K&N Engineering, Inc.

Trademark Trial and Appeal Board

Mar 19, 2001

No. 75385948 (T.T.A.B. Mar. 19, 2001)

03/19/01
Paper No. 17
AFD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re K&N Engineering, Inc.
________
Serial No. 75/385,948
_______
Theresa W. Middlebrook of Wagner, Middlebrook & Kimbell,
LLP for K&N Engineering, Inc.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______
Before Hanak, Holtzman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On November 6, 1997, K&N Engineering, Inc. (applicant)
filed an intent-to-use application to register the mark:
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/385,948
2
for goods subsequently identified as “air filters, air
cleaner assemblies and air filter assemblies for machines
and vehicles” in International Class 7.1 The Examining
Attorney2 refused to register the mark under Section 2(d) of
the Trademark Act because of U.S. Registration No.
1,049,393 for the mark PHILLIPS 66 and shield design for
“oil and air filters for land vehicles.”3
In addition, the Examining Attorney also required a
disclaimer of the wording “CUSTOM SERIES” under Section 6
of the Trademark Act.
After the Examining Attorney made the refusal and the
requirement final, this appeal followed. Both applicant
1 Serial no. 75/385,948. On March 23, 1998, applicant filed an
Amendment to Allege Use, which was accepted, setting forth dates
of November 4, 1997, and a date of first use in commerce of
November 11, 1997.
2 The current Examining Attorney was not the original Examining
Attorney for this application.
3 Registration No. 1,049,393, dated October 5, 1976, first
renewal. A copy of the registration, which more clearly shows
the mark, is attached.
Ser. No. 75/385,948
3
and the Examining Attorney filed briefs. An oral argument
was not requested.
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973). The du Pont factors discussed
in this case include the similarity of the marks, the
similarity of the goods, the sophistication of the
purchasers, and the channels of trade. Not all of the du
Pont factors are applicable in every case. In re Dixie
Restaurants, 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533
(Fed. Cir. 1997).
We start by noting that the goods in this case
involve, at least to some extent, goods that are identical.
Applicant seeks to register its mark for “air filters, air
cleaners assemblies and air filter assemblies for machines
and vehicles.” The cited registration is for “oil and air
filters for land vehicles.” Thus, both applicant and
registrant’s identifications of goods include air filters
for land vehicles. Applicant admits that some of the goods
are the same. Appeal Brief at 3.
To determine whether the goods and services are
related, we must look to the identification of goods and
services in the application and registration. Dixie
Ser. No. 75/385,948
4
Restaurants, 41 USPQ2d at 1534; Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1493, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). Applicant’s argument that its
goods are sold in different channels of trade is not
persuasive because applicant’s and registrant’s
identifications of goods are unrestricted. We presume that
the goods move through all normal channels of trade. Also,
nothing in either registrant’s or applicant’s
identification of goods would restrict it from making more
expensive or less expensive air filters for vehicles.
Furthermore, if the goods are sold in the same channels of
trade, they would likely be encountered by the same
purchasers. Nothing in the registrant’s identification of
goods limits the goods to those sold only in its service or
gas stations. We must base our decision on the assumption
that the goods identified without any restrictions move
through the normal and usual channels of trade for such
goods to all the usual customers for these products.
Kangol Ltd. v. KangaROOS U.S.A. Inc., 23 USPQ2d 1945, 1946
(Fed. Cir. 1992); CBS Inc. Morrow, 218 USPQ 198, 199-200
(Fed. Cir. 1983).
Here, we must assume that applicant’s and registrant’s
air filters move through the same channels of trade to the
same customers. Moreover, even if we were to assume that
Ser. No. 75/385,948
5
applicant’s goods “are promoted through enthusiast
magazines, and as high quality goods . . . sold at
tremendously high prices” (Brief at 4), we fail to see why
a potential consumer would not believe that the source of
both the registrant’s and applicant’s goods are the same,
if confusingly similar marks are used. These customers
would likely believe that applicant’s high priced filters
are simply another line of the registrant’s goods.
Despite the fact that some of the goods are identical,
applicant could prevail if its mark was not confusingly
similar to registrant’s mark. Obviously, the marks in this
case are not identical. Applicant’s mark consists of the
words CUSTOM and SERIES in the same script with the number
66 and a shield design in between. As shown below,
registrant’s mark consists of a very similar shield design
with the number 66 and the word PHILLIPS.
In a particularly relevant case, the Court of Custom
and Patent Appeals held that the mark CRC MARINE FORMULA 6-
Ser. No. 75/385,948
6
66 for rust and corrosion inhibitors for boats was
confusingly similar to the mark “66” for non-identical
marina services and supplies. Phillips Petroleum Co. v.
C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA 1971).
The CCPA pointed out that the specimens emphasized the
prominence of the “6-66” part of the mark. Id. at 36. It
also found “that Phillip’s mark ‘66’ is an old and very
well-known mark for petroleum products.” Id. In the
present case, a review of the marks shows the prominence of
the shield design and the number 66. The shield design is
the largest portion of both marks, and the number “66”
contained in both marks is the next largest component of
the mark. Visually, the “66” and shield dominates both
marks. Applicant’s deletion of registrant’s house mark and
the inclusion of the terms “custom” and “series” do not
create a significantly different meaning. The words
“custom” and “series” reinforce the connection with “66” by
suggesting that this is another series of air filters that
registrant is now producing. Also, when the marks are
pronounced, the number “sixty-six” would be pronounced
prominently. Thus, the commercial impressions created by
the marks PHILLIPS 66 and shield design and CUSTOM 66
SERIES and shield design is similar.
Ser. No. 75/385,948
7
Applicant argues strongly that its mark is CUSTOM 66
SERIES, not CUSTOM SERIES 66 as the Examining Attorney has
referred to the mark. Applicant is not seeking
registration of its mark as a typed drawing. Applicant has
depicted its mark as a special form drawing. It is not
clear in what order customers would verbalize its mark. It
has long been a principle of trademark law that there is no
correct pronunciation of a mark, In re Belgrade Shoe Co.,
162 USPQ 227 (CCPA 1969), and likewise when a trademark
owner displays the words and numbers in its mark
differently, it cannot control in what order potential
purchasers may pronounce the words in the mark. While we
do not believe it affects the outcome of the case, we will
refer to the mark as applicant requests.
Applicant points out that we may not dissect a mark to
find confusion. Packard Press Inc. v. Hewlett-Packard Co.,
56 USPQ2d 1351 (Fed. Cir. 2000). However, it is not
improper to give more weight to a particular component of a
mark. Id. at 1354. As explained above, the number “66”
and shield design is the dominant part of both marks
visually. It also dominates the commercial impression.
Furthermore, the number “66” is a significant part of the
mark when it is spoken.
Ser. No. 75/385,948
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Applicant also argues that 66 is a reference to the
“famous Route 66.” Brief at 3. Even if it were so (and
there is no evidence in the file to that effect), there is
no evidence that the term is weak when applied to air
filters. Indeed, the CCPA found that the mark “66” was
well-known, and it held that it was confusingly similar to
a mark that included a third “6” and a hyphen as well as
the wording “CRC MARINE FORMULA.” Phillips Petroleum, 170
USPQ at 36. Applicant’s other wording is much less
distinctive than the wording in the Phillips Petroleum
case. Also, the record is devoid of any evidence of third-
party registrations of marks with a “66” feature.
Finally, with regard to the issue of likelihood of
confusion, the words “custom” and “series” would not be as
distinctive for automobile parts as the term “66” and
shield design. Even if the words are not descriptive, they
are much less distinctive for air filters than the “66”
portion of the mark in a shield design. Their inclusion in
applicant’s mark would not eliminate the likelihood of
confusion between the marks. Therefore, we conclude that
the marks are confusingly similar.
The Examining Attorney has also made the “requirement
for the disclaimer of the terms CUSTOM SERIES” final.
Ser. No. 75/385,948
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Office Action dated Apr. 5, 1999, p. 2.4 Applicant has
refused to submit the requested disclaimer.
The Examining Attorney has referred to a dictionary
definition of the word “custom” defined to mean “made to
order.” Exhibit B. The Examining Attorney also submitted
evidence that air filters, primarily heating and air-
conditioning air filters, are described as custom air
filters. Exhibit C. The CCPA has also held that “the word
‘custom’ is commonly used to indicate things made to
order.” In re Sun Oil Co., 165 USPQ 718, 718 (CCPA 1970)
(Custom “has very little trademark significance when used
in connection with blended gasoline”). The Examining
Attorney has also included evidence that there are custom
air filters, although most of this evidence does not relate
to air filters for machines and vehicles.
Applicant asserts in its Reply Brief (p. 2) that:
[T]he goods are not, as stated by the Examiner, “a
series of custom filters”. As the statement of the
goods provided by the Applicant in the application,
and the exhibits filed by the Applicant in this file
demonstrate, the goods are just plain pre-manufactured
air filters, identified in a catalog, and are not “a
series of custom filters.”
4 The Examining Attorney explained in an earlier action that:
“The applicant again refuses to disclaim the terms CUSTOM
and SERIES. The term SERIES is obviously descriptive since
it only denotes that the goods [are] one of many in a
series. The dispute is over the term CUSTOM.”
Office Action dated Oct. 12, 1999.
Ser. No. 75/385,948
10
A review of applicant’s catalog and exhibits supports
its assertion that the goods are not “a series of custom
filters” as the Examining Attorney argued. Brief at 7
(referring to Exhibit B defining custom as “made to
order”). There is no evidence that applicant’s goods are
made to order air filters, air cleaner assemblies or air
filter assemblies.
The Board has long held that doubt in cases of whether
a mark is merely descriptive must be resolved in favor of
the applicant. In re Conductive Systems, 220 USPQ 84 (TTAB
1983). Accord In re Merrill, Lynch, Fenner, Pierce &
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987)
(Doubt regarding secondary meaning should be resolved in
favor of applicant). Here, because we have some doubt as
to whether the term “custom” is descriptive of applicant’s
goods, we resolve it in applicant’s favor.
However, we have no doubt that the word “series” is
descriptive of applicant’s goods. The CCPA rejected the
argument that MATCHBOX SERIES was not at least descriptive
because it found that “merchandise in the form in which
appellant puts it on the market is aptly described as a
series of matchbox toys.” J. Kohnstam, LTD. V. Louis Marx
& Co., 126 USPQ 362, 364 (CCPA 1960). The Examining
Ser. No. 75/385,948
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Attorney has also included a definition of “series” as “a
group of objects related by a linearly varying
morphological or configurational characteristic.” Appeal
Brief, Ex. B.5 In Saab-Scania Aktiebolag v. Sparkomatic
Corp., the Board held that:
The word “SERIES” in applicant’s mark is highly
suggestive, if not descriptive, of a line or
group of products offered by the applicant. One
dictionary definition of the term is “a group of
usu. three or more things . . . standing or
succeeding in order and having a like
relationship to each other.” Thus, applicant’s
products which bear the “9000 SERIES” mark will
be viewed as speakers in a line or series of such
goods.
26 USPQ2d 1709, 1710 (TTAB 1993).
Applicant’s catalog describes the custom air filter
assemblies sold under the mark CUSTOM 66 SERIES and shield
design as “[a]vailable in 3 different designs,” which is
consistent with the definition of the term “series.” While
mere descriptiveness was not an issue in the Saab-Scania
case, it is in this case. Inasmuch as applicant is selling
a series of air filter assemblies, the term “series” would
be descriptive of the goods.
A term is merely descriptive if it immediately conveys
knowledge of the ingredients, qualities, or characteristics
5 We can take judicial notice of dictionary definitions. Notre
Dame du Lac v. J.C. Gourmet Food Imports, 213 USPQ 594, 596 (TTAB
1982), aff'd, 217 USPQ 505 (Fed. Cir. 1983)
Ser. No. 75/385,948
12
of the goods. In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987); In re Quik-Print Copy Shops,
Inc., 616 F.2d 523, 525, 205 USPQ 505, 507 (CCPA 1980). A
term is descriptive if it describes one of the qualities or
properties of the goods. Gyulay, 3 USPQ2d at 1010. Here,
applicant’s goods are “air filters, air cleaner assemblies
and air filter assemblies for machines and vehicles.”
Since they can be described as a “series” of goods, the
Examining Attorney properly required a disclaimer of the
term.
Applicant also argues that its mark is unitary and
that no disclaimer is necessary.
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a
unitary mark, these observable characteristics must
combine to show that the mark has a distinct meaning
of its own independent of the meaning of its
constituent parts.
Dena Corp. v. Belvedere International, Inc., 950 F.2d 1555,
21 USPQ2d 1047, 1052 (Fed. Cir. 1991). Here, the terms
“custom” and “series” are visually separated by the shield
design with the number “66” in the middle. The mere fact
that the script of the words “custom” and “series” touches
the shield is not enough to demonstrate that the design is
a unitary design. Instead of creating a unitary
impression, the special form drawing actually separates the
Ser. No. 75/385,948
13
words “custom” and “series” from each other. Furthermore,
applicant admits that the mark has no unitary meaning
because it acknowledges that “the phrase reads ‘CUSTOM 66
SERIES’, which does not mean anything.” Reply Brief at 3.
Therefore, the mark is not unitary and a disclaimer of the
word “series” is appropriate.
Decision: The refusal to register the mark under
Section 2(d) is affirmed. The requirement for a disclaimer
of the term “series” is also affirmed. The requirement for
a disclaimer of the word “custom” is reversed. In the
event that applicant appeals this decision and ultimately
prevails on the Section 2(d) refusal, it will be necessary
for applicant to submit a disclaimer of the term “series”
apart form the mark.