Creaholic S.A.

Trademark Trial and Appeal Board

Jul 16, 2003

No. 75729782 (T.T.A.B. Jul. 16, 2003)

Mailed: July 16, 2003
Paper No. 21
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Creaholic S.A.
________
Serial No. 75/729,782
_______
David Spaw of Rankin, Hill, Porter & Clark LLP for
Creaholic S.A.
Young Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Quinn, Hairston and Drost, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
Creaholic S.A. has filed an application to register
WOODWELDING as a trademark for the following goods and
services:
building lumber; portable and pre-fabricated
non-metal buildings, lumber in the nature of
formed, pressed and partially pressed wood in
class 19;
construction planning in class 37;
cutting of wood to the specification of others,
providing information on the processing of
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/729,782
2
materials, namely wood and metal in class 40;
consultation on processing of materials, namely
wood and metal; product development; engineering;
computer consultation; research in the field of
mechanical engineering; material testing; leasing
of computer software; all in the fields of
automotive manufacture, automotive marketing,
wood and metal processing machines, fastening
techniques for wood and other nonmetallic
materials, nonmetal mountings, wood and metal
fabrication machines, plastics technology,
structural engineering, wooden construction,
furniture construction, interior design, and
interior construction in class 42.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052 (e)(1), on
the basis that, when used in connection with applicant’s
goods and services, the mark is merely descriptive of them.
Registration has also 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 used in connection with its
goods and services, so resembles the mark WOODWELD, which
is registered for “synthetic resins used in the manufacture
of pressed wood products,”2 as to be likely to cause
confusion, mistake or deception.
1 Serial No. 75/729,782, filed June 16, 1999, based on
applicant’s allegation of a bona fide intention to use the mark
in commerce.
2 Registration No. 1,227,991 issued February 22, 1983; renewed.
Ser No. 75/729,782
3
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
Turning first to a consideration of the issue of mere
descriptiveness, the Examining Attorney argues that the
term WOODWELDING merely describes a process of welding
together pieces of wood. According to the Examining
Attorney, the term “is merely descriptive of applicant’s
goods since such goods are most likely used in the wood
welding process” and is merely descriptive of applicant’s
services “to the extent that they relate to wood welding.”
(Final refusal, p. 3). In support of the refusal, the
Examining Attorney submitted printouts of pages from
applicant’s website. In addition, the Examining Attorney
submitted with his appeal brief, an excerpt from The
American Heritage Dictionary of the English Language
Dictionary wherein one of the definitions of “weld” is “to
bring into close association or union.”3
Applicant, in urging reversal of the refusal to
register, argues that WOODWELDING is an incongruous term as
used in connection with the identified goods and services
and, therefore, it is not merely descriptive of them.
3 We have considered such definition inasmuch as it is settled
that the Board may properly take judicial notice of dictionary
definitions. See University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75/729,782
4
Applicant maintains that wood cannot be welded in the usual
sense because wood burns and chars when heated. In support
of its contentions, applicant relies on the following
definitions of the word “welding” from the Academic Press
Dictionary of Science and Technology and the Dictionary of
Technical Terms for Aerospace Use, respectively:
the joining of two metal surfaces that have been
heated, melted and fused together; and
joining two or more pieces of metal by applying
heat, pressure, or both, with or without filter
material to produce a localized union through
fusion or recrystallization across the interface.
Further, applicant contends that this case is similar
to In re Shutts, 217 USPQ 363 (TTAB 1983) wherein the Board
held that the mark SNO-RAKE was not merely descriptive of a
snow removal hand tool. Applicant maintains that it coined
the term WOODWELDING and points out that the only examples
of WOODWELDING the Examining Attorney has been able to
locate are references to applicant’s technology.
A mark is considered to be merely descriptive of goods
or services, within the meaning of Section 2(e)(1), if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods or services. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18. (CCPA 1978). It
Ser No. 75/729,782
5
is not necessary that a mark describe all of the properties
or functions of the goods or services in order for it to be
considered to be merely descriptive thereof; rather, it is
sufficient if the mark describes a significant attribute or
idea about them. Moreover, whether a mark is merely
descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is
sought, the context in which it is being used on or in
connection with those goods or services and the possible
significance that the mark would have to the average
purchaser of the goods or services because of the manner of
its use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
As noted previously, the Examining Attorney made of
record copies of pages downloaded from applicant’s website.
The following are excerpts from those pages wherein
applicant describes the process of “welding wood”:
The idea of welding wood was first thought of more
than 5 years ago. Since then, our multidisciplinary
team has continuously refined the process and expanded
the knowledge about the WoodWelding® technology to
include applications on a range of materials.
WoodWelding® is an innovative technology where
wood or other porous materials can be fused
(not attached) through the use of ultrasound.
As joining material, thermoplastics are used
in the form of e.g. a nail, dowel, seal or
lacquer. The technology offers a substitute to
traditional fastening and fixation solutions
Ser No. 75/729,782
6
such as nails, screws, adhesives, etc. Although
in principle a soldering process, the
technology was branded “WoodWelding.”
The process can be applied on a range of porous
materials. The only requirements are that the
material has one main direction to the pores, an
uneven surface and can withstand a certain degree
of pressure. The WoodWelding® process has been
tested successfully on materials such as:
-solid wood
-chipboard
-plywood
Creaholic has deep skills and substantial experience
working with various types of welding technologies.
In collaboration with the Swiss School of Engineering
for the Wood Industry in Biel, the concept of welding
wood was first thought of in 1984.
In addition, applicant’s website contains the schedule
for the “World Conference on Timber Engineering” held in
July 2000 and one of the sessions scheduled for the
conference was identified as “Joint connection with welded
thermoplastic dowels and wood welding technologies.”
Considering applicant’s mark WOODWELDING as used in
the above context, we agree with the Examining Attorney
that it immediately conveys to the relevant purchasers
information concerning a significant feature of applicant’s
goods and services, namely that they are based on or
utilize wood welding. Neither imagination nor thought is
required for a purchaser to arrive at this conclusion
concerning the nature of the goods and services.
Ser No. 75/729,782
7
Moreover, in view of the definition of the word “weld”
submitted by the Examining Attorney, it is clear that
welding is not restricted to joining pieces of metal by
applying heat. Instead, welding may encompass bringing
together wood and other materials, and it appears that
applicant’s wood welding technology involves fusing wood
and other porous materials with a thermoplastic material.
Thus, contrary to applicant, we do not view WOODWELDING as
an incongruous term when used in connection with the
identified goods and services. This case is unlike In re
Shutts where the mark SNO-RAKE created an incongruity
because it would be highly unusual to request someone to
“rake snow.” Here, it would seem quite natural for
customers of the identified goods and services to use the
term “wood welding” in connection with applicant’s process
of welding wood.
Finally, it is not dispositive that applicant may be
the first and only user of the term WOODWELDING. The
absence, therefore, on this record of any third-party uses
of the term does not lead us to reach a different result.
In re National Shooting Sports Foundation, Inc., 219 USPQ
1018 (TTAB 1983).
Ser No. 75/729,782
8
This brings us to the refusal to register under
Section 2(d) of the Trademark Act. 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
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 similarities of the
goods/services and the similarities of the marks.
The Examining Attorney argues that the marks
WOODWELDING and WOODWELD are highly similar, both sharing
the term WOODWELD with applicant merely adding –ING. With
respect to the goods and services, it is the Examining
Attorney’s position that applicant’s lumber in the nature
of formed, pressed and partially pressed wood in class 19
and registrant’s synthetic resins are “clearly
complementary” because both are utilized in the manufacture
of finished wood products.” (Brief, p. 9.) Further, the
Examining Attorney argues that applicant’s identified
services and registrant’s synthetic resins are related
because applicant’s services “relate to wood products
bonded by synthetic resins.” (Brief, p. 10.)
Ser No. 75/729,782
9
Applicant does not dispute the substantial similarity
in the marks. However, applicant contends that
registrant’s mark is quite suggestive of registrant’s goods
and therefore it is not entitled to a broad scope of
protection. Further, applicant argues that synthetic
resins used in the manufacture of pressed wood products are
marketed to manufacturers of wood products such as plywood
manufacturers to glue pieces of wood together, whereas
applicant’s identified goods and services will be marketed
to parties who work with wood products and who use those
wood products to make finished wood products such as
furniture. Thus, applicant maintains that the parties’
goods and services travel in different channels of trade to
different purchasers.
It is well settled that goods and/or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods and/or services are related in
some manner or that the circumstances surrounding their
marketing are such that they would 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
producer or that there is an association between the
Ser No. 75/729,782
10
producers of the goods and/or services. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991); and In re International
and Telephone and Telegraph Corp., 197 USPQ 910 (TTAB
1978).
Also, it has been repeatedly held that in determining
the registrability of a mark, the Board is constrained to
compare the goods and/or services as identified in the
application with the goods and/or services as identified in
the registration. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and Canadian
Imperial Bank of Commerce, N. A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, we find that there is a sufficient
relationship between registrant’s synthetic resins used in
the manufacture of pressed wood products, on the one hand,
and applicant’s services of providing information on the
processing of wood (class 40) and consultation on
processing of wood (class 42), on the other hand, that
confusion is likely. In the absence of any limitations as
to channels of trade and purchasers in applicant’s
recitation of services, we must assume that applicant’s
informational and consultation services in connection with
processing would travel in all the normal channels of trade
to all the usual purchasers, including the same class of
Ser No. 75/729,782
11
purchasers to whom registrant’s synthetic resins are
marketed, namely, manufacturers of pressed wood products.
Contrary to applicant’s contention, it makes sense that
such manufacturers would seek out information and
assistance in connection with processing of wood.
Purchasers familiar with registrant’s synthetic resins sold
under the mark WOODWELD may, upon seeing applicant’s
substantially similar mark WOODWELDING on these related
services, assume that applicant’s services come from the
same source as registrant’s goods, or are somehow
associated with or sponsored by registrant.
With respect to applicant’s contention that
registrant’s WOODWELD mark is weak and therefore entitled
to only a limited scope of protection, even assuming that
registrant’s mark is weak due to an assertedly high degree
of suggestiveness, even weak marks are entitled to
protection where confusion is likely. Here,
notwithstanding any alleged weakness in registrant’s
WOODWELD mark, it is still substantially similar to
applicant’s WOODWELDING mark.
We are not persuaded, on this record, that any of
applicant’s remaining goods and services are sufficiently
related to registrant’s synthetic resins that confusion
would be likely. There is no evidence of record which
Ser No. 75/729,782
12
suggests that synthetic resins and applicant’s remaining
goods and services are the kinds of goods and services that
generally emanate from a single source under the same mark.
Also, there is no evidence to support the Examining
Attorney’s contention that such goods and services would be
marketed to manufacturers of pressed wood, the class of
purchasers of applicant’s synthetic resins. Thus,
notwithstanding the substantial similarity in the marks, we
are not convinced that applicant’s remaining goods and
services and registrant’s synthetic resins are sufficiently
related that confusion is likely.
Decision: The refusal to register under Section
2(e)(1) of the Act is affirmed as to each of the classes;
the refusal to register under Section 2(d) is affirmed as
to classes 40 and 41 and reversed as to classes 19 and 37.