Ram Board, Inc.

Trademark Trial and Appeal Board

Apr 3, 2020

88201300 (T.T.A.B. Apr. 3, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 3, 2020April 3, 2020April 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ram Board, Inc.
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Serial No. 88201300
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Brian E. Turung and Brendan J. Goodwine of Fay Sharpe LLP,
for Ram Board, Inc..
Kristina Morris, Trademark Examining Attorney, Law Office 116,
Elizabeth Jackson, Managing Attorney.
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Before Wellington, Greenbaum, and Coggins,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Ram Board, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark shown below for “hand-operated tools, namely, cardboard cutters, paperboard
cutters, fiberboard cutters, cutters for cutting cardboard, paperboard, and fiberboard;
cardboard knife; paperboard knife; fiberboard knife; knives for cutting cardboard,
paperboard and fiberboard” in International Class 8.1

1 Application Serial No. 88201300, filed November 20, 2018, based upon Applicant’s claim of
a bona fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b). The application contains the following description of the mark: “The mark consists
of a ram’s head above a horizontal rectangle with the words ‘RAM BOARD’ in the rectangle
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As acknowledged in the application, the English translation of PROTECCIÓN
TEMPORARIA PARA PISOS is “temporary protection for flooring.” The wording
BOARD PROTECCIÓN TEMPORARIA PARA PISOS has been disclaimed.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following
registered marks owned by the same entity (“Registrant”):
1. RAM-PRO (in standard characters),2 and
2. RAMPRO (in standard characters);3
and each for the same goods:
Hand tools, namely, nut drivers, chalk line reels, hex key
wrenches, pliers, pry bars, rasps, ratchets, namely, ratchet
wrenches, adjustable wrenches, snips, socket wrenches,
socket wrench adaptor sets, wrecking bars, utility knives
and blades for utility knives and pocket knives, clamps,
combination clamps, vices, chisels, planes, screwdrivers,
saws and blades for utility knives and pocket knives, staple
guns, hammers, tacker hammers; multi-function hand tool
comprised of a board bender, a splitting and cutting edge,
a demolition hammer, a nail puller and a pry bar, in
International Class 8.

and ‘PROTECCIÓN TEMPORARIA PARA PISOS’ along the base of the rectangle. Color is
not claimed as a feature of the mark.
2 Reg. No. 5242121 issued on July 11, 2017.
3 Reg. No. 5464502 issued on May 8, 2018.
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Applicant requested reconsideration and appealed to this Board after the refusal
was made final. The Examining Attorney denied the request for reconsideration4 and
this appeal resumed. The Examining Attorney and Applicant filed briefs. We affirm
the refusal to register.
I. Evidentiary Objections
The Examining Attorney has objected to “images of applicant’s and registrant’s
goods [in] applicant’s brief [that] have not previously been introduced as evidence.”5
Applicant did not respond to the objection.6 Because these embedded images in the
text of Applicant’s brief constitute evidence and they were not previously submitted,
the Examining Attorney’s objection is sustained and they are not considered.
Trademark Rule 2.142(d) (“The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with the Board after the filing of
a notice of appeal.”); see also, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (TBMP) § 1207.01 (2019).

4 In the Office Action denying the request for reconsideration (5 TTABVUE), the Examining
Attorney withdrew a refusal based on Reg. No. 4875652 for the mark
(TOOL CONSTRUCTION SUPPLY CO. disclaimed) for goods that include “blades for power
tools” in International Class 7 and “cardboard boxes; cardboard used to cover floors, ceilings,
walls, stairs, corners, and other surfaces during the construction process” in International
Class 16.
5 12 TTABVUE 4-5 (Examining Attorney’s objection); 10 TTABVUE 21-22 (objected-to images
in Applicant’s brief).
6 Applicant filed a reply brief (13 TTABVUE), but did not address this issue.
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We also sustain the Examining Attorney’s objection to Applicant’s listing of
certain third-party registrations in its brief.7 Specifically, the Examining Attorney
points out that “Applicant has only properly introduced four of the nineteen listed
third party registrations into the record” and, accordingly, these registrations “should
not be considered.”8 The listed registrations that were not properly made of record,
as well any argument relying on said registrations are not considered. Trademark
Rule 2.142(d); see also TBMP § 1208.02 (discussion of improper third-party
registration lists).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular

7 12 TTABVUE 9-10 (Examining Attorney’s objection in brief); 10 TTABVUE 23-25
(Applicant’s listing of third-party registrations in its brief).
8 12 TTABVUE 9-10.
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determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods [or services].’”) (quoting Herbko
Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir.
2002)).
A. Relatedness of the Goods, Trade Channels, Purchasing Conditions
and Classes of Consumers

With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the application and cited registrations. See In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). As to the relatedness of the goods, in particular,
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“[t]his factor considers whether ‘the consuming public may perceive [the respective
goods of the parties] as related enough to cause confusion about the source or origin
of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004).
Here, we find the goods described in the application and cited registrations are in-
part legally identical. In particular, the registrations cover “utility knives” which are
defined as “kni[ves] with a small sharp blade, often retractable, designed to cut wood,
cardboard, and other materials.”9 Registrant’s goods therefore are essentially the
same as Applicant’s “cardboard knife; paperboard knife; fiberboard knife; knives for
cutting cardboard, paperboard and fiberboard.” Applicant’s knives, as described in
the application, simply describe knives with many of the same designed purposes of
utility knives described in the actual definition of a “utility knife.” While a “utility
knife” is also defined as having a “small” and “often retractable blade,” Applicant’s
identification is broad enough to include knives having those same features. Put
simply, Applicant’s identification of goods encompasses, in part, utility knives.
Further corroborating this legal identity of goods, the Examining Attorney submitted
evidence from third-party websites demonstrating that “utility knives” are used for
cutting “boxes, cartons, [and] cardboard.”10

9 July 30, 2019 Request for Reconsideration after Final Action Denied, TSDR 2.
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Fifth Edition
Copyright 2016 by Houghton Mifflin Harcourt Publishing Company defines utility knife as:
“a knife with a small disposable blade that can retract into the handle when not in use. Also
called box cutter.”
10 Printouts from www.amazon.com attached to Office Action issued January 3, 2019; see
also, printouts attached to Office Action issued April 8, 2019.
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Because we find that some of Applicant’s listed goods are legally identical to
Registrant’s goods, we need not determine the relatedness of Applicant’s other goods
listed in the application. That is, if there is likelihood of confusion with respect to any
of applicant’s identified goods in the class, the refusal of registration must be affirmed
to all goods in that class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406,
1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
As to trade channels and classes of purchasers, the identifications of goods in the
Application and the cited registrations are unrestricted in this regard. We must
therefore presume that these goods are offered to all typical classes of consumers
through normal distribution channels and, given the legal in-part identity of the
goods, we presume these will be the same. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); see also 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 other words, we must assume that a consumer seeking to purchase a knife
for cutting cardboard, paperboard, fiberboard, etc., will find Applicant’s and
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Registrant’s goods in the same trade channels, including retail outlets, that these
goods are normally offered; and that the consumers are the same.
In addition to the presumption that Applicant’s and Registrant’s legally identical
goods will be found in the same trade channels and encountered by the same classes
of consumers, we also note the evidence showing that these goods are relatively
inexpensive. Indeed, Applicant submitted evidence showing that its goods and
Registrant’s goods are not only sold via online retailer Amazon.com, but also that
Applicant’s goods may sell for $14.99 whereas Registrant’s goods sell for $6.99 (for
package of 6) or $5.80 for a different model (with 6 blades).11 We further note that
other brand utility knives sell for $15.99 (“MulWark Heavy Duty … utility knife”).12
Applicant notes that its goods are priced higher than Registrant’s and this “indicates
to consumers that the goods of Applicant and Registrant are not comparable.”13 We
find this type of evidence actually cuts the other way. As noted, the involved
identifications of goods are not restricted and we must assume the goods will be
offered in the full price point range -- which the evidence shows can be quite low. In
re Bay State Brewing Co., 117 USPQ2d 1958, 1960 and n.4 (TTAB 2016). Indeed,
“[w]hen products are relatively low-priced and subject to impulse buying, the
likelihood of confusion is increased because purchasers of such products are held to a
lesser standard of purchasing care.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d

11 Attached to Applicant’s Response filed July 9, 2019 (4 TTABVUE).
12 Id., at 119.
13 Id. at 20.
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1894, 1899 (Fed. Cir. 2000). Given the possibility of a low price point for the involved
goods, we find consumers may be subject to impulse purchasing.
Accordingly, the second, third and fourth DuPont factors which, respectively,
involve relatedness of the goods, trade channels, classes of purchasers and conditions
under which sales are made, all clearly favor a finding of likelihood of confusion.
B. The similarity or dissimilarity of the marks
Under this factor, we compare Applicant’s mark, (stylized
with design), with the cited registered marks, RAMPRO and RAM-PRO (in standard
characters), “in their entireties as to appearance, sound, connotation and commercial
impression.” In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(quoting du Pont, 177 USPQ at 567); see also Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). The test is not whether the marks can be distinguished in a side-by-side
comparison, but instead whether their overall commercial impressions are so similar
that confusion as to the source of the goods offered under the respective marks is
likely to result. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). Further, marks “‘must be
considered … in light of the fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d
747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co.
v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper
focus is on the recollection of the average purchaser, who normally retains a general
Serial No. 88201300
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rather than a specific impression of trademarks. See St. Helena Hosp., 113 USPQ2d
at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39,
40 (CCPA 1971).
We find the marks in this case are overall very similar because, as discussed more
fully below, the same term RAM appears as the first word and is the most distinctive
element of each mark. We agree with the Examining Attorney in that the same term
RAM is the more dominant component of the marks.
With respect to Applicant’s mark, RAM has no demonstrated meaning in
connection with the involved goods and is therefore distinctive. The wording that
follows, on the other hand, has little source-identifying significance. Rather, in the
context of Applicant’s goods, BOARD and PROTECCIÓN TEMPORARIA PARA
PISOS (translated into English as “temporary protection for flooring”) have been
disclaimed because they merely describe the types of products or flooring that
Applicant’s knives are used to cut. In such situations, the initial and most distinctive
term, RAM in this case, “is most likely to be impressed upon the mind of a purchaser
and remembered,” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) and Palm Bay Imps., 73 USPQ2d at 1692, whereas merely descriptive
and disclaimed wording that follows plays a lesser role in forming the mark’s overall
commercial impression. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997) (in comparing THE DELTA CAFÉ to DELTA, the term
CAFÉ lacks sufficient distinctiveness to create a different commercial impression).
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We do not ignore the ram’s head design element that appears top center of
Applicant’s mark. This is a point of difference between the marks. However, we also
keep in mind that, with composite marks, “the words are normally accorded greater
weight because they are likely to make a greater impression upon purchasers, to be
remembered by them, and to be used by them to request the goods.” In re Aquitaine
Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra, Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Moreover, the ram’s head design
in Applicant’s mark actually emphasizes the dominance of the term RAM and
reinforces this overall commercial impression involving the animal.
The term RAM, likewise, appears first and is the more distinctive element of the
registered marks, RAM-PRO and RAMPRO. The latter term PRO in the marks is
somewhat laudatory or suggestive of a professional quality of Registrant’s utility
knives. The registered marks may also convey the same or similar commercial
impression as Applicant’s mark, namely, suggestive of the ram animal.
Because the goods are in-part legally identical, “the degree of similarity between
the marks necessary to find likelihood of confusion need not be as great as where
there is a recognizable disparity between the goods.” In re Bay State Brewing Co., 117
USPQ2d at 1960. Nonetheless, the marks are overall more similar than they are not.
The fact that the marks begin with the term RAM not only creates aural and visual
similarities, but helps the marks convey very similar commercial impressions
involving a ram. Accordingly, this DuPont factor supports a finding of a likelihood of
confusion.
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C. Alleged Weakness of the Term RAM and Applicant’s Claim of a Family
of Marks

Applicant argues that consumers are “unlikely to be confused” between the
involved marks “because the Cited Marks already coexist with several other ‘RAM’
marks used in connection with various mechanical tools.”14 However, Applicant has
listed only four registrations that have been properly made of record -- Registration
Nos.: 5668775 (RAMMER JAMMER for “hand tools for removing auto glass; hand
operated cutting tools; hand operated auto glass cutout knives”), 5637579
(RAMPMILL for “cutting tools”), 4053933 (RAMPAGE for knives), and 1400935
(RAMBO for various types of knives).15 We also note the existence of the registered
mark, RAM TOOL CONSTRUCTION SUPPLY CO. and design for blades for power
cutting tools, was also made of record because it was previously cited as a bar to
registration of Applicant’s mark and later withdrawn (see Note 4).
We are not persuaded by this meager record that the term RAM has any weakness
in connection with any of the involved goods. The four third-party registered marks
of record listed by Applicant use the term RAM as part of another word or name, i.e.,
RAMMER, RAMPMILL, RAMPAGE, and RAMBO, and these have very different
meanings than the term RAM by itself. As to the RAM TOOL CONSTRUCTION
SUPPLY CO. and design mark, there is no evidence that this mark has actually been
used in commerce. In sum, this is far from the type and amount of evidence needed

14 10 TTABVUE 23.
15 Copies of these registrations were submitted with Applicant’s response filed July 9, 2019,
and thus are properly of record.
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for us to find weakness based on extensive third-party use and registration of the
same term. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir.
2015) and Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d
1671 (Fed. Cir. 2015).
Applicant also relies on several other registrations that it owns for marks having
the same ram’s head design and wording RAM BOARD at the top. Applicant argues
that these same features “immediately connect Applicant’s [applied-for] mark with
the many RAM BOARD design marks that Applicant has used over the course of at
least 20 years….”16 We note, however, that none of these other registrations are for
knives or related goods, such as cutting tools. Rather, Applicant’s other registrations
cover Class 16 and Class 17 construction materials used for the temporary protection
of walls and floors. Cf. In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012).
Moreover, there is no evidence to suggest any level of consumer awareness or the
extent to which these marks have been used by Applicant in commerce. We thus agree
with the Examining Attorney that, “because applicant’s prior registrations are for
different goods than those at issue in the present case, the likelihood of confusion
analysis in the present case is significantly different from that in applicant’s previous
applications.”17

16 10 TTABVUE 9; copies of the registrations were submitted by Applicant with its Response
filed March 6, 2019.
17 12 TTABVUE 9.
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D. Conclusion
Having considered all the evidence and arguments bearing on the relevant
DuPont factors, we conclude that the overall similarity of the marks for goods that
are legally identical, at least in part, and move in the same channels of trade to the
same classes of customers renders confusion likely. Indeed, there are no factors that
weigh in favor of finding confusion not likely.
Decision: The refusal to register Applicant’s mark is affirmed.