Loggerhead Tools LLC

Trademark Trial and Appeal Board

Aug 7, 2007

No. 78533032 (T.T.A.B. Aug. 7, 2007)

Oral Hearing: May 24, 2007 Mailed: August 7, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Loggerhead Tools LLC
________

Serial Nos. 78533029 and 78533032
_______

Michael J. Turgeon of Vedder, Price, Kaufman & Kramholz,
P.C. for Loggerhead Tools LLC.

Daniel Capshaw, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Hohein, Hairston and Cataldo, Administrative
Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applications were filed by Loggerhead Tools LLC to
register the following marks in standard character form on
the Principal Register:
BIONIC WRENCH1 and BIONIC GRIP2

1 Application Serial No. 78533029 was filed on December 15, 2004,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. In response to a requirement by the
trademark examining attorney, applicant disclaimed the exclusive
right to use “WRENCH” apart from the mark as shown.

2 Application Serial No. 78533032 was filed on December 15, 2004,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce. In response to a requirement by the
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78533029
2
both (as amended) for “hand tools, namely, wrenches,
screwdrivers, hammers, cable cutters, bolt cutters,
crimpers, nut drivers, folding knives, special purpose
knives, snips, scissors, chisels, punches, wire pulling
grips, pipe cutters, tubing cutters, pliers, glass tube
cutter, hose crimper, cable stripper, wire stripper and
multiple function folding pocket tools comprised of
screwdrivers, scissors, blades, files, can openers,
corkscrews, wire cutters and wire strippers” in
International Class 8.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s marks, as intended to be used on or in
connection with its goods, so resemble the mark BIONIC,
previously registered on the Principal Register in typed or
standard character form for “power drill bits” in
International Class 7,3 as to be likely to cause confusion.
When the refusal was made final in both cases,
applicant appealed. Applicant and the examining attorney
filed briefs on the issue under appeal in both cases and
applicant filed reply briefs. In addition, applicant’s

trademark examining attorney, applicant disclaimed the exclusive
right to use “GRIP” apart from the mark as shown.

3 Registration No. 2615322, issued on September 3, 2002.

Ser No. 78533029
3
request for an oral hearing was granted; and applicant and
the examining attorney presented arguments relating to the
issue under appeal at an oral hearing held on May 24, 2007.
Because the examining attorney has cited Registration
No. 2615322 as a bar to registration of both applications
under consideration herein, and further because applicant
and the examining attorney have presented essentially
identical arguments on the issue under appeal on the same
records, we will come to our determination with regard to
both applications in this decision.
Evidentiary Matters
Before turning to the substantive ground for refusal,
we note that applicant has submitted an exhibit with its
reply briefs. This exhibit consists of a printout from the
Time Magazine Internet website containing an advertisement
for applicant’s goods. Applicant argues that such article
is admissible because it previously was unavailable.
However, Trademark Rule 2.142(d), 37 C.F.R. §2.142(d),
provides as follows:
(d) The record in the application should
be complete prior to the filing of an
appeal. The Trademark Trial and Appeal
Board will ordinarily not consider
additional evidence filed with the Board
by the appellant or by the examiner
after the appeal is filed. After an
appeal is filed, if the appellant or the
examiner desires to introduce additional
Ser No. 78533029
4
evidence, the appellant or the examiner
may request the Board to suspend the
appeal and to remand the application for
further examination.

Applicant did not request remand of the involved
applications to the examining attorney for consideration of
this evidence, but as noted above, simply submitted such
with its reply briefs. We find, therefore, that this
exhibit is untimely, and it has not been considered. See
Id. See also TBMP §1203.02(e) (2d ed. rev. 2004) and the
authorities cited therein. We note nonetheless that had we
considered this exhibit in our determination of the issue
on appeal, the result would be the same.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth 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., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
Ser No. 78533029
5
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first consider the similarity of the marks. In
this case, applicant’s marks, BIONIC WRENCH and BIONIC
GRIP, incorporate in their entirety the cited mark, BIONIC,
as their most distinctive element. As such, applicant’s
marks are identical in part to the mark in the cited
registration in appearance and sound. As for the presence
of WRENCH and GRIP in applicant’s marks, these terms, which
have been disclaimed, are at best descriptive, if not
generic, as applied to the identified goods which include
“wrenches” and “wire-pulling grips.” It is a well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). In view of the
descriptive, if not generic, nature of the words WRENCH and
GRIP, they have little, if any, source-indicating
Ser No. 78533029
6
significance, and are entitled to less weight in the
likelihood of confusion analysis.
Applicant argues that BIONIC modifies WRENCH and GRIP
in its marks in such a manner as to connote “goods that
provide substantially increased grasping force” (brief, p.
3). Applicant argues that, as a result, the terms WRENCH
and GRIP, though disclaimed, play “a critical role in the
public perception of Applicant’s mark[s]” (brief, p. 2).
However, there is nothing in the record to suggest that
registrant’s BIONIC mark does not have the same connotation
as applied to the goods recited in the registration. That
is to say, BIONIC connotes power drill bits that provide
substantially increased force in the same manner in which
BIONIC WRENCH and BIONIC GRIP connote wrenches and grips
that provide substantially increased grasping force. The
terms WRENCH and GRIP merely identify the goods in the
applications upon which such benefit is conferred. As
such, we find that the addition of those terms to
applicant’s marks does not serve to create a different
connotation, or create a distinct commercial impression,
from that of registrant’s BIONIC mark.
Applicant further argues that BIONIC is a weak mark
entitled to a narrow scope of protection. In support of
its position, applicant submitted copies of third-party
Ser No. 78533029
7
registrations consisting of BIONIC and BIONIC-formative
marks. We note, however, that none of the registrations
made of record by applicant identify goods that are even
remotely related to the goods recited in either its
applications or the cited registration.4 As such, we are
not compelled by such evidence to find that BIONIC is a
weak mark in the field of power drill bits or that BIONIC
should be afforded a narrow scope of protection.
In this case, we find that consumers who are familiar
with the mark, BIONIC, used in connection with registrant’s
power drill bits, who then see the marks BIONIC WRENCH and
BIONIC GRIP used in connection with applicant’s various
hand tools, are likely to assume that the owner of the
BIONIC mark has simply added WRENCH or GRIP when using the
mark in connection with hand tools. In other words,
consumers are likely to view the marks as variations of
each other, but indicating a single source. Thus, despite
the fact that applicant’s marks respectively include the
words WRENCH and GRIP, the marks BIONIC and BIONIC WRENCH
and BIONIC GRIP, taken as a whole, are highly similar in

4 For instance, applicant’s evidence includes the following
registrations, all for the mark BIONIC: Reg. No. 2944649 for
“protective faceshields for industrial use;” Reg. No. 3078213 for
“degreasing preparations for use on metal working manufacturing
machinery;” Reg. No. 2948,490 for “golf gloves;” and Reg. No.
2753505 for “hockey gloves and hockey leg pads.”

Ser No. 78533029
8
appearance, sound, connotation and commercial impression.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Turning now to our consideration of the identified
goods, it is clear that applicant’s various hand tools are
not the same as registrant’s power drill bits. However, it
is not necessary that the goods at issue be the same as, or
even similar or competitive, or even that they move in the
same channels of trade, to support a holding of likelihood
of confusion. It is sufficient instead that the respective
goods are related in some manner, and/or that the
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. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, the examining attorney has made of
record a number of use-based, third-party registrations
which show that various entities have adopted a single mark
for goods that are identified in both applicant’s
applications and the cited registration. See, for example:

Ser No. 78533029
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Registration No. 2344607 for, inter alia, power
tool accessories, namely, drill bits, wrenches
screwdrivers, hammers;

Registration No. 2800554 for, inter alia, power
drill bits, pliers, screwdrivers, hammers,
wrenches, and strippers;

Registration No. 2629217 for, inter alia, drill
bits for power tools, hand wrenches;

Registration No. 2733300 for, inter alia, power-
operated tools and accessories, namely, drill
bits, screwdrivers, wrenches, pliers, nutdrivers,
bits, and snips;

and

Registration No. 2906942 for, inter alia, power
tools, namely, electrical drills, drill bits,
hammers, wrenches, pliers, screw drivers, snips,
chisels.

Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993).
In addition, the examining attorney submitted evidence
from commercial Internet web sites suggesting that the same
entities provide both applicant’s and registrant’s types of
goods. The following samples are illustrative:
power drill bits as well as wrenches and pliers
(www.wihatools.com);

Ser No. 78533029
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power drill bits as well as wrenches and nut
drivers,
(www.buy1.snapon.com);

pneumatic drill bits as well as hammers, chisel
sets, ring pliers, cable cutters, scissors,
knives, strippers, pliers and wrenches,
(www.mytoolstore.com);

power drill bits as well as wrenches,
(www.stanleytools.com);

power drill bits as well as pliers,
(www.matcotools.com);

and

power drill bits as well as wrenches,
screwdrivers and pliers,
(www.sears.com).
We are not persuaded by applicant’s arguments that
registrant’s goods are more restricted as to type or trade
channel than indicated in the identification of goods in
the cited registration. It is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved application and cited registration. See 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
Ser No. 78533029
11
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.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) Thus, while applicant
may assert that registrant’s goods are masonry drill bits
marketed toward masonry professionals only through
authorized distributors, registrant’s identification of
goods contains no such limitations. Accordingly,
registrant’s goods are presumed to move in all normal
channels of trade and be available to all classes of
potential consumers, including consumers of applicant’s
goods.5 See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Thus, the same consumers, including homeowners and
individuals involved in do-it-yourself home projects, as
well as contractors and other construction professionals,
may use registrant’s drill bits and applicant’s various

5 Because the record in these cases establishes that applicant’s
goods are related to those of registrant and that the channels of
trade are unlimited, applicant’s proposed alternative limitations
to its identification of goods, specifically “excluding power
drill bits” or indicating that its goods are “sold through mass
merchandisers” both fail to obviate any likelihood of confusion
between its marks and that of registrant.

Ser No. 78533029
12
hand tools for any construction or repair project to which
such goods are suited.
Applicant further argues that the goods are not related
because the Office has permitted registration by different
entities of marks that are similar to one another for its
goods on one hand and those of registrant on the other. In
this regard, applicant submitted third-party registrations,
owned by different entities, showing use of similar marks on
various goods in International Classes 7 and 8. However,
the probative value of this evidence is very limited because
applicant presented no evidence concerning the extent to
which these third-party marks are used in commerce. See
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). Moreover, a review
of the third-party registrations reveals that none are
similar to the marks at issue in this case.6 Thus,
applicant’s evidence does not establish that there is
widespread use of BIONIC formative marks on power drill bits
such that registrant’s mark is weak and entitled to only a
narrow scope of protection. Finally, each case must be
decided on its own merits, and previous decisions by

6 The third-party registrations made of record by applicant
include, for instance, registrations for such marks as ZIP,
MASTER, READY and SMART as well as marks with such formative
roots.
Ser No. 78533029
13
examining attorneys in approving unrelated marks are without
evidentiary value and are not binding on the Office or the
Board. See In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB 1994);
and In re National Novice Hockey League, Inc., 222 USPQ 638,
641 (TTAB 1984).
This factor, therefore, favors a finding of likelihood
of confusion.
The final du Pont factor discussed by applicant is
that of the conditions of sale. Applicant asserts that
both its goods and those of registrant would be purchased
by careful, well-informed and sophisticated users. We
disagree. There is no basis to assume that applicant’s and
registrant’s goods are limited to sophisticated or well-
informed persons. None of the identifications of goods
limit the intended purchasers to professionals or experts
in a particular trade or field. As identified, both
applicant’s and registrant’s goods may be purchased by
ordinary members of the general public, who would not
necessarily be sophisticated consumers but may include home
owners engaged in occasional home repair projects.
Further, even if an individual is careful about a purchase,
that does not necessarily make him a sophisticated
purchaser, since sophistication involves a greater
Ser No. 78533029
14
knowledge of the goods or industry than may be present in
an ordinary consumer.7 Moreover, in view of the third-party
registrations which are evidence that both applicant’s and
registrant’s goods are of a type which may emanate from a
single entity, prospective purchasers may mistakenly
believe that these goods could emanate from a common
source. In addition, even if some degree of care were
exhibited in making the purchasing decision, the marks
BIONIC on the one hand and BIONIC WRENCH and BIONIC GRIP
are so similar that even careful purchasers are likely to
assume that the marks identify goods emanating from a
single source.
Decision: The refusal of registration is affirmed.

7 In addition, even sophisticated purchasers are not necessarily
knowledgeable in the field of trademarks or immune from source
confusion. See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB
1988).