Sears, Roebuck and Co.v.Bethurum

Trademark Trial and Appeal Board

Nov 18, 1999

No. 92022325 (T.T.A.B. Nov. 18, 1999)

Oral Hearing: Paper No. 47
October 1, 1998 GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 18,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Sears, Roebuck and Co.
v.
George M. Bethurum
_____
Cancellation No. 22,325
_____
Joan Optican Herman, Frank B. Flink, Jr. and Trent Webb of Shook,
Hardy & Bacon L.L.P. for Sears, Roebuck and Co.
George M. Bethurum, pro se.1
_____
Before Simms, Hanak and Hohein, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Sears, Roebuck and Co. has petitioned to cancel the
registration owned by George M. Bethurum for the mark
"BUSHWHACKER" and design, as reproduced below,

1 Although formerly represented by counsel throughout the trial and
briefing of this case, respondent represented himself at the oral
hearing held herein.
Cancellation No. 22,325
2
for a "fire ant control pesticide for domestic and agricultural
use".2 As grounds for cancellation, petitioner (hereinafter
sometimes referred to as "Sears") alleges that, with respect to
pest control and other gardening accessories, it "offers for sale
and sells electronic insect killers, electric hedge trimmers,
weed and grass trimmers, and power-operated weed and brush-
cutting tools" through "over 850 Sears retail outlets"; that
since long prior to registrant’s claimed date of first use of
October 1987, petitioner has continuously used and is the owner
of registrations for the following marks:
"BUSHWACKER," which is registered for
"electric hedge trimmers";3
"WEEDWACKER," which is registered for
"weed and grass trimmers";4
"BUGWACKER," which is registered for an
"electronic insect killer";5 and
"BRUSHWACKER," which is registered for a
"power-operated weed and brush-cutting tool";6

2 Reg. No. 1,756,396, issued on March 9, 1993 from an application filed
on April 29, 1992, which sets forth a date of first use anywhere of
October 1987 and a date of first use in commerce of July 1991;
affidavit §8 filed. The lining in the mark is for shading purposes
only.
3 Reg. No. 1,124,862, issued on September 11, 1979 from an application
filed on August 3, 1978, which sets forth dates of first use of
February 28, 1974; first renewal.
4 Reg. No. 1,125,925, issued on October 16, 1979 from an application
filed on June 1, 1978, which sets forth dates of first use of June 6,
1975; first renewal.
5 Reg. No. 1,263,505, issued for the mark "BUG WACKER" on January 10,
1984 from an application filed on September 24, 1982 and amended to
the mark "BUGWACKER" on September 17, 1985, which sets forth dates of
first use of January 31, 1980; combined affidavit §§8 and 15. The
term "BUG" is disclaimed.
Cancellation No. 22,325
3
that the fire ant control pesticide offered by respondent under
the "BUSHWHACKER" mark is "very closely related to [the] pest
control and gardening accessories on which petitioner uses its
famous, federally registered marks, BUSHWACKER, WEEDWACKER,
BUGWACKER and BRUSHWACKER"; that long prior to respondent’s date
of first use of his mark, the use by petitioner of the marks
"BUSHWACKER, WEEDWACKER, BUGWACKER and BRUSHWACKER to identify
and distinguish its pest control and gardening accessories has
created a strong recognition and association of the petitioner
with its ’WACKER’ family of trademarks"; that respondent’s
"BUSHWHACKER" mark "is the phonetic equivalent of the
petitioner’s famous mark BUSHWACKER, making ... [respondent’s]
mark a colorable imitation of the famous mark BUSHWACKER and the
other marks in the ’WACKER’ family of trademarks"; that the
respondent’s goods "are advertised and sold to the same potential
purchasers as the goods sold by petitioner under the famous and
federally registered mark BUSHWACKER and the other marks in the
’WACKER’ family of trademarks"; and that respondent’s mark, when
used in connection with his goods, so resembles petitioner’s
marks for its goods as to be likely to cause confusion, mistake
or deception.
Respondent, in his answer, has denied the salient
allegations of the petition to cancel.7

6 Reg. No. 1,659,444, issued on October 8, 1991 from an application
filed on August 29, 1990, which sets forth dates of first use of
December 1980; affidavit §8 accepted.
7 Although respondent has additionally asserted, as affirmative
defenses, that petitioner "is estopped by laches and/or acquiescence
Cancellation No. 22,325
4
The record includes the pleadings and the file of the
involved registration. Petitioner, as its case-in-chief, has
submitted the testimony, with exhibits, of: Robert J. Misevich,
its buyer of non-powered lawn and garden equipment; Michael K.
Young, an associate buyer for petitioner of powered hedge
trimmers, weed and grass trimmers, bladed trimmers, and leaf
shredders; and William J. Brandenburg, a buyer for petitioner of
lawn mowers, tractors and snow throwers. Petitioner, in
addition, has filed a notice of reliance on: certified copies of
its originally pleaded registrations, as well as a certified copy
of its registration for the mark "LEAFWACKER" for "lawn and
garden shredding machines";8 its discovery deposition, with
exhibits, of respondent; and certain of respondent’s answers to
petitioner’s interrogatories.9 Respondent, as his case-in-chief,

from bringing or maintaining the claims of its Petition to cancel,"
such defenses not only have not been properly pleaded, in that the
facts constituting the defenses have not been alleged, but in any
event the defenses were neither proven at trial nor, except for a few
conclusory statements, were they raised in respondent’s brief.
Accordingly, no further consideration will be given to respondent’s
putative affirmative defenses.
8 Reg. No. 1,651,346, issued on July 23, 1991 from an application filed
on August 20, 1990, which sets forth dates of first use of October 5,
1987; combined affidavit §§8 and 15.
9 Respondent has filed a motion to strike petitioner's reliance on its
registration for its "LEAFWACKER" mark, as well as to strike
"reference to this registration or mark as it may appear elsewhere in
the evidentiary materials proffered by Petitioner, including the
testimonial depositions" of petitioner's witnesses, on the basis that
the petition for cancellation "nowhere identifies or pleads
Petitioner's purported LEAFWACKER mark or the alleged registration
thereof" either separately or as part of petitioner's asserted family
of "WACKER" marks. As a result thereof, and inasmuch as such
registration issued well prior to the filing of the cancellation
petition, respondent maintains that he "was not put on notice of
Petitioner's attempts to rely on such registration and therefore was
not in a position to seek discovery regarding same and/or to prepare
for trial ... regarding this registration." However, as petitioner
Cancellation No. 22,325
5
has submitted notices of reliance on, inter alia: various
newspaper advertisements by petitioner; copies of third-party
registrations for marks which consist of or include the terms
"WACKER," "WHACKER" or variants thereof, including such marks as
"BUSHWACKER" and "BUSHWHACKER"; certain of petitioner’s answers
to respondent’s interrogatories; some of respondent’s answers to

notes in its opposition to the motion, petitioner’s timely responses
to the discovery requests served by respondent on the last day of the
discovery period "specifically referred to and provided responsive
information regarding the LEAFWACKER mark and registration." In light
of "the notice found in Petitioner’s discovery responses that this
registration was a member of the ’WACKER’ family of marks," petitioner
"asserts that admitting evidence relating to LEAFWACKER would not
unfairly prejudice the Respondent." Petitioner consequently requests
that, pursuant to Fed. R. Civ. P. 15(b), the pleadings be deemed to be
amended to conform to the evidence inasmuch as the mark "LEAFWACKER is
merely an additional member of the ’WACKER’ family of marks" and such
rule provides, in pertinent part, that:
If evidence is objected to at the trial on the ground that
it is not within the issues made by the pleadings, the court
may allow the pleadings to be amended and shall do so freely
when the presentation of the merits of the action will be
subserved thereby and the objecting party fails to satisfy
the court that the admission of such evidence would
prejudice the party in maintaining the party’s ... defense
upon the merits. ....
Respondent, in reply, observes that, "pursuant to Board practice," he
"had every right ... to serve ... discovery requests on the close of
discovery" and that, in any event, such "does not change the fact that
Petitioner did not satisfy its own affirmative obligation to give
early notice in its pleadings [sic] of the particular marks on which
it based its claims of likely confusion".
We agree with petitioner, however, that as stated in its brief,
consideration of "[t]he LEAFWACKER mark does not create new issues, it
merely adds more proof to the [family of marks] claim pleaded and,
thus, [evidence with respect thereto] should not be stricken." We
also concur with petitioner that, as stated therein, "because the mark
has been the subject of discovery, there can be no prejudice to
Respondent regarding that mark’s involvement in this case," especially
since petitioner, in its brief, appears to assert such mark only as a
member of its claimed family of "WACKER" marks and not individually as
is the case with its "BUSHWACKER" mark for electric hedge trimmers.
Accordingly, the motion to strike is denied; the request to amend is
approved; and the pleadings are hereby deemed to be amended pursuant
to Fed. R. Civ. P. 15(b) to include the "LEAFWACKER" mark as part of
petitioner’s alleged family of "WACKER" marks.
Cancellation No. 22,325
6
petitioner’s interrogatories; certain of petitioner’s responses
to respondent’s requests for admission; dictionary definitions;
and yellow pages listings. Petitioner, in rebuttal, has
presented the testimony, with exhibits, of Andrew R. Ginger, its
national retail marketing manager for the advertising activities
of petitioner’s home improvement division. Briefs have been
filed and an oral hearing, attended by respondent and counsel for
petitioner, was held.10
Priority, insofar as the parties’ individual marks are
concerned, is not in issue inasmuch as the certified copies of
petitioner’s registrations for its pleaded marks show not only
that such registrations are subsisting and owned by petitioner,
but that the filing dates of the applications which matured into
those registrations are earlier than the filing date of the
application which resulted in respondent’s involved registration
for his mark.11 Petitioner therefore has priority vis-à-vis such
marks. See, e.g., Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423, 1428-29 (TTAB 1993) at n.

10 Inasmuch as petitioner, at the oral hearing, withdrew its contested
motion to strike respondent’s brief as untimely and thus, in effect,
consented to the motion, which it had earlier opposed, by respondent
to reopen the time for filing such brief, the motion to reopen is
granted and respondent’s brief is accepted. We also hasten to point
out that even if petitioner were not allowed to rely upon the evidence
pertaining to its "LEAFWACKER" mark, the outcome of this proceeding
would be the same.
11 As to the statement in respondent’s brief, filed on December 19,
1996, that he "hereby renews" his motion, which was denied by the
Board on April 18, 1996, to amend his answer to include a counterclaim
for cancellation of petitioner’s pleaded registration for the mark
"BUSHWACKER" for electric hedge trimmers "on the grounds that said
designation was, in fact, generic," such statement is denied as an
untimely request for reconsideration, which under Trademark Rule
Cancellation No. 22,325
7
13; and American Standard Inc. v. AQM Corp., 208 USPQ 840, 841-42
(TTAB 1980). In any event, the record also establishes that each
of petitioner’s marks has been in continuous use since on or
before the October 1987 date of first use in intrastate commerce
by respondent of his mark (which was first used in interstate
commerce in July 1991). Priority is in issue, however, with
respect to whether petitioner has a family of "WACKER" marks. In
addition, as characterized by petitioner in its brief, there are
issues as to whether respondent’s mark "BUSHWHACKER" and design
mark, as used in connection with his fire ant control pesticide
for domestic and agricultural use, is likely to cause confusion
with petitioner’s "BUSHWACKER mark and ... one or more of
Petitioner’s other marks included in the ... family of marks for
lawn and garden products, including the marks BUGWACKER,
LEAFWACKER, WEEDWACKER, and BRUSHWACKER."12
According to the record, petitioner has continuously
operated its "SEARS" retail stores, which are open to members of
the general public,13 since 1925. Petitioner currently operates
about 850 such stores throughout the United States along with
another 100 "SEARS" paint and hardware stores. Petitioner’s

2.127(b) was due no later than thirty days from the date of the
Board’s order denying the motion to amend.
12 We again note that it appears from its brief that petitioner does
not claim that there is a likelihood of confusion between respondent’s
mark and its "LEAFWACKER" mark individually, nor does it appear from
such brief that petitioner is asserting a likelihood of confusion
between respondent’s mark and its "BUGWACKER," "WEEDWACKER" or
"BRUSHWACKER" marks considered separately.
13 Such category, according to petitioner, includes representatives of
public utilities, government agencies and agricultural customers who
may have need for petitioner’s products.
Cancellation No. 22,325
8
"BUSHWACKER" electric hedge trimmers, nylon-string "WEEDWACKER"
weed and grass trimmers, bladed "BRUSHWACKER" power-operated weed
and brush-cutting tools, "BUGWACKER" electronic insect killers
and "LEAFWACKER" shredders are sold and offered for sale
exclusively in each of its retail locations and, until the
discontinuance thereof around 1993, were marketed through
petitioner’s "SEARS" mail-order catalog, catalog outlets and
merchandise agents. Such products are principally sold to
homeowners and other ordinary consumers, although "upper-end"
versions are also sold to professional landscapers. (Young dep.
at 32.) Petitioner has continuously used its registered marks
"on its products since at least as early as the date of first use
set out in the Certificates of Registration"; specifically,
since: February 28, 1974 in the case of its "BUSHWACKER" mark;
June 6, 1975 as to its "WEEDWACKER" mark; January 31, 1980 with
respect to its "BUGWACKER" mark; December 1980 in the case of its
"BRUSHWACKER" mark; and October 5, 1987 as to its "LEAFWACKER"
mark. (Answer to Respondent’s Interrogatory No. 4. b.)
The goods sold under such marks "have long been and
presently are advertised and sold in close proximity to each
other in the SEARS lawn & garden section" of petitioner’s stores,
thereby "emphasizing their connection in the ’Wacker’ family of
products." (Answer to Respondent’s Interrogatory No. 10.)
Petitioner also has distributed numerous advertisements which
make reference to more than one of its "WACKER"-surnamed marks,
although none of its ads includes all of such marks. Ads for
such products have appeared nationwide in catalogs, direct mail
Cancellation No. 22,325
9
pieces, pre-print or free-standing newspaper inserts, other
newspaper advertisements, and television commercials. In
particular, when asked whether petitioner regularly runs
advertising featuring several of its "WACKER"-surnamed products
on the same page, Mr. Young answered as follows: "Yes. During
peak season, which starts about in April and runs through about
August or September, you will see the different segments of the
WACKER family advertised on the same page." (Young dep. at 29.)
Furthermore, to Mr. Young’s knowledge, such advertising has taken
place since at least 1990 and the record shows that various
"WACKER"-surnamed products have been so advertised long prior to
respondent’s first use in October 1987 of his "BUSHWHACKER" and
design mark.
Moreover, according to Mr. Brandenburg, who has been a
buyer for Sears since 1967 and at one time was responsible for
buying various power trimmers, petitioner intended to create a
family of "WACKER"-based marks.14 Specifically, its "BUSHWACKER"
brand of electric hedge trimmers was followed by the introduction
of its "WEEDWACKER" weed and grass trimmers, which was followed
in turn by the development of its "BUGWACKER" electronic insect
killers, its "BRUSHWACKER" bladed trimmers and its "LEAFWACKER"

14 According to his testimony, Mr. Brandenburg personally used the
phrase "a WACKER family of marks" prior to the commencement of this
proceeding and is "the person at Sears that is probably most
responsible for developing it" inasmuch as he "was involved with
buying the [BUSHWACKER] hedge trimmer product ... and was singularly
responsible for ... creating the WEEDWACKER trademark." (Brandenburg
dep. at 35.) Such, in turn, "led us to look at it from a marketing
opportunity to create a family of products so that we ... [had] an
identity away from our competition[,] who used various trademarks."
(Id.)
Cancellation No. 22,325
10
shredders. Mr. Brandenburg further noted, like Mr. Young did in
his testimony, that advertising featuring--on the same page--at
least some of the products sold by petitioner under its "WACKER"-
based marks has been deliberately run so as "to tie that family
together." (Brandenburg dep. at 18.)
Petitioner has also been selling various chemical
products, including pesticides such as insecticides, in the lawn
and garden department of its retail stores since at least as
early as 1990. Such products, while displayed separately from
the lawn and garden equipment offered under its various "WACKER"-
surnamed marks, principally involve those marketed by the Chevron
Chemical Company under the "ORTHO" brand and include products,
such as "ORTHENE," "DIAZINION" and "DURABAND," for killing fire
ants. Petitioner admits, however, that it does not sell any
pesticides under its "BUSHWACKER," "WEEDWACKER," "BUGWACKER,"
"BRUSHWACKER" and "LEAFWACKER" marks, although ads for its
"BUGWACKER" electronic insect killers have also featured yard and
garden chemicals in particular.
While exact sales figures for petitioner’s products are
confidential, from 1977 until October 1994, sales of its
"BUGWACKER" electronic insect killers were generally in excess of
two and a half million units and totaled over $100 million.
During the period from 1990 through September 1994, sales of
petitioner’s "BUSHWACKER" hedge trimmers reached a level of
roughly one and a half million units, representing annual sales
of such items of several hundred thousand, and totaling almost
$70 million. For the same period, combined sales of its
Cancellation No. 22,325
11
"WEEDWACKER" line trimmers and "BRUSHWACKER" bladed trimmers were
nearly two and a half million units, reflecting yearly sales of
several hundred thousand units, and totaled almost $200 million.
Sales during the same period of petitioner’s "LEAFWACKER"
shredding machines amounted to about 60 thousand units, or
roughly 12 thousand per year, and ran just under five and one
half million dollars.
Although its advertising expenditures are also
confidential, in broad terms petitioner in 1993 spent over three
million dollars on pre-print advertising, such as newspaper
inserts, relating to the goods sold under its various "WACKER"-
surnamed marks, of which approximately two million dollars was
spent on ads featuring two or more of such products and their
respective marks. Newspaper pre-print advertising by petitioner
during a three-month period in 1994 and featuring multiple
listings of its several "WACKER"-based marks, totaled over
$800,000.00, a figure which Mr. Ginger estimated "would sum up to
a number similar to" that for 1993. (Ginger dep. at 40.) Such
amount, Mr. Ginger stated, "represents only a portion of the
advertising that would have been done in 1994 for these
products." (Id.) In addition, while petitioner does not retain
pre-print advertising which it ran during 1992 and the years
prior thereto, and thus Mr. Ginger was unable to calculate
petitioner’s advertising expenditures for those years, he
testified with respect thereto that "[i]t’s my opinion that the
level of advertising for WACKER products for previous years would
be consistent with what we see ... for 1993 and ’94." (Id.)
Cancellation No. 22,325
12
There are no significant instances of third-party use.
According to Mr. Misevich, he has "never seen" the "WACKER name
... used anywhere except at Sears" as part of petitioner’s
marks.15 (Misevich dep. at 68.) In particular, Mr. Misevich
testified that he was not aware of use of the marks "BUSHWACKER"
or "BUSHWHACKER" by a third-party in connection with any product
or service.16 Likewise, with the exception of the use by a third
party of the mark "THE BUSHWACKER" for golf bags, Mr. Young
testified that he was not aware of any such third-party usage.
The sole instances of third-party use which come closest to the
lawn and garden care field in which the parties’ products are
sold are those few, in yellow pages listings, in which the term
"Bushwacker" appears as part of the trade names of a lawn
maintenance firm, a nursery business and two separate tree
service companies.
Respondent is in the business of developing and selling
environmentally benign fire ant, roach, termite and weevil
control compounds, which he markets under his registered

15 While, among other things, respondent introduced a third-party
registration for the mark "WHACK" for "insecticides," as well as
third-party applications to register the mark "BUSHWACKER
PROFESSIONAL" for "chipper/shredder, vacuuming and blower machines for
tree limbs, brush, leaves, yard debris and the like" and the mark
"BUSHWACK" for an "insecticide" (respondent’s exhibits 97, 114 and
124), there is no evidence that such marks either are or have ever
been in use in connection with the respectively indicated goods.
16 Although the record also reflects the issuance of third-party
registrations for the marks "BUSHWACKER" for "heavy-duty ground growth
disintegrating machines for clearing land" and "WOODWACKER" for a
"manual wood splitter" (respondent’s exhibits 6 and 23), Mr. Misevich
testified that he was not familiar with the registrants or any
products made thereby and respondent failed to establish that such
marks were in actual use for the goods set forth in the registrations.
Cancellation No. 22,325
13
"BUSHWHACKER" and design mark. In particular, respondent is the
chairman and president of, and a principal shareholder (along
with his wife Shirley and another individual) in, The Bushwhacker
Associates, Inc., a Nevada corporation which manufactures and
sells respondent’s "BUSWHACKER" fire ant control pesticide under
a license from respondent, who is the owner of the "BUSHWHACKER"
and design mark. Respondent’s "BUSHWHACKER" fire ant control
pesticide, which he developed around 1987,17 is sold at retail
through mass merchandisers, such as Wal-Mart, grocery stores,
such as Randall’s (a major Texas supermarket chain), and hardware
stores, including Ace Hardware and Handy Wholesalers, and is also
available by mail order. In particular, Wal-Mart, which is a
major competitor of petitioner, sells respondent’s "BUSHWHACKER"
fire ant control pesticide in the lawn and garden section of its
retail stores. Like petitioner’s retail operations, the lawn and
garden section at Wal-Mart’s stores features not only pesticides
and other chemical products, but also sells a full line of lawn
care and gardening supplies, including power equipment and tools.
Similarly, another of petitioner’s competitors, the Ace Hardware
chain, has a lawn and garden section in its stores. Such
competitors draw the same types of customers as do petitioner’s
retail outlets and, since "[t]here are only so many customers to
go around," they "will shop a retailer out of convenience and

17 Respondent, in addition, produces "a complete line of over-the-
counter pharmaceuticals and a line of pet care products, all of ...
[his] own formulas". (Bethurum disc. dep. at 9-10.)
Cancellation No. 22,325
14
based on sale prices" rather than loyalty to a particular
retailer. (Brandenburg dep. at 29.)
Like any chemical product used for controlling insects,
respondent’s "BUSHWHACKER" fire ant control pesticide has been
registered with the Environmental Protection Agency ("EPA"), as
required by federal law,18 and has also been registered, in
accordance with state laws, in each of the states in which it is
currently sold.19 At present, respondent’s EPA registration for
his "BUSHWHACKER" fire ant control pesticide essentially permits
use of the product anywhere, including household use as well as
in food establishments, schools, hotels and other commercial
businesses. Respondent’s "BUSHWHACKER" and design mark was in
lawful use in interstate commerce, as permitted by his first EPA
registration for his product, as of July 1991. Respondent, whose
earliest sales were in Texas and Florida, also maintains that
such mark was in use (presumably in field tests or by being
distributed to the public as free samples) as of October 1987.
The earliest documented sale, however, relates to an October 9,
1990 sales ticket for two 25-pound canisters of "BUSHWHACKER"
fire ant control pesticide sold to a country club in Galveston,
Texas. Manufacturing of respondent’s fire ant control pesticide,

18 Unless registered with the EPA, a pesticide may not be legally sold,
although it may be given away and field tested. Respondent received
his first EPA registration for his fire ant control pesticide, which
had restrictions on the product’s areas of use, in 1991 and received a
second EPA registration therefor, which permitted broader usages, in
March 1994.
19 Fire ants are principally a pest in about 18 southern states and in
California and Arizona.
Cancellation No. 22,325
15
subject to his second EPA registration therefor, commenced in
July 1994.
Following a rudimentary search conducted in May 1987,
which among other things disclosed petitioner’s registration for
its "BUSHWACKER" mark for electric hedge trimmers, respondent
elected to adopt his "BUSHWHACKER" and design mark for his fire
ant control pesticide.20 Respondent testified that he chose such
mark because:
I saw the product as being somewhat
similar to the civil war Bushwacker as I know
it: It hides in the bushes and when you walk
through it it gets them. And I thought the
name was appropriate for an insect killer
under those terms.
(Bethurum disc. dep. at 44.)
At the retail level, respondent’s fire ant control
pesticide is sold under his "BUSHWHACKER" and design mark chiefly
in one-, five- and 25-pound canisters which are typically
arranged in end-of-aisle displays. Commercial quantities of such
goods, which are often applied by airplane, are available in 350
pound canisters. While, at present, agricultural users are his
principal customers, respondent also offers, for such specific

20 Respondent’s reaction to petitioner’s registration was that it did
not present a problem inasmuch as "a weedcutter has nothing to do with
a pesticide. I couldn’t find that there would be any idiot that
couldn’t tell the difference between the two." (Bethurum disc. dep.
at 42.) It should be pointed out, however, that even though the
respective goods are specifically different in nature, the question to
be determined concerning the registrability of respondent’s mark is
not whether such goods are likely to be confused but rather whether
there is a likelihood of confusion as to the source of those goods
because of the marks used in connection therewith. See, e.g., In re
Rexel Inc., 223 USPQ 830, 831 (TTAB 1984); MRI Systems Corp. v.
Wesley-Jessen Inc., 189 USPQ 214, 218-19 (TTAB 1975); and Chemetron
Corp. v. Self-Organizing Systems, Inc., 166 USPQ 495, 500 (TTAB 1970).
Cancellation No. 22,325
16
applications as protecting electrical equipment and connections,
three-, six- and quarter-ounce containers of his "BUSHWHACKER"
product, which he respectively markets under the marks "LIL
WHACKER," "DADDY WHACKER" and "TINY WHACKER". According to
respondent: "All of these whackers ... are used for electrical
terminals, signal lights, street lights, railroad crossing
lights, [and] all kinds of things that go into ... connection
boxes to prevent the fire ants ... from doing damage to the
wiring and circuitry." (Id. at 72.) In particular, the "LIL
WHACKER" "goes into pressure switches and things of that nature";
the "DADDY WHACKER" is "made specifically for the use ... [in]
huge transformers"; and the "TINY WHACKER" primarily "goes in the
wellheads". (Id. at 72-74.) The sole sales figures of record,
while confidential, indicate that, as of June 1, 1994, combined
sales of respondent’s pesticide and pharmaceutical products under
his "BUSHWHACKER" and design mark have amounted to less than one
million dollars, with the majority of sales having been generated
in eastern and northeastern Texas.
Although none of respondent’s variously packaged
"BUSHWHACKER" pesticide for fire ant control is competitive or
suitable for use with petitioner’s "BUGWACKER" electronic insect
killers, respondent admits that homeowners would want to
eradicate both crawling as well as flying insects from their
properties. Respondent, in fact, concedes that his fire ant
control pesticide would be purchased by "just about any human
being," including homeowners, and not just commercial businesses.
(Id. at 133.) In particular, respondent testified as follows:
Cancellation No. 22,325
17
Q. Would a private home owner with a
yard be within your group of potential
purchasers?
A. Absolutely. ....
(Id. at 72.) Respondent, however, has not received any inquiry
or communication which suggests, implies or otherwise infers that
petitioner is associated with respondent, nor is respondent aware
of any instance of actual confusion as to the source of the
parties’ respective goods.
Respondent, in addition to product literature given to
customers through distributors of his goods and available at
retail displays, advertises his "BUSHWHACKER" fire ant control
pesticide at a variety of trade shows ranging from electrical
equipment shows to home shows and flower shows. Respondent also
advertises such goods in publications directed to owners and/or
operators of golf courses, apartment complexes, hotels and
motels. In addition, several of respondent’s distributors do
radio advertising for his goods. Respondent has done some
limited television advertising thereof and plans to do radio ads
directed to persons interested in gardening. Actual advertising
expenditures to date, however, have been nominal.
Turning to consideration of the pertinent factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for determining whether a likelihood
of confusion exists, we find that, contrary to respondent’s
contentions, petitioner has satisfied its burden of demonstrating
that confusion as to source or sponsorship is likely to occur.
Respondent, in this regard, argues among other things that
Cancellation No. 22,325
18
because petitioner’s "hedge, weed, brush, grass and leaf trimmers
and shredders" constitute "electric hand[-]held tools," such
goods "are not interchangeable with, and are totally different
from, fire ant control pesticide." While respondent acknowledges
that petitioner’s electronic insect killers are "arguably
related" to respondent’s goods, respondent asserts that "an
electrical appliance for killing flying insects" is nevertheless
"quite different" in that "it is a home use appliance, not a
pesticide for agricultural use on farms, [or for] turf
management, public utility and industrial uses," as is the case
with respondent’s product. Respondent consequently maintains
that none of petitioner’s goods is so similar to his fire ant
control pesticide that confusion would be likely.
We agree with petitioner, however, that the parties’
goods are sufficiently related that, if sold under the same or
similar marks, confusion as to origin or sponsorship thereof
would likely take place.21 As petitioner points out, all of its
marks "are employed on goods commonly referred to as lawn and
garden items, including items for plant tending and insect
control." The record demonstrates, as petitioner accurately
notes, that "the items sold in connection with Petitioner’s marks

21 It is of course well settled that goods need not be identical or
even competitive in nature in order 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., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590,
595-96 (TTAB 1978) and In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978).
Cancellation No. 22,325
19
are marketed alongside products which are for precisely the same
application as Respondent’s pesticide." Specifically,
petitioner’s electric hedge trimmers, weed and grass trimmers,
weed and brush-cutting tools, lawn and garden shredding machines,
and electronic insect killers are all sold together in the lawn
and garden department of its retail stores in close proximity to
such separately displayed products as pesticides and other
household chemicals for weed and insect control. Petitioner, in
fact, has even advertised its "BUGWACKER" electronic insect
killers in conjunction with yard and garden chemicals. In a
similar vein, respondent’s fire ant control pesticide is sold
alongside various lawn care and gardening supplies, including
power equipment and tools, in the lawn and garden sections of
such retailers as mass merchandisers, grocery stores and hardware
stores. As a result, consumers have become so conditioned to
seeing lawn and garden products of the kinds sold by the parties
displayed together in the same section of retail outlets that
they would regard such products, if marketed under the same or
similar marks, as emanating from or being sponsored by or
affiliated with a common source.
We also find, contrary to respondent’s position, that
petitioner has established a family of marks,22 characterized by

22 As stated in J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d
1460, 18 USPQ2d 1889, 1891-92 (Fed. Cir. 1991):
A family of marks is a group of marks having a
recognizable common characteristic, wherein the marks are
composed and used in such a way that the public associates
not only the individual marks, but the common characteristic
of the family, with the trademark owner. Simply using a
series of similar marks does not of itself establish the
Cancellation No. 22,325
20
the term "WACKER," which came into existence long prior to any
date upon which respondent can rely in this proceeding. In
particular, respondent maintains that third-party registrations
of marks which consist of or include the term "WACKER" or
"WHACKER," newspaper and magazine article excerpts mentioning
such terms as "’bugwacker’, ’weedwacker’, and ’wacker’," yellow
pages listings of a few landscaping and tree service firms using
the term "Bushwacker" in their trade names, and dictionary
definitions of the words "whack" and "whacker"23 all serve to
demonstrate that the term "WACKER" is merely descriptive, or at
least highly suggestive, of petitioner’s goods. Such term,
according to respondent, is thus is not distinctive enough to
trigger recognition thereof as a family surname, citing Spraying
Systems Co. V. Delavan Inc., 975 F.2d 387, 24 USPQ2d 1181, 1187
(7th Cir. 1992); Land-O-Nod Co. v. Paulson, 220 USPQ 61, 65-66

existence of a family. There must be a recognition among
the purchasing public that the common characteristic is
indicative of a common origin of the goods. ....
Recognition of the family is achieved when the pattern
of usage of the common element is sufficient to be
indicative of the origin of the family. It is thus
necessary to consider the use, advertisement, and
distinctiveness of the marks, including assessment of the
contribution of the common feature to the recognition of the
marks as of common origin.
23 Among other things, dictionary excerpts show that Webster’s Ninth
New Collegiate Dictionary (1988) defines "whack" as a verb meaning "1
a : to strike with a smart or resounding blow b : to cut with or as
with a whack : CHOP"; The Dictionary of American Slang (1975) lists
such term as a verb meaning, inter alia, "[t]o chop with a knife or
cleaver"; and Webster’s Third New International Dictionary (1961) sets
forth such term as connoting "to strike with a smart or resounding
blow". Respondent specifically contends, in light thereof, that
"’WACKER’ is, if not merely descriptive, at best highly suggestive, of
Petitioner’s goods--electric implements which cut, shred, and trim
hedges, bushes, weeds, and brush, and an electric appliance which
’zaps’ flying insects."
Cancellation No. 22,325
21
(TTAB 1983); Angelica Corp. v. Collins & Aikman Corp., 192 USPQ
387, 394 (TTAB 1976); and D. Kera, "Tips from the TTAB," 67
Trademark Reporter 419, 420 (TTAB 1977).
The record shows, however, that even before respondent
first used his mark in October 1987, petitioner has had an intent
to develop a family of "WACKER"-based marks in light of the
commercial success of its "BUSHWACKER" electric hedge trimmers,
which it introduced in early 1974. Starting with its use of its
"WEEDWACKER" mark for weed and grass trimmers a year later and
continuing with its use of both its "BUGWACKER" mark for
electronic insect killers and its "BRUSHWACKER" mark for bladed
trimmers in 1980, along with the additional use of its
"LEAFWACKER" mark for shredders by October 1987, petitioner has
continuously used and promoted such marks as part of a family of
"WACKER"-surnamed marks. Such products have not only been sold
together, under the respective marks, in a substantial volume
over the course of many years, but petitioner has expended
appreciable sums and run numerous advertisements, in a wide
variety of media, during that time in which more than one
(although not all) of its "WACKER"-surnamed marks have regularly
and prominently appeared. Given such extensive promotion, and
the lack of any significant third-party use of "WACKER"-based
marks on lawn and garden products, it is clear that the term
"WACKER," even if it arguably could be viewed as suggestive of
petitioner’s products (and it plainly is not merely descriptive
thereof), is in fact distinctive and is recognized by members of
the purchasing public as indicative of the common ownership of
Cancellation No. 22,325
22
petitioner’s marks. A family of such marks, characterized by the
term "WACKER" as its distinguishing element, consequently exists
and has so existed since prior to the earliest date upon which
respondent can rely in this proceeding.
This brings us to consideration of the respective
marks. Respondent argues that because the only similarity
between his "BUSHWHACKER" and design mark and petitioner’s
"WEEDWACKER," "BUGWACKER," "BRUSHWACKER" and "LEAFWACKER" marks
is the term "WACKER" (or "WHACKER"), such "is an insufficient
basis for proving confusing similarity," particularly in light of
the design element in his mark, which he asserts "is a prominent
and dominant feature." While respondent also urges that "the
highly stylized lettering" of his BUSHWHACKER and design mark
"completely distinguishes" it from petitioner’s "BUSHWACKER"
mark, we are constrained to agree with petitioner that "the
appearance, sound, connotation and commercial impression of
Petitioner’s BUSHWACKER mark and Respondent’s BUSHWHACKER mark
are, for all practical purposes, identical." Such marks are
phonetically equivalent, differing only in the barely perceptible
fact that respondent’s spelling of the term "WHACKER" in his mark
utilizes an "H" whereas petitioner’s mark does not, and are
virtually indistinguishable, as they are likely to be encountered
in the marketplace, in appearance, connotation and overall
commercial impression. The term "BUSHWHACKER" in respondent’s
mark is also the dominant and distinguishing element thereof,
inasmuch as it is the only literal term in the mark and would
thus be used by customers and prospective purchasers in asking
Cancellation No. 22,325
23
about or calling for respondent’s goods. Moreover, as petitioner
accurately observes, respondent’s "BUSHWHACKER" and design mark
"closely parallels Petitioner’s other ’WACKER’ marks for its lawn
and garden products, in that consumers have come to associate
marks containing the term "WACKER" with petitioner and are likely
to view respondent’s "BUSHWHACKER" and design mark, when used in
connection with such a closely related lawn and garden item as a
fire ant control pesticide for domestic use, as emanating from
the same source as the lawn and garden products in petitioner’s
family of "WACKER"-based marks.
Thus, whether consumers are specifically familiar with
petitioner’s "BUSHWACKER" mark for electric hedge trimmers, or
whether they are generally acquainted with such mark and others
in petitioner’s family of "WACKER"-surnamed marks, including its
use of the "WEEDWACKER" mark for weed and grass trimmers,
"BUGWACKER" for electronic insect killers, "BRUSHWACKER" for
power-operated weed and brush-cutting tools and/or "LEAFWACKER"
for lawn and garden shredding machines, confusion as to origin or
association is likely to occur from the contemporaneous use by
respondent of his virtually identical (in the former instance) or
substantially similar (in the latter case) "BUSHWHACKER" and
design mark for a fire ant control pesticide for domestic use.
Clearly, when consumers and other purchasers encounter
respondent’s product in its canister packaging, and
unquestionably when commercial and agricultural users encounter
the product in smaller size containers bearing the "BUSHWHACKER"
and design mark which are advertised under such additional marks
Cancellation No. 22,325
24
as "LIL WHACKER," "DADDY WHACKER" and "TINY WHACKER," confusion
as to source or sponsorship thereof is likely since, even if
purchasers were to notice the differences between respondent’s
"BUSHWHACKER" and design mark and petitioner’s "BUSHWACKER" mark
and/or any of its other "WACKER"-surnamed marks, they could still
reasonably believe that respondent’s fire ant control pesticide
for domestic and agricultural use is simply another lawn and
garden item emanating from petitioner.
In addition, while the record fails to establish that
petitioner’s marks are famous, it does show that such marks, both
singularly and collectively, have achieved a significant measure
of strength and recognition on the part of the purchasing public
which entitles the marks to a correspondingly broader scope of
protection. Petitioner’s sales and advertising under its marks,
as noted previously, have been substantial and its products,
particularly those marketed under its "WEEDWACKER" and
"BUGWACKER" marks, have received extensive publicity in newspaper
and magazine articles. In view thereof, and given the absence of
any significant third-party uses, in connection with the same or
similar goods as those of the parties, of marks which consist of
or contain the term "WACKER" (or its phonetic equivalent
"WHACKER"), a finding of likelihood of confusion is warranted.
In reaching our conclusion in this regard, we have not
ignored the absence of any reported incidents of actual
confusion. We note, however, that such is not a meaningful
factor in the circumstances of this case inasmuch as the record
fails to demonstrate that, for a significant period of time,
Cancellation No. 22,325
25
respondent’s sales and advertising of his product under his
"BUSHWHACKER" and design mark have been so extensive that, if
confusion as to origin or affiliation were likely to occur with
petitioner’s contemporaneous use of its "BUSHWACKER" and/or other
"WACKER"-based marks, it could be expected to have happened.
See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). The bulk of respondent’s sales, which have
been confined principally to eastern and northeastern Texas,
appear to have taken place primarily during the two and a half
years since he received his second and substantially less
restrictive EPA registration for his product in 1994, and
advertising done by respondent and his distributors under his
mark has been quite modest.
Moreover, as respondent acknowledges in his brief, the
absence of any reported instances of actual confusion is
explained by the fact that, as a practical matter:
The primary channels of trade through
which most of Bethurum’s BUSHWHACKER fire ant
pesticide is sold is for agricultural, public
utility, and other industrial/commercial
applications. The primary focus of
Bethurum’s market is to farmers, parks,
schools, public utilities, and golf courses.
In short, this is not Sears’ claimed market
[in its brief] of "middle to upper class
suburban and urban" customers. .... Even in
the retail outlets such as grocery stores and
Wal-Mart stores, where Bethurum’s product is
sold, it is directed to the institutional
applications of the fire ant pesticide, such
as for "schools" and "parks". ....
It is well settled, however that the issue of likelihood of
confusion must be determined in light of the goods set forth in
the respective registrations and, in the absence of any specific
Cancellation No. 22,325
26
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution for such goods.
See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Here, respondent’s product is broadly identified in his
registration as a "fire ant control pesticide for domestic and
agricultural use" (emphasis added), an identification which
includes the same ordinary consumers and identical mass
merchandiser and hardware store retail trade channels as those to
whom and through which petitioner’s household lawn and garden
equipment is marketed. It is clear, therefore, that respondent’s
goods, as identified, may not be limited to agricultural and/or
institutional users. Furthermore, and in any event, the absence
of actual confusion to date is simply not dispositive inasmuch as
evidence thereof is notoriously difficult to come by and the test
under Section 2(d) of the Trademark Act is likelihood of
confusion rather than actual confusion. See, e.g., Gillette
Canada Inc. v. Ranir Corp., supra; Block Drug Co. v. Den-Mat
Inc., 17 USPQ2d 1315, 1318 (TTAB 1989); and Guardian Products
Co., Inc. v. Scott Paper Co., 200 USPQ 738, 742 (TTAB 1978).
As a final consideration, we observe that to the extent
that, in particular, the differences in the inherent nature of
the respective goods and the lack of any known incidents of
actual confusion may serve to raise a degree of doubt as to our
conclusion that confusion is likely, we resolve such doubt, as we
Cancellation No. 22,325
27
must, against respondent and in favor of petitioner. See, e.g.,
Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 395 (Fed. Cir. 1983); San Fernando Electric Mfg.
Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ
1, 2 (CCPA 1977); and Izod, Ltd. v. Zip Hosiery Co., Inc., 405
F.2d 575, 160 USPQ 202, 204 (CCPA 1969).
Decision: The petition to cancel is granted and Reg.
No. 1,756,396 will be canceled in due course.
R. L. Simms
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges,
Trademark Trial and Appeal Board