Emhart Industries, Inc.v.Unimation, Inc.

Trademark Trial and Appeal Board

Dec 22, 2000

No. 91103683 (T.T.A.B. Dec. 22, 2000)

12/22/00
Paper No. 27
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Emhart Industries, Inc.
v.
Unimation, Inc.
_____
Opposition No. 103,683
to application Serial No. 74/641,277
filed on March 2, 1995
_____
Richard L. Kirkpatrick of Pillsbury Madison & Sutro LLP for
Emhart Industries, Inc.
James J. Hamill of Fitch, Even, Tabin & Flannery for Unimation,
Inc.
______
Before Cissel, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Unimation, Inc. to register
the mark ULTRASERT for a "plastic weldable fastener."1
Registration has been opposed by Emhart Industries, Inc.
under Section 2(d) of the Trademark Act. As its ground for
opposition, opposer asserts priority and likelihood of confusion
under Section 2(d) of the Trademark Act, contending that
1 Application Serial No. 74/641,277 filed March 2, 1995 alleging a bona
fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 103,683
2
applicant's mark when applied to applicant's goods so resembles
opposer's previously used mark ULTRASERT for "metal inserts or
fasteners used for affixing plastic components to one another"
as to be likely to cause confusion. Opposer has alleged that no
use was made of applicant's mark "prior to March 12, 1995" and
that opposer used its mark prior to "applicant's first actual or
constructive use of" the mark.
Applicant, in its answer, denies the salient allegations in
the notice of opposition.
The record includes the pleadings; the file of the involved
application; opposer's notice of reliance on evidence including
applicant's discovery responses; and the testimony with exhibits
of Gregory A. Wind, opposer's Director of Marketing and
Development. Applicant did not take testimony or offer any other
evidence. Only opposer filed a brief. An oral hearing was not
requested.
Opposer claims, and the evidence shows, that its mark
ULTRASERT is used on metallic threaded insert fasteners.
Opposer's product catalogs, as identified and described by Mr.
Wind, combined with evidence of product sales under the ULTRASERT
mark, demonstrates that opposer and its predecessors have
continuously used ULTRASERT to identify these products since at
least as early as 1982. In any event, opposer has demonstrated
use of its mark well prior to the March 2, 1995 filing date of
applicant's application, which, in view of the absence of other
Opposition No. 103,683
3
evidence, is the earliest date on which applicant is entitled to
rely.
We turn then to a consideration of likelihood of confusion.
Our 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, including
the similarity of the marks and the similarity of the goods. In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). The factors deemed pertinent in this proceeding are
discussed below.
The parties' ULTRASERT marks are identical. Where the marks
are identical, it is only necessary that there be a viable
relationship between the goods or services in order to support a
holding of likelihood of confusion. In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
However, in this case, the evidence shows that the respective
goods are directly competitive.
Opposer's goods are metallic threaded insert fasteners, that
is, threaded seats for screws. These insert fasteners are
designed to be installed into weak materials, primarily plastic,
binding to the plastic through ultrasonic heating, and providing
a strong, reliable thread in such materials, to enable the
assembly and disassembly of plastic products and equipment. (Wind
test. p.11). As described by Mr. Wind, these products would be
used, for example, in the automotive field where they may be set
Opposition No. 103,683
4
in side view mirrors, and in the computer industry to hold in
circuitry and other hardware components in laptops and PC's.
They could also be used in medical, garden and lawn equipment,
electronics, telecommunications, including phone equipment, or in
any application, whether in consumer or commercial products, that
has a requirement for a threaded insert in plastic.
Mr. Wind testified that applicant's fasteners are
essentially the same as those of opposer, differing only in their
composition. Although opposer's fasteners are metallic brass and
applicant's are made of plastic,2 according to Mr. Wind, the
respective products are functionally equivalent. As can be seen
from applicant's product catalog, and as explained by Mr. Wind,
applicant's products, like opposer's, are designed to be used
with plastic components and assembly to provide a strong thread
in plastic materials, molded into plastic with the same
(ultrasonic) technology, and used for the same applications, and
perhaps even in the very same products.
In view of the directly competitive nature of the parties'
goods, the channels of trade and classes of purchasers for the
2 Mr. Wind indicates that the advantages of plastic over metal are its
slightly lower cost and its "recyclability" within an application.
(Wind test. p.71). In fact, Mr. Wind states that opposer has explored
the possibility of expanding its brass fastener line to include plastic
alternatives.
Opposition No. 103,683
5
respective goods are deemed to be the same.3 Furthermore,
applicant's goods, as identified, are not restricted as to
channels of trade or classes of purchasers. See Canadian
Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987).
Opposer has established that applicant's mark ULTRASERT for
plastic weldable fasteners is likely to cause confusion with
opposer's identical mark for competitive goods.4
Decision: The opposition is sustained and registration to
applicant is refused.
3 Opposer markets its products to design engineers who specify it for a
particular application. The products are sold primarily to "the
injection molding facilities who have requests from original equipment
manufacturers." (Wind test. p.39). We note that in response to
opposer's interrogatories, applicant describes its classes of customers
in part as "fabricators of products...and assemblers of products with
specialize[d] fastening needs."
4 We note opposer's apparent request that the Board infer applicant's
"intent to confuse" and "guilty heart" in adopting the mark based on
applicant's "failure to defend its case with any testimony or other
evidence" and its prior knowledge of opposer's mark. The evidence does
not support such an inference. Opposer, as plaintiff in this
proceeding, bears the burden of going forward with sufficient proof of
its material allegations. Opposer has not met its burden respect to
this allegation. Mere knowledge of the existence of a prior user's
mark does not, by itself, constitute bad faith. See Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed.
Cir. 1989). Establishing bad faith requires a showing that applicant
intentionally sought to trade on opposer's good will or reputation.
See Big Blue Products Inc. v. International Business Machines Corp., 19
USPQ2d 1072 (TTAB 1991).