Alltrade Inc.v.Star Pipe Products, Inc.

Trademark Trial and Appeal Board

Jul 12, 2001

No. 91111616 (T.T.A.B. Jul. 12, 2001)

07/12/01 Paper No. 29
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
Trademark Trial and Appeal Board
_______________
Alltrade Inc. v. Star Pipe Products, Inc.
______________
Opposition No. 111,616 to Application Ser. No. 75/239,861
filed February 12, 1997
_________________
Robert R. Thornton for Alltrade Inc.
G. Michael Roebuck of Madan, Mossman & Sriram for Star Pipe
Products, Inc.
_________________
Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Star Pipe Products, Inc. (applicant) seeks to register
ALLGRIP in typed drawing form for “coupling and restraint
devices for pipes and joints, namely, metal pipe fittings,
metal pipe connectors, metal pipe collars, metal pipe
couplings and joints.” The intent-to-use application was
filed on February 12, 1997.
Alltrade, Inc. (opposer) filed a notice of opposition
alleging that prior to February 1997, it had used the
identical mark ALLGRIP for pliers. Furthermore, opposer
alleged that on June 30, 1998 it obtained a federal
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Opposition No. 111,616
registration of the mark ALLGRIP in typed drawing form for
“hand tools, namely, pliers.” Registration No. 2,170,255.
Continuing, opposer alleged that the contemporaneous use of
the identical mark by the parties for their respective goods
is likely to cause confusion, mistake and/or deception.
While opposer did not make specific reference to Section
2(d) of the Trademark Act, it is clear that this is one
basis for the Notice of Opposition. Finally, opposer
alleged that “applicant’s use and registration of the
alleged mark submitted for registration will tend to dilute
the distinctiveness of opposer’s mark.” (Notice of
opposition paragraph 10). However, as opposer makes clear
at page 15 of its reply brief, opposer has not pursued its
dilution claim. Accordingly, we will not consider this
claim.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition. Subsequently,
applicant filed a most confusing set of papers. First,
applicant filed a motion to amend its answer stating that
applicant “erroneously admitted allegation No. 2 of the
Notice of Opposition that the application [of applicant] was
an intent-to-use application filed on February 12, 1997
2

Opposition No. 111,616
when, in fact, it was a use-based application under Section
1(a) of the Trademark Act ... [with a] date of first use of
March 13, 1996.” Applicant’s proposed amended answer added
paragraph 17 in which applicant sought to cancel opposer’s
registration on the grounds that “applicant’s first use of
[its] mark predates both the filing date of opposer’s mark
and the applicant’s [?] date of first use.” Thereafter,
applicant filed a motion to withdraw its first motion to
amend its answer and a second motion to amend its answer.
In its second amended answer, paragraph 17 was modified to
include the following sentence: “Applicant seeks such
cancellation on the grounds that applicant’s first use of
[its mark] on March 19, 1997 ... predates the date of first
use of opposer’s mark of January 1, 1998.” In its second
motion to amend, applicant stated that its “first motion
erroneously claimed that [its] trademark application for the
mark ALLGRIP ... was a use-based application.” Applicant
then acknowledged that its application was indeed an intent-
to-use application. Finally, applicant filed a motion to
withdraw both its first and second motions to amend its
answer stating that “the net effect of such a withdrawal
would be to leave the applicant’s original response [answer]
3

Opposition No. 111,616
to the Notice of Opposition unchanged.” The Board granted
applicant’s most recent request in an order dated November
30, 1999.
Thus, there is before the Board no counterclaim seeking
to cancel opposer’s registration. Moreover, in its brief,
applicant never argued that opposer’s registration should be
cancelled.
Both parties have filed briefs. Neither party
requested a hearing. The description of the record and the
statement of issues are set forth at pages 1 and 2 of
opposer’s brief. At page 6 of its brief, applicant states
that it accepts both opposer’s description of the record and
statement of the issues. The only comment this Board has
with regard to the “record” is to note that opposer is quite
correct in its objection to those exhibits which applicant
attached to its brief which were not introduced during the
trial. The Board has given no consideration to these
exhibits.
At the outset, we note that opposer has properly made
of record a certified status and title copy of its
Registration No. 2,170,255 for the mark ALLGRIP depicted in
typed drawing form for “hand tools, namely, pliers.” Thus,
4

Opposition No. 111,616
despite the aforementioned convoluted set of proposed
amended answers and counterclaims filed by applicant
(subsequently withdrawn), priority of use rests with
opposer. King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). Hence, the only issue
in this proceeding is one of likelihood of confusion.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The 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.”)
Considering first the marks, they are identical. Thus,
the first Dupont “factor weighs heavily against applicant”
because the two word marks are identical. In re Martin’s
Famous Pastry Shoppe Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984). Moreover, it must be remembered that
applicant seeks to register ALLGRIP in typed drawing form.
This means that in our likelihood of confusion analysis, we
must consider all reasonable manners in which applicant
5

Opposition No. 111,616
could depict its mark ALLGRIP. Phillips Petroleum v. C. J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Because
applicant’s mark consists of two distinct words (ALL and
GRIP), one reasonable manner of depiction would be to depict
the ALL portion of applicant’s mark in one color or type
face and the GRIP portion of applicant’s mark in a second
color or type face. In this regard, we note that opposer,
in its packaging and advertising, consistently depicts its
mark ALLGRIP with the ALL portion in one color and type face
and the GRIP portion in a second color and type face. See
opposer’s exhibits 7, 10, 11, 12, 13, 14, 15 and 16. Thus,
in terms of visual appearance, it is somewhat of an
understatement to merely indicate that the marks of the
parties are identical. Because applicant is seeking a typed
drawing registration of ALLGRIP, it would be free to depict
ALLGRIP just as opposer does, namely, with the ALL portion
in one color and type face and the GRIP portion in a second
color and type face.
Turning to a consideration of applicant’s goods and
opposer’s goods, we note that because the marks are
identical, their contemporaneous use can lead to the
assumption that there is a common source “even when [the]
6

Opposition No. 111,616
goods or services are not competitive or intrinsically
related.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
However, in this case we find that applicant’s goods
and opposer’s goods are definitely related. As described in
its registration, opposer’s goods are pliers. This includes
pliers of all types. As described in its application,
applicant’s goods include metal pipe fittings, metal pipe
connectors and metal pipe couplings. As applicant’s
exhibits make clear, metal pipe fittings, connectors and
couplings include bolts and nuts. See applicant’s exhibits
1, 2, 5 and 9. Obviously, pliers can be used to tighten or
loosen bolts and nuts. Indeed, applicant’s own witness
(Daniel W. McCutcheon) conceded at page 28 of his deposition
that various types of pliers can be used “to fasten and
unfasten nuts and bolts.” While Mr. McCutcheon stated that
individuals should use torque wrenches to install
applicant’s ALLGRIP products, Mr. McCutcheon also
acknowledged that other tools such as socket wrenches and
pliers could be used in the installation of applicant’s
ALLGRIP products. (McCutcheon deposition pages 24 and 28).
In any event, even if we were to make the totally
7

Opposition No. 111,616
unsupported assumption that pliers were never used in
conjunction with applicant’s actual ALLGRIP metal pipe
fittings, connectors and couplings, it must be remembered
that the focus in this opposition proceeding is not upon
opposer’s actual goods and applicant’s actual goods, but
rather upon the goods as described in opposer’s registration
and applicant’s application. As our primary reviewing Court
has made abundantly clear, “in a proceeding such as this,
the question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-a-vis
the goods and/or services recited in opposer’s registration,
rather than what the evidence shows the goods and/or
services to be.” Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Applicant’s chosen description of goods is broad enough
to include metal pipe fittings, connectors and couplings of
all types, and not just applicant’s actual specialized metal
pipe fittings, connectors and couplings for use in water
treatment plants, sewage treatment plants and water lines.
(McCutcheon deposition page 11). Thus, applicant’s own
chosen description of goods is broad enough to include metal
8

Opposition No. 111,616
pipe fittings, connectors and couplings that are installed
in residential dwellings by ordinary plumbers and home
owners.
In this regard, the packaging for opposer’s ALLGRIP
adjusting pliers emphasizes that opposer’s pliers are
particularly suited to be used in connection with ordinary
residential plumbing projects. (Opposer’s exhibit 7).
Indeed, the very first “around the house” job listed on
opposer’s ALLGRIP packaging is plumbing. Moreover, the only
job pictured on opposer's packaging is a plumbing job
featuring opposer’s ALLGRIP pliers holding, in one instance,
a residential pipe and, in a second instance, a washer. Not
only are residential plumbing projects featured prominently
on opposer’s ALLGRIP packaging, but they are also featured
prominently in opposer’s television and point-of-sale
advertising for its ALLGRIP pliers. Opposer's ALLGRIP
television commercial (opposer’s exhibit 16) commences with
the following voice-over: “It’s time to sink that tool
Titanic.” (emphasis added). The video accompanying this
voice-over shows an open toolbox filled with an assortment
of pliers, wrenches, and the like being discarded.
Thereafter, this television commercial features ordinary
9

Opposition No. 111,616
homeowners using opposer’s ALLGRIP pliers on a variety of
residential plumbing jobs. A typical statement in the
commercial is as follows: “Use ALLGRIP to take care of all
your plumbing needs.” Likewise, opposer’s point-of-sale
video demonstrating how its ALLGRIP pliers are used
emphasizes plumbing projects with such statements as it
“grips pipes and fittings.” (Opposer’s exhibit 15).
Thus, even if we assume for the sake of argument that
applicant’s actual goods are expensive and that applicant’s
actual goods are purchased only by sophisticated
individuals, nevertheless, applicant’s chosen description of
goods is broad enough to include goods which are relatively
inexpensive and which are purchased by unsophisticated home
owners. These are the very same ordinary, unsophisticated
individuals that opposer markets its ALLGRIP pliers to for a
variety of residential plumbing projects.
As for applicant’s argument that there has been no
actual confusion, three comments are in order. First, proof
of actual confusion is not required for a finding of
likelihood of confusion. Second, both opposer's and
applicant’s products have been in the market for just a few
years. Thus, the chance for actual confusion to have
10

Opposition No. 111,616
occurred has been minimal. Finally, as a corollary to the
foregoing, it may be that the opposer’s and applicant’s
actual goods are rarely used together.
Finally, we simply note that to the extent that there
is any doubt on the issue of likelihood of confusion, said
doubt is resolved in opposer’s favor in view of opposer’s
unchallenged federal registration of its mark ALLGRIP for
pliers. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The opposition is sustained.
11