Malco Products

Trademark Trial and Appeal Board

Feb 10, 2004

No. 76260899 (T.T.A.B. Feb. 10, 2004)

Mailed:
February 10,
2004
Hearing: Paper No. 17
August 14, 2003 RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Malco Products, Inc.
________
Serial No. 76260899
_______
Reese Taylor of Renner, Kenner, Grieve, Bobak, Taylor &
Weber for Malco Products, Inc.
Doritt Carroll, Trademark Examining Attorney, Law Office
106 (Meryl Hershkowitz, Managing Attorney).
_______
Before Cissel, Rogers and Bucher, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
The above-identified applicant applied to register the
mark shown below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76260899
2
on the Principal Register for “power steering fluid,
chemical additives for fuel and diesel fuel treatment, fuel
injection cleaner chemical additives, octane booster fuel
chemical additive, in International Class 1; carburetor and
choke cleaning preparations, automobile wax, cleaning
preparation for automobile brakes and parts therefore, in
International Class 3; and automatic transmission fluid, in
International Class 4.” The application was based on
applicant’s assertions that its predecessor first used the
mark in commerce in January of 1971, and that applicant
uses it now.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that the mark applicant seeks to register, as
applied to the goods specified in the application, so
resembles the following two registered marks that confusion
is likely.
Ser. No. 76260899
3
is registered1 for “automotive electrical switches,
automotive electrical connectors, automotive electrical
assembly units, automotive speaker wire, automotive
electrical sockets, automotive fusible links, automotive
electrical terminals, automotive electrical wiring units,
automotive electrical primary wire, automotive electrical
pigtails in the nature of connectors, and automotive
electrical harnesses”; and
is registered2 for “screws, clamps, lugs and rings,” in
1 Reg. No. 1,435,345, issued on the Principal Register on April
7, 1987 to Echlin, Inc., a Connecticut corporation. Affidavits
under Sections 8 and 15 of the Act accepted and acknowledged,
respectively. The drawing is lined for the colors red and
yellow.
2 Reg. No. 1,452,907, issued on the Principal Register on August
18, 1987 to Echlin, Inc., a Connecticut corporation. Affidavits
under Sections 8 and 15 accepted and acknowledged. The drawing
is lined for the color red.
Ser. No. 76260899
4
Class 6, and for “electrical equipment and parts, namely
solderless connectors, test clips, insulated clips,
charging clips, connectors, wire joints, line taps, wire
splices, grommets, cable ties, box connectors, circuit
breakers and testers, ground clips, conduit fittings, wire;
preinsulated terminals, splices, spades and disconnects for
wire gauges; switches and switch panels,” in Class 9.
Applicant responded to the refusal to register with
argument that confusion between its mark and the cited
registered marks is not likely because the marks are
“readily distinguished on the basis of appearance and
sound.” (February 7, 2002 response, p. 2) Applicant also
argued that its goods are not related to the goods
specified in the cited registrations. In this regard,
applicant contended that registrant’s “targeted consumers
are wholesalers and repair shops, while applicant’s
consumers are the average, everyday car owner,” so that
applicant’s customers are unlikely to encounter
registrant’s specialized products, and, to the extent that
some wholesalers or repair shop employees familiar with
registrant’s mark might encounter the products bearing
applicant’s mark, such people are sophisticated with
respect to their knowledge of the products and services
sold in the automotive field, and accordingly, they would
Ser. No. 76260899
5
not be confused as to the source of the goods sold under
registrant’s and applicant’s marks.
The Examining Attorney was not persuaded by
applicant’s arguments, however, and the refusal was made
final in the second Office Action. Submitted with that
action in support of the refusal to register were copies of
a number of third-party registrations wherein marks are
registered for both various automotive fluids and car
parts. One such example is the mark “MOROSO,” which is
registered3 for, inter alia, chemical fuel additives, namely
gasoline anti-knock fuel additives and octane booster fuel
additive; non-chemical fuel additives, namely, gasoline
anti-knock fuel additives and octane booster fuel additive;
automotive lubricants; battery disconnect switches; cable
terminals; starter switches; starter switch cables; switch
panels and toggle switches; jumper terminals; battery
connectors; battery junction boxes; battery quick connect
plugs and quick disconnect flush mount battery cable
connectors, flush mount battery cable connectors, battery
relocation trays,; cables, terminals, clamps and grommets;
lights for vehicles, such as low-oil warning lights and
tachometer lights and flashing lights; and wire ties for
3 Reg. No. 2,136,866, issued on the Principal Register to Moroso
Performance Products, Inc. on February 17, 1998.
Ser. No. 76260899
6
use with land motor vehicles. Another example is the mark
“ACDelco” and design, which is registered4 for antifreeze;
automobile cooling system rust inhibitors; automobile
cooling system leak sealants; brake fluid; coolants for
vehicle engines; power steering fluid; automotive
electrical ignition switches; electrical air bag switches;
electrical switches; batteries; electrical wire sets
comprised of electrical cable, electrical connectors and
voltage regulators. Similar third-party registrations
owned by other vehicle manufacturers such as Ford,
automotive parts dealers such as NAPA, and general
merchandisers such as Sears were also submitted by the
Examining Attorney.
Applicant responded to the final refusal to register
with additional argument that confusion is not likely
between its mark and the cited registered marks. Attached
as an exhibit to applicant’s response was the declaration
of Stuart Glauberman, applicant’s president, stating that
4 Reg. Nos. 2,440,150, issued on the Principal Register to
General Motors Corp. on April 3, 2001; and 2,445,739, issued to
General Motors Corp. on April 24, 2001.
Ser. No. 76260899
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for the fifteen years he had been president of applicant,
he was unaware of any instances of actual confusion between
applicant’s mark and the cited registered marks.
The Examining Attorney treated applicant’s response as
a request for reconsideration of the final refusal. After
reconsidering the refusal in light of applicant’s request,
however, she maintained the refusal to register.
Applicant then timely filed a Notice of Appeal,
followed by its appeal brief. The Examining Attorney filed
her brief on appeal and applicant filed a reply brief,
along with a request for an oral hearing before the Board.
As indicated above, both applicant and the Examining
Attorney presented arguments at the hearing on August 14,
2003.
Based on careful consideration of the record and the
arguments before us, as well as the Act and the legal
precedents on the issue of likelihood of confusion under
Section 2(d), we find that the refusal to register is well
taken. Confusion is likely because the marks create
similar commercial impressions and the goods identified in
the cited registrations are related to those specified in
the application.
The marks create similar commercial impressions
because each is dominated by the design of an octagonal
Ser. No. 76260899
8
traffic stop sign on which the word “STOP” is shown on a
red background.
Applicant argues that the marks are readily
distinguishable because the additional word “ONE” is shown
in the cited registered marks directly above the word
“STOP.” Applicant contends that the addition of this word
changes the connotation of these marks from that of an
ordinary stop sign, which, in connection with applicant’s
goods, suggests that the goods “stop” bad things from
happening to your car, whereas the two-word term “ONE STOP”
in the cited registered marks conveys the suggestion that
all of a customer’s needs can be met in a single shopping
trip.
While pensive reflection and thoughtful analysis of
these two marks could result in a purchaser of these
products eventually making such distinctions, in view of
the nature of the goods specified in both the application
and the cited registration, it is unlikely that purchasers
will engage in this kind of analysis. Simply put, people
who buy the goods listed in the application, including
things like fuel additives, carburetor cleaners, wax and
automatic transmission fluid for automobiles, can be the
same people who purchase the electrical products for
automobiles such as speaker wire, fuse links and electrical
Ser. No. 76260899
9
wire and terminals, which are specified in the cited
registration, and these people are unlikely to analyze
these two marks to the extent argued by applicant. To the
contrary, the addition of the word “ONE,” which appears in
letters much smaller than the word “STOP,” is unlikely to
be a basis upon which consumers distinguish these marks.
The marks are otherwise almost identical, and the
commercial impressions they create are very similar.
Applicant argues, however, that the purchasers of
these products are so sophisticated that they would
distinguish between these marks, and that as sophisticated
purchasers, they would not expect these goods all to
emanate from a single source. Nothing in this record,
however, supports applicant’s position in this regard.
We must resolve the issue of whether confusion is
likely on the basis of the goods as they are identified in
the application and the cited registration, respectively,
without any restrictions or limitations not reflected
therein. In re Elbaum, 211 USPQ 639 (TTAB 1981). In the
instant case, therefore, we must consider that the goods
set forth in the application and in the cited registrations
are sold through all the usual channels of trade for such
products, so we can acknowledge the fact that ordinary
consumers are included along with professional automotive
Ser. No. 76260899
10
technicians in the pool of purchasers to whom these goods
are marketed, and that they are available to such people
through the same channels of trade, including auto parts
stores and mass merchandisers.
The third-party registrations owned by Sears and NAPA
support this conclusion. Those registrations, as well as
the other use-based third-party registrations made of
record by the Examining Attorney, are evidence that the
goods named therein are commercially related such that the
use of these similar marks on them is likely to cause
confusion. In re Albert Trostel & Sons, 29 USPQ2d 1783
(TTAB 1993).
Applicant argues that the Sears and NAPA registrations
are not probative of the commercial relatedness of the
goods because the marks in these registrations are house
marks under which a wide variety of products are sold.
While these marks do appear to be house marks, the
registrations nonetheless show that the owners of these
marks have, in fact, registered their respective marks for
the goods listed therein. The relevance of these
registrations under the Trostel case, supra, is not
diminished by the likelihood that the marks are house
marks. That lots of other products are also listed in
these registrations does not change the fact that the marks
Ser. No. 76260899
11
are registered for both the kinds of goods specified in the
application which is the subject of this appeal and the
products listed in the registrations cited as a bar to its
registration. In any event, even without the Sears and
NAPA registrations, the Examining Attorney has met her
burden of proof in this regard by making of record the
other third-party registrations mentioned above, which do
not appear to be in the nature of house marks.
Furthermore, it is well settled that goods or services
do not need to be identical in order for confusion to be
likely. Instead, it is sufficient if the goods are related
in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same people in situations that would
give rise, because of the marks employed thereon, to the
mistaken belief that they originate from or are in some way
associated with the same producer. In re Pan-O-Gold Baking
Co., 20 USPQ2d 1761 (TTAB 1991). The goods at issue in the
instant case clearly meet this test. All are products
which could be purchased and used by both professional
automobile technicians and individual car-owning consumers.
Although the purposes for which they are used are not the
same, all are related to automotive repair or maintenance.
In view of the very similar marks used on these related
Ser. No. 76260899
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products, purchasers are likely to assume that the goods
emanate from, or are in some way associated with, a single
source. Confusion is likely under these circumstances.
Accordingly, the refusal to register under Section
2(d) of the Lanham Act is affirmed and registration to
applicant is refused.