Ranco Industries

Trademark Trial and Appeal Board

Jan 7, 2008

No. 78545932 (T.T.A.B. Jan. 7, 2008)

Mailed:
Jan. 7, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ranco Industries, Inc.
________

Serial No. 78545932
_______

John S. Egbert of Egbert Law Offices for Ranco Industries,
Inc.

Laura A. Hammell, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Bucher and Grendel, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Ranco Industries, Inc., applicant herein, seeks
registration on the Principal Register of the mark SAFETY
TRACT (in standard character form) for goods identified in
the application as “anti-fatigue floor mats for commercial
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78545932
2
and industrial use,” in Class 27.1 Applicant has disclaimed
the word SAFETY.
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the goods
identified in the application, so resembles the mark SAFETY
TRACK, previously registered on the Principal Register (in
standard character (typed) form) for goods identified in
the registration as “anti-slip abrasive tape type film for
protection on hazardous surfaces,” in Class 17,2 as to be
likely to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).

1 Serial No. 78545932, filed on January 11, 2005. The
application is based on applicant’s asserted bona fide intention
to use the mark in commerce. Trademark Act Section 1(b), 15
U.S.C. §1051(b).

2 Registration No. 1710038, issued on August 25, 1992. Renewed;
affidavits under Sections 8 and 15 accepted and acknowledged. We
note that the Trademark Examining Attorney also has refused
registration under Section 2(d) based on Registration No.
1789404, issued on August 24, 1993 (renewed; affidavits under
Sections 8 and 15 accepted and acknowledged), which is owned by
the same entity that owns Registration No. 1710038. This second
registration is of the mark SAFETY TRACK in typed form, for goods
identical to those identified in Registration No. 1710038. (As
originally issued, this registration depicted the mark in special
form. The drawing of the mark was amended post-registration to
depict the mark in typed form.) For purposes of this appeal, we
deem these two cited registrations to be duplicate registrations.
Cf. TMEP §703. In the interests of economy and clarity, our
discussion of the Section 2(d) refusal in this appeal will focus
only on Registration No. 1710038. Obviously, our analysis and
decision would apply equally to the second (duplicate)
registration.

Ser. No. 78545932
3
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. 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.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
Ser. No. 78545932
4
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark is SAFETY TRACT. The cited
registered mark is SAFETY TRACK. Obviously, the marks are
identical but for the different last letter in each mark.
We find that the marks are highly similar in terms of
appearance; both begin with the letters SAFETY TRAC. The
dissimilarity in appearance which results from the
difference in the marks’ final letters is outweighed by the
similarity which results from the fact that both marks
begin with the same ten letters.
In terms of sound, we find that the marks are highly
similar and indeed essentially indistinguishable.
Applicant’s mark sounds exactly like the cited registered
mark except for the addition of the muted “t” sound at the
end of applicant’s mark, which may or not be distinctly
pronounced by purchasers. This slight difference is
greatly outweighed by the overall aural similarity between
the marks.
In terms of connotation and overall commercial
impression, we find that the marks are identical to the
extent that both include the word SAFETY, which means the
same thing in both marks. TRACK and TRACT do not mean the
same thing, and the marks have different connotations and
Ser. No. 78545932
5
commercial impressions to that extent. On balance, we find
that the marks have somewhat different connotations and
commercial impressions, but we also find that such
dissimilarity is slight at best.
Viewing the marks in their entireties, we find that
the subtle dissimilarity between the marks in terms of
connotation and commercial impression is greatly outweighed
by the fact that the marks look and sound essentially the
same. The first du Pont factor weighs in favor of a
finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration. The third
du Pont factor requires us to compare the trade channels
and classes of purchasers for the respective goods. It is
settled that it is not necessary that the goods be
identical or even competitive in order to find that the
goods are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such, that
Ser. No. 78545932
6
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
Applicant’s goods are identified in the application as
“anti-fatigue floor mats for commercial and industrial
use.” The goods identified in the cited registration are
“anti-slip abrasive tape type film for protection on
hazardous surfaces.”
First, we note that registrant’s goods as identified
in the registration are not limited or restricted as to
trade channels or classes of purchasers. We therefore must
presume that those goods are marketed in all normal trade
channels and to all normal classes of purchasers for such
goods, including the commercial and industrial trade
channels specified in applicant’s identification of goods.
See In re Elbaum, 211 USPQ 639 (TTAB 1981). In any event,
as discussed below, anti-fatigue mats and anti-slip tape
Ser. No. 78545932
7
are marketed by the same companies on the same websites.
We find that the third du Pont factor weighs in favor of a
finding of likelihood of confusion.
Applicant’s goods and registrant’s goods may not be
directly competitive, but they are similar and perhaps even
complementary in terms of their function and purpose. Both
products are or would be used on the floor. Additionally,
the evidence of record establishes that one characteristic
of anti-fatigue floor mats like those identified in
applicant’s application is that they are anti-slip as well.
Applicant’s own advertisement (submitted by applicant with
its response to the first Office action) informs purchasers
that applicant’s anti-fatigue mat’s “surface design helps
prevent slipping.” The record includes printouts of the
webpages of QNS Distributors, Martinson-Nicholls Inc., and
Crown Mats, all of which tout the anti-slip characteristics
of their mats. The record also includes a printout of
registrant’s website, which shows that registrant itself
markets floor matting which provides both cushioning and a
non-slip surface.
The record also establishes that anti-fatigue mats
like applicant’s and anti-slip tape like registrant’s are
marketed together by the same companies (such as Crown Mats
and New Pig) on the same websites. Indeed, the record
Ser. No. 78545932
8
shows that both applicant and registrant themselves market
both products on their websites. (March 21, 2006 final
Office action.)
Based on the evidence of record, we find that the
goods identified in applicant’s application and the goods
identified in the cited registration are related in the
marketplace in such a way that source confusion is likely
to result from the use of the confusingly similar marks
involved in this case. The second du Pont factor weighs in
favor of a finding of likelihood of confusion.
The fourth du Pont factor requires us to consider
evidence relating to the conditions under which the goods
are purchased. Applicant contends that its goods and
registrant’s goods are marketed to commercial and
industrial purchasers. However, there is no evidence in
the record to support applicant’s contention that these
purchasers necessarily are knowledgable and careful when
making their purchasing decisions. There is no evidence
that the goods at issue are expensive. We find that the
fourth du Pont factor is neutral in this case. It
certainly does not weigh in applicant’s favor.
The sixth du Pont factor requires us to consider any
evidence of third-party use of similar marks on similar
goods. We find that there is no such evidence in the
Ser. No. 78545932
9
record. Applicant contends that the Office’s electronic
database reveals thousands of registrations and
applications for marks with the word SAFETY and marks with
the word TRACK. However, applicant presented no evidence
to support this contention. In any event, third-party
registrations (much less third-party applications) are not
evidence of third-party use of the marks depicted therein,
and they are entitled to no weight under the sixth du Pont
factor. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). We find that
the sixth du Pont factor is neutral in this case. It
certainly does not weigh in applicant’s favor.
Considering all of the evidence of record as it
pertains to the du Pont factors, and for the reasons
discussed above, we conclude that a likelihood of confusion
exists. To the extent that any doubts might exist as to
the correctness of this conclusion, we resolve such doubts
against applicant. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.