Erico Int’l. Corp.v.Crave Develop-ment Inc.

Trademark Trial and Appeal Board

Jun 29, 2004

No. 91153021 (T.T.A.B. Jun. 29, 2004)

Mailed:6/29/04
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Erico International Corporation
v.
Crave Development Inc.
_____
Opposition No. 91153021
to application Serial No. 78077141
filed on August 2, 2001
_____
John W. Renner and Jonathan A. Platt of Renner, Otto,
Boisselle & Sklar for Erico International Corporation.
Beau D. Barberis of Marshall, Gerstein & Borun for Crave
Development Inc.
______
Before Quinn, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Crave Development Inc. to
register the mark CAN CADDIE (“CAN” disclaimed) for “metal
ladder attachment in the nature of a paint can carrier” (in
International Class 6) and “plastic ladder attachment in the
nature of a paint can carrier” (in International Class 20).1
1 Application Serial No. 78077141, filed August 2, 2001, based on
an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91153021
2
Erico International Corporation opposed registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if applied to applicant’s goods, would so
resemble opposer’s previously used and registered mark CADDY
(in typed form) for “fasteners for industrial purposes
particularly for use in the construction industry, namely,
channel brackets, bridle rings, conduit clips, hanger clips,
and low voltage clips”;2 and the previously used and
registered marks shown below, as to be likely to cause
confusion.
for “arc welding electrode holders, ground clamps and cable
connectors”3; and
for “fasteners for industrial purpose.”4
2 Registration No. 757,140, issued September 24, 1963; renewed.
3 Registration No. 550,853, issued November 13, 1951; renewed.
4 Registration No. 1,128,804, issued January 8, 1980; renewed.
Opposition No. 91153021
3
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The parties agree that the record consists of the
pleadings; the file of the involved application; trial
testimony, with related exhibits, taken by each party;
opposer’s pleaded registrations, an excerpt from a printed
publication, and a dictionary definition of “can” introduced
by opposer; and copies of eight third-party registrations of
marks employing “CADDY” (or, in one instance, “CADDIE”), and
an excerpt from a printed publication, made of record by
applicant. Both parties filed briefs.5 An oral hearing was
not requested.6
Opposer, which celebrated its one-hundred year
anniversary in 2003, is engaged in the manufacture and sale
of fasteners used in the building construction industry.
5 The only pleaded issues in this case are priority and
likelihood of confusion. Opposer, in its brief, makes
allegations under the heading “Derogation,” specifically
asserting that its mark is “damaged and lessened” and “tarnished”
by the registration sought by applicant. Applicant, in its
brief, interpreted these contentions as a new claim of
disparagement and/or dilution, and objected thereto as untimely.
Opposer’s reply brief is silent on this point. Suffice it to
say, to the extent that opposer attempted to interject a new
claim in its brief (and we are not entirely sure that it did),
the claim obviously was neither pleaded nor tried, and is
untimely raised for the first time in the brief. In view
thereof, any disparagement and/or dilution claims have been given
no consideration.
6 On page one of opposer’s brief, under the heading “Certificate
of Interest,” opposer lists the names of the attorneys “that
appeared for the Opposer who may be expected to appear at Oral
Hearing.” However, opposer never filed a request for oral
hearing pursuant to Trademark Rule 2.129(a).
Opposition No. 91153021
4
According to the testimony of Raymond Laughlin, who designs
and develops new products for opposer, opposer began use of
the mark CADDY in 1962 to identify its product line of
fasteners. Mr. Laughlin testified that the mark CADDY is
used in connection with thousands of fasteners in opposer’s
product line, and that the goods are sold through
distributors catering to the building trades, and through
do-it-yourself retail stores such as Home Depot and Lowe’s.
Annual sales under the mark in this country approach $100
million. Opposer’s fasteners are promoted in trade
magazines for the construction industry, and in opposer’s
product catalogs, information sheets, and newsletters. In
addition, annual advertising expenditures are, according to
Mr. Laughlin, in the “millions.”
Applicant provides, according to its founder and
president, Theodore Salani, engineering design services to a
variety of small manufacturers, machine shops and the like.
Applicant’s product is an attachment for the easy handling
of a one-gallon paint can (a wire handle is required) and
paint brush, primarily while the user is standing on a
ladder. The product can be used to hang not only on
ladders, but on fences and railings as well during a
painting job. Applicant intends to sell its product in the
do-it-yourself home hardware market and in the paint
contractor market. According to Mr. Salani, applicant’s
Opposition No. 91153021
5
paint can carrier will be sold in paint stores, as well as
in Home Depot, Wal-Mart and Target.
Before turning to the merits of the likelihood of
confusion claim, we first direct our attention to
applicant’s evidentiary objections, and an evidentiary point
concerning Mr. Salani’s testimony.
The first objection relates to Exhibits A, B and F
attached to the notice of opposition. With one exception
(pertaining to a status and title copy of a plaintiff’s
registration), exhibits attached to a pleading are not
evidence on behalf of the party to whose pleading they are
attached unless they are thereafter, during the time for
taking testimony, properly identified and introduced in
evidence as exhibits. Trademark Rule 2.122; TBMP §317 (2d
ed. rev. 1, March 2004).
In view of the above, Exhibits A, B and F attached to
the notice of opposition were not properly made of record
later at trial and, thus, they have not been considered.
The second objection relates to opposer’s mention, for
the first time in its brief, of its ownership of a fourth
registration. Inasmuch as this registration (Reg. No.
2,493,761) was neither pleaded nor made of record, we have
not considered this registration in reaching our decision.
Applicant also has objected to several trial exhibits
and testimony relating thereto (both in Mr. Laughlin’s
Opposition No. 91153021
6
deposition and on cross-examination of Mr. Salani in his
deposition). Exhibits 1 and 14 to the Laughlin testimony
are opposer’s catalogs for distribution in Europe. Use of
opposer’s mark overseas has no relevance to this proceeding.
Accordingly, these European catalogs have not been
considered.
Applicant objected to several other exhibits and
related testimony on the grounds of relevance and lack of
proper foundation or authentication. We have considered the
objections, but they are overruled. We have taken this
testimony and these exhibits into account in reaching our
decision on likelihood of confusion, giving the testimony
and exhibits whatever appropriate probative value the
testimony and exhibits merit.
With respect to the Salani testimony, a question was
posed on cross examination regarding a trademark search
conducted at the time the involved application was filed.
When asked whether any of opposer’s marks were listed in the
search report, applicant’s counsel objected, and instructed
Mr. Salani not to answer the question. According to
counsel’s objection made at the deposition, “[t]his is
outside the scope, and I am not going to allow my witness to
testify as to what was found at the search or anything
related to the search results.” (Dep., pp. 41-42).
Opposition No. 91153021
7
While the comments or opinions of attorneys relating to
search reports are privileged, the results of the search
report are appropriate subjects for questioning. TBMP §414
(2d ed. rev. 1, March 2004). We do not find that this
specific cross examination exceeded the scope of direct and,
therefore, the objection was not well taken. In view
thereof, we presume that the answer would have been
“unfavorable” to applicant. Levi Strauss & Co. v. R.
Josephs Sportswear Inc., 28 USPQ2d 1464, 1467 (TTAB 1993);
TBMP §707.03(d) (2d ed. rev. 1, March 2004). Thus, we
presume that the search conducted by applicant revealed
opposer’s CADDY marks.
Turning now to the merits of this proceeding, priority
is not an issue inasmuch as opposer has relied on its
ownership of valid registrations for the mark CADDY. King
Candy Co. v. Eunice King’s Kitchen, 946 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also: In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
Opposition No. 91153021
8
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also: In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We first turn our attention to a comparison of the
goods. It is not necessary that the goods be identical or
even competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods originate from or are in some way associated with
the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Opposer’s fasteners are used in connection with the
installation of electrical, mechanical, communication and
HVAC components in the building construction industry.
Opposer’s goods comprise a wide selection of clips, clamps,
hangers and straps to be used by installers, and these goods
adapt to beam, bar joist, decking, concrete and other
structural shapes. Opposer, in its brief (7-8), describes
the environment in which its fasteners are used:
Buildings, whether constructed of steel
or reinforced concrete, generally have
Opposition No. 91153021
9
concrete slab floors. Studs for
interior partitions usually run from the
slab floor to the ceiling slab, but the
drywall for partitions may stop a few
feet short of the ceiling or roof
leaving an open space. A suspended
ceiling is usually installed below the
ceiling slab leaving a substantial open
space to run utilities such as electric
power, low voltage cabling such as
computer and communication cabling,
pipes, both water and sewer, and HVAC
(heating, venting, air conditioning)
systems and ducts. The latter (pipes
and HVAC systems) are handled by the
mechanical trades, while the former are
handled by the electrical trades. Both
trades may work concurrently side-by-
side, usually on structures such as step
ladders, platforms and scaffolds, or
even stilts on the construction room
floor providing access to above ground
level areas such as the overhead open
space before the suspended ceiling is
finished or completely installed.
Mr. Laughlin testified that most of opposer’s fasteners are
in the form of hangers, clamps and supports which are
designed to be installed above a suspended ceiling, thereby
requiring an elevated structure to lift the installer. Mr.
Laughlin estimated that 60% of opposer’s sales volume would
be installed with the assistance of a ladder, scaffold or
some other type of elevating platform. In view of this, Mr.
Laughlin indicated that opposer has designed fasteners
specifically for installation when the installer is standing
on a ladder or scaffold.
Applicant’s product, on the other hand, is a simple
painting tool accessory, that is, an attachment used
Opposition No. 91153021
10
primarily in connection with painting, but it also can be
used to hold tools. The attachment can only be used with a
one-gallon paint can which has a wire handle. The
attachment fits on a ladder, fence or railing. Applicant’s
advertisement contains the following product description:
The Can Caddie carrier is a
revolutionary new product designed to
make painting easier. The Can Caddie
carrier manages the can and brushes and
lets you hang them securely where you
need them...ladders, fences, railings or
anywhere. Simply snap in the can, hook
on the brushes and you’re ready to
paint. From the “do-it-yourselfer” to
professional painter, the Can Caddie
carrier provides a safe, easy means of
simplifying all your painting jobs.
Made of durable plastic, the Can Caddie
carrier is designed to fit any standard
gallon size paint can with wire handle
and includes paint brush hooks. The Can
Caddie carrier isn’t just for
painting...use it with an empty can and
it also makes a great tool holder.
In the present case, the goods are specifically
different and are entirely unrelated in function or purpose.
The goods involved herein have very specific uses, neither
of which are related nor competitive. Opposer contends that
the parties’ goods are both “hangers” sold in the
construction industry. Although we acknowledge that, in the
very broadest sense, both goods might be looked upon as
“hangers,” this similarity is purely semantic. Simply put,
the goods are distinctly different, and this factor weighs
heavily in applicant’s favor.
Opposition No. 91153021
11
Opposer also attempts to draw a nexus between the
products by essentially asserting that opposer’s fasteners
and applicant’s paint can carrier attachment are both used
in connection with ladders. In so doing, opposer states the
obvious, that is, ladders are used throughout the building
construction industry by contractors. Relying on Mr.
Laughlin’s testimony, opposer contends that “ladders are so
important to [opposer’s] CADDY product line that a number of
parts have been designed specifically for use on ladders,
and to overcome drawbacks of prior parts which become so
irritating and apparent when the installer is on a ladder.”
According to opposer, these parts were made in response to
the “dropsies” since it is an economic reality that when an
installer drops a fastener, he/she is wasting time. (Brief,
p. 9).
Opposer’s contention that the parties’ goods are
related inasmuch as both are used with ladders is strained.
Again, the goods are wholly unrelated and are non-
competitive. The facts that both types of goods may be used
in the building construction trade and in conjunction with
ladders are not sufficient to show a commercial relationship
between opposer’s fasteners and applicant’s paint can
carrier. Further, contrary to opposer’s contention, there
is no showing that a product like that offered by applicant
Opposition No. 91153021
12
is a natural area of expansion for opposer’s goods or vice
versa.
As to trade channels, the goods, as identified, are
presumed to travel in all of the normal channels for such
goods. Moreover, the record establishes that the parties’
goods will be available for sale in some of the same retail
stores. Opposer’s testimony shows that its goods are sold
through distributors to the building construction trade, but
that the fasteners are also sold at retail at stores such as
Home Depot and Lowe’s. Applicant’s goods, while planned to
be sold at paint stores catering primarily to the
professional trade, are also intended to be sold at retail
stores such as Home Depot. Neither of the identifications
of goods bears any restriction on trade channels. Thus, at
least insofar as the do-it-yourself market is concerned, the
goods will move in the same channels of trade. The
testimony of Messrs. Laughlin and Salani also shows,
however, that the goods would be sold in different parts of
these retail stores. Opposer’s goods are sold in the
electrical department and in the department containing wall
products for metal stud and drywall, whereas applicant’s
product is intended to be sold in the paint department
because it will be marketed for use with paint cans.
As to the classes of purchasers and conditions of sale,
to the extent that the goods are sold to the professional
Opposition No. 91153021
13
building construction trade, these purchasers may be
expected to exercise a greater degree of care in making
their purchases. Moreover, the classes of professional
users will be different, installers versus painters. The
goods would also be purchased by do-it-yourselfers at retail
outlets who would be expected to exercise nothing more than
ordinary care. Nonetheless, in all instances, the goods
would be bought for entirely different purposes.
We next turn to consider the marks. With respect to
opposer’s CADDY marks and applicant’s mark CAN CADDIE,7 the
marks bear similarities in appearance and sound in that both
include CADDY or the phonetic equivalent CADDIE. In
addition, the marks CADDY and CAN CADDIE, as applied to the
respective goods, are suggestive in that both convey the
idea that they hold something (in applicant’s mark,
specifically a paint can).8 Notwithstanding these
similarities, the marks are specifically different. These
differences, coupled with the significant distinctions
7 There clearly is no likelihood of confusion between applicant’s
mark and opposer’s design mark which it characterizes as its
“CADDYMAN” mark. The design mark does not include “CADDYMAN” or
any other word for that matter; the mark is comprised entirely of
a caricature of a man. This design mark of opposer’s is entirely
different in all respects from applicant’s mark.
8 We are able to take judicial notice of dictionary definitions.
The term “caddy” is defined as “any container or device for
storing or holding frequently used things (as clothes or tools)
when they are not in use.” The term “caddie” (or “caddy”) means
“one that assists a golf player esp. by carrying his clubs around
the course during play.” Webster’s Third New International
Dictionary (unabridged ed. 1993).
Opposition No. 91153021
14
between the goods as discussed above, have the cumulative
effect of ensuring that there is no likelihood of confusion
as to source.9
Another duPont factor to consider herein is the fame of
opposer’s mark. The fame of a prior mark, when present,
plays a dominant role in the likelihood of confusion
analysis. Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000); and Kenner Parker Toys
Inc. v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992). Mr. Laughlin testified that
opposer has used the mark CADDY since 1962, that opposer’s
annual domestic sales under its CADDY marks are just under
$100 million, and that annual advertising expenditures are
in the “millions.”
There is no question but that opposer’s annual sales
figures are impressive. As to advertising efforts, the term
“millions,” although certainly indefinite, suggests that
opposer has been active in promoting its CADDY marks. Based
on this evidence, we find that opposer’s mark CADDY is a
strong mark. This evidence standing alone, however, is
insufficient to afford opposer’s mark CADDY the exulted
legal status of a “famous mark” as contemplated by case law.
9 In considering the marks, we must compare opposer’s marks with
the one applicant seeks to register. Thus, opposer’s arguments
premised on the possibility that applicant’s mark will be
shortened to CADDIE, or that applicant’s counsel mistakenly
referred to applicant’s mark as CAN CADDY, are irrelevant.
Opposition No. 91153021
15
There is no evidence indicating the length of time that
opposer has attained its impressive sales, nor any other
evidence from which we can conclude that the mark CADDY is
famous. Cf.: Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002).
We hasten to add, however, that even if we found
opposer’s mark CADDY to be famous, that fame is confined to
fasteners used in the building construction trade. While
opposer’s mark is strong for fasteners, we do not extend
that view to a distinctly different product such as
applicant’s paint can carrier. That is to say, given the
disparity between opposer’s fasteners and applicant’s ladder
attachment in the nature of a paint can carrier, the fame of
opposer’s mark CADDY would not extend the ambit of
protection afforded by the mark CADDY to cover the goods of
applicant under the mark CAN CADDIE. G.H. Mumm & Cie v.
Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1639
(Fed. Cir. 1990).
In reaching our decision, we have considered the eight
third-party registrations submitted by applicant in its
attempt to diminish the scope of protection of opposer’s
marks. Third-party registrations, without evidence of
actual use, are of very limited value in the determination
of the question of likelihood of confusion. Nevertheless,
third-party registrations are entitled to some weight when
Opposition No. 91153021
16
they are offered to show the sense in which a term, prefix,
suffix or other feature of a mark is used in ordinary
parlance. They may show that a particular term has
descriptive or suggestive significance as applied to certain
goods. Stated somewhat differently, third-party
registrations are entitled to weight to show the meaning of
a mark in the same way that dictionaries are used.
Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ
693 (CCPA 1976); General Mill Inc. v. Health Valley Foods,
24 USPQ2d 1270 (TTAB 1992); and United Foods Inc. v. J.R.
Simplot Co., 4 USPQ2d 1172 (TTAB 1987). Thus, we have
considered this evidence in conjunction with the dictionary
evidence mentioned above.
Applicant’s knowledge of opposer’s previously used
CADDY marks (presumed from Mr. Salani’s refusal to answer
the question at his deposition) is of no moment. Mere
knowledge alone does not establish bad faith adoption.
Moreover, given our finding as to the disparity between the
goods resulting in no likelihood of confusion, there can be
no bad faith in applicant’s later adoption.
In sum, we conclude that, based on the preponderance of
the evidence, confusion is not likely to occur among
prospective purchasers. Just because the parties’ goods may
be subsumed under the very broad category of building
construction products does not mean that such diverse goods
Opposition No. 91153021
17
would be likely to be regarded by consumers, both
professional and do-it-yourselfers, as related, in the sense
of coming from or being sponsored by or affiliated with the
same source, when marketed respectively under the marks at
issue herein. As our principal reviewing court has
cautioned, “[w]e are not concerned with mere theoretical
possibilities of confusion, deception, or mistake or with de
minimis situations but with the practicalities of the
commercial world, with which the trademark laws deal.”
Electronic Design & Sales v. Electronic Data Systems, 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992). For the
reasons discussed above, we find that the evidence of record
does not support a finding that there is a likelihood, as
opposed to merely a theoretical possibility, of confusion.
Decision: The opposition is dismissed.