Williams Products, Inc.

Trademark Trial and Appeal Board

Apr 9, 2007

No. 76469860 (T.T.A.B. Apr. 9, 2007)

Mailed: April 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Williams Products, Inc.
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Serial No. 76469860
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Arnold S. Weintraub of The Weintraub Group, P.L.C. for
Williams Products, Inc.

Rebecca L. Gilbert, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Williams Products, Inc. has filed an application to
register the following mark

for services ultimately identified as “distributorship
services in the field of construction materials, including
water stops, bearing pads, joint fillers, panel seals,
joint seals and masonry accessories” in International Class
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 76469860
2
35.1 In response to a request from the examining attorney,
applicant disclaimed the wording PRODUCTS, INC.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified services,
so resembles the following registered marks as to be likely
to cause confusion, mistake or deception.
WILLIAMS (typed form) for “concrete form hardware
used in pouring and laying concrete; rock bolts”
in International Class 6;2

WILLIAMS (typed form) for “C-Clamps, Chain Pipe
Wrenches and Wrenches” listed in International
Classes 7 and 8;3

for “C Clamps, Strap Clamps, Lathe
Tools, Planer Tools, Boring Tools, Lathe-Tool
Holders, Threading Tools, Pipe Tools, Chain Pipe
Wrenches, Wrenches, Machinists’ Clamps” listed in
International Classes 7 and 8;4 and

for “hand tools, namely, adapters,
ratcheting adapters, adjustable wrenches, carbide
bits, cobalt bits, boring bars, boring tools, box

1 Application Serial No. 76469860, filed November 25, 2002,
alleging first use and use in commerce on December 31, 1960 under
Section 1(a) of the Trademark Act. 15 U.S.C. §1051(a).

2 Registration No. 1090001, issued April 25, 1978, renewed.

3 Registration No. 381837, issued October 8, 1940, renewed. Many
of the original goods listed under this registration have been
deleted (e.g., lathe tools, planer tools, vises).

4 Registration No. 517355, issued November 8, 1949, renewed.
Many of the original goods listed under this registration have
been deleted (e.g., machine handles, grinding tools, vises).
Serial No. 76469860
3
wrenches, wheel sockets, chisels, c-clamps, strap
clamps, toolmakers clamps, combination wrenches,
crank handles, crowfoot wrenches, drills,
extensions, screw extractors, flange jacks, flare
nut wrenches, flaring tools, flex head rachets,
flex/open end wrenches, gear pullers, ball pein
hammers, sledge hammers, soft face hammers,
hammer wrenches, hex key wrenches, impact
sockets, lathe dogs, lock ring pliers, nut
drivers, open end wrenches, pinch bars, roll
bars, pipe tongs, pliers, pullers, ratchets,
ratcheting box wrenches, rod ends, roll pouches,
slotted screwdrivers, screwdrivers, torque
screwdrivers, screw extractors, wedges, slip
joint pliers, snap ring pliers, aviation snips,
sockets, soft face hammer tips, spark plug
sockets, striking face wrenches, tappet wrenches,
torque tools, tube cutters, adjustable wrenches,
chain wrenches, combination wrenches, box end
wrenches, check nut wrenches, construction
wrenches, metric wrenches, open end wrenches,
spanners, special purpose wrenches, structural
wrenches, bolt cutters, pipe wrenches, cable
cutters, vises and cone pullers” in International
Class 8.5

The examining attorney has indicated that three of the
cited registrations, i.e., Registration Nos. 381837, 517355
and 1415609, are owned by the same registrant.
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d

5 Registration No. 1415609, issued November 4, 1986, renewed.
Serial No. 76469860
4
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Considering the marks, we find that they are similar
and support a finding of a likelihood of confusion. In
making this determination, we compare the marks in their
entireties in terms of appearance, sound, connotation and
commercial impression.
To begin our analysis, we agree with the examining
attorney that the dominant part of applicant’s mark is the
word WILLIAMS inasmuch as it is the name by which consumers
would call for the goods. In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Applicant argues
that the examining attorney did not view the mark as a
whole. We see no such error. While it is correct that we
must view the mark in its entirety, Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992), it is also well settled that “there is nothing
Serial No. 76469860
5
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749,
750-51.
Applicant further argues that the common element
between the marks, WILLIAMS, is inherently weak because it
is a surname and there are several registrations that
contain the word WILLIAMS. As to the list of registrations
submitted by applicant, inasmuch as the examining attorney
did not object to this list during examination we will
consider it; however, it is of little probative value
because it only lists the registration numbers and the term
WILLIAMS.6 The list does not include the goods and/or
services for which the term WILLIAMS is registered; thus,
it does not provide any evidence of the strength or
weakness of this term in the construction materials field.
With regard to applicant’s surname argument, even if we
were to agree with applicant that WILLIAMS is an inherently

6 This listing does not make the entire registrations of record.
In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974); In re Dos
Padres Inc., 49 USPQ2d 1860, n. 2 (TTAB 1998).
Serial No. 76469860
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weak mark because it is a surname, that does not detract
from its dominance in applicant’s mark given that it is the
only pronounceable word that has any possible source-
identifying significance. Moreover, even weak marks are
entitled to protection, in particular here, where
applicant’s mark incorporates the entirety of the literal
portion of the marks in the cited registrations and that
dominant element in applicant’s mark is identical in sound
to the marks in the cited registrations. King Candy Co. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Applicant also argues that the W design is prominent;
however, we find that the W design is not sufficient to
present an overall different commercial impression or
connotation that would set applicant’s mark apart from the
marks in the cited registrations such that when encountered
by a consumer they would distinguish these marks as coming
from a different source. W is simply the first letter in
the word WILLIAMS and the stylization is suggestive of
applicant’s field of use, namely, construction and masonry.
As to the remaining elements in applicant’s mark, PRODUCTS,
INC. does not have any source identifying significance and
the rectangular background design does not serve to
distinguish the marks. The sound and connotation of the
Serial No. 76469860
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common element in the marks are identical and the
difference in appearance is not sufficient to overcome the
similar commercial impression. In particular, with regard
to Registration Nos. 1090001 and 381837, because they are
in typed form we must presume that they could be presented
in any type of stylization. In re Melville Corp., 18
USPQ2d 1386, 1388 (TTAB 1991).
As to the respective goods and services identified in
the application and the cited registrations, it is well
settled that goods and services need not be similar or
competitive in nature to support a finding of likelihood of
confusion. The question is not whether purchasers can
differentiate the goods and services themselves, but rather
whether purchasers are likely to confuse the source of the
goods and services. See Helene Curtis Industries Inc. v.
Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989). Further, we
must consider the cited registrant’s goods as they are
described in the registration and we cannot read
limitations into those goods. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). If the cited registration describes goods broadly,
and there is no limitation as to the nature, type, channels
Serial No. 76469860
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of trade or class of purchasers, it is presumed that the
registration encompasses all goods of the type described,
that they move in all channels of trade normal for these
goods, and that they are available to all classes of
purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992). Finally, it is well
established that goods and services may be related. See In
re United Service Distributors, Inc., 229 USPQ 237 (TTAB
1986) (mark for distributorship services in the field of
health and beauty aids held likely to be confused with mark
for skin cream).
The examining attorney argues that applicant’s
recitation of services includes the goods in the cited
registration because “the term ‘including’ does not limit
the recitation in any meaningful way.” Br. p. 5. Further,
the examining attorney notes that the word “materials”7 is
defined as “tools or apparatus for the performance of a
given task”8 and argues that “construction materials” in
applicant’s identification are “tools or apparatus for the

7 The examining attorney’s request that the Board take judicial
notice of the definition of “materials” is granted. University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ
594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983) (Board may take judicial notice of dictionary
definitions).

8 The American Heritage Dictionary of the English Language (3rd
ed. 1992).
Serial No. 76469860
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performance of a given construction task [which would
include the] hardware and tools listed in the cited
registrations.” Id.
Based on the identifications set forth in the cited
registrations and the application we agree with the
examining attorney that applicant’s recitation of services
would include the registered goods and thus applicant’s
services are sufficiently related to the goods in the cited
registrations. Therefore, this factor supports a finding
of a likelihood of confusion.
Applicant argues that the consumers of registrant’s
goods “appear to be craftsmen who would certainly discern
the difference between a distributorship offering specific
building supplies and a source of hardware items.” Br. p.
2. Applicant also argues that “anyone who would purchase
applicant’s goods are sophisticated purchaser’s of
construction materials.” December 19, 2003 Response p. 3.
We first note that the goods in the cited
registrations are not limited to any particular trade
channel and thus would overlap with applicant’s
distributorship channel of trade. We agree that in this
overlapping trade channel the consumers of applicant’s
distributorship services would be more sophisticated than a
general consumer at, for example, the retail level.
Serial No. 76469860
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However, we do not believe that this factor is dispositive
in this case. Compare Electronic Design & Sales Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992) (relevant purchasers are sophisticated
enough that the likelihood of confusion remains remote as
to computer services and battery chargers). Even assuming
WILLIAMS is an inherently weak mark, as noted above it is
the dominant portion of applicant’s mark and is identical
in sound and connotation to the registrants’ marks. Thus,
despite the higher level of sophistication in the
purchasers, “being knowledgeable and/or sophisticated in a
particular field does not necessarily endow one with
knowledge and sophistication in connection with the use of
trademarks.” In re Decombe, 9 USPQ 1812, 1815 (TTAB 1988).
See also In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB
1983).
In conclusion, we find that because the marks are
similar, the goods and services are related, and the
channels of trade overlap, confusion is likely between
applicant’s mark and the cited registrations. Finally, to
the extent there is any doubt as to our conclusion we must
resolve that doubt in favor of the prior registrants. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
Serial No. 76469860
11
1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed as to each
registration.