GTS DO BRASIL LTDA

Trademark Trial and Appeal Board

Dec 10, 2008

No. 78971518 (T.T.A.B. Dec. 10, 2008)

Mailed:
December 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GTS DO BRASIL LTDA
________

Serial No. 78971518
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Jeffrey M. Furr of Furr Law Firm for GTS DO BRASIL LTDA.

David Yontef, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Kuhlke, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

GTS DO BRASIL LTDA (“applicant”) filed, on September
10, 2006, an application to register on the Principal
Register the mark GTS DO BRASIL (in standard character
format) for “agricultural machinery, namely, harvesting
headers and road-maker planes” in International Class 7.
The application is based on an allegation of a bona fide
intent to use the mark in commerce. DO BRASIL is
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 78971518
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translated into English as “of Brazil,” and applicant has
disclaimed the term “Brasil.”
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark GTS (in standard character
form) for “lawn mowers; and internal combustion engines for
lawn mowers and parts therefor” in International Class 7.1
Registration has also been finally refused pursuant to
Trademark Rule 2.61(b) on the basis that applicant failed
to comply with a requirement for information regarding “the
meaning and/or significance of the letters ‘GTS’ in the
agricultural trade or industry.”
Applicant appealed the final refusals of its
application and filed a request for reconsideration. The
examining attorney denied applicant’s request for
reconsideration and, subsequently, both applicant and the
examining attorney filed briefs. As discussed below, both
of the refusals to register are affirmed.
We consider first the Office’s requirement for
information. It is proper for an examining attorney to
request additional information from an applicant in order
to examine the application properly. In re Air Products

1 Registration No. 1414750, issued on October 28, 1986; renewed.

Serial No. 78971518
3
and Chemicals, Inc., 192 USPQ 157 (TTAB 1976); 37 C.F.R. §
2.61(b). In his second Office Action, the examining
attorney imposed the following requirement:
...applicant must specify whether the letters “GTS”
have any significance in the agricultural trade or
industry or as applied to the goods described in the
application. 37 C.F.R. §2.61(b).

Applicant, in its responses, has repeatedly refused to
specifically address the request. Instead, applicant has
stated that “GTS stands for the initials of the original
owners of [applicant].” Brief, p. 5. In this regard,
applicant submitted a copy of a letter purportedly signed
by the original owners and indicating that their surnames
begin with the letters “G,” “T” and “S.”
Notwithstanding applicant’s response and explanation,
we find that it has not complied with the examining
attorney’s proper request for information. The fact that
the letters GTS have significance to applicant, e.g.,
representing the first letters of three of its original
owners’ surnames, does not remove the possibility that the
initialism, GTS, may also have significance in the
agricultural machinery field or trade. And, applicant has
not, even in its brief, directly responded to the specific
request in this regard. Applicant’s initial failure to
comply could have been the result of a misunderstanding;
Serial No. 78971518
4
however, by the time the refusal was made final or at least
by the time applicant filed its brief, there is no real
excuse for not understanding and complying with the
requirement.
In view thereof, applicant's noncompliance with the
Trademark Examining Attorney's lawful requirement under
Trademark Rule 2.61(b) warrants refusal of the application.
We turn next to our determination of the examining
attorney's refusal to register the mark under Section 2(d)
of the Trademark Act which is based on an analysis of all
of the facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. See 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 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).
We first consider the similarity and dissimilarity
between the marks, GTS and GTS DO BRASIL. Our focus is on
whether the marks are similar in sound, appearance,
meaning, and commercial impression. Palm Bay Imports Inc.
Serial No. 78971518
5
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Here, the marks are
nearly identical inasmuch as applicant’s mark incorporates
the entirety of the registered mark, GTS. Visually and
phonetically, the only difference is the addition of the
geographically descriptive phrase, DO BRASIL, in
applicant’s mark, which translates into English as “of
Brazil.”
The registered mark, GTS, will clearly be perceived as
the dominant element of applicant’s mark and as an
arbitrary initialism. Although the examining attorney
suggested several possible meanings for the initialism in
connection to agricultural machinery, there was no
conclusive explanation given. And, as noted, applicant has
not stated whether or not the initialism has any
significance in the agricultural machinery industry.
Instead, applicant stated only that the initialism is the
result of the first letters of applicant’s original owners’
surnames; applicant did not, however, present any evidence
that the average consumer would be aware of this
abbreviation. Accordingly, we must assume that the
initialism GTS would be perceived by consumers of
applicant’s and the cited registrant’s goods in the same
Serial No. 78971518
6
manner, namely, as an arbitrary combination of three
letters.
The dominance of “GTS,” as an element of applicant's
mark, is further reinforced by its location at the
beginning. Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“it is often the
first part of a mark which is most likely to be impressed
upon the mind of a purchaser and remembered”). See also
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 at 1692 (Fed. Cir. 2005) (“Veuve” is
the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers
must first notice the identical lead word).
As to the commercial impression and connotations of
the marks, it is well settled that the addition of
descriptive terminology to an otherwise identical mark is
normally insufficient to alter the overall commercial
impression of the mark to the point where the likelihood of
confusion is eliminated. Here, applicant is simply adding
the geographically descriptive phrase, DO BRASIL, to the
registered mark. While this term is not ignored in our
Serial No. 78971518
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comparison of the marks, the fact remains that it is far
less important than GTS in creating an impression, and it
is of little, if any, source-distinguishing effect. See In
re National Data Corp., supra (“That a particular feature
is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark”). Even if,
arguendo, some emphasis or attention is placed on the
phrase “DO BRASIL,” this may actually enhance or increase
the likelihood of confusion because purchasers who are
familiar with both applicant and the owner of the
registered mark, may assume (falsely) that applicant is a
Brazilian affiliate of the registrant.
Ultimately, the only difference between the two marks,
namely, applicant’s addition of the phrase DO BRASIL, does
very little to distinguish the marks. The marks are
extremely similar visually and aurally, and in terms of
connotation. Accordingly, this du Pont factor weighs
heavily in favor of finding a likelihood of confusion.
We turn next to the similarity and dissimilarity of
applicant's goods, i.e., agricultural machinery, namely,
harvesting headers and road-maker planes, vis-à-vis
registrant’s goods, i.e., lawn mowers; and internal
combustion engines for lawn mowers and parts therefor.
Serial No. 78971518
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In making our determination regarding the relatedness
thereof, we must look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973).
We note, at the outset of considering this du Pont
factor, that the greater the degree of similarity between
applicant's mark and the cited registered mark, the lesser
the degree of similarity between applicant's goods and
registrant's goods that is required to support a finding of
likelihood of confusion. See In re Opus One Inc., 60 USPQ2d
1812, 1815 (TTAB 2001). If the marks are the same, as they
nearly are in this case, it is only necessary that there be
a viable relationship between the goods in order to support
a finding of likelihood of confusion. See In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983). Furthermore, it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
Serial No. 78971518
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the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
The examining attorney argues that the respective
goods are related because, “like the lawn mowers associated
with the registered mark, applicant’s goods are intended
for landscaping...and [t]herefore, the goods of the parties
have at least one shared common purpose.” Brief, p. 4. In
support of his position, the examining attorney made of
record copies of numerous use-based third-party
registrations to her final Office action which show that
various trademark owners have adopted a single mark for
goods of the kind that are identified in both applicant's
application and the cited registration.2 Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. In re
Infinity Broad Corp., 60 USPQ2d 1214 (TTAB 2001); In re

2 Attached to Office actions dated February 5, 2007 and August
24, 2007.
Serial No. 78971518
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Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). In
particular, the evidence shows that several companies that
manufacture larger agricultural machines, such as
applicant’s, may also manufacture “lawn mowers” (or
“mowers,” which presumably would include lawn mowers).
Also, in this regard, the examining attorney attached
copies of printouts from the cited registrant’s website.3
On its website, registrant touts its wide-range of goods as
enabling the purchaser to “manage your agricultural,
horticultural, lawn and garden needs,” and that it is a
“proven performer on farm and construction machinery….” We
reiterate that our likelihood of confusion analysis is
based solely on the goods identified in the involved
application and cited registration; nonetheless, the
aforementioned evidence indicates that a company that sells
lawn mowers may also sell agricultural machinery or goods
that have agricultural applications.
Based on the record herein, we find that the
respective goods are sufficiently related that, when
identified by nearly identical marks, prospective
purchasers are likely to believe that they come from the
same source. Accordingly, the du Pont factor involving the

3 Attached to Office action dated June 19, 2008.
Serial No. 78971518
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similarity and nature of the goods weighs in favor of
finding that there is a likelihood of confusion.
As to the du Pont factors involving the similarity or
dissimilarity of likely-to-continue trade channels and
classes of consumers, we initially note that applicant’s
goods are prefaced as “agricultural machinery.” We may
therefore assume that these goods are limited to use in the
agricultural industry and are sold to consumers engaged in
said trade. On the other hand, the registration’s
identification of goods contains no limitation as to
channels of trade or classes of purchasers. Thus, it is
presumed that the registration encompasses all types of
lawn mowers and they move in all channels of trade normal
for lawn mowers, and they are available to all classes of
purchasers for the lawn mowers. See In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ
211 USPQ 639, 640 (TTAB 1981). The registration’s
identification thus includes larger, commercial-grade lawn
mowers that could possibly complement applicant’s road-
maker planes and harvesting headers. It is foreseeable
that the same consumer involved in agriculture would have a
need for a commercial-grade lawn mower as well as
applicant’s agricultural machinery. In which case, the
respective goods would be marketed to the same purchasers
Serial No. 78971518
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and presumably in the same trade channels. Accordingly, we
find that the channels of trade and classes of consumers
are factors that weigh in favor of finding a likelihood of
confusion.
Applicant contends, without any evidentiary support,
that purchasers of agricultural machinery are
“sophisticated consumers,” and that they are not inclined
to make impulse purchases. Here, we may assume that
applicant’s goods are not inexpensive machines and,
likewise, registrant’s goods, to the extent they are
commercial-grade lawn mowers, would involve a significant
purchase. Thus, we may presume that there is level of
purchaser sophistication that is higher than the ordinary
consumer. Nonetheless, we have held that even with respect
to those purchasers who are sophisticated, they are not
necessarily immune from source confusion. See Wincharger
Corporation v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289
(CCPA 1962); In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
This is particularly true in this case because of the
degree of similarity of the marks. Thus even those
sophisticated purchasers involved in purchasing the
respective goods may likely believe that applicant's and
registrant's goods emanate from a single source. In view
thereof, the factor regarding the sophistication of
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purchasers only slightly favors applicant.
Finally, applicant argues that it has been “using the
mark in the United States with no actual confusion
regarding the source of the goods.” Brief, p. 5. Although
it is a factor to be considered, the absence or presence of
actual confusion is of little probative value where, as
here, we have no evidence pertaining to the nature and
extent of the use by applicant and registrant. In any
event, the test under Section 2(d) is not actual confusion
but likelihood of confusion. See Majestic Distilling, 65
USPQ2d at 1205 [“uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value”].
In conclusion, because of the near identity of the
marks and the relatedness of the goods, trade channels and
classes of purchasers, we find that purchasers familiar
with registrant's goods offered under the mark GTS are
likely to believe, upon encountering applicant's mark GTS
DO BRASIL for the goods identified in its application, that
they originate with or are somehow associated with the same
entity. Although we have stated that the du Pont factor
regarding the purchaser sophistication weighs slightly in
applicant's favor, it is not sufficient to outweigh our
findings on the other du Pont factors, specifically the
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nearly identical marks and relatedness of the goods. Also,
any doubts which we may have had have been resolved in
favor of registrant. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 179 USPQ 729 (CCPA 1973).
Decision: The refusals to register under Section 2(d)
of the Trademark Act and pursuant to Trademark Rule 2.61(b)
are affirmed.