Band-It-IDEX, Inc.

Trademark Trial and Appeal Board

Oct 20, 2009

No. 77363240 (T.T.A.B. Oct. 20, 2009)

Mailed:
Oct. 20, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Band-It-IDEX, Inc.
________

Serial No. 77363240
_______

Dennis A. Gross of The Hill Firm for Band-It-IDEX, Inc.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Grendel, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Band-It-IDEX, Inc. (applicant) has filed an
application1 seeking registration on the Principal Register
of the mark DUAL-LOKT (in standard character form) for

1 Serial No. 77363240, filed on January 3, 2008. The application
is based on applicant’s asserted bona fide intent to use the mark
in commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77363240
2
Class 6 goods identified in the application as “buckles of
common metal for securing metal strapping bands.”2
The Trademark Examining Attorney has issued a final
refusal of registration based on Trademark Act Section
2(d), 15 U.S.C. §1052(d). Specifically, she has refused
registration on the ground that applicant’s mark, as
applied to the goods identified in the application, so
resembles the mark DUAL-LOK, previously registered on the
Principal Register (in standard character form) for Class 6
goods identified in the registration as “self-locking

2 Applicant’s identification of goods in the application as filed
was “metal band clamps and accessories therefor.” In her first
Office action, the Trademark Examining Attorney found this to be
indefinite and required amendment from applicant. In its
response to the first Office action, applicant amended the
identification of goods to “buckles for securing metal strapping
bands.” In her final Office action, the Trademark Examining
Attorney found this also to be indefinite because it could
identify goods in two different classes of goods. She suggested
that an acceptable amendment of the identification of goods would
be “buckles of common metal for securing metal strapping bands,”
in Class 6. In its appeal brief, applicant stated that this
suggested amendment to the identification of goods “is not
objectionable to the applicant.” We therefore deem the final
requirement for an acceptable identification of goods to be
satisfied, and we have entered this amendment into the
application file. We shall treat it as the operative
identification of goods in this appeal. Applicant and the
Trademark Examining Attorney agree that this amendment of the
identification of goods has no effect on the likelihood of
confusion issue in this case. (Applicant’s brief at 6; Trademark
Examining Attorney’s brief at n.2.)

Ser. No. 77363240
3
fasteners, namely, bolts and screws,”3 as to be likely to
cause confusion, to cause mistake, or to deceive.
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney have filed appeal
briefs.
After careful consideration of all of the evidence of
record4 and the arguments of counsel, we reverse the refusal
to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic

3 Registration No. 1394642, issued on May 27, 1986. Section 8
affidavit accepted; Section 15 affidavit acknowledged; renewed.
(Hereinafter “the cited registration.”)

4 We sustain the Trademark Examining Attorney’s objection (made
in her appeal brief) to applicant’s assertions in footnotes 3 and
4 of its appeal brief regarding the results of applicant’s review
of the websites of the owners of two of the third-party
registrations the Trademark Examining Attorney has submitted as
evidence pertaining to the issue of the similarity or
dissimilarity of applicant’s and the cited registrant’s goods.
(See infra.) Applicant did not submit printouts of the websites,
and even if it had the evidence would be untimely under Trademark
Rule 2.142(d), 37 C.F.R. §2.142(d). We therefore have given no
Ser. No. 77363240
4
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997). In each case, we need
consider and weigh only those factors as to which there is
pertinent evidence of record. “Not all of the DuPont
factors may be relevant or of equal weight in a given case,
and ‘any one of the factors may control a particular
case’.” In re Majestic Distilling Co., 65 USPQ2d at 1204,
quoting In re Dixie Restaurants, Inc., 41 USPQ2d at 1533.
See also In re National Novice Hockey League, Inc., 222
USPQ 638 (TTAB 1984).
We begin our analysis in this case with the second du
Pont factor, under which we determine the similarity or
dissimilarity of the goods as identified in the application
and in the cited registration, respectively. It is not
necessary that the respective goods be identical or even
competitive in order to find that they are related for
purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). The goods need only be sufficiently

consideration to applicant’s assertions in footnotes 3 and 4 of
its brief.
Ser. No. 77363240
5
related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods
originate from, are sponsored or authorized by, or are
otherwise connected to the same source. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); and In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
Applying these principles in the present case, we find
as follows.
Applicant’s goods are identified in the application as
“buckles of common metal for securing metal strapping
bands.” The goods identified in the cited registration are
“self-locking fasteners, namely, bolts and screws.”
Initially, we must address the identification of goods
in the cited registration. The Trademark Examining
Attorney contends that the wording “self-locking fasteners”
in registrant’s identification of goods has no
significance, and that registrant’s goods as identified
would include all types of bolts and screws (presumably
because she deems all bolts and screws to be “self-
locking”). Applicant contends that “self-locking” is a
term of art in the fastener industry, and that “self-
locking” bolts and screws are a specific type or
Ser. No. 77363240
6
subcategory of bolts and screws generally. The Trademark
Examining Attorney has not submitted any evidence that
convinces us that we should ignore the initial words in the
identification of goods because they are redundant and hold
that all bolts and screws are self-locking fasteners.
To the extent that we had any doubts that the words
“self-locking” are not redundant, applicant has made of
record a page from registrant’s catalog with the heading
“Other Self-Locking Designs,” which explains that
registrant’s DUAL-LOK bolts and screws employ “a newly
developed self-locking feature... [which] incorporates a
specially formed locking element pressed into an off-center
through-hole prepared in the threaded section of an
externally threaded fastener.”
Based on this evidence, we agree with applicant’s
contention that “self-locking” is a term of art in the
fastener industry, and that “self-locking” bolts and screws
are a specific type or subcategory of bolts and screws
generally. It does not appear on this record that all
bolts and screws by their nature are, or are referred to
as, “self-locking.” For these reasons, we find that the
wording “self-locking fasteners” in registrant’s
identification of goods is commercially significant and
cannot be disregarded, that it modifies the words “bolts
Ser. No. 77363240
7
and screws” in the identification of goods, and that
registrant’s bolts and screws therefore fall into a
specific subcategory of the general category of bolts and
screws, that is, the subcategory of “self-locking” bolts
and screws.
We turn now to our comparison of the goods under the
second du Pont factor. We agree with the Trademark
Examining Attorney’s contention that applicant’s and
registrant’s goods are related to the extent that, broadly
speaking, they both comprise metal fasteners. “However, to
demonstrate that goods are related, it is not sufficient
that a particular term may be found which may broadly
describe the goods.” In re W.W. Henry Co., 82 USPQ2d 1213,
1215 (TTAB 2007). See also General Electric Co. v. Graham
Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977)(“It is,
however, not enough to find one term that may generically
describe the goods. More must be shown; that is, a
commercial or technological relationship must exist between
the goods such that the use of the trademark in commercial
transactions on the goods is likely to produce
opportunities for purchasers or users of the goods to be
misled about their source or sponsorship.”).
In this case, although both applicant’s and
registrant’s goods are broadly defined as metal fasteners,
Ser. No. 77363240
8
we find that they are specifically different types of
fasteners, i.e., metal buckles on the one hand,5 and self-
locking bolts and screws on the other. Additionally,
applicant’s buckles as identified are used for a specific
purpose, i.e., “for securing metal strapping bands.”
In support of her contention that applicant’s goods
and the goods in the cited registration are related, the
Trademark Examining Attorney has submitted five use-based
third-party registrations which include, in their
identifications of goods, goods which the Trademark
Examining Attorney contends are similar to applicant’s
identified goods and also goods which the Trademark
Examining Attorney contends are similar to the goods
identified in the cited registration. Although such third-
party registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them, they nonetheless have probative value to the extent
that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source under
a single mark. See In re Albert Trostel & Sons Co., 29

5 The Trademark Examining Attorney has submitted dictionary
evidence defining “buckle” as “a flat frame with a hinged pin,
used for fastening a belt or strap” (Compact Oxford English
Dictionary at www.askoxford.com), and “metal fastener: a clasp,
usually consisting of a metal frame with a hinged prong, for
fastening two loose ends, especially the ends of a belt, shoe, or
strap. http://encarta.msn.com.
Ser. No. 77363240
9
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
The first registration submitted by the Trademark
Examining Attorney is one owned by applicant itself. It is
Reg. No. 3178283, of the mark SIGNFIX for “metal brackets,
signs, clips, clamps, buckles, straps, banding, non-
mechanical band dispensers, nuts and bolts; all for use in
sign mounting.” In according probative value to this
registration, we assume that the “bolts” identified in the
registration include self-locking bolts, and that the
“buckles, straps, banding” in the registration are similar
to the “buckles of common metal for securing metal
strapping bands” identified in applicant’s application,
notwithstanding the different specific purpose of the goods
identified in the registration, i.e., “all for use in sign
mounting.”
The second registration submitted by the Trademark
Examining Attorney is Reg. No. 3530058, of the mark CANDO
for a numerous and wide variety of metal products,6

6 The goods identified in this registration are: “parts
comprised primarily of metals, namely, couplings for use with
household, agriculture, and mining hoses, hose fittings, alloyed
iron, alloys used for casting, aluminum foil, buckles of common
metal, carbon steels, casings of metal, cast iron, castings foils
and powder of aluminum and its alloys, cold-finished steel bars,
drain pipes, fasteners, namely, metal bars and chains, galvanized
steel sheets, gate latches, hand operated garden hose reels,
steel in bar form, hose hangers, irons and steels, marine
Ser. No. 77363240
10
including “buckles of common metal,” “bolts,” and “screws.”
We assume that the “buckles of common metal” identified in
this third-party registration encompass applicant’s
“buckles of common metal for securing metal strapping.” We
also assume that the “bolts” and “screws” identified in
this registration encompass the self-locking bolts and
screws identified in the cited registration.
The third registration submitted by the Trademark
Examining Attorney is Reg. No. 3481837, of the mark HOLT
for a numerous and wide variety of metal goods,7 including
“buckles of common metal,” “eye bolts,” and “metal eye

anchors, metal valves not being parts of machines, metal bars for
further manufacture, bolts, bottle caps, cantilevered brackets of
metal, chains, clamps, drain pipes, elbows for pipes, flanges,
hoses, hose clamps, hose clips for household, agriculture and
mining, hose fittings, pulleys, nails, nuts, pipes, rigging
chain, rivets, reinforcing materials for building purposes,
welding rods, rollers for building and road construction, screws,
seals, sheet metal linings, springs, tubes, tubing, tube,
turnbuckles, manually operated metal valves, washers, water
pipes, and welding rods, metallic moulds for casting metal,
stainless steels, steel in the form of plates, sheets, rods, bars
and billet forms, wire mesh, wire rope fittings of metal, namely,
sockets, thread studs and buttons, zinc-coated steel sheets.”

7 The goods identified in this registration are: Anchors; marine
anchors; buckles of common metal; cable thimbles of metal; eye
bolts; metal eye bolts; ferrules of metal for canes and walking-
sticks; metal bollards; metal cable wire; metal chains; metal
closures for containers; metal expansion joints for piping and
ducting; metal hardware namely, pulleys; metal hardware, namely
washers; metal hinges; metal hooks; metal key rings; metal
ladders; metal latches; metal marine hardware, namely, thimbles;
metal nuts; metal pipe couplings and joints; metal plugs; metal
poles; metal posts; metal pulleys, springs and valves; metal
rivets; metal screws; metal weather vanes; metal window frames;
nails; wire; wire ropes; mooring bollards of metal.”
Ser. No. 77363240
11
bolts.” Again, we assume that the “buckles of common
metal” in this registration encompass applicant’s “buckles
of common metal for securing metal strapping bands.” We
also will assume, although there is no specific evidence
which establishes, that “eye bolts” and “ring bolts” can
include self-locking eye bolts and ring bolts.
The fourth registration submitted by the Trademark
Examining Attorney is Reg. No. 2529941, of the mark SUNCOR
STAINLESS for various goods8 including “eye bolts,” “ring
bolts,” “ratchet buckles,” and “turnbuckles.” We note
that, unlike the broadly defined metal buckles in the first
three registrations which could encompass applicant’s more
specific buckles, this registration identifies specific
types of buckles. The record does not establish that
“ratchet buckles” and “turnbuckles” are types of buckles,
like applicant’s buckles, that would be used for the
specialized purpose of “securing metal strapping bands.”9

8 The goods identified in this registration are “stainless steel
and titanium products, namely, chains, cables and wires; and
steel and titanium hardware, namely eye bolts, ring bolts, wing
nuts, pulleys, pulley blocks, marine anchors, cable clips, rope
clips, ratchet buckles, cleats, rail fittings, hooks, snaps,
hinges, shackles, turnbuckles, swivels, rope sheaves, blocks and
rail fittings.”

9 As requested by the Trademark Examining Attorney in her brief,
we take judicial notice that a “turnbuckle” is “a device that
usually consists of a link with screw threads at both ends, that
is turned to bring the ends closer together, and that is used for
tightening a rod or stay.” www.merriam-webster.com. There is no
Ser. No. 77363240
12
To that extent, we find this third-party registration to be
of less probative value, under Trostel and Mucky Duck, as
evidence that applicant’s goods and the goods in the cited
registration are related.
Also of less probative value is the fifth and final
third-party registration submitted by the Trademark
Examining Attorney, which is Reg. No. 3329415 of the mark
CYM for various goods10 including “rigging hardware, namely,
... buckles, ... turnbuckles ...”; and “metal fasteners
namely bolts, nuts, screws ...” Again, the record does not
establish that these “buckles” and “turnbuckles,” which are
specifically identified in this registration as “rigging
hardware,”11 are buckles which would be used for the
specialized purpose of “securing metal strapping bands.”

evidence in the record which would establish what a “ratchet
buckle” is.

10 The goods identified in this registration are “rigging
hardware, namely, hooks, buckles, chains, pulleys, quick links,
rings, shackles, swivels, cable thimbles, turnbuckles and wire
rope clips, all such goods made of metal; load binders and wire
rope; metal hardware for doors and gates namely, hinges, latches
and locks; metal fasteners namely bolts, nuts, screws, rivets,
clamps and shelf brackets; nails.”

11 As requested by the Trademark Examining Attorney in her brief,
we take judicial notice that “rigging” is defined as “lines and
chains used aboard a ship especially in working sail and
supporting masts and spars,” and “a similar network (as in
theater scenery) used for support and manipulation.”
www.merriam-webster.com. “Rig” is defined as “to fix a piece of
equipment in place.” http://dictionary.cambridge.org.
Ser. No. 77363240
13
Also of limited probative value are the printouts from
the two third-party websites submitted by the Trademark
Examining Attorney. One (accessed via www.zibb.com) shows
that a company called Bee Fasteners lists among its
products “power tools or accessories; wedge anchors; anchor
bolts; structural bolts; metal buckles; concrete steel
shield anchor eye bolts; diamond blades; extension cords;
safety glasses; safety hard hats; saw blades; dry wall
screws.” Unlike the third-party registrations discussed
above, this internet evidence does not warrant a
presumption that the “metal buckles” listed on this website
include applicant’s “buckles of metal for securing metal
strapping bands.” Nor do we assume that the specific bolts
listed include self-locking bolts.
The second website is www.karolbolts.com, a company
which identifies itself as “Specializing in Marine and Dock
Fasteners” and lists its products as “galvanized bolts,
nuts & washers; galvanized dock hardware; galvanized nails
& screws; auger & screw bits; S.S. bolts, nuts and washers;
s.s. nails, screws & hardware; pile hoops & chain
assemblies; galvanized bolts, S.S. bolts, nuts and washers;
galvanized turn buckles.” As noted above, there is no
evidence that “turnbuckles” are used “for securing metal
strapping bands.” The turnbuckles identified on this
Ser. No. 77363240
14
third-party website are even farther afield in that they
are specifically identified as “Marine and Dock Hardware.”
We do not assume that the bolts listed include self-locking
bolts.
Considering the evidence as a whole, we find that
applicant’s “buckles of common metal for securing strapping
bands” and the “self-locking fasteners, namely bolts and
screws” identified in the cited registration are related in
a general way to the extent that they both are types of
metal fasteners. The limited probative evidence submitted
by the Trademark Examining Attorney is not particularly
compelling as evidence of a more specific commercial
relationship between applicant’s goods and registrant’s
goods.
We turn next to the third du Pont factor, under which
we determine the similarity or dissimilarity of the trade
channels in which and the classes of purchasers to whom the
goods identified in the application and in the cited
registration are or would be marketed. Because there are
no trade channel limitations or restrictions in either
applicant’s or registrant’s identification of goods, we
presume that the respective goods are or would be marketed
in all normal trade channels for such goods and to all
Ser. No. 77363240
15
normal classes of purchasers for such goods. See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
In this case, there is essentially no evidence which
would establish what the normal trade channels and classes
of purchasers for applicant’s and registrant’s goods are or
would be. The Trademark Examining Attorney argues
summarily that “... metal fasteners of various types are
sold to the same class of purchasers and marketed in the
same channels of trade. There is no evidence that
purchasers of applicant’s buckles for securing metal
strapping bands would not also be purchasing other securing
devices such as bolts and screws.” However, this mis-
states the burden of proof in this appeal. The asserted
absence of evidence showing that purchasers of applicant’s
goods “would not also be purchasing” registrant’s goods is
not dispositive; the burden is on the Trademark Examining
Attorney to prove that there in fact is an overlap or
similarity in purchasers and trade channels.
We will assume arguendo, however, although the
evidence of record does not specifically establish, that
registrant’s self-locking bolts and screws can be ordinary
hardware items which are or would be marketed to ordinary
retail consumers in normal retail trade channels for such
goods, such as hardware stores and home-improvement stores.
Ser. No. 77363240
16
We also assume that these goods could be marketed to
builders, mechanics, equipment manufacturers, and other
professionals.
Applicant’s “buckles of common metal for securing
metal strapping bands” would appear to be specialized goods
used for a specialized purpose. There is no evidence in
the record which establishes what the normal trade channels
and classes of purchasers for such goods are or would be.
Certainly, there is no evidence showing that these goods
would be marketed to or used by ordinary consumers. While
it may be possible that there could be an overlap in
purchasers and trade channels, at least as to
manufacturers, builders, shippers and other professionals
who need to secure large or bulky loads, on balance, we
find that the evidence does not establish that the normal
trade channels and purchasers for applicant’s and
registrant’s goods are similar.
Similarly, there is no evidence in the record which
establishes the conditions under which the goods are
purchased, under the fourth du Pont factor. It is likely
that registrant’s self-locking bolts and screws, at least
those which we assume to be sold in retail trade channels
to ordinary consumers, are inexpensive hardware items
purchased with only an ordinary degree of care. However,
Ser. No. 77363240
17
as noted above, there is no evidence that these consumers
also would be purchasers of applicant’s goods. To the
extent that the respective goods, especially applicant’s
specialized goods, would be purchased by manufacturers,
shippers and other professionals, those purchasers are
likely to be knowledgeable and careful purchasers.12
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra.
Applicant’s mark is DUAL-LOKT. The cited registered
mark is DUAL-LOK. Obviously, the marks are identical but
for the addition of the “T” at the end of applicant’s mark.
In terms of appearance, the two marks look similar in that,
except for the “T,” they share the same letters in the same
order, and they both are hyphenated. However, the “T”
following the “K” in applicant’s mark results in an odd

12 The only possibly pertinent evidence in the record on this
issue appears on the above-referenced page from registrant’s
catalog concerning registrant’s self-locking fasteners, which
states: “Every project is special. After discussions between
Long-Lok Technical Service personnel and your engineers, a torque
requirement specification will be established and a formula
developed for your company’s individual needs for the Dual-Lok
process.” As noted above, however, we are assuming that self-
locking screws and bolts also are inexpensive hardware items
purchased by ordinary consumers.

Ser. No. 77363240
18
“KT” letter combination at the end of the mark, which gives
applicant’s mark a somewhat unusual appearance which is not
shared by the cited registered mark. In terms of sound,
connotation and commercial impression, we find the marks to
be very similar.
Balancing the relevant du Pont factors discussed
above, we find that there is no likelihood of confusion.
Primarily, we find that as applied to the goods at issue,
i.e., fasteners, the overall commercial impressions of the
marks are highly suggestive, even if similar. Both simply
suggest that the goods have an enhanced locking capability
or function. This is especially so with regard to
registrant’s fasteners, which are “self-locking.” Given
the highly suggestive nature of registrant’s mark, we find
that it is not entitled to a broad scope of protection that
would extend much beyond the specific goods identified in
the registration. Moreover, applicant’s goods as
identified appear to be highly specialized in their nature
and application, and there is a paucity of evidence to
support a finding that applicant’s goods and registrant’s
goods are related beyond the fact that they both broadly
may be described as fasteners.
Ser. No. 77363240
19
Based on this record, we find that the Trademark
Examining Attorney has failed to establish that a
likelihood of confusion exists.
Decision: The refusal to register is reversed.