Code Alarm, Inc.

Trademark Trial and Appeal Board

Jul 11, 2001

No. 75620951 (T.T.A.B. Jul. 11, 2001)

7/11/01 Paper No. 8
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UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Code Alarm, Inc.
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Serial No. 75/620,951
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John G. Chupa of Chupa & Alberti, P.C. for Code Alarm, Inc.
David H. Stine, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
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Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Code Alarm, Inc. has filed an application to register
the mark "SUREGUARD" for "anti-theft alarms for vehicles."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "SURE GUARD" and design, which is registered as shown below
1 Ser. No. 75/620,951, filed on January 14, 1999, which is based on an
allegation of a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/620,951
2
for "residential burglar and fire alarm systems,"2 as to be
likely to cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.4
Turning first to consideration of the respective goods,
applicant argues that, unlike registrant's residential burglar
and fire alarm systems, its "alarm systems are specifically made
to function with automotive vehicles." Applicant contends, in
view thereof, that it "markets and sells its systems to vehicle
2 Reg. No. 1,029,970, issued on January 13, 1976, which sets forth
dates of first use of October 16, 1974; renewed.
3 As the Examining Attorney, in his brief, accurately notes, "applicant
has submitted, for the first time with the appeal brief, a substantial
packet of additional evidence (designated by applicant as Exhibits A
through H)." The Examining Attorney has objected to consideration of
such evidence, correctly observing that the submission thereof is
untimely under Trademark Rule 2.142(d). Accordingly, while the
objection is sustained, it is pointed out that even if the additional
evidence filed with applicant's appeal brief were to be considered, it
would not make a difference in the outcome of this appeal.
4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."
Ser. No. 75/620,951
3
security retailers, new car dealers and automakers," while
registrant "sells its goods through specific home burglar and
fire alarm retailers and distributors." Applicant therefore
maintains that confusion is not likely because the respective
goods are not competitive and are sold through different channels
of trade. Applicant also asserts that, while the Examining
Attorney has "indicated that some cross-over may exist in the
form of a few companies that sell both automobile and home
security" products, such goods "are almost always sold in
separate channels of trade, or by retailers that exclusively
specialize either in automotive products or in home products."
The Examining Attorney, however, correctly points out
that it is well settled that goods need not be identical or even
competitive in nature in order to support a finding of likelihood
of confusion. It is sufficient, instead, that the goods are
related in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under situations that would give
rise, because of the marks employed in connection therewith, to
the mistaken belief that they originate from or are in some way
associated with the same producer or provider. See, e.g.,
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB
1978) and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978). According to the Examining Attorney:
In this instance, there is a close and
obvious relationship between the various
security alarm products contemporaneously
marketed by the applicant and registrant.
Both registrant's residential burglar alarms
and applicant's automotive alarms are
Ser. No. 75/620,951
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designed to detect and protect against
unauthorized entry into a location, whether
it is a vehicle or a dwelling. Both product
lines are likely to incorporate or encompass
similar technology and to include such
features as motion detectors, glass breakage
detectors, vibration detectors, as well as
visual and/or audible warning alarms. In
view of the obvious similarities in function
or use and the likely overlap in specific
technologies employed, the automotive alarms
marketed by applicant must be considered
within the likely and reasonable field of
expansion for registrant.
We agree with the Examining Attorney that, in the
present case, the various third-party registrations which were
made of record with the initial Office Action are sufficient to
establish that applicant's goods, while specifically different
from registrant's goods, are nevertheless so closely related
thereto in terms of similarity in function and in the technology
utilized that, if sold under the same or similar marks, a
likelihood of confusion as to the origin or affiliation of the
respective products would result. In particular, the record in
support of the Examining Attorney's position includes copies of
six use-based third-party registrations of marks which, in each
instance, are registered for burglar alarms for buildings, on the
one hand, and anti-theft alarms for land vehicles, on the other.
The record also contains two use-based registration for marks
covering retail store services in the field of, inter alia,
"anti-theft and burglar alarms." Although such registrations are
not evidence that the different marks shown therein are in use or
that the public is familiar with them, they nevertheless have
some probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may emanate
Ser. No. 75/620,951
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from a single source and that such goods may also be sold through
the same retail outlets. See, e.g., In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Moreover, even if, despite the absence of any specific
limitations as to the channels of trade therefor, the goods at
issue herein were actually to be sold, as contended by applicant,
through different avenues of distribution, it is still the case
that the customers for vehicle anti-theft alarms and for
residential burglar and fire alarm systems are the same and that
such consumers would be expected to cross-shop the various retail
outlets which are normal for the respective goods.
Turning, therefore, to consideration of the marks,
applicant argues among other things that its mark "combines the
words 'SURE' and 'GUARD' in an adjacent manner (i.e., side by
side) to form a single term, 'SUREGUARD'," while registrant's
mark "includes the word 'SURE' disposed over or 'on top of' the
word 'GUARD', along with a logo which resembles a home and which
is formed, in part, by the letter 'd'." Applicant asserts that
"[t]he only similarities between the two marks lie in the terms
'SURE' and 'GUARD', which are highly suggestive and which are
commonly used in various fields of security technology." In
particular, applicant emphasizes that, "[d]ue to the nature of
Registrant's goods (i.e., residential burglar and fire alarms),
the design portion of Registrant's mark (i.e., the house design)
should be accorded more weight than the suggestive words 'sure'
and 'guard'." The design element, according to applicant, is the
Ser. No. 75/620,951
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"most significant portion of Registrant's mark" and, inasmuch as
such a feature "is completely missing" from applicant's mark for
its vehicle anti-theft alarms, applicant concludes that "[t]his
substantial difference between the two marks serves to reduce or
eliminate any potential for confusion, as it accentuates the
differences between Registrant's and Applicant's products."
We concur, however, with the Examining Attorney that
the respective marks are "strikingly similar in overall
commercial impression." As the Examining Attorney correctly
points out, a side-by-side comparison is not the proper test to
be used in determining the issue of likelihood of confusion
inasmuch as it is not the ordinary way that customers will be
exposed to the marks. Instead, it is the similarity of the
general overall commercial impression engendered by the marks
which must determine, due to the fallibility of memory and the
concomitant lack of perfect recall, whether confusion as to
source or sponsorship is likely. The proper emphasis is
accordingly on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of
marks. See, e.g., Envirotech Corp. v. Solaron Corp., 211 USPQ
724, 733 (TTAB 1981); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975); and Grandpa Pidgeon's of Missouri,
Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973).
Here, as the Examining Attorney further notes, "it has
been consistently held that when a mark consists of a word
portion and a design portion, the word portion is more likely to
be impressed upon a purchaser's memory and to be used in calling
Ser. No. 75/620,951
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for the goods or services." See. e.g., In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987).5 We agree with the
Examining Attorney that when considered in their entireties, the
dominant portion of registrant's mark is the literal term "SURE
GUARD," which is virtually identical in sound, appearance,
connotation and commercial impression to applicant's "SUREGUARD"
mark. The fact that the words "SURE" and "GUARD," when used in
connection with alarms, obviously "are suggestive of desirable
characteristics for such goods" in that they "invoke thoughts of
security, reliability, safety and protection," as applicant
argues, is not a proper basis for giving greater weight to the
house design in registrant's mark. This is because even though
such words are suggestive, their combination engenders
essentially the same overall commercial impression in applicant's
mark as in registrant's mark. Such impression, as the Examining
Attorney persuasively adds, is not significantly altered by the
presence of a house design in registrant's mark since
"prospective purchasers may well assume that the suggestive
design element of registrant's mark is used to distinguish its
residential line of alarms from the automotive line ... offered
under the 'SUREGUARD' brand name." Considered in their
entireties, the contemporaneous use of such substantially similar
5 While applicant also contends that the "stylized, lower case letters"
in registrant's mark serve, along with the house design, to
distinguish such mark from applicant's mark, the Examining Attorney
accurately observes that, inasmuch as applicant's mark is in typed
form, such a format encompasses the display thereof in any reasonable
manner, including the same lower case stylized lettering as utilized
by registrant in its mark. See, e.g., Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) and INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB 1992).
Ser. No. 75/620,951
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marks as "SUREGUARD" and "SURE GUARD" and design, in connection
with, respectively, such closely related goods as vehicle anti-
theft alarms and residential burglar and fire alarm systems,
would be likely to cause confusion as to source or sponsorship.
Applicant insists, nevertheless, that confusion is not
likely because "purchasers of Applicant's and Registrant's goods
exercise an extremely high degree of care in purchasing such
goods, due to the nature of the respective goods." Specifically,
applicant urges that, in addition to being relatively expensive
purchases which would be subject to considerable deliberation,
prospective customers will be highly discriminating in their
selections because:
In the case of Registrant's goods, for most
individuals, there is no more important
priority than to protect one's home, family
and self from invasion, theft, burglary,
and/or fire. When purchasing a residential
fire or burglary alarm, a purchaser will be
extremely careful, as the safety of his or
her house and the lives of his or her family
are at stake. ....
The same high level of care is
undertaken for purchasers of vehicle security
systems. Vehicle security systems protect
expensive personal property from being stolen
.... These types of thefts are increasing,
and selecting the appropriate vehicle
security system is essential to protecting
oneself against this growing problem. ....
Perhaps more importantly, vehicle security
systems also serve an important personal
safety function. That is, many such alarms
are equipped with panic buttons and remote
keyless entry features which allow a user to
warn-away potential attackers and to quickly
enter and lock one's vehicle if a threat is
encountered. For these reasons, a purchaser
of a vehicle alarm system will also be
extremely cautious, spend a great deal of
time, and perform painstaking research before
making a decision.
Ser. No. 75/620,951
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The Examining Attorney, on the other hand, maintains
that applicant's contentions are not persuasive. As the
Examining Attorney tellingly observes:
Due to the complexity of installation, it
must be assumed that most, if not all, likely
consumers of the respective goods will rely
on the expertise of professionals for
specific knowledge of the products and for
its installation. As such, the actual
consumer is likely to be aware only of the
brand name and the general capabilities of
the goods, rather than being particularly
careful and/or sophisticated in the
evaluation of a particular product. ....
Furthermore, even assuming that at least some purchasers in the
market for alarms would nonetheless exercise a degree of care or
discrimination as to the particular features wanted in a vehicle
anti-theft alarm and those desired in a residential burglar and
fire alarm system, it is still the case that the fact that such
consumers may exercise deliberation in choosing the respective
products "does not necessarily preclude their mistaking one
trademark for another" or that they otherwise are entirely immune
from confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
We accordingly conclude that purchasers and potential
customers, who are familiar or acquainted with registrant's "SURE
GUARD" and design mark for its residential burglar and fire alarm
systems, would be likely to believe, upon encountering
applicant's substantially similar "SUREGUARD" mark for its anti-
theft alarms for vehicles, that such closely related alarms and
Ser. No. 75/620,951
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alarm systems emanate from, or are sponsored by or associated
with, the same source. In particular, even among such consumers
who would notice the differences in the respective marks,
including the stylized house design in registrant's mark, it
still would be reasonable for them to believe, for example, that
applicant's "SUREGUARD" mark for its vehicle anti-theft alarms
designates a new or additional product line emanating from, or
sponsored by, the same source as the residential burglar and fire
alarm systems offered by registrant under its "SURE GUARD" and
design mark.
Decision: The refusal under Section 2(d) is affirmed.