Eveready Battery Co., Inc.

Trademark Trial and Appeal Board

Jun 19, 2001

No. 75654413 (T.T.A.B. Jun. 19, 2001)

6/19/01
Paper No. 16
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Eveready Battery Company, Inc.
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Serial No. 75/654,413
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Thomas A. Polcyn of Howell & Haferkamp, L.C. for Eveready
Battery Company, Inc.
Kelly F. Boulton, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Simms, Cissel and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 5, 1999, Eveready Battery Company, Inc.
(applicant) filed an intent-to-use application to register
the mark ENERGIZER ACCU RECHARGEABLE (typed drawing) for
goods subsequently identified as “batteries and battery
chargers, not for use with solar energy cells” in
International Class 9.1 Applicant has disclaimed the word
1 Serial No. 75/654,413.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/654,413
2
RECHARGEABLE and claimed ownership of numerous
registrations for marks containing the word ENERGIZER.
The Examining Attorney2 ultimately refused to register
the mark under Section 2(d) of the Trademark Act because
the Examining Attorney believed that registration of the
mark for the identified goods would likely cause confusion,
or cause mistake or deception because of the prior
registration of the mark ACCU-CHARGER for “battery chargers
and electrical power supplies”3 and the mark ACCU-CHARGE
CONTROL for “control mechanisms for battery chargers and
electrical power sources.”4 The same party owns both cited
registrations.5
After the Examining Attorney made the refusal final,
this appeal followed. Both applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
argument.
The Examining Attorney’s position is that the marks
share the same common term ACCU and a variation of the term
CHARGE, and the addition of the term ENERGIZER does not
2 The current Examining Attorney was not the original Examining
Attorney for this application.
3 Registration No. 1,228,318, issued February 22, 1983; Section 8
and 15 affidavits accepted or acknowledged.
4 Registration No. 1,673,329, issued January 28, 1992; Section 8
and 15 affidavits accepted or acknowledged. The registrant
disclaimed the word “control.”
5 Prestolite Electric Inc. See Reel and Frame Nos. 2158/0835 and
1459/0750.
Ser. No. 75/654,413
3
eliminate the likelihood of confusion. The Examining
Attorney also points out that the goods are, at least in
part, identical because both the applicant’s goods and the
goods in Registration No. 1,228,318 are for battery
chargers. The goods in Registration No. 1,673,329 include
control mechanisms for battery chargers. The Examining
Attorney concludes that the mark, when used on the
identified goods, is confusingly similar to the marks ACCU-
CHARGER and ACCU-CHARGE CONTROL for battery chargers and
electrical power supplies and control mechanisms for
battery chargers and electrical power sources.
In response to applicant’s argument that the
registered mark is not entitled to a broad scope of
protection, the Examining Attorney submits that, even if
this were the case, a registered mark is entitled to
protection when the public may mistakenly attribute the
goods to a common source.
Applicant argues that there is no likelihood of
confusion. It makes the following points. ACCU is weak
due to its widespread use in the industry. There are
visual and phonetic differences between its mark and the
registered marks. There have been no instances of actual
confusion. Specifically, applicant provided printouts of
several registrations that contained the term ACCU or ACU,
Ser. No. 75/654,413
4
and it relied heavily on a prior registration of the mark
ACCUCHARGE for “rechargeable battery power handle for
diagnostic medical instruments”6 to support its argument
that the registered marks were not entitled to a broad
scope of protection and that the Examining Attorney’s
refusal should be reversed.
We have considered the arguments and the evidence
presented by the applicant and the Examining Attorney, and
we agree with the position of the Examining Attorney.
Therefore, we affirm the refusal to register the mark under
Section 2(d) of the Trademark Act.
Determining whether there is a likelihood of confusion
requires consideration of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973. In considering the evidence of
record on these factors, we must 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).
6 Registration No. 813,531. While applicant and the Examining
Attorney discuss this registration, no copy of the registration
appears in the file.
Ser. No. 75/654,413
5
First, the goods in this case involve goods that are
identical to the extent that applicant’s battery chargers
not for use with solar energy cells would overlap with
registrant’s (Registration No. 1,228,318) battery chargers.
In addition, the goods in Registration No. 1,673,329
include parts for battery chargers, i.e., control
mechanisms for battery chargers. Thus, the goods are
either identical (battery chargers) or are closely related
(control mechanisms for battery chargers). Because there
are no limitations on channels of trade, we must assume
that the goods of the registrant and applicant would move
through the same channels of trade to the same customers.
Kangol Ltd. v. KangaROOS U.S.A. Inc., 23 USPQ2d 1945, 1946
(Fed. Cir. 1992); CBS Inc. v. Morrow, 218 USPQ 198, 199-200
(Fed. Cir. 1983).
The next question is whether the marks ENERGIZER ACCU
RECHARGEABLEABLE, ACCU-CHARGER, and ACCU-CHARGE CONTROL are
similar in sound, appearance, meaning, or commercial
impression. The cited registrations are for the terms
ACCU-CHARGER and ACCU-CHARGE CONTROL, both in typed form.
Applicant’s mark is ENERGIZER ACCU-RECHARGER. The marks
contain the same term ACCU, which applicant claims to be in
widespread usage in the industry in connection with
batteries and battery products. While it is reasonably
Ser. No. 75/654,413
6
clear that the term ACCU is not a unique or arbitrary term
in connection with batteries and battery products,
applicant’s evidence falls short of convincing us that it
is a weak term that deserves only very narrow protection.
Applicant has submitted numerous Internet printouts. See
Applicant’s Request for Reconsideration, Ex. B. However,
the bulk of these printouts concern foreign companies,
primarily German, Dutch, Swiss, French, and United Kingdom
companies. Many pages and entries are not even in English.
See, e.g., the seven pages apparently in Dutch from the
www.accuhandel-utrecht.nl website with the ending “.nl”
(Netherlands) and the two pages apparently in German from
the www.accuzentrale.de and www.accu-profi.de websites with
the ending “.de” (Federal Republic of Germany). The
printout from the website for Penta-Accu is for a United
Kingdom site that lists: “Price information Austria
Belgium Switzerland Germany Denmark France UK Netherlands
Sweden.” No listing for prices in the United States is
given. Thus, this evidence is not evidence of the strength
or weakness of the mark in the United States, which is the
country we are concerned with. Accord In re Societe
Generale des Minerales de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450, 1452 (Fed. Cir. 1987) (Board “properly ignored
an article cited by the Examining Attorney from the
Ser. No. 75/654,413
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Manchester Guardian Weekly saying, ‘this British
publication is not evidence of the perception of the term
(Vittel) by people in the United States’”).
While applicant also cited third-party registrations,
these marks (ACCU-CHIP, ACCUCELL BY MULLER-GERMANY, ACCU-
TEMP, ACCUFLOUR, ACUPORE, and ACUMETRICS) provide little
support for its argument that applicant’s mark is
registrable in spite of the two cited registrations. These
third-party registrations show that the term ACCU is not
arbitrary or unique when it is applied to battery and
battery chargers, but they do not demonstrate that an
applicant can simply add the word ENERIGIZER to a highly
similar variation of the registered mark ACCU-CHARGER and
ACCU-CHARGE CONTROL and avoid a likelihood of confusion.
Courts have long recognized that suggestive marks are often
the best trademarks. “Every good trade-mark is suggestive;
once seen or heard its association with the product is
readily fixed in the mind. If there were no association of
ideas between the two, it would require an independent
effort of memory to recall the connection.” United Lace &
Braid Mfg. Co, v. Barthels Mfg. Co., 221 F. 456, 461 (D.N.Y
1915). This evidence simply reinforces the suggestiveness
of the term.
Ser. No. 75/654,413
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Even if applicant had shown that the mark ACCU were in
widespread use,7 this would not mean that the Examining
Attorney’s refusal should be reversed. It certainly is
common for registrants to use similar root words, prefixes,
and suffixes. The Court of Customs and Patent Appeals has
rejected the argument that marks on the Supplemental
Register can only be used to refuse registration for
identical marks. In re The Clorox Co., 578 F.2d 305, 198
USPQ 337, 341 (CCPA 1978). Here, the registrations are on
the Principal Register, and there is no reason to limit the
scope of protection to nearly identical marks.
Also, while applicant points to the differences
between registrant’s terms “charger” and “charge” and its
term “rechargeable,” it would be difficult for most
consumers to distinguish among these terms when they all
have nearly the same meaning, sound, and appearance when
they are applied to battery chargers that charge or
recharge batteries.8
7 Applicant argues that the ACCU “is often used as an
abbreviation for ‘accumulator,’ which means ‘storage battery.’”
Applicant’s Brief, p. 6. We have no other evidence to this
effect, and we note that applicant has not disclaimed the term.
The third-party registrations support the suggestive nature of
the term. See also Applicant’s Response dated January 31, 2000,
p. 8 (“’ACCU’ is sometimes used as an abbreviation for the term
‘accurate’”).
8 The Examining Attorney requests that we take judicial notice of
the definition of “charge” as “to energize (a storage battery),
Ser. No. 75/654,413
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Applicant’s main argument is that the addition of its
trademark ENERGIZER along with the words ACCU RECHARGEABLE
avoids confusion. The addition of a trade name or house
mark to a registered mark does not generally avoid
confusion. Menendez v. Holt, 128 U.S. 514, 521 (1888).
However, the addition of a house mark may avoid confusion
when there are recognizable differences between the common
elements of the marks. See Rockwood Chocolate Co. v.
Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA 1967)
(ROCKWOOD BAG-O-GOLD for candy not confusingly similar to
CUP-O-GOLD for candy). Here, the differences between ACCU
RECHARGEABLE and ACCU-CHARGER and ACCU-CHARGE CONTROL are
slight and the addition of applicant’s ENERGIZER mark does
not eliminate the likelihood of confusion. See In re C.F.
Hathaway Co., 190 USPQ 343 (TTAB 1976) (HATHAWAY GOLF
CLASSIC for knitted sports shirts confusingly similar to
GOLF CLASSIC for men’s hats).
In any case, where likelihood of confusion is the
issue, we must view the marks in their entireties. When
the word ENERGIZER is added to a term that is very
similar to the registered marks for identical and closely
related goods, there is a likelihood of confusion. Wella
which we do. Notre Dame du Lac v. J.C. Gourmet Food Imports, 213
USPQ 594, 596 (TTAB 1982), aff'd, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/654,413
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Corp. v. California Concept Corp., 558 F.2d 1019, 1022, 194
USPQ 419, 422 (CCPA 1977)(CALIFORNIA CONCEPT and design
held likely to be confused with CONCEPT for hair care
products). Here, customers familiar with registrant’s
marks are likely to believe that, when the mark ENERGIZER
is added to a very similar variation of the marks, it is
identifying a previous anonymous source or a party that is
now associated with the registrant.
To counter the argument that there is a likelihood of
confusion, applicant argues, without any evidence, that it
has been using its mark since April 1999 without any actual
confusion. Applicant’s Appeal Brief, p. 9. The absence of
actual confusion does not equate to no likelihood of
confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J
Smack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991). Moreover, an ex parte
proceeding provides no opportunity for the registrant to
show instances of actual confusion and the limited period
of alleged actual use in this case is not very long. Thus,
even if the statement of applicant’s attorney was supported
by evidence of record, it would not eliminate the
likelihood of confusion.
Ser. No. 75/654,413
11
Finally, applicant argues that the registration of the
mark ACCUCHARGE for “rechargeable battery power handle for
diagnostic medical instruments” supports the registration
of its mark. We agree with the Examining Attorney that
there are substantial differences between the goods in this
third-party registration and registrant’s goods. Even if
they were not significantly different, third-party
registrations may be used to demonstrate that a portion of
a mark is suggestive or descriptive, but they cannot be
used to justify the registration of another confusingly
similar registration. In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1988).
Decision: The refusal to register the mark under
Section 2(d) is affirmed.