NOK Corporation

Trademark Trial and Appeal Board

Jun 25, 2014

No. 79090703 (T.T.A.B. Jun. 25, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed:
June 25, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re NOK Corporation
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Serial No. 79090703
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Gary D. Krugman of Sughrue Mion, PLLC for NOK Corporation.

Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
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Before Wellington, Adlin and Hightower, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
NOK Corporation (“Applicant”) filed an application to register on the
Principal Register the standard character mark Global-SP for goods ultimately
identified as “O-rings of rubber for automobiles, industrial machines, hydraulic
equipments and semiconductor manufacturing equipments; non-metal gaskets for
industrial machines, hydraulic equipments and semiconductor manufacturing
equipments; non-metal packings for forming seals for use in automobiles, industrial
machines, hydraulic equipments and semiconductor manufacturing equipments,” in
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International Class 171 (italics provided to emphasize specific goods relevant to this
proceeding).
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that Applicant’s mark, when used with the
highlighted goods, so resembles the registered standard character mark SP
DIRECT for “Automotive aftermarket parts, namely, …gaskets …,” in
International Class 7,2 as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and filed a request for
reconsideration. On September 26, 2013, the Examining Attorney denied the
request for reconsideration. The appeal resumed and briefs have been filed.
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 (CCPA
1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(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

1 Application Serial No. 79090703 is a request for extension of protection of an international
registration under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a) (Madrid
Protocol). The application been accorded an effective filing date of November 18, 2010. See
15 U.S.C. §§ 1141f(b) (filing date).

2 Registration No. 3755262, issued on March 2, 2010. The registration also covers various
other automotive goods, parts and services.
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F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Similarity of the Goods in the Application and Registration
We turn first to the du Pont factor involving the relatedness of the relevant
goods, i.e., Applicant’s “O-rings of rubber for automobiles [and] non-metal packings
for forming seals for use in automobiles” and Registrant’s “Automotive aftermarket
parts, namely, …gaskets …”
The evidence establishes that O-rings, packings for forming seals, and
gaskets are roughly synonymous terms for goods that perform essentially the same
function. The Examining Attorney submitted the following definitions:3
Gasket: Any of a wide variety of seals or packings used between matched
machine parts or around pipe joints to prevent the escape of a gas or fluid.

O-ring: A flat ring made of rubber or plastic, used as a gasket.

Registrant’s automotive gaskets thus encompass Applicant’s O-rings and packings
for forming seals. These goods all share the same purpose, namely, forming seals in
automobiles to prevent the leak of a gas or fluid. Printouts from retail automotive
supply store websites, such as AutoZone, demonstrate that automotive engine
gaskets include “universal O-Rings” as well as various other types of gaskets, e.g.,
engine oil pan gaskets, valve cover gaskets and water outlet gaskets.4 The record
also includes printouts for a number of third-party marks registered for automotive
gaskets and packings and/or O-rings for purposes of showing that these are the kind

3 Both definitions from The American Heritage Dictionary of the English Language (4th
edition, updated 2009), printouts obtained from www.thefreedictionary.com and attached to
Office Action dated July 11, 2013.
4 Printouts from www.autozone.com attached to Office Action dated July 11, 2013.
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of goods that may emanate from a single source under a single mark. See In re
Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988). The Examining Attorney also submitted
Internet evidence showing the same manufacturer touting its automotive O-rings
and gaskets, as well a retail automotive supply website advertising “Manifold
Gaskets By Victor Reinz” (for $12.19) and “O-Rings by Victor Reinz” (for $21.18).5
We accordingly find that the goods are legally identical. This factor weighs in
favor of finding a likelihood of confusion.
The Channels of Trade and Classes of Purchasers for the Goods
Because Registrant’s goods encompass the objectionable goods identified in
the application, and they are thus legally identical, we must assume that the
purchasers and channels of trade for these goods would also be the same. See
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade channels and purchasers, these
clothing items could be offered and sold to the same classes of purchasers through
the same channels of trade.”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994) (“Because the goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the same class of purchasers.”).
In any event, the record supports this presumption and shows that automotive

5 Website printouts from www.columbiaerd.com and www.carquest.com, respectively,
attached to Office Action dated July 11, 2013.

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gaskets, seals and O-rings may indeed be found in the same retail automotive
supply stores.
In view of the above, the du Pont factors of the channels of trade and classes
of purchasers also favor a finding of likelihood of confusion.
Sophistication of Consumers
Applicant argues that consumers would “by virtue of the nature of the
function and use of the respective goods, be knowledgeable, technically trained
mechanics and automobile repair specialists who would purchase the various
automotive parts with care.” Brief, p. 6. Applicant characterizes the class of
consumers as “sophisticated, knowledgeable individuals who would immediately
recognize that Applicant’s goods emanate from Applicant.” However, Applicant does
not cite to any evidence and the record does not necessarily support this argument.
While we can assume that automotive repair specialists will be one class of
consumers, we cannot rule out individual car owners performing their own repairs
or service and purchasing these goods from the previously mentioned retail stores,
such as www.autozone.com and www.carquest.com. Furthermore, even if we were to
find that purchasers of automotive gaskets, O-rings and packings are
knowledgeable to the extent that they know how to install these goods, the evidence
shows these are relatively inexpensive items costing as little as $12-$25. This is
certainly not a price point which would cause purchasers to exercise a higher level
of care in their decision; also, even if these purchasers are proficient in the
automotive repair and service field, this does not necessarily mean that they are
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sophisticated in the field of trademarks or immune from source confusion.
Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d 1526, 1530
(Fed. Cir. 1995). As a result, we find little to persuade us that any consumer
sophistication would play a role in avoiding a likelihood of confusion. This factor
therefore remains neutral in our likelihood of confusion analysis.
Comparison of the Marks
We now address the similarities and dissimilarities between the marks
GLOBAL–SP and SP DIRECT. In doing so, we compare the marks “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567.
The test, under the first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the respective marks is likely
to result. Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012). See also In re Cook Medical Technologies LLC,
105 USPQ2d 1377, 1381 (TTAB 2012); Edom Laboratories Inc. v. Lichter, 102
USPQ2d 1546, 1551 (TTAB 2012). In making this determination, we recognize that
purchasers have fallible memories. See, e.g., San Fernando Elec. Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 2-3 (CCPA 1977);
Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ 687, 688 (CCPA
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1969); Sakrete, Inc. v. Slag Processors, Inc., 305 F.2d 482, 134 USPQ 245, 247
(CCPA 1962); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
The obvious similarity is that both marks contain the element SP and the
obvious dissimilarity is that Applicant’s mark begins with the term GLOBAL while
the registered mark ends with the term DIRECT. Applicant and the Examining
Attorney disagree on the importance to be attached to these similarities and
dissimilarities.
Applicant’s main argument is that the “common component SP in both marks
is weak.” Brief, p. 4. Applicant has made of record twenty-three (23) third-party
registrations for marks containing the element SP, either by itself or with other
terms. Applicant suggests possible meanings for the terms “global” and “direct,” in
arguing that these terms are not descriptive of automotive goods or distribution
methods.6 As a result, Applicant asserts that “the mere inclusion of SP in both
[marks] cannot be the basis of a Section 2(d) refusal where, as here, the respective
marks have other components which are dissimilar in sight, sound and
connotation.” Id. at 6.
The Examining Attorney, on the other hand, takes the position that the
dominant element of each mark is SP because this letter combination has “no

6 At Applicant’s request, the Board agrees to take judicial notice of the definitions attached
to its brief. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also University
of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). With regard to Applicant’s particular
request, we note that “global” may be defined as “worldwide,” as well as “comprehensive”
and “computer science of or relating to an entire program, document, or file.” Likewise,
“direct” may be defined as “having no intervening persons,” as well as “to manage or
regulate” and “candid; frank.”
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significance in applicant’s industry,” whereas the terms “global” and “direct” are
“descriptive or highly suggestive.” Brief, at (unnumbered) p. 9. As the Examining
Attorney explains, “[c]onsumers are likely to believe that GLOBAL-SP is an
international line of products and SP DIRECT is a line of products from the same
company that is provided directly to the consumer, without an intervening agent.”
Id. at 8. In support, the Examining Attorney submitted dictionary definitions for
the words “global” and “direct,” as well as a few third-party registrations for marks
containing the term DIRECT, with the term disclaimed or registered on the
Supplemental Register.
With regard to the third-party registrations for marks containing the element
SP submitted by Applicant, the Examining Attorney makes the following points: the
registrations are not evidence that the marks have actually been used in commerce
or that consumers are even familiar with the marks; eleven (11) of the registrations
are owned by a single entity and are for tires; four (4) of the registrations have
little, if any, probative value because a statement of use in commerce has not been
filed; and the goods covered by the registrations are unrelated to automotive
gaskets, O-rings, and packing for seals.7
We find these marks to be similar in meaning, sound, appearance and overall
commercial impression and, on balance, the fact that both marks share the SP
element outweighs the difference based on the added wording.

7 For example, some of the goods covered by these registrations are: “audio compression
software for CD-receive for automobiles”; “pneumatic hand tools for the automotive
industry”; “land vehicle body panels, fairings for vehicles…”; and “battery connectors.”
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For all of the reasons argued by the Examining Attorney, we agree that
Applicant has not shown that the shared element, SP, is either a weak or diluted
term when used in marks for automotive gaskets, O-rings, and packings for forming
seals. In particular, we reiterate the points that many of the third-party
registrations submitted by Applicant are owned by a single entity and are for tires.
While it may be argued that many of the goods identified in the registrations
involve automobiles in some fashion, it has not been argued, let alone shown, that
there is a relationship to the goods at issue here. Furthermore, Applicant has not
proffered a possible meaning or significance in the industry for the letters SP.
In contrast, the additional wording in the marks, “direct” and “global,” are
not particularly distinctive. We further agree with the Examining Attorney that the
most likely understanding by consumers will be that these terms are suggestive of
the manner or geographic range in which the goods can be purchased. The
alternative possible meanings for these words suggested by Applicant (see footnote
6) are not reasonably applicable given the context of the entirety of the marks and
the goods. Ultimately, consumers already familiar with the mark SP DIRECT are
likely to perceive a strong similarity to Applicant’s mark GLOBAL-SP based on
the shared element, SP.
This factor weighs in favor of likely confusion.
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Balancing of Factors
In view of our findings that the marks are similar, Registrant’s goods
encompass Applicant’s, and thus are legally identical to the identified objectionable
goods in the application, and that the trade channels and classes of consumers are
the same, we find that use of Applicant’s mark is likely to cause confusion with the
cited registered mark with respect to the objectionable goods.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed with respect to the following goods
identified in the application: “O-rings of rubber for automobiles” and “non-metal
packings for forming seals for use in automobiles.” These goods will be deleted from
the application in due course.