Little Giant Pump Company

Trademark Trial and Appeal Board

Aug 2, 2007

No. 78557178 (T.T.A.B. Aug. 2, 2007)

Mailed: June 27, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Little Giant Pump Company
________

Serial No. 78557178
Serial No. 78665648
_______

Bill McCarthy of Fellers, Snider, Blankenship, Bailey & Tippens
for Applicant.

Tejbir Singh, Trademark Examining Attorney, Law Office 106 (Mary
I. Sparrow, Managing Attorney).
_______

Before Hohein, Taylor and Wellington, Administrative Trademark
Judges.

Opinion by Wellington, Administrative Trademark Judge:

Little Giant Pump Company has filed applications to register
on the Principal Register the marks "WATERMARK" (in standard
character format) and “WATERMARK” with design, as shown below:

for, in each instance, “water pumps for water filtering units” in
International Class 7 and "water gardening products, namely,
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. Nos. 78557178 and 78665648
2
submersible skimmers, decorative waterfalls, water filters; light
bulbs and lighting fixtures” in International Class 11.1
Registration of the marks has been finally refused under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant's marks, when applied to its identified
goods, so resemble the mark "WATERMARK," which is registered on
the Principal Register in standard character form for "decorative
water fountains" in International Class 11,2 as to be likely to
cause confusion, or to cause mistake, or to deceive.
Applicant has appealed both refusals and briefs have been
filed. The appeals are hereby consolidated and shall be decided
in this single opinion. As explained herein, we affirm the
refusals to register.
When there is an issue of likelihood of confusion, we
consider the evidence in light of the relevant factors set out in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and Recot,
Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir.
2000). In considering the evidence of record on these factors,
we must keep in mind that “[t]he fundamental inquiry mandated by
§ 2(d) goes to the cumulative effect of differences in the

1 Ser. Nos. 78557178 and 78665648, filed on January 31, 2005 and July
7, 2005, respectively, are based on allegations that the marks were
first used in commerce on August 23, 2005.
Ser. Nos. 78557178 and 78665648
3
essential characteristics of the goods and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to consideration of the goods at issue, the
recited goods in both of the applications include “decorative
waterfalls” and the goods covered by the registration are
“decorative water fountains.” The Examining Attorney has made of
record Internet evidence to support his contention that such
goods are very similar, if not the same. This evidence includes
copies of printouts from third-party website retailers offering
decorative waterfalls, decorative water fountains, and related
goods. On one website, a product advertised as the “Gardenfall
Bamboo Water Fountain” is described as “the most elegant
waterfall in its collection.” Thus, the product is referred to
as both a water fountain and a waterfall. The advertisement
appears as follows:

2 Reg. No. 2221915, issued on February 2, 1999, which sets forth a date
of first use of the mark anywhere and in commerce of September 30,
1996; combined §§ 8 and 15 affidavit filed.
Ser. Nos. 78557178 and 78665648
4

[from the website www.amberleaves.com]
The following website printout shows a category of products
referred to as “waterfall fountains,” one product is called a
“Arch Stone Waterfall Fountain,” and decorative waterfalls are
offered alongside decorative fountains:

[from the website www.kineticfountains.com]
Ser. Nos. 78557178 and 78665648
5
The evidence also supports the Examining Attorney’s
contention that several of applicant’s other goods, namely, water
pump filtering units, water filters and lighting fixtures can be
used with registrant’s decorative water fountains. For example,
the following website printout shows pumps and submersible lights
for use with water fountains.

[from the website www.mainlandmart.com]
Based on all of the evidence of record, we conclude that the
goods “waterfalls” and “water fountains” are extremely similar in
nature and the terms are sometimes used interchangeably to refer
to the same product. Moreover, applicant’s pumps, submersible
lights and water filters are highly related to registrant’s water
fountains inasmuch as the former can be used with the latter.
Therefore, the factor of the similarity of the goods weighs
Ser. Nos. 78557178 and 78665648
6
strongly in favor of finding a conclusion of likelihood of
confusion.
Inasmuch as applicant’s goods are highly similar, if not the
same in part, and there are no restrictions on applicant’s or
registrant’s goods, we must assume that the goods move in the
same channels of trade to the same customers. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided
on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the sales
of goods are directed”). Accordingly, applicant’s arguments that
“prospective purchasers are dissimilar” and that the trade
channels are different, i.e., that it manufactures contractor or
commercial grade goods while registrant’s goods are “relatively
high cost art pieces serving a completely aesthetic purpose,” are
not well taken.
Turning, then, to consideration of the marks at issue, we
note that the registered mark is identical to the mark in
application Serial No. 78557178 and, with respect to the mark in
application Serial No. 78665648, only the stylized letter “M”
distinguishes the two marks. However, because registrant’s mark
is in standard character format, we must assume that it may be
Ser. Nos. 78557178 and 78665648
7
used in the same stylized manner as applicant’s stylized version
of its mark, including the display thereof with an identical
stylized letter “M.” See, e.g., In re Melville Corp., 18 USPQ2d
1386, 1388 (TTAB 1991); In re Pollio Dairy Products Corp., 8
USPQ2d 2012, 2015 (TTAB 1988); Sunnen Products Co. v. Sunex
International Inc., 1 USPQ2d 1744, 1751 (TTAB 1987); and In re
Hester Industries, Inc., 231 USPQ 881, 883, n.6 (TTAB 1986).
Applicant argues, citing the First Circuit in Pignons S.A.
de Mecanique de Precision v. Polaroid Corp., 657 F.2d 482 (1st.
Cir. 1981) and other cases, that both of its applied-for marks
are not similar to the registered mark because applicant “always
used the mark ‘WATERMARK’ in conjunction with [applicant’s]
corporate name, Little Giant, whereas Registrant does not use the
mark ‘WATERMARK’ in conjunction with any corporate affiliation.”
However, as the examining attorney correctly pointed out in his
Office Actions, the comparison of the marks must be based on the
marks as they appear in the drawings of the applications and
registration, respectively, neither of which includes a house
mark. See Frances Denney v. Elizabeth Arden Sales Corp., 263
F.2d 347, 120 USPQ 480 (CCPA 1959); INB National Bank v.
Metrohost Inc., 22 USPQ2d 1585 (TTAB 1992); and Blue Cross and
Blue Shield Association v. Harvard Community Health Plan Inc., 17
USPQ2d 1075 (TTAB 1990).
Ser. Nos. 78557178 and 78665648
8
Considered in their entireties, applicant's marks and
registrant's mark are identical or substantially identical in
sound, appearance, connotation and commercial impression.
In view of the above, we conclude that there is a likelihood of
confusion. Upon encountering the identical or nearly identical marks
on decorative water fountains and decorative waterfalls, consumers are
likely to believe that they emanate from the same source. Likewise,
the same consumers may mistakenly believe that applicant’s other water
gardening products and its water pumps for water filtering units are
specifically designed to be compatible with registrant’s decorative
water fountains or, at least, that they emanate from the same source.
Decision: The examining attorney’s refusals to register
applicant’s marks "WATERMARK" and “WATERMARK” and design for the
identified goods because of a likelihood of confusion with the
mark in the cited registration are affirmed.