CMB Industries, Inc.

Trademark Trial and Appeal Board

Oct 9, 2003

No. 75693024 (T.T.A.B. Oct. 9, 2003)

Mailed: 10/9/03
Paper No. 20
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re CMB Industries, Inc.
________
Serial No. 75693024
_______
Kenneth H. Oh of Baker & Hostetler LLP for CMB Industries,
Inc.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Seeherman, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
CMB Industries, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
WOLVERINE as a trademark for a "butterfly valve for use in
controlling the flow of water in water distribution
systems, in water filtration systems, and in sewage
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75693024
2
treatment systems."1 Registration has been refused pursuant
to Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
the ground that applicant's mark so resembles the
registered mark WOLVERINE for "water softeners, water
conditioners, water filters, water purification units and
water odor removers for potable water used in domestic,
commercial and industrial applications"2 that, if used on or
in connection with applicant's identified goods, it would
be likely to cause confusion or mistake or to deceive.
The appeal has been fully briefed. Applicant did not
request an oral hearing.
We affirm the refusal of registration.
As a preliminary comment, we note that the Examining
Attorney to whom this application was originally assigned
conducted a search of the NEXIS database for stories in
which the words "butterfly," "valve" and "water" appeared
in close proximity. The search retrieved 77 stories, and
the Examining Attorney submitted all 77, without regard to
the fact that several were duplicates, and presumably
without assessing their probative value, since many simply
indicated that butterfly valves are used in connection with
1 Application Serial No. 75693024, filed April 28, 1999, based
on applicant’s asserted bona fide intention to use the mark in
commerce.
2 Registration No. 2,321,745, issued February 22, 2000.
Ser No. 75693024
3
water treatment plants or are used to control the flow of
water. Evidence to this effect is not necessary, since
those facts are clear from applicant's own identification
of goods. We reiterate our long-standing policy that
Examining Attorneys need not submit, and in fact are
discouraged from submitting, all articles retrieved by a
NEXIS search. It is only necessary that a representative
sample be submitted, along with a statement that the sample
is representative. In re Vaughan Furniture Co. Inc., 24
USPQ2d 1068, n. 2 (TTAB 1992).
This brings us to the issue which is the subject the
appeal, that of likelihood of confusion. Our determination
of this issue 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 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
There is no dispute that the marks involved here are
identical. As the Examining Attorney has pointed out, when
the marks of the parties are identical, a lesser degree of
relatedness of the goods is necessary to support a finding
Ser No. 75693024
4
of likelihood of confusion. Amcor, Inc. v. Amcor
Industries, Inc., 210 USPQ 70 (TTAB 1981). See also, In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (even
when goods or services are not competitive or intrinsically
related, the use of identical marks can lead to the
assumption that there is a common source). This is
particularly true in the instant case, in which WOLVERINE
is an arbitrary mark, and therefore the cited registration
is entitled to a broad scope of protection. Thus, in this
case, the fact that the marks are identical "weighs heavily
against applicant." In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Turning to the goods, it is well established that it
is not necessary that the goods of the parties be similar
or competitive, or even that they move in the same channels
of trade to support a holding of likelihood of confusion.
It is sufficient that the respective goods of the parties
are related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. In re Shell Oil Co.,
Ser No. 75693024
5
supra, and In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
In this case, applicant's butterfly valves for use in
water distribution systems and in water filtration systems
may be used in the same commercial and industrial
installations in which the registrant's water filters and
water purification units may be used. The related nature
of the goods, and specifically the relatedness of
applicant's butterfly valves used in water filtration
systems and registrant's water filters and water
purification units used in commercial and industrial
applications, is obvious. These are used as part of a
single system, although the individual items obviously
perform different functions within the system. However, as
noted above, it is not necessary that the goods be
identical in order to support a finding of likelihood of
confusion. Thus, applicant's point that applicant's goods
and those identified in the cited registration are not
"likely to be confused" is of no avail. The question is
not whether a prospective purchaser or user of the goods
might, for example, select a butterfly valve when intending
to obtain a water filter or water purification unit, but
whether confusion is likely as to the source of the goods.
Ser No. 75693024
6
The Examining Attorney has submitted a number of
third-party registrations which show that entities have
registered a single mark for, inter alia, water treatment
and purification equipment, namely, water softener units,
fleck control valves, filter housing, replacement
cartridges;3 water purification or treatment systems
comprising water purification filters and desalination
plants, and accessories and components sold therewith,
namely, pumps, valves, controls;4 water purification systems
for residential, commercial and industrial use, namely
water filtration systems comprising water softeners, filter
housings, carbon post filters, check valves, ball valves,
auto shut-off valves;5 cartridge water filtration systems
for water purification comprising cartridge housings,
filter elements, ball valves for industrial use.6
Applicant correctly points out that none of the valves
identified in the third-party registration is specifically
designated as a butterfly valve. However, the
registrations do show that valves are an integral component
3 Registration No. 2,164,983.
4 Registration No. 1,720,082. Although this registration
originally issued pursuant to the provisions of Section 44,
subsequently a Section 8 affidavit and a renewal application were
filed, thus showing that the mark has been used in commerce on
the goods.
5 Registration No. 1,969,574.
6 Registration No. 1,976,212.
Ser No. 75693024
7
of industrial water filtration and purification systems
that also include filters, and that both items can be sold
by the same entity under the same mark. As a result, the
consumers for the butterfly valves identified in
applicant's identification and the filters and water
purification units identified in the cited registration are
likely to assume, upon seeing the identical and arbitrary
mark WOLVERINE on both types of products, that they emanate
from or are sponsored by the same source.
Applicant has tried to minimize the relatedness of the
goods by asserting that "the issue of whether goods or
services are related does not depend on whether a term can
be found that describes both the goods or whether both can
be classified under the same category." Reply brief, p. 1.
However, we do not base our conclusion that the goods are
related merely on the fact that "they are both used to
control water." Rather, as indicated above, these goods
are used as part of the same system, and similar goods are
sold by single entities under a single mark.
We also recognize that the common purchasers of
applicant's and the registrant's goods would be
sophisticated and discriminating. However, given that
valves and filters are sold as part of or for use in water
purification systems, and given that the goods are sold
Ser No. 75693024
8
under the arbitrary and identical mark WOLVERINE, we find
that even discriminating purchasers are likely to be
confused.
Finally, to the extent that there is any doubt as to
whether confusion is likely, such doubt must be resolved
against the newcomer and in favor of the prior user or
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.