Commerce Bancorp, Inc.

Trademark Trial and Appeal Board

Oct 3, 2001

No. 75422600 (T.T.A.B. Oct. 3, 2001)

10/3/01
Paper No. 15
Bottorff

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Destron Fearing Corporation
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Serial No. 75/373,740
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Carl L. Johnson of Jacobson & Johnson for Destron Fearing Corporation.

Howard Smiga, Trademark Examining Attorney, Law Office 102 (Thomas V.
Shaw, Managing Attorney).
_______

Before Wendel, Bottorff and Drost, Administrative Trademark Judges.

Opinion by Bottorff, Administrative Trademark Judge:

Applicant has filed an intent-to-use application seeking registration of the
mark LASERMARK (in typed form) for goods identified, as amended, as “ear
tags for domesticated animals, namely, cows and hogs,” in International Class
20.1[1]

1[1] Serial No. 75/373,740, filed October 14, 1997. In the
application as originally filed, applicant identified its goods
as “animal identification ear tags and process for placing
identification information on the tags.” In the first Office
action, the Trademark Examining Attorney, inter alia, required
applicant to submit a more definite identification of goods,
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
The Trademark Examining Attorney has refused registration on two
grounds. First, he contends that applicant’s mark is merely descriptive of
applicant’s goods and that it thus is barred from registration under Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1). Second, he contends that registration is
barred under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because applicant’s
mark, as applied to applicant’s goods, is likely to cause confusion vis-à-vis the
mark depicted below

including a specification of whether the tags were composed of
metal or plastic. In response, applicant amended the
identification of goods to “plastic ear tags for livestock.”
Later, in response to the Trademark Examining Attorney’s final
Office action, applicant requested further amendment of the
identification of goods to the above-referenced “ear tags for
domesticated animals, namely, cows and hogs.” This amendment was
accepted by the Trademark Examining Attorney, despite the fact
that it expanded the identification of goods by removing the
limitation of the goods to “plastic” ear tags. See Trademark
Rule 2.71(a). It appears from applicant’s arguments on appeal
that its ear tags in fact are intended to be made of plastic; we
note also that the goods remain classified in Class 20, which is
appropriate only if the goods are composed of plastic. Thus, for
purposes of this opinion, we shall presume that applicant’s goods
are intended to be made of plastic. In view of our disposition
of this appeal and the resulting eventual abandonment of the
application, however, the issue of the correctness of the
identification of goods is moot, and we accordingly shall not
remand the application for entry of an amendment to the
identification of goods.
which is previously registered (with a disclaimer of the exclusive right to use
LASER MARK apart from the mark as shown) for “metal tags used to identify
fish and wildlife, and fish and wildlife metal tags for which a laser is used to
apply or recover identifying marks,” in International Class 6.2[2]
When the refusals were made final, applicant filed this appeal. Applicant
and the Trademark Examining Attorney have filed briefs, but applicant did not
file a reply brief. Applicant requested an oral hearing, but subsequently
withdrew that request, and no oral hearing was held.
We turn first to the Section 2(d) refusal to register applicant’s mark. Our
likelihood of confusion determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to the factors bearing on
the likelihood of confusion issue. See In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We must compare the respective marks in terms of their appearance,
sound and connotation, and must determine whether the marks, when viewed in
their entireties, present similar or dissimilar overall commercial impressions.

2[2] Registration No. 2,037,661, issued February 11, 1997.

The test is not whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion as to the source of
the goods offered under the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally retains a general rather
an a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be
considered in their entireties, it is well-settled that one feature of a mark may be
more significant than another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression created by the
mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Viewing applicant’s mark and the cited registered mark in their entireties,
we find them to be highly similar. The two marks are phonetic equivalents, and
they have the same connotation. Applicant’s mark also is visually similar to the
registered mark, in that both marks are dominated by the wording LASERMARK
or LASR MARK. The slight differences in spelling and appearance, i.e.,
applicant’s compression of the two words into one and registrant’s omission of
the letter “E,” do not suffice to distinguish the marks in their entireties.
Likewise, the marks are not distinguished by the presence of the design element
in the registered mark. That design element does not significantly change the
overall commercial impression of the registered mark; it merely reinforces the
meaning of the wording in the mark. Viewing the marks in their entireties, we
find that they create the same overall commercial impression.
We next consider the similarity or dissimilarity between applicant’s and
registrant’s goods. It is not necessary that these respective goods be identical or
even competitive in order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such, that they would be likely to
be encountered by the same persons in situations that would 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 source or that there is an association or
connection between the sources of the respective goods. 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); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978). Moreover, the greater the degree of
similarity between the applicant’s mark and the cited registered mark, the lesser
the degree of similarity between the applicant’s goods or services and the
registrant’s goods or services that is required to support a finding of likelihood of
confusion. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993);
In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
We find that applicant’s goods are similar, indeed essentially identical, to
registrant’s goods. The fact that applicant’s animal identification tags apparently
will be made of plastic3[3] while registrant’s animal identification tags are made
of metal does not appear, on this record, to be of any commercial or legal
significance in our likelihood of confusion analysis. Likewise, the essential
identity of the respective goods is not affected or eliminated by the fact that
applicant’s animal identification tags are intended to be used for domestic
livestock while registrant’s animal identification tags are intended for use on fish
and wildlife. Registrant’s and applicant’s goods are animal identification tags,
whatever their material composition or intended use. There is no basis in the
record for concluding that these minimal differences between applicant’s and
registrant’s goods are the types of differences which purchasers would rely upon
to identify and distinguish the source of these products.
Similarly, applicant has presented no evidence to support its argument
that applicant’s livestock identification tags and registrant’s fish and wildlife
identification tags move in different trade channels or are purchased by different
classes of purchasers. There is no evidentiary basis for concluding that “farmers
and ranchers,” asserted by applicant to be the purchasers and users of its
livestock identification tags, would not also have use for or need of identification
tags for the fish and/or wildlife on their property. Likewise, nothing in the
record supports a finding that the government officials and researchers identified
by applicant as the purchasers and users of registrant’s fish and wildlife

3[3] See discussion supra at footnote 1.

identification tags would not also have use for or need of identification tags for
livestock which they might be charged with regulating or researching.
Finally, there is no basis in the record for concluding that the purchasers
of these products are so sophisticated or careful in their purchasing decisions
that they would be immune to source confusion which otherwise would arise
from use of these essentially identical marks on these essentially identical goods.
Considering all of the evidence of record with respect to the relevant du
Pont evidentiary factors, we conclude that a likelihood of confusion exists in this
case. Although the registered mark is admittedly weak, as evidenced by
registrant’s disclaimer of LASER MARK apart from its mark as shown in the
registration, we find that the scope of protection to be afforded to the registered
mark is sufficiently broad to preclude registration of applicant’s essentially
identical mark for essentially identical goods. Any doubts as to our conclusion
must be resolved against applicant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
We also affirm the Trademark Examining Attorneys’ Section 2(e)(1) mere
descriptiveness refusal. A term is deemed to be merely descriptive of goods,
within the meaning of Trademark Act Section 2(e)(1), if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function,
purpose or use of the goods. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987), and In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-18 (CCPA 1978). A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods in order to be considered merely
descriptive; it is enough that the term describes one significant attribute, function
or property of the goods. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is merely descriptive
is determined not in the abstract, but in relation to the goods for which
registration is sought, the context in which it is being used on or in connection
with those goods, and the possible significance that the term would have to the
average purchaser of the goods because of the manner of its use. In re Bright-
Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Applicant’s goods are identified as “ear tags for domesticated animals,
namely, cows and hogs.” As noted above at footnote 1, the application, as
originally filed, included the wording “and process for placing identification
information on the tags.” This wording eventually was deleted, but we
nonetheless may consider it to the extent that it aids us in determining the nature
of applicant’s goods and the significance of applicant’s mark as applied to those
goods.
We further note that in the registration cited as the Section 2(d) bar to
registration of applicant’s mark, in which registrant disclaimed the exclusive
right to use LASER MARK, registrant’s goods are identified in relevant part as
“tags for which a laser is used to apply or recover identifying marks.” Applicant,
in comparing its goods to registrant’s goods for purposes of the likelihood of
confusion issue, distinguished the respective goods only with respect to their
material composition and the animals on which the tags are intended to be used.
Applicant did not attempt to distinguish its goods from registrant’s goods by
arguing that applicant and registrant use different methods of placing
identification information on their respective tags.
We reasonably conclude (and applicant does not contend otherwise) that
the “process for placing identification information on” applicant’s tags, to which
applicant referred in its original identification of goods, is the same as or similar
to the process used by registrant, i.e., a process by which “a laser is used to apply
or recover identifying marks” to or from the tags. In view thereof, we find that
LASERMARK is merely descriptive of applicant’s goods. The tags contain or
employ marks which serve to identify the animals wearing the tags, and those
identifying marks are applied to or recovered from the tags by means of laser
technology.
Applicant’s arguments to the contrary are not persuasive. It is not
dispositive that “laser” and “mark” might have other meanings in other contexts,
because we must look to the meanings which are likely to be ascribed to the
words as they are encountered on or in connection with applicant’s goods, not in
the abstract. In this regard, the Trademark Examining Attorney has submitted
dictionary definitions of “laser” and “mark”4[4] which directly describe important

4[4] Specifically, The Computer Glossary (7th Ed.) by Alan Freedman, defines “laser” as
follows:
features or attributes of applicant’s animal identification tags, i.e., that they
contain marks which are
applied or recovered by laser technology. Furthermore, the mere descriptiveness
of the two words is not eliminated by combining them into LASERMARK.
Combining the words does not create a commercial impression which is new or
different, unique or incongruous; the resulting composite is as merely descriptive
as the two words are when used separately.

Decision: The refusals to register under Trademark Act Sections 2(d) and
2(e)(1) are affirmed.

(Light Amplification from the Stimulated Emission of
Radiation) A device that creates a very uniform light that
can be precisely focused. It generates a single
wavelength or narrow band of wavelengths and is used in
applications such as communications, printing an disk
storage. Unlike the transmission of electricity,
transmission of light pulses over optical fibers is not
affected by nearby electrical interferences.

Webster’s II New Riverside University Dictionary defines “mark” as follows, in
pertinent part:

-n. 1. A visible trace or impression, as a spot, dent, or
line … 5.a. An inscription, name, stamp, label, or seal
placed on an article to signify ownership, quality,
manufacture, or origin. b. A notch in an animal’s ear or
hide indicating ownership. … 7.b. A visible sign or
symbol, as a badge or brand adopted by or imposed on a
person. … –vt. 1. To make a visible impression on, as with
a spot, line, or dent. 2. To form, make or depict by
making a visible impression, as with a spot, line, or
dent. 3.a. To indicate or distinguish by making a visible
impression … –vi. 1. To make a visible impression 2. To
receive a visible impression…