No. 77423311 (T.T.A.B. Sep. 17, 2009)

Arlington Industries, Inc.

Trademark Trial and Appeal BoardSep 17, 2009

No. 77423311 (T.T.A.B. Sep. 17, 2009)

Mailed: 17 September 2009 AD UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Arlington Industries, Inc. ________ Serial No. 77423311 _______ Auzville Jackson, Jr. of Jackson Patent Group for Arlington Industries, Inc. Cynthia Tripi, Trademark Examining Attorney, Law Office 105 (Thomas G. Howell, Managing Attorney). _______ Before Holtzman, Drost, and Zervas, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On March 17, 2008, Arlington Industries, Inc. (applicant) applied to register the mark AI in the form shown below on the Principal Register for “electric connectors; electric junction boxes” in Class 9. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser. No. 77423311 2 The application (Serial No. 77423311) alleges a date of first use anywhere and in commerce of January 1, 1998. Color is not claimed as a feature of the mark and the mark “consists of the stylized letters AI.” The examining attorney has refused to register applicant’s mark under the provisions of Section 2(d) (15 U.S.C. § 1052(d)) of the Trademark Act because it is likely to cause confusion, to cause mistake, or to deceive as a result of two registrations, owned by the same entity (Anthony, Inc.) for the mark AI in typed or standard character form1 and in the design shown below2: For: Lighting equipment, namely, ballasts and electrical circuits for operating lighting systems, electrical sockets, electric plugs, receptacles for wiring in the nature of reels for electric wire, and electrical wires; lighting equipment used in refrigerated display cases, namely, ballasts, electrical circuits for operating lighting systems, electric sockets, electric plugs, wiring receptacles in the nature of reels for electric wire, and electrical wires for lighting equipment used in refrigerated display cases in Class 9. 1 Registration No. 3139722 issued September 5, 2006. 2 Registration No. 3139723 issued September 5, 2006. Ser. No. 77423311 3 Sockets for electric lights, namely lamp sockets; electric lighting fixtures, lamps, fluorescent lamps, lamp shields for directing light in display cases, electric lighting fixtures for refrigerated display cases in Class 11. Both registrations also contain goods in Classes 6, 17, 19, and 20 that are not relevant to this appeal. After the examining attorney made the refusal to register final, this appeal followed. Inasmuch as the ‘723 registration contains a design feature, we will not rely on that registration. To the extent that applicant’s mark would be confusingly similar to the ‘722 registration mark, there is no reason to consider this additional registration. If there is no confusion between applicant’s mark and the ‘722 registration, there would also not be confusion with the ‘723 registration. When we consider the question of whether there is a likelihood of confusion, we view the evidence of record as it relates to the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the evidence of record on these factors, we must keep in mind that “[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of Ser. No. 77423311 4 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 this case, we will begin by comparing registrant’s and applicant’s goods to determine if they are related. It “has often been said that goods or services need not be identical or 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 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 thereon, 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 [party’s] goods or services.” In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). While applicant argues that “[r]egistrant is a purveyor of specialty glass refrigerator products and the marks are used in conjunction with the overall sale of such products” (Brief at 4), many of its goods are not limited Ser. No. 77423311 5 to use “in refrigerator display cases.”3 Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods [or services], the particular channels of trade or the class of purchasers to which the sales of goods [or services] are directed”). We also do not read limitations into the identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no 3 Applicant has submitted copies of papers from registrant’s ‘722 registration file with its appeal brief. The examining attorney has objected to this evidence. We agree that it is untimely and we will not consider it. Even if applicant alluded to this information earlier and the examining attorney did not advise applicant to properly submit the evidence (TBMP § 1208.02 (2d ed. rev. 2004)), we would only consider the information referred to previously. TBMP § 1208.02 (“The Board will not consider more than the information provided by applicant. Thus, if applicant has provided only a list of registration numbers and marks, the list will have very limited probative value”). As explained subsequently, we must consider registrant’s goods as they are identified in the registration and not as registrant described them in response to an Office action. Accord International Wholesalers, Inc. v. Saxons Sandwich Shoppes, Inc., 170 USPQ 107, 109 (TTAB 1971) (“Turning now to applicant's contention that opposer is estopped from asserting a likelihood of confusion because of statements made in its application out of which its registration issued, it is well settled that any such statements do not give rise to estoppel in subsequent proceedings”). Ser. No. 77423311 6 specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”). Furthermore, applicant’s electric connectors and electric junction boxes are not limited so we must assume that they could be used in association with refrigerator display cases. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (“[W]here the goods in a cited registration are broadly described and there are no limitations in the identification of goods as to their nature, type, channels of trade or classes of purchasers, it is presumed that the scope of the registration encompasses all goods of the nature and type described, that the identified goods move in all channels of trade that would be normal for such goods, and that the goods would be purchased by all potential customers”). The examining attorney has submitted numerous third- party registrations to suggest that applicant’s electric connectors and electric junction boxes are related to registrant’s lighting equipment and electrical products. Some examples follow: 0626834 – Electrical products, including … junction boxes, receptacles … close-up plugs … explosion-proof lighting fixtures Ser. No. 77423311 7 1200305 – Electrical equipment – namely, plugs, sockets, plug sockets, connectors, jacks, junction boxes… 2110229 - … electric plugs; electric sockets; electric junction boxes; electric fuses; electric test plugs; electric starters and ballasts for fluorescent lamps … Non-spark lighting fixtures, modular lighting fixtures… 2243983 – Conduits; junctions; adapters; sleeves; conduit fittings; electrical connectors; sockets; plugs … junction boxes … 2750678 - … junction boxes; junction boxes with cable glands; “instrumentation type” junction boxes … electrical controllers; standard and customized empty or fitted control panel enclosures; junction blocks; transformers; electronic ballasts… electronic lighting fixtures 27716102 - … electrical junction boxes; electronic plugs … 2749272 – electric plugs; electric outlets and sockets; electric junction boxes… 2749624 - … electric junction boxes … electrical plugs and electrical sockets, electrical wires… 3338020 - … electrical connectors, electric transformers, electric sockets, electrical inductors, electric plugs… 3409853 - … electric junction boxes … electrical plugs; electric sockets; electrical connectors… 3333678 - … electric connectors … electric plugs; electric sockets … lighting ballasts … lighting fixtures… 3351159 - … electric junction boxes … electric plugs; plug connectors; electric sockets … Ser. No. 77423311 8 3401563 - … electric junction boxes; electric light switches; electric plugs; electric sockets … electric wires … electrical plugs … 3163956 – electric plugs; electric connectors; electric switches; circuit breakers; electric sockets … 3370288 – junction boxes; electric plugs; electric sockets; electric connectors … 3482160 - … electric plugs, electric sockets, electric connectors … Although third-party registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may nonetheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). See also In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18 (TTAB 2001). These registrations support the examining attorney’s argument that registrant’s and applicant’s goods are related. See also ThomasNet.com (Lew Electric Fittings Co. – “Custom manufacturer of floor & junction boxes & electrical fittings for commercial & residential applications. Other products include adapters, benders, connectors, covers, faceplates, flanges, inserts, nozzle accessories box partitions, plugs…”); www.turck-usa.com (“Part of the Ser. No. 77423311 9 installation required 448 TURCK junction boxes and a quarter million feet of instrument and control wiring”). We also agree the purchasers and channels of trade would overlap. The products would be purchased by the same purchasers and installed at the same time. See, e.g., www.wipo.int (WO/1997/027654) (Mounting for Fluorescent Lamp Ballasts - “One of the necessary steps in the manufacture of retrofit of fluorescent lighting systems in the installation and/or removal of a ballast in a lighting fixture or junction box”); http://homebuying.about.com (“Secure a junction box to a strong structural member such as a stud or joist if the box will be used to support a light fixture”); www.diydoctor.com (“Junction boxes can be used to connect additional sockets to circuits, and lighting points, extend circuits, and in general are a way of getting power from an existing source and taking it somewhere else”). The same purchasers are likely to purchase applicant’s and registrant’s goods and their channels of trade would likewise be similar. Next, we look at the “DuPont factor [that] requires examination of ‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 Ser. No. 77423311 10 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Registrant’s mark AI is displayed in typed or standard character form. When marks are in standard character form, they are “not limited to any particular rendition of the mark and, in particular, are not limited to the mark as it is used in commerce.” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000). See also Squirtco, 216 USPQ at 939 (“By presenting its mark merely in a typed drawing, a difference cannot legally be asserted by that party. Tomy asserts rights in SQUIRT SQUAD regardless of type styles, proportions, or other possible variations. Thus, apart from the background design, the displays must be considered the same”); In re Hester Industries, Inc., 231 USPQ 881, 883 n.6 (TTAB 1986) (“Inasmuch as the drawing of applicant’s mark is in typed form, applicant is not limited to any particular form of display, and might use its mark in the same form as registrant”); Sunnen Products Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987) (Applicant “seeks to register its mark without any special form of lettering or associated design. Therefore, a necessary premise in our evaluation of the registrability of applicant’s mark is that the mark … may be displayed in any form or style of lettering, or in any color, including Ser. No. 77423311 11 the identical form, style or color used by opposer, and that the trade dress now associated with applicant’s mark has no source distinguishing effect”); and Fossil Inc. v. Fossil Group, 49 USPQ2d 1451, 1454 (TTAB 1998): Accordingly, in any likelihood of confusion analysis, we “must consider all reasonable manners in which [the word FOSSIL] could be depicted.” INB National Bank v. Metrohost, 22 USPQ2d 1585, 1588 (TTAB 1992). Thus, opposer’s typed drawing registrations of FOSSIL afford opposer a scope of protection which encompasses all reasonable manners in which the word FOSSIL could be depicted including, simply by way of example, all lower case block letters, all upper case block letters, a mixture of lower case and upper case block letters and various script forms. We note that there is a limit to this principle. “[W]e are not suggesting that because an application or registration depicts a word mark in typed capital letters that therefore the word mark must be considered in all possible forms no matter how extensively stylized. Rather, we … must consider all reasonable manners in which the word mark could be depicted.” Jockey Int’l Inc. v. Mallory & Church Corp., 25 USPQ2d 1233, 1235 (TTAB 1992) (internal quotation marks omitted). Accord Polaroid Corp. v. C & E Vision Services Inc., 52 USPQ2d 1954, 1957 (TTAB 1999) (“However, the mark … with its unusual lettering, oversized ‘O’ and ‘X,’ and overlapping lettering, is very highly stylized and contains design elements. Such stylization and design elements cause applicant’s present POLAREX (and Ser. No. 77423311 12 design) mark [ ] to have a commercial impression different from that of applicant’s prior mark [POLAREX]”). Here, applicant’s mark consists of the letters A and I in different sizes and in reverse shading. Registrant’s mark is AI, shown without any style. While applicant’s mark is not in a uniform style, it is not unreasonable to assume that it would be a style that would be included within a typed depiction of a mark. At a minimum, we must assume that registrant could display its mark with the letter A in larger type than the letter I and with the shading of the marks reversed. Therefore, even if the marks were not in identical style, the marks would still be considered to be displayed in a very similar style. Therefore, since the marks are otherwise identical, we must conclude that the marks are very similar, if not legally identical. Applicant also argues that the “number of similar marks provides strong support for Applicant’s contention that a consumer will look to the stylization of the mark, the advertising, or other contextual clues in order to determine the source of the respective goods.” Brief at 8. Ser. No. 77423311 13 Applicant’s reference to the number of AI marks in the USPTO database is not significant. In re Melville Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) (“Registrations for goods unrelated to the clothing field are irrelevant to our discussion”); SBS Products Inc. v. Sterling Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6 (TTAB 1988) (“[E]ven if evidence of such third-party use were submitted, it would be of no aid to respondent herein where the third-party usage was for goods unrelated to either petitioner’s skin care products or respondent’s stuffing box sealant”). Similarly, references to pending applications are entitled to little, if any, weight. Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002) (“While applicant also submitted a copy of a third- party application …, such has no probative value other than as evidence that the application was filed”); Olin Corp. v. Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981) (same). Finally, the fact that applicant can point to three registrations (two owned by the same entity) for microwave semiconductors and audio amplifiers hardly establishes that the term AI in registrant’s mark should be given a narrow scope of protection. Third-party registrations have limited utility in likelihood of confusion cases. They certainly do not “justify the registration of another Ser. No. 77423311 14 confusingly similar mark.” Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). However, they “can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry.” In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). In this case, the registrations that applicant has submitted do not demonstrate that the term AI is a weak or highly suggestive term. While applicant argues that “those that purchase and utilize these products possess a level of sophistication sufficient to minimize or eliminate any potential confusion surrounding the marks” (Brief at 6), we cannot find that these goods are necessarily purchased only by sophisticated purchasers. See, e.g., www.diydoctor.org (“Welcome to our electrical wiring a junction box project”). We also point out that even sophisticated purchasers may be confused when the identical term AI is used on electric connectors and electric junction boxes and registrant’s lighting equipment. In re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999) (“We recognize applicant's attorney's point that its software is expensive and that purchasers of it are likely to be sophisticated. Suffice it to say that no evidence in support of these assertions was submitted. Ser. No. 77423311 15 In any event, even careful purchasers are not immune from source confusion”). Applicant also argues that “there is evidence of long standing use of the respective marks by both the Applicant and the Registrant with no evidence of any actual confusion resulting from such use.” Brief at 5. We note that registrant’s dates of use are identified as October 2005. Furthermore, a “showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context.” In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). Inasmuch as the marks AI and AI (stylized) are for identical terms and the stylization can be considered to be the same or very similar and the goods are closely related, we conclude that there is a likelihood of confusion in this case. Decision: The refusal to register the mark on the ground of likelihood of confusion in view of Registration No. 3139722 is affirmed.