Shark Abrasion Systems Pty. Ltd.

Trademark Trial and Appeal Board

May 14, 2004

No. 76417366 (T.T.A.B. May. 14, 2004)

Mailed: May 14, 2004
Paper No. 13
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Shark Abrasion Systems Pty. Ltd.
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Serial No. 76417366
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Mark B. Harrison of Venable for Shark Abrasion Systems Pty.
Ltd.
William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (Margaret Le, Managing Attorney).
____________
Before Walters, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Shark Abrasion Systems Pty. Ltd. has filed an
application to register the mark SHARK on the Principal
Register for “earthmoving equipment, namely, mechanical
excavators and loaders; ground engaging tools for use with
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76417366
2
mechanical diggers and loaders, namely, shrouds, lips,
adaptors and teeth,” in International Class 7.1
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark SHARK CHAIN previously registered for
“chain comprised of digging bits for trenching machines”2
that, if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.3 The cited registration includes a disclaimer of
CHAIN apart from the mark as a whole.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,

1 Serial No. 76417366, filed May 31, 2002, based on, under Section 1(b)
of the Trademark Act, an allegation of a bona fide intention to use the
mark in commerce and, under Section 44(e) of the Trademark Act,
Australian Registration No. 878474, dated June 8, 2001.
2 Registration No. 2083884 issued July 29, 1997, to Consolidated
Carbide, in International Class 7. [Sections 8 and 15 affidavits
accepted and acknowledged, respectively.]
3 The Examining Attorney included two additional registrations,
Registration Nos. 0740900 and 0740901, in his final refusal to register
under Section 2(d). However, these two registrations expired and, in
his denial of applicant’s request for reconsideration on the Section
2(d) issue, the Examining Attorney withdrew these two registrations as a
basis for the refusal.
Serial No. 76417366
3
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
The Examining Attorney contends that the dominant
portion of the registered mark is SHARK because it is the
first term in the mark and it is followed by the generic
name of the goods; that applicant’s mark is identical to the
dominant portion of the registered mark; and that the
commercial impressions of the marks are the same. Regarding
the goods, he argues that the record establishes that the
respective goods may emanate from the same source; that
“‘trenching machines’ and ‘earthmoving equipment’ such as
excavators, diggers and loaders are generally machines
manufactured, sold and used in the same channels of trade”;
that “‘trenching machines’ encompass … ‘excavators, diggers
and loaders’”; that “some trenching machines may also refer
Serial No. 76417366
4
to earthmoving equipment, excavators, diggers and loaders
and vice versa”; that “chains are used on excavators,
loaders and diggers”; and that “shrouds, lips, adaptors and
teeth are common component parts of trenching machines.” In
support of his position, the Examining Attorney submitted
excerpts of articles and patents retrieved from the
LEXIS/NEXIS database and copies of third-party registrations
for marks, alleging use in commerce, on goods encompassing
both applicant’s goods and the goods in the cited
registration.
Applicant contends that the marks, considered in their
entireties, create different commercial impressions; and
that the goods are unrelated. Applicant argues that a
trenching machine is “a relatively expensive piece of
equipment [that] is ‘a giant ditch digger’ which operates by
rotating steel tracks around a large boom that resembles the
blade of a chainsaw”; that both applicant’s and registrant’s
goods are “highly specialized and highly priced”; and that
the evidence of record supports the conclusion that the
channels of trade are different. Applicant states that only
four of the third-party registrations submitted by the
Examining Attorney mention the term “chains”; that only two
of these four registrations mention goods similar to
applicant’s goods and these two registrations do not cover
registrant’s specific type of chains; and that this evidence
Serial No. 76417366
5
does not establish that applicant’s and registrant’s goods
are related. Similarly, applicant argues that the patent
excerpts are inapposite and, further, do not “represent how
real life consumers would encounter either the applicant’s
goods or the registrant’s goods.”4 Applicant states that
the mere fact that the goods recited in the application and
registration may pertain to digging, in the broadest sense,
does not support a conclusion that the goods are
sufficiently related to support a finding of likelihood of
confusion. Applicant submitted excerpts from Internet web
sites that show and discuss the types of products involved
in this case. The following are several examples:
“Loadmaster Lip Systems – The loadmaster system is
an innovative new bucket lip designed to meet your
needs for improved lip performance and longevity.
Loadmaster lips are designed for use on hydraulic
face shovels, front-end loaders, and excavators
found in the construction market. … Loadmaster
lips feature SUPER V® tooth systems for
penetration and long life, and the Toplok® tooth
systems for penetration and long life, and the
Toplok® shrouds for longer lip wear life and fast,
easy changes.”
[www.powermotivecorp.com/parts/groundEngagingTool,
August 14, 2003.]
“Toplok Shroud Benefits – Shrouds wrap around
leading edge of lip, extending time before lip
rework is needed. Shroud is designed for
penetration while providing maximum protection,
keeping your machine working longer.”
[www.texconeqp.com, August 4, 2003.]

4 We are not considering the patent evidence for purposes of determining
consumer perception of the terminology in regard to a descriptiveness
refusal. Rather, the patent evidence is pertinent to determining the
nature of the goods involved herein in regard to a likelihood of
confusion refusal. Thus, such evidence is relevant and has been
considered.
Serial No. 76417366
6
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
We agree with the Examining Attorney that SHARK is the
dominant portion of the registered mark. Not only is it the
first term in the mark, but also the second term, CHAIN, is
a generic term for the identified goods. Consumers would
likely see the CHAIN portion of the mark SHARK CHAIN as
Serial No. 76417366
7
merely identifying the particular SHARK goods involved so
that the term SHARK would dominate the commercial impression
of the mark SHARK CHAIN. Thus, we conclude that the marks
SHARK and SHARK CHAIN are substantially similar in overall
commercial impression.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
The following examples are excerpts from the
LEXIS/NEXIS database submitted by the Examining Attorney:
“‘We’ve got everything for design firms and
contractors,’ said Parsons. ‘Its not a home show
that the general public would be interested in.’
Not unless they feel the need to drive home in a
$400,000 trenching machine or a front-end loader.”
[Charleston Gazette, March 24, 1998.]
“Trencor designs, manufactures and markets chain
and wheel trenching equipment, canal excavators,
rock saws, roadminers and log handling equipment.
… Trencor’s chain trenching machines use a heavy-
duty chain wrapped around a long movable boom.
These machines, with weights up to 400,000 pounds,
are capable of cutting a trench up to eight feet
Serial No. 76417366
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wide and 30 feet deep.” [Tennessee Manufacturer,
September 1996.]
“‘A tree’s root system is like a plate: flat, thin
and wide-spreading,’ says Thompson. ‘It’s well
within the range of any trenching machine. Chain-
driven ditch-diggers and backhoes are the tree’s
worst enemy.’” [Charlotte Observer, August 23,
1995.]
“… business volume in the earthmoving segment is
expected to show increases of 13.1 percent for the
U.S., 10.2 percent for Canada and 11.5 percent for
other export markets. The earthmoving segment
includes excavators, loaders, graders and
trenching machines.” [Concrete Products, December
1998.]
“The best machine for a particular project depends
on several jobsite-specific considerations.
Trenching machines and hydraulic excavators are
totally different in design and function, yet both
are widely used to dig trench[es] for underground-
utility installations. Each offers specific
advantages.” [Construction Equipment, August
1998.]
The following examples are excerpted from the LEXIS/NEXIS
patent database submitted by the Examining Attorney:
“Another object of the present invention is to
provide a novel arrangement of alternate digging
elements and digger cleaning elements on a
trenching machine chain to increase the effective
capacity of the machine and buckets.” [Patent No.
3006087, Bucket Line for Trenching Machine.]
“… a point spaced therealong with the openings
whereby it may be securely anchored in desired
position upon a trenching machine, excavator, or
other earth digging apparatus or devices. While
my invention may be employed with many different
types of earth …” [Patent No. 2250904, Tooth for
Earth Digging Devices.]
The Examining Attorney submitted 24 third-party
registrations to establish that marks are registered for
Serial No. 76417366
9
both applicant’s and registrant’s goods. The majority of
these registrations are of limited value because a number of
the identifications of goods specify various excavators
including, for example, backhoes, loaders, graders and
bulldozers, but do not also specify trenchers; and only two
of the registrations include “chains” (one specifically
limited to chains for trenching machines). Additionally,
those registrations that pertain to mining and/or drilling
parts are clearly inapposite. However, several of the
registrations include both earthmoving equipment and machine
parts for such equipment; and several of the registrations
include bits for earthmoving tools/equipment.
The evidence in this case establishes that a trenching
machine is a piece of earthmoving equipment; that digging
bits are used on a wide range of earthmoving equipment,
including trenching machines; and that at least some
trenching machines have chains to which the digging bits are
attached. It is also apparent from the evidence that
earthmoving equipment is very expensive and used on a broad
commercial scale for a wide range of purposes.
The evidence does not establish that “mechanical
excavators and loaders” (identified in the application)
include “trenching machines” or that chains are used on
other types of earthmoving equipment. But such a showing is
not required. Goods or services need not be identical or
Serial No. 76417366
10
even competitive in order to support a finding of likelihood
of confusion. Rather, it is enough that goods or services
are related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
In this case, it is clear that various types of
earthmoving equipment and parts for such equipment may come
from the same source. While the specific goods involved
herein are not the same, they are sufficiently related that,
if identified by confusingly similar marks, confusion as to
source is likely. Given the expense of a single piece of
earthmoving equipment, it is clear that considerable care
will be involved in such a purchase and that purchasers are
likely to be very knowledgeable. However, there is no
evidence that the parts for such equipment are expensive or
that the same amount of care or same purchasers are involved
in purchasing replacement parts for this equipment.
Further, knowledgeable business purchasers are not immune
from confusion when the marks are as similar as these marks
Serial No. 76417366
11
and there is evidence that goods of the type with which
these marks are used or intended to be used do sometimes
emanate from the same source. See In re General Electric
Company, 180 USPQ 542 (TTAB 1973).
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, SHARK, and registrant’s mark, SHARK CHAIN, their
contemporaneous use on the goods involved in this case is
likely to cause confusion as to the source or sponsorship of
such goods.
Decision: The refusal under Section 2(d) of the Act is
affirmed.