Hagemeyer North America, Inc.

Trademark Trial and Appeal Board

Aug 30, 2007

No. 78582380 (T.T.A.B. Aug. 30, 2007)

Mailed:
Aug. 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hagemeyer North America, Inc.
________

Serial No. 78582380
_______

Sidney R. Brown of Jones, Day for Hagemeyer North America,
Inc.

Katherine Stoides,1 Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Walters, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark VERSAPRO, in standard character form, for Class
17 goods identified in the application, as amended, as:
Tape, namely, pipe joint sealant tape, masking
tape, duct tape, adhesive tape for sealing
cartons, and strapping tape for industrial and

1 A different Trademark Examining Attorney handled this case
prior to appeal.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78582380
2
commercial use; heavy duty air and water hoses
made of rubber for industrial and commercial use;
and heavy duty air and water hoses made of
plastic for industrial and commercial use.2

At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the goods
identified in the application, so resembles the mark
VERSAPRO, previously registered3 on the Principal Register
(in standard character form) for

Air compressors, tool bits for machines, bits for
power drills, drill chucks for power drills,
electric handle-held drilling machines and parts
therefor, pile drivers, pneumatic hammers, impact
wrenches, hydraulic jacks, electric knives, air
brushes for applying paint, power-driven
wrenches, extension bars for power tools, power
tools, namely drills, routers, saws,
screwdrivers, shears, wrenches and ratchet
wrenches

in Class 7, and

Bits for hand drills, blades for hand saws,
manual jacks, pocket knives, garden tools, namely
trowels, weeding forks, spades, hoes, hand tools,
namely pliers, shovels, wrenches, screwdrivers,
hammers, saws, scrapers, ratchet wrenches, socket

2 Serial No. 78582380, filed on March 8, 2005. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

3 Reg. No. 2540609, issued on February 19, 2002. Affidavits
under Sections 8 and 15 accepted and acknowledged.

Ser. No. 78582380
3
sets, clamps, drills, planners [sic – planers?],
tweezers, knives, scissors

in Class 8, as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).4
Applicant and the Trademark Examining Attorney have
filed appeal briefs. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the Section 2(d) refusal to register.
Our likelihood of confusion determination under
Section 2(d) 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d

4 Another issue identified in the Trademark Examining Attorney’s
appeal brief is the outstanding requirement for a more definite
identification of goods, i.e., a clarification of whether the
words “for industrial and commercial use” after the words
“strapping tape” modify only “strapping tape” or also modify the
other tape products listed prior to “strapping tape.” Applicant
has not responded to or addressed this issue in its appeal brief.
For purposes of our Section 2(d) decision herein, we will
interpret the words “for industrial and commercial use” as
modifying each of the types of tape listed in the identification
of goods. This assumption does not affect our decision on the
Section 2(d) refusal on appeal. In the event that our decision
affirming the Section 2(d) refusal is reversed on appeal, the
application will have to be remanded to the Trademark Examining
Attorney for issuance of an examiner’s amendment in accordance
with the provisions of TMEP §1402.13.
Ser. No. 78582380
4
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin with the first du Pont factor, which requires
us to determine the similarity or dissimilarity of the
marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. We find that
applicant’s VERSAPRO mark is identical in every respect to
the cited registered VERSAPRO mark. The first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as recited in the
application and in the cited registration. It is settled
that it is not necessary that the goods be identical or
even competitive in order to support a finding of
likelihood of confusion. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such that
Ser. No. 78582380
5
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). Finally, in cases such as this where
the applicant’s mark is identical to the cited registered
mark, there need be only a viable relationship between the
respective goods in order to find that a likelihood of
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001); and In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Applying these principles in the present case, we find
that certain of the goods identified in applicant’s
application and certain of the goods identified in the
cited registration are similar and related, for purposes of
the second du Pont factor.5 In particular, we find that

5 If confusion is likely as to any of the goods or services
identified in a particular class in an application, Section 2(d)
Ser. No. 78582380
6
applicant’s “heavy duty air [and water] hoses made of
rubber for industrial and commercial use” and “heavy duty
air [and water] hoses made of plastic for industrial and
commercial use” are related to the goods identified in the
cited registration as “air compressors,” “pneumatic
hammers,” and “air brushes for applying paint.”
Applicant’s air hoses are identified as being for
industrial and commercial use. Because there is no
restriction in the cited registration’s identification of
goods, we must presume that registrant’s air compressors,
pneumatic hammers, and air brushes for applying paint
include those which are for industrial and commercial use.
Air hoses are components of or replacement parts for
air compressors. The evidence attached to the final Office
action includes a printout of the website of a company
called PRI (www.pwmall.com), which offers for sale goods
described as “air hose and pneumatic hose for consumer,
commercial, contractor and industrial applications. Air
and pneumatic hose made with EPDM rubber, PVC and
reinforced polyurethane. ... Air hose and pneumatic hose

bars registration as to all of the identified goods or services
in that class in the application. See Shunk Mfg. Co. v. Tarrant
Mfg. Co., 381 F.2d 328, 137 USPQ 881 (CCPA 1963); Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 n.9
(TTAB 2004); In re Alfred Dunhill Ltd., 224 USPQ 501, 504 (TTAB
1984); and In re Multivox Corp. of America, 209 USPQ 627, 632
(TTAB 1981).
Ser. No. 78582380
7
can be used with air compressors, jack hammers, nailers,
pneumatic tools and staplers.” The evidence attached to
the first Office action shows that the Tyler Tool Company
offers for sale the Makita MAC700KIT brad nailer and air
compressor kit, which includes an air hose as standard
equipment. See also the Porter-Cable CPFAC2600P “2 HP Air
Compressor with Air Hose.” Aubochon Hardware sells the
“Stanley Heavy Duty Air Hose,” which is described as “one
of many top quality items in our Air Compressor Hoses
department.” This Stanley heavy duty air compressor hose
is found on the retailer’s website by navigating from
“Power Tools” to “Pneumatic Tools & Accessories” to
“Compressors & Accessories” to “Air Compressor Hoses,” a
menu path which confirms that air hoses are components of
or accessories to air compressors.
The evidence of record also establishes that
applicant’s air hoses are related to registrant’s
“pneumatic hammers.” The PRI website noted above states
that air hoses can be used with “pneumatic tools,” which
would include pneumatic hammers. Similarly, applicant’s
air hoses would be used with registrant’s “air brushes for
applying paint,” which we presume to include air brushes
used in commercial and industrial painting.
Ser. No. 78582380
8
Based on the evidence of record and for the reasons
discussed above, we find that applicant’s heavy duty air
hoses for industrial and commercial use are similar and
related to the goods identified in the cited registration
as air compressors, pneumatic hammers, and air brushes for
applying paint. As noted above, because applicant’s mark
is identical to the cited registered mark, there need be
only a viable relationship between the respective goods in
order to support a finding of likelihood of confusion. We
find that the requisite viable relationship between the
goods exists in this case. The second du Pont factor
weighs in favor of a finding of likelihood of confusion.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels for the
respective goods. Applicant’s air hoses are identified as
being for industrial and commercial use. Because there is
no restriction in the registration’s identification of
goods as to registrant’s air compressors, pneumatic tools,
and air brushes for applying paint, we must presume that
these goods are marketed in all normal trade channels for
such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). Such
normal trade channels would include the industrial and
commercial trade channels in which applicant’s air hoses
are marketed, including in the hardware and industrial
Ser. No. 78582380
9
supply trade channels. The third du Pont factor weighs in
favor of a finding of likelihood of confusion.
The fourth du Pont factor requires us to consider
evidence pertaining to the conditions of purchase. To the
extent that applicant’s goods are identified as being for
industrial and commercial use, we might presume that the
purchasers of such goods are somewhat knowledgeable about
the products involved. However, we cannot conclude on this
record that such knowledge on the part of purchasers
necessarily would eliminate the confusion likely to be
caused by the use of the identical VERSAPRO mark on these
related goods. See, e.g., In re Decombe, 9 USPQ2d 1812
(TTAB 1988). Nor does the record establish that these
goods, as identified in the application and registration,
are so expensive that the degree of care taken in
purchasing them necessarily would immunize purchasers from
confusion. For these reasons, we find that the fourth du
Pont factor, if it weighs in applicant’s favor at all, does
so only slightly, and not enough to overcome the evidence
of record on the other du Pont factors which supports a
finding of likelihood of confusion.
Balancing all of the evidence of record as it applies
to the relevant du Pont factors, we find that a likelihood
of confusion exists. We have considered all of applicant’s
Ser. No. 78582380
10
arguments to the contrary, but we find them to be
unpersuasive. To the extent that any doubts might exist as
to the correctness of our conclusion that confusion is
likely, we resolve such doubts against applicant. See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.
Decision: The Section 2(d) refusal is affirmed.