Jason Inc.v.Munck Cranes Inc.

Trademark Trial and Appeal Board

Jan 12, 1998

No. 92024549 (T.T.A.B. Jan. 12, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 12, 98
Paper No. 14
ejs
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Jason Incorporated
v.
Munck Cranes Inc.
_____
Cancellation No. 24,549
_____
John W. Renner of Renner, Otto, Boisselle & Sklar, P.L.L.
for Jason Incorporated
Munck Cranes Inc., pro se.
_____
Before Sams, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Jason Incorporated has petitioned to cancel the
registration of Munck Cranes Inc. for the mark LOADRUNNER
for overhead cranes.1 As grounds for cancellation,
petitioner asserts that it and its predecessors-in-interest

1 Registration No. 1,647,882, issued June 18, 1991. Office
records indicate that this registration was cancelled on December
22, 1997 for failure to file a Section 8 affidavit. In view of
the stage of the proceedings at which this occurred, we have
issued the instant decision on the merits.
Cancellation No. 24,549
2
are the prior users of the mark LOAD RUNNERS for idler
rollers; that it owns a registration for this mark; that the
goods are closely related, and that confusion is likely to
result from petitioner’s use of LOADRUNNER for overhead
cranes. Respondent has denied the salient allegations of
the petition.
The record includes the pleadings; the file of the
registration sought to be cancelled; and the testimony
deposition, with exhibits, of William A. Hoagland, vice
president of sales of the Load Runner Division of The Osborn
Manufacturing company, a unit of Jason Incorporated.
Petitioner has also made of record, under a notice of
reliance, a notice of recordation with the Patent and
Trademark Office of an assignment of, inter alia,
Registration No. 973,349 for LOAD RUNNERS from Jason
Incorporated, a Wisconsin corporation, to Jason
Incorporated, a Delaware corporation.2 Respondent submitted
no testimony, and only petitioner filed a brief on the case.
An oral hearing was not requested.

2 With its notice of reliance petitioner also submitted what
appear to be “soft copies” of Registration No. 973,349 and the
renewal of this registration in the name of Jason Incorporated.
Such documents are not sufficient to make the registration of
record. See Trademark Rule 2.122(d)(2). “A registration owned
by any party to a proceeding may be made of record in the
proceeding by that party...by filing a notice of reliance, which
shall be accompanied by a copy of the registration prepared and
issued by the Patent and Trademark Office showing both the
current status of and current title to the registration.”
However, the registration is of record through the identification
Cancellation No. 24,549
3
Turning first to the issue of priority, petitioner has
shown that it, through its predecessor-in-interest, began
using the mark LOAD RUNNERS for idler rollers in 1970, and
that it has used the mark continuously since that time.
Moreover, petitioner has made of record its registration for
this mark for such goods.3 Respondent, who did not submit
any evidence whatsoever, can rely only on the June 5, 1989
Section 44(d) priority date of the application which matured
into the registration sought to be cancelled. We also note
that applicant, a Canadian company, has never alleged any
use in the United States. Thus, there is no question as to
petitioner’s priority.
This brings us to the question of likelihood of
confusion. Petitioner uses its mark on idler rollers, which
are used in foundry mold making and in industries using
power transmission and conveying applications to support and
move heavy equipment and components. This machinery and
conveyors require a large number of idler rollers. The
idler-rollers come in various types and sizes, and sell for
prices ranging from $40 to $1800.
Although petitioner candidly admits that the overhead
cranes identified in respondent’s registration are not the
same as an idler roller, and that one would not be mistaken

and introduction during the testimony of William Hoagland.
Trademark Rule 2.122(d)(2).
Cancellation No. 24,549
4
for the other, the record shows that both products are used
in the power transmission industry, and can be found
adjacent to each other as part of the same conveying system
to move heavy loads. Moreover, the record shows that idler
rollers and overhead cranes are advertised in the same
periodicals and trade shows, and that they are purchased by
the same classes of purchasers.
It is well established that it is not necessary that
the goods of the parties be similar or competitive, or even
that they move in the same channels of trade in order to
support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are
related in some manner, and/or that they conditions and
activities surrounding the marketing of 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. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, because of the above-indicated reasons,
we find that the parties’ goods are related.
With respect to the marks, we find that they are
virtually identical. We recognize that petitioner’s mark
LOAD RUNNERS is shown as two words, and in the plural, while

3 Registration No. 973,349, issued Nov. 20, 1973; Section 8
Cancellation No. 24,549
5
respondent’s mark is the singular, one-word LOADRUNNER.
However, these minor differences are unlikely to be noted or
remembered by purchasers, and do not serve to distinguish
the marks. The marks, as used on the respective goods, also
convey the same connotation, in that both suggest that the
goods are helpful in moving heavy equipment and material.
We also consider petitioner’s mark to be strong. The
record shows that petitioner has used the mark continuously
for over 25 years; from 1975 until 1995 sales increased from
half a million dollars to almost $7 million. Petitioner
promotes its LOAD RUNNERS idler rollers heavily, through
advertisements in such periodicals as “Industrial Equipment
News,” “Power Transmission Design,” and the “Thomas
Register”; distribution of numerous brochures and catalogs
devoted to its LOAD RUNNERS products for over 25 years; and
participation in both local, national and international
trade shows. Through the years petitioner has spent
millions of dollars in promoting its mark.
Nor is there any evidence that any other party, other
than petitioner and respondent, use LOAD RUNNERS or a
variant for products in the power transmission field. On
the contrary, petitioner has conducted a trademark search,
and has submitted excerpts of the trademark section of the

affidavit accepted; Section 15 affidavit received; renewed.
Cancellation No. 24,549
6
“Thomas Register,” which do not list any third-party
registrations or uses.
We recognize that petitioner’s and respondent’s goods
are specialized items, and that they are marketed to design
engineers who must be considered sophisticated and careful
purchasers. Nonetheless, even sophisticated and careful
purchasers are not immune from confusion. Given the
relationship between the goods, in particular the fact that
they may be used as part of the same system, and the near
identity of the marks, we find that the purchasers of these
goods are likely to believe that LOAD RUNNERS idler rollers
and LOADRUNNER overhead cranes emanate from the same source.
Decision: The petition for cancellation is granted.
J. D. Sams
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board