John A. Notaras and Angelo L. Notaras

Trademark Trial and Appeal Board

Oct 2, 1997

EX (T.T.A.B. Oct. 2, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB OCT 2, 97
Paper No. 15
HANAK/DAVIS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re John A. Notaras and Angelo L. Notaras
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Serial No. 74/510,312
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Hugh D. Jaeger of Hugh D. Jaeger, P.A. for John A. Notaras
and Angelo L. Notaras.
Karen K. Bush, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney)
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Before Hanak, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
John A. Notaras and Angelo L. Notaras (applicants)
seek registration of EDGE EATER in typed capital letters
for “power operated lawn edgers.” The intent-to-use
application was filed on April 8, 1984. Applicants have
disclaimed the exclusive right to use EDGE apart from the
mark as shown.
Ser No. 74/510,312
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The Examining Attorney refused registration pursuant
to Section 2(d) of the Lanham Trademark Act on the basis
that applicants’ mark, when applied to applicants’ goods,
is likely to cause confusion with two previously registered
WEED EATER marks, both owned by the same entity.
Registration No. 977,700 depicts WEED EATER in typed
capital letters for “weed and grass cutting machinery for
edging and trimming lawns.” Registration No. 1,273,316
depicts WEED EATER in typed capital letters for “machinery
for edging and trimming vegetation.”
When the refusal was made final, applicants appealed
to this Board. Applicants and the Examining Attorney filed
briefs. Applicants did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. 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.”)
Considering first the goods, while the application and
the registrations employ somewhat different terminology,
all three are broad enough to include power lawn edgers.
Ser No. 74/510,312
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Indeed, in their reply brief, applicants have conceded that
“the goods are virtually identical lawn care products.”
(Applicants’ reply brief p. 2).
Turning to a consideration of the marks, we note that
“when marks would appear on virtually identical goods or
services, the degree of similarity [of the marks] necessary
to support a conclusion of likely confusion declines.”
Century 21 Real Estate Corp. v. Century Life Of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
In this case, the two marks both consist of two words,
with the second word being identical, namely, EATER. The
first word in applicants’ mark (EDGE) is highly descriptive
of “power operated lawn edgers.” (emphasis added). The
word EDGE in applicants’ mark has quite properly been
disclaimed. The first word in registrant’s mark (WEED) is
highly suggestive when applied to power edgers. Clearly,
power edgers are utilized to cut weeds as well as grass.
While marks must be compared in their entireties, by the
same token, in any likelihood of confusion analysis, it is
not improper to give less weight to those portions of word
marks which are descriptive or highly suggestive. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) In both marks, the EATER portion is, at
Ser No. 74/510,312
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most, only minimally suggestive of power edgers. Edgers do
not “eat” weeds or grass. Rather, they cut grass or weeds.
Given the fact that the goods are identical; the fact
that both marks consist of two words with the second word
being identical; the fact that the first word in each of
the two marks is either descriptive (applicants’ mark) or
highly suggestive (registrant’s mark); and the fact that
the second word in both marks is more of a source
identifying feature than are the first words, we find that
the contemporaneous use of EDGE EATER and WEED EATER is
likely to cause confusion.
One final comment is in order. During the examination
process, applicants made of record a search report showing
approximately 150 marks registered with the PTO which
include the word EATER. In so doing, applicants were
attempting to demonstrate that the term EATER is not the
dominate portion of either mark, “especially in light in
all of the other EATER marks.” (Applicants’ paper of June
29, 1995). The problem with applicants’ evidence is that
virtually all of the other EATER registrations are for
goods or services totally dissimilar from the identical
goods involved in this proceeding, namely, power edgers.
Applicants’ list of third-party registrations in no way
Ser No. 74/510,312
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demonstrates that, as applied to power edgers or related
goods, the word EATER has in any way become a weak source
identifier.
Decision: The refusal to register is affirmed.
E. W. Hanak
T. J. Quinn
G. D. Hohein
Administrative Trademark
Judges,
Trademark Trial and
Appeal Board
Ser No. 74/510,312
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