Express Communi-cations Supply, Inc.

Trademark Trial and Appeal Board

May 16, 2001

No. 75156429 (T.T.A.B. May. 16, 2001)

5/16/01
Paper No. 14
UNITED STATE
Tradema
In re Expres
Se
Robert J. Van Der Wall
Express Communications
Mary E. Crawford, Trad
102 (Thomas V. Shaw, M
Before Hohein, Chapman
Judges.
Opinion by Bucher, Adm
Express Communica
application to registe
“wiring harnesses of l
for exclusive use in p
in International Class
Registration has
2(d) of the Trademark
that applicant’s mark,
resembles the mark QUI
1 Application Serial
which alleges a date of
first use in commerce of
disclaimed.THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
S PATENT AND TRADEMARK OFFICE
________
rk Trial and Appeal Board
________
s Communications Supply, Inc.
________
rial No. 75/156,429
_______
of Stein Schifino & Van Der Wall for
Supply, Inc.
emark Examining Attorney, Law Office
anaging Attorney).
_______
and Bucher, Administrative Trademark
inistrative Trademark Judge:
tions Supply, Inc. has filed an
r the mark EXPRESS QUICK CABLES for
ow voltage low amperage telephone wire
rivate business telephone equipment,”1
9.
been finally refused under Section
Act, 15 U.S.C. §1052(d), on the ground
when applied to its goods, so
CK-CABLE, which is registered for
No. 75/156,429, filed on August 26, 1996,
first use of May 1, 1996 and a date of
May 15, 1996. The word “cables” is
Serial No. 75/156,429
2
“electrical cables, cable connectors, ground lugs, terminal
clamps and tools sold therewith, and kits containing said
cables, cable connectors, ground lugs, terminal clamps and
tools therefor,” as to be likely to cause confusion, to
cause mistake or to deceive.
Applicant has appealed. Briefs have been filed but
applicant did not request an oral hearing.
We reverse the refusal to register.
Turning first to consideration of the respective goods,
the Trademark Examining Attorney argues that the goods of
applicant and of registrant are closely related; and that
she has demonstrated through a number of use-based, third-
party registrations that the same mark has been registered
for electrical wires and telephone wires.
By contrast, applicant argues that, in reality, these
goods are very different:
[Eighteen pages of information printed from
Registrant’s Internet web site] show that the
cited Registrant’s products are exclusively
heavy duty, high amperage copper battery and
welding cables, related connectors, crimping
tools, accessories, tools, protective
products and the like that are used in the
vehicular industry. Applicant’s products are
solely wiring harnesses of fine telephone
wire exclusively used in the installation of
business telephone equipment.
(Applicant’s appeal brief, p. 7.)
We find that the identification of registrant’s goods
on its face is clear and unambiguous. In addition, the
submission of copies of the registrant’s web pages confirms
Serial No. 75/156,429
3
that registrant’s goods are used for heavy-duty electrical
circuits:
Quick Cable [registrant] will manufacture,
sell and distribute heavy duty electrical
connectors, cable, tools and related
products, in standard and custom
configurations, as whole systems and and
(sic) component parts.
(Registrant’s web page, under “Our Mission Statement.”)
The web site goes on to provide the specifications of
registrant’s connectors, cables, fasteners and tools to
be used in connection with heavy-duty electrical
circuits. In particular, the web pages makes several
references to electrical cable of 250 MCM, a very
large, multi-stranded wire used with industrial storage
batteries, welding equipment and in high voltage
infrastructures.
By contrast, applicant’s patent documentation shows a
very specialized, wiring harness for usage in the telephone
closets of large private branch exchange (PBX) type,
business communications systems. This device allegedly
saves time and money in office buildings wired for analog
devices transitioning to the widespread use of digital
technologies.
Accordingly, recognizing that the third-party
registrations placed in the record by the Trademark
Serial No. 75/156,429
4
Examining Attorney suggest that some of the same companies
make or supply electrical cable and telephone wires, and
acknowledging that both are designed to carry some form of
electricity, we find that the actual descriptions of these
respective items, as set forth in the application and cited
registration, demonstrate that they are at two opposite
extremes of wires, judging by their respective gauges and
purposes.
As to the respective channels of trade, applicant
points out that because of the nature of its specialized
products (e.g., wiring harnesses of low voltage low amperage
telephone wire for exclusive use in private business
telephone equipment), it directs its advertising brochures
to the private telephone industry. Hence, even though a
medium-sized or larger business organization may own or
lease a private branch exchange, applicant considers the
vendor/supplier of the PBX to be its customer. Certainly,
if anyone from within the enterprise hosting the PBX even
knows of this wiring harness, it would be only the most
sophisticated of its design engineers.
Given the nature of registrant’s products and judging
from the web pages of record, registrant’s retail customers
would include electrical contractors, electricians, welders
and owners of heavy equipment. Members of each of these
Serial No. 75/156,429
5
groups must be considered knowledgeable and discriminating
buyers who would exercise a great deal of care in selecting
heavy-duty electrical equipment.
In addition to the fact that the decisions to purchase
applicant's telephone wiring harnesses and registrant's
heavy duty electrical wiring systems would generally be made
by separate individuals (e.g., telecommunications experts,
design engineers and purchasing agents in the case of the
former, and electrical contractors, electricians, welders,
and owners of heavy equipment with respect to the latter),
we concur with applicant that given the deliberation
involved, the respective goods, by their very nature, are
not the kind of goods that would be subject to impulse
purchases.
Turning next to consideration of the respective marks,
the Trademark Examining Attorney argues that applicant has
simply added the term EXPRESS to the mark of the registrant,
and that the marks in their entireties are similar enough in
sound, appearance and commercial impression to support a
finding of a likelihood of confusion.
On the other hand, applicant argues that its mark of
nearly twice as many syllables begins with the dominant
word, EXPRESS. Applicant also points out that the latter
portion of its mark is QUICK CABLES (plural and without a
hyphen) while registrant’s entire mark is QUICK-CABLE
(singular and having a hyphen).
Serial No. 75/156,429
6
Inasmuch as the word “cables” has been disclaimed in
this application, and the QUICK CABLES / QUICK-CABLE
portions of both marks appear to be highly suggestive, we
find that applicant’s placement of its house mark as the
first word in the composite mark creates a significant
difference in the appearance, sound, meaning and overall
commercial impression of these two marks.
Accordingly, given the differences in the goods, as
identified, and the consequent diversity in channels of
trade, the absence of an overlap in the class of purchasers,
the sophistication of the respective purchasers and the care
and deliberation involved in the purchase of these items, as
well as the differences in the respective marks when
considered in their entireties, we find that the extent of
any potential confusion herein would be de minimis.
Decision: The refusal to register is reversed.