Milacron Inc.

Trademark Trial and Appeal Board

Jan 16, 2001

No. 75625094 (T.T.A.B. Jan. 16, 2001)

1/16/01
Paper No. 10
EWH/krd
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Milacron Inc.
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Serial No. 75/625,094
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John W. Gregg for Milacron Inc.
Rodney Dickinson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
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Before Hanak, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Milacron Inc. (applicant) seeks to register in typed
drawing form MACHINERY FLEA MARKET for “services of
enabling advertisement for sale of machinery by others on a
global computer network site.” The application was filed
on January 22, 1999 with a claimed first use date of
January 4, 1999.
The examining attorney has refused registration on
three grounds. First, the examining attorney contends that
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/624,094
2
applicant’s recitation of services is insufficient because
it is not specific enough. Second, citing Section 2(d) of
the Trademark Act, the examining attorney contends that
applicant’s mark, when used in connection with applicant’s
services, is likely to cause confusion with the mark
MACHINERY MARKETING, previously registered in typed drawing
form for “retail store services featuring equipment and
tools for shaping things out of metal.” Registration No.
2,038,144. Third, citing Section 2(e)(1) of the Trademark
Act, the examining attorney contends that applicant’s mark
is merely descriptive of applicant’s services.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request a
hearing.
In reviewing applicant’s recitation of services and
applicant’s specimens of use, we find that the recitation
describes the services with clarity and specificity, and
accordingly is an acceptable recitation. Applicant’s
specimens of use contain the following statements:
“Machinery Flea Market (TM) … the place to buy and sell new
and used machinery and equipment. Machinery Flea Market is
a completely free service of [applicant] where you can post
or search for new and used machinery and equipment.” This
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specimen of use constitutes the home page of applicant’s
website. The specimens of use clearly demonstrate that
applicant is offering the service of enabling others to
advertise the sale of their machinery on a global computer
network site. Accordingly, applicant’s recitation of
services is adequate, and the refusal to register on this
basis is reversed.
Considering next the refusal to register on the basis
that the use of applicant’s mark in connection with
applicant’s services is likely to cause confusion with the
mark MACHINERY MARKETING for retail store services
featuring equipment and tools, we reverse. In any
likelihood of confusion analysis, two key considerations
are the similarity of the marks and the similarity of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
While both marks contain the descriptive word MACHINERY,
the marks are otherwise dissimilar in terms of visual
appearance, pronunciation and meaning. The differences
between FLEA MARKET and MARKETING in terms of visual
appearance and pronunciation are obvious. Moreover, in
terms of meaning, the two marks are clearly different. A
“flea market” is defined as “an outdoor bazaar dealing
mainly in cheap, secondhand goods.” The word “marketing”
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is defined as “all business activity involved in the moving
of goods from the producer to the consumer, including
selling, advertising, packaging, etc.” Webster’s New World
Dictionary (2d ed. 1970). In short, the mark MACHINERY
MARKETING evokes images of sophisticated selling. The mark
MACHINERY FLEA MARKET evokes images of decidedly less
sophisticated selling that usually involves secondhand
goods.
In addition to the differences in the two marks, it
should also be made clear that registrant’s services and
applicant’s services are different. Registrant’s services
are retail store services featuring equipment and tools.
Applicant’s services consist of enabling others to
advertise the sale of their machinery. In other words,
registrant sells machinery, and applicant does not.
Rather, the customers of applicant’s services, as described
in its application, are entities which in turn engage in
the sale of machinery.
In sum, given the differences in the marks and the
differences in the services, we find that there exists no
likelihood of confusion resulting from the contemporaneous
use of MACHINERY FLEA MARKET and MACHINERY MARKETING.
Finally, we turn to the question of whether
applicant’s mark is merely descriptive of applicant’s
Serial No. 75/624,094
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services as described in its application. In this regard,
it is clear that the mere descriptiveness of a mark is not
judged in the abstract, but rather its judged in
relationship to the goods or services as described in the
application. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978).
The examining attorney has made of record numerous
excerpts of stories appearing in the NEXIS database showing
that various companies sell a wide array of goods and
services via computers in what are referred to as “on-line
flea markets.” However, applicant’s recitation of services
does not include the sale by applicant of machinery on-
line. Rather, applicant’s recitation of services is
limited to enabling others to advertise for sale their
machinery to potential buyers. While we recognize that the
question of whether applicant’s mark is merely descriptive
of applicant’s services as described in its application is
a close one, we are obligated in such situations to resolve
doubts in favor of applicant. In re Gourmet Bakers, Inc.,
173 USPQ 565 (TTAB 1972). Accordingly, the refusal to
register on the basis that applicant’s mark is merely
descriptive of applicant’s services is likewise reversed.
Decision: The refusal to register on all three
grounds is reversed.
Serial No. 75/624,094
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