establish that the marks shown therein
are in use, much less that consumers are so familiar with
them that they are able to distinguish among such marks.
Furthermore, even weak marks are entitled to protection
Serial No. 75162108
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against registration by a subsequent user of the same or
similar mark for the same or closely related goods or
services. See Hollister Incorporated v. Ident A Pet, Inc.,
193 USPQ 439 (TTAB 1976). Finally, in the instant case,
applicant included copies of these registrations from the
Office’s TESS records for the first time with its appeal
brief. The Trademark Examining Attorney properly objected
to the fact that applicant did not timely make these copies
of third-party registrations of record under Trademark Rule
2.142(d) (Trademark Examining Attorney’s brief, footnote 4
on p. 9). Thus, the Board has not considered the material.4
In conclusion, we find that the marks create quite
similar overall commercial impressions, that registrant’s
broad identification must be construed as including
applicant’s goods, and that applicant has failed to
demonstrate that MAX-formative marks are weak in the field
of metal fasteners. Accordingly, we find that applicant’s
mark, when used in connection with the identified goods, so
4 We hasten to add that even if the third-party registrations
had been considered, it would not demonstrate any weakness of the
term MAX alone for metal fasteners, nor change our decision
herein. Marks that convey quite different commercial impressions
than registrant’s and applicant’s marks (e.g., CHERRYMAX, MAXI-
BIN, MAXICOIL, MAXIHEAD, etc.), can hardly be the basis for
concluding that the cited mark is a weak trademark.
Serial No. 75162108
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resembles registrant’s mark as to be likely to cause
confusion, to cause mistake or to deceive.
Decision: The refusal to register based upon Section
2(d) of the Trademark Act is hereby affirmed.