GlynnTech, Inc.

Trademark Trial and Appeal Board

Sep 23, 2008

No. 76678920 (T.T.A.B. Sep. 23, 2008)

Mailed:
September 23, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GlynnTech, Inc.
________

Serial No. 76678920
_______

GlynnTech, Inc. Pro Se.

Toby E. Bulloff, Trademark Examining Attorney, Law Office
117 (Loretta Beck, Managing Attorney).
_______

Before Quinn, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

GlynnTech, Inc. (applicant) has applied to register
the mark OMNICOOKER in standard characters on the Principal
Register for goods identified as “cookware, namely, metal
cooking devices for use with frying pans, pots and grills”
in International Class 21.1

1 Application Serial No. 76678920, filed June 29, 3007, claiming first
use of the mark anywhere and first use of the mark in commerce on May
16, 2007.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76678920
2
The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with
Registration No. 3227764 on the Principal Register for the
mark OMNIWARE in standard characters for goods identified
as “cookware, namely pots and pans; cooking utensils,
namely, whisks; spatulas; bakeware; baking dishes; cake
pans; coffee pots not of precious metal; dishes; serving
dishes; butter dishes; cups; canister sets; coasters,
namely, coasters not of paper; cutting boards; teapots not
of precious metal; trivets; spice racks; salt and pepper
shakers” in International Class 21.2 The registration
issued on April 10, 2007. The registration claims first
use of the mark anywhere and first use of the mark in
commerce on September 1, 1992. The registration includes a
claim of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. § 1052(f).
Applicant also attempted to amend the application to
the Supplemental Register under Trademark Act Section 23,
15 U.S.C. § 1091, in response to the refusal under Section
2(d). The Examining Attorney refused to accept that
amendment. In its brief applicant continues to argue that

2 The registration also covers goods in International Class 8, but the
Examining Attorney has based the refusal on the International Class 21
goods only.
Serial No. 76678920
3
it is entitled to registration on the Supplemental
Register, in the alternative. Consequently, we must
address that refusal as well.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm on all grounds.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office … as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion …” 15 U.S.C. § 1052(d).
In In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1977), the Court set forth the factors
to consider in determining likelihood of confusion. Here,
as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
applicant and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
Regarding the marks, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Serial No. 76678920
4
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues that “… the overall sound and
appearance of the two marks are different.” Applicant’s
Brief at 3. Specifically, applicant argues principally
that the second elements in the respective marks, “cooker”
and “ware,” differ in meaning and commercial impression and
that “… the use of OMNI as a prefix in English words calls
attention to the subsequent syllables.” Id. at 4.
Applicant also notes the dictionary meaning of “OMNI”
meaning “all.” Applicant finally argues that the
differences in appearance, sound, meaning and commercial
impression are sufficient to find no likelihood of
confusion.
The Examining Attorney argues that OMNI, the first
element in each of the marks, is distinctive and dominant
in each of the marks and that “ware” and “cooker” are
descriptive and insufficient to distinguish the marks.
We conclude that the marks are similar. In each of
the marks OMNI is the first element, the more distinctive
element and the dominant element. Here, as is often the
case, it is the first element in the marks which makes the
dominant impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at
Serial No. 76678920
5
1690; Presto Products Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (KIDWIPES and KID STUFF held
similar, noting that KID is the first element in each mark
and that this fact is “… a matter of some importance since
it is often the first part of a mark which is most likely
to be impressed upon the mind of a purchaser and
remembered.”).
Furthermore, while applicant attempts to argue that
“ware” and “cooker” are more important and dominant, we are
not convinced. The Examining Attorney has provided
definitions of “cooker” and “ware” showing their
descriptive significance in relation to the relevant goods.
In fact, the identifications of goods in both the
application and cited registration refer to “cookware.”
“Ware” retains its descriptive meaning whether used as a
separate word or as a suffix as in the identifications and
in applicant’s mark. Therefore, we conclude that “cooker”
and “ware” are not sufficient to distinguish the marks when
we view the mark in their entireties. In re National Data
Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985)
(“… in articulating reasons for reaching a conclusion on
the issue of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
Serial No. 76678920
6
been given to a particular feature of a mark…. Indeed,
this type of analysis appears to be unavoidable.”).
Accordingly, though there are differences between the
marks, we conclude that the similarities in appearance,
sound, connotation and commercial impression are more
important and that the marks are similar overall.
As to the goods, the goods of applicant and the
registrant need not be identical to find a likelihood of
confusion under Section 2(d). They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant purchasers mistakenly
believing that the goods originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels
of trade we must consider the goods as identified in the
application and registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
Serial No. 76678920
7
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”).
Applicant identifies its goods as “cookware, namely,
metal cooking devices for use with frying pans, pots and
grills.” The goods in the cited registration are
identified as “cookware, namely pots and pans; cooking
utensils, namely, whisks; spatulas; bakeware; baking
dishes; cake pans; coffee pots not of precious metal;
dishes; serving dishes; butter dishes; cups; canister sets;
coasters, namely, coasters not of paper; cutting boards;
teapots not of precious metal; trivets; spice racks; salt
and pepper shakers.”
Applicant has not made any arguments specifically with
respect to the goods. The Examining Attorney argues that
the respective goods, as identified in the application and
registration, are closely related. We conclude that the
goods are closely related.
First, the respective identifications of goods
indicate a close relationship between the goods. Simply
put, the registrant’s goods include pots and pans and
Serial No. 76678920
8
applicant’s goods are for use with pots and pans.
Applicant’s specimen displays applicant’s product in use
showing that it is inserted into a pot or frying pan. It
is a “plank” with a grill-like configuration.
The Examining has provided additional evidence to
support the conclusion that the goods are related.
Specifically, the Examining Attorney has provided several
third-party registrations where the same mark has been
registered for a variety of cookware, including the types
of goods in both the application and the cited
registration. For example, those registrations include:
Registration No. 3129063 for goods which include,
among other things, “household and kitchen
utensils consisting of cookware, namely, grilling
planks, … cooking pots and pans…”;

Registration No. 3381771 for goods which include,
among other things, “pots and pans, skillets, …
grills…”; and

Registration No. 3312634 for goods which include,
among other things, “nonelectric cookware,
namely, pots, pans, pot covers and lids, steamers
griddles, grills, skillets, pressure cookers,
covered and open roasters, and double boilers.”

Attachments to Office Action of October 29, 2007.
These registrations, and the others submitted by the
Examining Attorney, suggest that the respective goods are
of a type which may emanate from the same source. In re
TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In re
Serial No. 76678920
9
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993).
Based on this record we conclude that the goods
identified in the application and the goods identified in
the cited registration are closely related.
Applicant has also argued that it is entitled to
registration because the USPTO had previously permitted
registration of the mark OMNI GRILL (Registration No.
2534147) as well as the OMNIWARE mark in the cited
registration. Applicant’s Response of April 28, 2008. In
the Examining Attorney’s brief, the Examining Attorney has
objected to our consideration of this information because
applicant failed to provide a copy of the referenced third-
party registration in proper form citing In re Fitch IBCA
Inc., 64 USPQ2D 1058, 1059 n.2 (TTAB 2002) and other cases.
We overrule the Examining Attorney’s objection and
have considered the information regarding this third-party
registration. Applicant noted the information regarding
this registration in a response prior to appeal. In an
action following that response also prior to appeal, the
Examining Attorney failed to advise applicant of the
requirements related to the filing of copies of third-party
registrations. The Examining Attorney only noted the
problem later in the appeal brief. Consequently applicant
Serial No. 76678920
10
was denied timely notice and the opportunity to comply with
the requirement. In re Hayes, 62 USPQ2d 1443, 1445 n.3
(TTAB 2002). Nonetheless, the only information applicant
had provided to date is the registration number and the
mark. Therefore, because the information is so limited it
possesses limited probative value. More importantly, even
if the record included a proper copy of the registration
with complete information regarding the registration,
contrary to applicant’s suggestion, it would not dictate
our determination in this case. We must decide each case
based the record before us and its particular facts, not on
determinations by examining attorneys in other
applications. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). Accordingly we reject
applicant’s arguments based on the OMNI GRILL registration.
Finally, after considering all of the evidence and
arguments presented here, including arguments we have not
specifically discussed, we conclude that there is a
likelihood of confusion between OMNICOOKER, when used in
connection with “cookware, namely, metal cooking devices
for use with frying pans, pots and grills” and OMNIWARE,
when used in connection with “cookware, namely pots and
pans; cooking utensils, namely, whisks; spatulas; bakeware;
baking dishes; cake pans; coffee pots not of precious
Serial No. 76678920
11
metal; dishes; serving dishes; butter dishes; cups;
canister sets; coasters, namely, coasters not of paper;
cutting boards; teapots not of precious metal; trivets;
spice racks; salt and pepper shakers.”
Before concluding we must address applicant’s
amendment to the Supplemental Register and the Examining
Attorney’s rejection of that amendment. It would not serve
any useful purpose to recount the arguments regarding this
issue. Applicant’s purpose in filing the amendment was to
overcome the refusal based on likelihood of confusion under
Trademark Act Section 2(d). The premise underlying the
amendment is in error. That is, our analysis and
determination under Section 2(d) would be the exactly the
same whether the application is one for the Supplemental
Register or the Principal Register. In either event
Registration No. 3227764 for the OMNIWARE mark would stand
as a bar to the OMNICOOKER application based on a
likelihood of confusion. Accordingly, we affirm the
Examining Attorney’s rejection of applicant’s amendment to
the Supplemental Register as a means to overcome the
Section 2(d) refusal.
Decision: We affirm the refusal under Trademark Act
Section 2(d) and the rejection of applicant’s amendment to
the Supplemental Register to overcome that refusal.