Chevron Ltd.

Trademark Trial and Appeal Board

Aug 26, 2011

No. 77737091 (T.T.A.B. Aug. 26, 2011)

Mailed: August 26, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chevron Ltd.
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Serial No. 77737091
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Ulrika E. Mattsson of McDermott, Will & Emery LLP for
Chevron Ltd.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Walters, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Chevron Ltd. filed an application to
register the mark ENDURO in standard characters on the
Principal Register for the following goods (as amended):
portable power tools, namely, angle grinders,
circular saws, drills, drivers, jig saws,
reciprocating saws, rotary tools, routers,
sanders, air compressors, angle grinders,
buffers, caulk guns, cut out saws, fans, planers,
laminate trimmer, electric screwdrivers, power
staplers, vacuums; power tool accessories,
namely, circular saw blades, jig saw blades,
drill bits, driver bits, router bits, router
bushings; benchtop power tools, namely, miter
saws, router tables specially adapted to hold
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77737091
2
powered machinery, table saws and tile saws; lawn
and garden power tools, namely, string line
trimmers, hedge trimmers, grass shears, electric
leaf blowers, pole hedge trimmers, chainsaws,
pole saws, lawn mowers; lawn and garden power
tool accessories, namely, replacement blades,
replacement line

in International Class 7.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used on or in
connection with its goods, so resembles the mark IC ENDURO,
previously registered on the Principal Register in standard
characters for “power saw blades” in International Class 7,2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
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

1 Application Serial No. 77737091 was filed on May 14, 2009 based
upon applicant’s assertion of its bona fide intent to use the
mark in commerce in connection with the goods. Applicant deleted
certain goods from its original identification and divided goods
not subject to this appeal into a child application.
2 Registration No. 3565090 issued on January 20, 2009.

Ser. No. 77737091
3
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, 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, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider the similarity of the marks. In
this case, applicant’s mark, ENDURO, is wholly incorporated
by the cited mark, IC ENDURO. As such, applicant’s mark is
identical in part to the mark in the cited registration in
appearance and sound. Likelihood of confusion is often
found where the entirety of one mark is incorporated within
another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985)
(PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM
for hairdressing and conditioner); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB
Ser. No. 77737091
4
1983)(LIL’ LADY BUGGY for toy doll carriages and LITTLE
LADY for doll clothing).
As for the presence of IC in registrant’s mark, this
term is not sufficient to distinguish applicant’s ENDURO
mark from the cited IC ENDURO mark given the otherwise
identical natures thereof. Consumers are often known to
use shortened forms of names, and it is highly likely that
registrant and its goods are referred to as ENDURO. Cf.
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
219 (CCPA 1978) (Rich, J., concurring: “the users of
language have a universal habit of shortening full names –
from haste or laziness or just economy of words”). In this
case, the portion of registrant’s mark most likely to be
remembered by purchasers and users in referring to its
goods is ENDURO. This portion of registrant’s mark is
identical to applicant’s mark. With regard to meaning or
connotation, both marks suggest strength and resilience in
the goods so marked.
Applicant argues that ENDURO is a weak mark entitled
to a narrow scope of protection. In support of its
position, applicant submitted copies of the following
third-party registrations consisting of ENDURO and ENDURO-
formative marks:
Ser. No. 77737091
5
Registration No. 1848992 ENDURO “gasoline engines
not for land use”;

Registration No. 1858374 ENDURO “compressor screw
elements as machine parts”;

Registration No. 2580614 ENDURO “outboard engines
and structural parts therefor”;

Registration No. 2423392 ENDURO “machine parts,
namely, ball and roller bearings”;

Registration No. 3055957 ENDURO “mail processing
machines; inserters for mail processing machines
and user manuals sold as a unit therewith”;

Registration No. 2643633 ENDURO MILL (stylized,
MILL disclaimed) “power-operated solid carbide
rotary tools, namely, end mills”;

Registration No. 3352044 ENDURO VAC STINGER
(stylized, VAC disclaimed) “commercial and
industrial as well as residential robots for
cleaning swimming pools”;

Registration No. 2148633 ENDURO-FLEX “power
operated grinding wheels for grinding and
finishing metals”;

Registration No. 1780780 ENDURO-FLITE “conveyors
and conveyor parts”; and

Registration No. 2089576 ENDURO-FLO “bulk
handling equipment, namely, drag conveyors, and
parts therefor, specifically excluding chains.”3

3 Registration No. 2897906, also relied upon by applicant,
subsequently was cancelled under Section 8. A cancelled
registration is not evidence of anything except that it issued.
See Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB
2002). Any benefits conferred by the registration, including the
evidentiary presumptions afforded by Section 7(b) of the
Trademark Act were lost when the registration expired. See,
e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ
46 (CCPA 1973).

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We note, however, that most of the registrations made
of record by applicant identify goods that are not related
to the goods recited in either its application or the cited
registration. The two registrations that arguable recite
related goods are for marks - ENDURO MILL (stylized) and
ENDURO-FLEX – that are less similar to the marks in the
involved application and cited registration than those
marks are to each other. As such, we are not compelled by
such evidence to find that ENDURO is a weak mark in the
field of portable power tools or power saw blades, or that
IC ENDURO should be afforded a narrow scope of protection.
In this case, we find that consumers who are familiar
with the mark, IC ENDURO, used in connection with
registrant’s power saw blades, who then see the mark ENDURO
used in connection with applicant’s various portable power
tools and accessories, including saw blades, are likely to
assume that the owner of the IC ENDURO mark has simply
deleted the IC portion of its mark when using the mark in
connection with power tools. In other words, consumers are
likely to view the marks as variations of each other, but
indicating a single source. Thus, despite the fact that
registrant’s mark includes IC, the marks IC ENDURO and
ENDURO, taken as a whole, are highly similar in appearance,
sound, connotation and commercial impression. Accordingly,
Ser. No. 77737091
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this du Pont factor favors a finding of likelihood of
confusion.
The Goods
Turning now to our consideration of the identified
goods, we observe that applicant’s goods include “circular
saw blades” and “jig saw blades” which are included among
registrant’s more broadly identified “power saw blades.”
In addition, applicant’s goods include “circular saws,”
“reciprocating saws,” “cut out saws,” and “miter saws” that
are commonly understood to be used with registrant’s “power
saw blades.” Thus, on the face of their respective
identifications, applicant’s goods are encompassed in part
by registrant’s goods and related in part to those goods.
In addition, the examining attorney has made of record
a number of use-based, third-party registrations which show
that various entities have adopted a single mark for goods
that are identified in both applicant’s application and the
cited registration. See, for example:
Registration No. 2987000 for, inter alia,
circular saws, miter saws, reciprocating saws,
drills, and power saw blades;

Registration No. 2800554 for, inter alia, power
saw blades and drill bits; and

Registration No. 2629217 for, inter alia, bits
for power drills, blades for power saws, hand
held electric drills, routers and circular saws.

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Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The examining attorney further submitted evidence
from commercial Internet web sites suggesting that the same
entities provide both applicant’s and registrant’s types of
goods. The following samples are illustrative:
various power saw blades including circular saw
blades and jigsaw blades
(www.coastaltool.com);

circular saws, sanders, routers, reciprocating
saws, grinders, and various power saw blades
(www.skiltools.com); and

drills, routers, grinders, sanders, circular
saws, reciprocating saws, and blades for power
saws,
(www.boschtools.com).

Based upon the face of the respective identifications
of goods and the evidence made of record by the examining
attorney, we find that applicant’s goods are encompassed in
part by those of registrant and otherwise related. This
factor, therefore, favors a finding of likelihood of
confusion.
Channels of Trade
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It is settled that in making our determination
regarding the channels of trade, we must look to the goods
as identified in the involved application and cited
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
In this case, inasmuch as neither applicant’s nor
registrant’s identification of goods recites any specific
limitations to the channels of trade in which the goods
move or are intended to move, we presume an overlap and
that the goods would be offered in all ordinary trade
channels for these goods and to all normal classes of
purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992).
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under his above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under his mark that
Ser. No. 77737091
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the goods originated with or are associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.