East Penn Mfg. Co., Inc.

Trademark Trial and Appeal Board

Jul 3, 2001

No. 75431354 (T.T.A.B. Jul. 3, 2001)

Hearing: 7/3/01 Paper No. 10
May 10, 2001 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In
Zachary T. W
Manufacturin
Julie A. Wat
104 (Sidney
Before Hairs
Trademark Ju
Opinion by C
On Febr
Inc. filed a
Register the
for goods id
in Internati
terminal cle
brushes whic
hand-operate
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.re East Penn Manufacturing Company, Inc.
________
Serial No. 75/431,354
_______
obensmith, III, Esq. for East Penn
g Company, Inc.
son, Trademark Examining Attorney, Law Office
I. Moskowitz, Managing Attorney).
_______
ton, Chapman and Rogers, Administrative
dges.
hapman, Administrative Trademark Judge:
uary 9, 1998, East Penn Manufacturing Company,
n application to register on the Principal
mark shown below
entified, as amended, as “spark plug wire sets”
onal Class 7; “hand-operated battery post and
aner tools in the nature of rotatable metal
h are engaged with the posts and terminals and
d battery lifters” in International Class 8,
Ser. No. 75/431354
2
and “storage batteries, electric battery cables, emergency
jumper cables, antifreeze testers which measure the
specific gravity of the vehicles antifreeze mixture,
battery terminals and battery holddown straps for vehicles”
in International Class 9. Applicant claimed dates of first
use and first use in commerce of April 15, 1976 for goods
in each class.
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 used on its identified
goods, so resembles the registered mark LYNX for
“automobiles and structural parts thereof” in International
Class 12,1 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, and
an oral hearing was held before this Board on May 10, 2001.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
1 Registration No. 1,163,630, issued August 4, 1981 to Ford Motor
Company, Section 8 affidavit accepted, Section 15 affidavit
acknowledged. The claimed date of first use is June 1965.
Ser. No. 75/431354
3
The involved marks are virtually identical. This fact
“weighs heavily against applicant.” In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290
Fed. Cir. 1984). Indeed, the fact that an applicant has
selected the identical mark of a registrant weighs so
heavily against the applicant that applicant’s use of the
mark on “goods...[which] are not competitive or
intrinsically related [to registrant’s goods]...can [still]
lead to the assumption that there is a common source.” In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993). “The greater the similarity in the marks, the
lesser the similarity required in the goods or services of
the parties to support a finding of likelihood of
confusion.” 3 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, §23:20.1 (4th ed. 2000).
We turn to a consideration of the cited registrant’s
goods and applicant’s goods. Applicant’s position is that
its goods (e.g., storage batteries, battery cables, jumper
cables and hand-operated battery post and terminal cleaner
tools) and the cited registrant’s “automobiles and
structural parts thereof” do not overlap because
registrant’s automobile parts are “structural” parts of the
automobile, whereas applicant’s goods are “accessories” for
Ser. No. 75/431354
4
the automobile2; that the respective goods travel in
different channels of trade (i.e., registrant’s goods are
sold “by franchised dealers” and applicant’s goods are sold
“by other retailers” - brief, p. 3); and that registrant’s
goods are expensive and are purchased only after careful
comparison and study by the consumer.
The Examining Attorney argues that the parties’ goods
are closely related and travel in the same channels of
trade to the same purchasers. In support of her position
as to the relatedness of the respective goods, the
Examining Attorney submitted a few third-party
registrations3 to demonstrate the close relationship between
“automobiles and structural parts thereof” and products
such as batteries, spark plugs, and the like, by showing
that a single entity has adopted a single mark for such
goods.
While third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
2 We note that applicant presented no evidence of any automobile
industry standard defining “structural parts” vis-a-vis
“accessories”; and we take judicial notice of the relevant
definition of “structural” from The American Heritage Dictionary
which reads as follows: “2. Used in or necessary to
construction.” Items such as tires, batteries and spark plugs
are certainly used in and are necessary to the construction of an
automobile as discussed later in this decision.
3 We considered only those third-party registrations which issued
based on a claim of use.
Ser. No. 75/431354
5
public is familiar with them, nonetheless, third-party
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Moreover, it is well settled that goods need not 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 producer or
that there is an association between the producers of the
goods or services. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Also, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Ser. No. 75/431354
6
Board is constrained to compare the goods as identified in
the application with the goods as identified in the
registration. See Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); and Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
In this case, some of applicant’s goods, such as spark
plug wire sets, storage batteries, electric battery cables
and battery terminals and registrant’s automobiles and
structural parts thereof are clearly complementary, closely
related products. The vehicle parts sold by applicant are
obviously necessary for the vehicle to operate. See In re
Jeep Corp., 222 USPQ 333, 334 (TTAB 1984), and cases cited
therein; and Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 343 (TTAB 1980). Likewise,
applicant’s hand-operated tools used in working on vehicles
are also products which are commercially closely related to
automobiles and parts therefor. See Permatex Company, Inc.
v. California Tube Products, Inc., 175 USPQ 764 (TTAB
1972).
Applicant argues that registrant’s goods are sold
through franchised dealers while its goods are sold by
“other retailers.” However, applicant provided no evidence
Ser. No. 75/431354
7
regarding this argument. Moreover, applicant included no
restriction to trade channels or purchasers in its
identification of goods. Thus, the Board must consider
that the parties’ respective goods could be offered and
sold to the same classes of purchasers through all normal
channels of trade. See Canadian Imperial Bank v. Wells
Fargo Bank, supra; In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
With regard to applicant’s argument that registrant’s
goods are expensive, we agree only to the extent that
automobiles are expensive products. There is no evidence
of record that the structural parts/accessories involved
herein are expensive.
Applicant states that “no instances of confusion have
come to Applicant’s attention during its over twenty three
year use of the ‘LYNX’ mark.” (Brief, p. 5). However,
there is no evidence of the parties’ respective sales of
the involved goods sold under the mark LYNX, and there is
no information from registrant on the issue of actual
confusion. This factor is not persuasive in the overall
balancing of the du Pont factors in this case.
Applicant argues that the USPTO already determined
that there was no likelihood of confusion by registering
the cited mark in 1981 over applicant’s then-valid 1977
Ser. No. 75/431354
8
registration4 for the mark LYNX for similar goods as those
in applicant’s current application. However, the issue
before us now is whether applicant’s mark LYNX for its
goods (various vehicle parts and tools) is likely to cause
confusion with the cited mark LYNX for automobiles and
structural parts thereof, not whether the Examining
Attorney who examined the application which issued as the
cited registration acted appropriately, or whether the
Examining Attorney did or did not have any doubt on the
issue of likelihood of confusion.
Neither the Board, nor any Court is bound by prior
decisions of Trademark Examining Attorneys, and each case
must be decided on its own merits, on the basis of the
record therein. See In re Wilson, 57 USPQ2d 1863 (TTAB
2001). See also, In re Nett Designs Inc., __ F.3d __, 57
USPQ2d 1564 (Fed. Cir. 2001). We can only speculate as to
why the cited registration issued over applicant’s now-
cancelled registration.
Applicant also argues that the USPTO “is applying a
different standard for approval of new applications
compared to renewal of existing registrations” (brief, p.
4 Registration No. 1,068,438, issued June 28, 1977, Section 8
accepted, Section 15 acknowledged. This registration was
cancelled in 1998 for failure to file a Section 9 renewal.
Ser. No. 75/431354
9
4), specifically asserting that if applicant had timely
filed a Section 9 renewal, its previous registration would
have been renewed, and the Examining Attorney improperly
ignored this fact. We disagree, and find that it was
proper for the Examining Attorney not to have given any
weight to this argument. Post Registration Branch
paralegals conduct an administrative review of renewals for
compliance with the requirements of Section 9 of the
Trademark Act. They do not consider the issue of
likelihood of confusion. However, the review by Examining
Attorneys of newly-filed applications obviously includes,
inter alia, examination of the issue of likelihood of
confusion under Section 2(d) of the Trademark Act.
Finally, applicant requests (brief, p. 7) that the
Board take judicial notice of the fact that the cited
registrant has “abandoned the ‘LYNX’ trademark Reg. No.
1,163,630.” Applicant’s request is denied because that is
not a matter appropriate for judicial notice. See Fed. R.
Evid. 201, and TBMP §712.01. Applicant could have filed a
petition to cancel the cited registration pursuant to
Section 14 of the Trademark Act.
Based on the virtually identical marks, the close
relationship of the parties’ respective goods, and the
identical trade channels and purchasers, we find that there
Ser. No. 75/431354
10
is a likelihood that the purchasing public would be
confused as to the source of the goods when applicant uses
LYNX as a mark for its identified goods.
Decision: The refusal to register under Section 2(d)
is affirmed.