Safeguard Alarm Systems, Inc.

Trademark Trial and Appeal Board

Nov 19, 2008

No. 78579141 (T.T.A.B. Nov. 19, 2008)

Mailed: November 19, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Safeguard Alarm Systems, Inc.
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Serial No. 78579141
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Seth M. Nehrbass of Garvey, Smith, Nehrbass & North, L.L.C.
for Safeguard Alarm Systems, Inc.

Cheryl Clayton, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hairston, Bucher and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Safeguard Alarm Systems, Inc. has filed an application
to register the mark SAFEGUARD and design, as shown below,

for goods ultimately identified as “alarm systems,
comprising burglar and fire alarm systems; security
cameras, card access control systems for doors and gates
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78579141
2
comprising computer hardware and computer software for
monitoring exterior door and gate access, home theater
products, namely, surround sound systems, comprising
speakers and receivers, intercoms, satellite navigational
systems, namely global positioning systems for automobiles
and trucks” in International Class 9.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles the mark SAFEGUARD SECURITY
(in standard character form), which is registered for
“monitoring burglar and security alarms,”2 as to be likely
to cause confusion, mistake or deception.
Applicant and the examining attorney have filed
briefs.
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

1 Serial No. 78579141, filed March 3, 2005, alleging dates of
first use of at least as early as July 1, 1980. During
examination, applicant voluntarily disclaimed the word SAFEGUARD
apart from the mark as shown.
2 Registration No. 2124597, issued December 30, 1997; renewed.
The word SECURITY is disclaimed apart from the mark as shown.
Ser No. 78579141
3
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 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant maintains that there is no likelihood of
confusion because its application covers goods whereas the
cited registration covers services. With respect to the
marks, applicant argues that they are different due to the
presence of the concentric circles in its mark and the word
SECURITY in registrant’s mark. Further, applicant argues
that registrant’s mark is entitled to a limited scope of
protection, and that there have been no instances of actual
confusion. Applicant submitted with its brief a dictionary
excerpt wherein the word “safeguard” is defined, in
pertinent part, as: “[o]ne that serves as protection or a
guard.”3
The examining attorney, on the other hand, contends
that applicant’s goods and registrant’s services are

3 The American Heritage Dictionary of the English Language (4th
ed. 2006). The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
Ser No. 78579141
4
related inasmuch as alarm systems and components thereof
are used in connection with the services of monitoring
burglar and security alarms. In support of her contention
that the involved goods and services are related, the
examining attorney submitted copies of third-party use-
based registrations of marks which she maintains show that
companies have registered their marks for both types of
goods and services involved herein. With respect to the
marks, the examining attorney maintains that they are
similar in that applicant’s mark and registrant’s mark are
dominated by the identical term SAFEGUARD.
We first consider the similarity or dissimilarity of
applicant’s goods and registrant’s services. It is not
necessary that the respective goods and services be
competitive, or even that they move in the same channels of
trade to support a holding of likelihood of confusion. It
is sufficient that the respective goods and services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and
services are such that they would be encountered by the
same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief
that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Ser No. 78579141
5
The record supports a finding that applicant’s alarm
systems and components thereof and registrant’s services of
monitoring burglar and security alarms are related. As the
examining attorney points out, alarm systems and components
thereof are obviously used in connection with monitoring
burglar and security alarms. Also, as indicated, the
examining attorney made of record copies of third-party
use-based registrations to show that goods of the type
identified in applicant’s application and services of the
type identified in registrant’s registration may be sold
under a single mark by a single source. See, for example,
Registration Nos. 2172644; 2091397; 2156232; 3140272;
3116559; and 3093237. See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988) [Although third-party
registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”]. See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993).
Under the facts of this case, we find that applicant’s
burglar and fire alarm systems, security cameras, and card
access control systems for doors and gates comprising
Ser No. 78579141
6
computer hardware and computer software for monitoring
exterior door and gate access, on the one hand, and
registrant’s services of monitoring burglar and security
alarms, on the other hand, are closely related.4
Insofar as the channels of trade and classes of
purchasers are concerned, in the absence of any limitations
as to the channels of trade and classes of purchasers in
the goods and services identified in applicant’s
application and registrant’s registration, we must assume
that such goods and services are available in all normal
channels of trade to all the usual purchasers of such goods
and services. When we do so, we find that the channels of
trade (security systems dealers) and classes of purchasers
are the same (homeowners and businesses).
We next consider the similarity or dissimilarity of
the marks. We must determine whether applicant’s mark and
registrant’s mark, when compared in their entireties, are
similar or dissimilar in terms of sound, appearance,
connotation and commercial impression. Although the marks
must be considered in their entireties, it is well-settled
that one feature of a mark may be more significant than

4 It is unnecessary to rule as to whether the other items set
forth in applicant’s application are so related to those in
registrant’s registration that confusion would be likely. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209
USPQ 986 (CCPA 1981).
Ser No. 78579141
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another, and it is not improper to give more weight to this
dominant feature in determining the commercial impression
created by the mark. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Furthermore, the
test 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
commercial impression that confusion as to the source of
the goods and services 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 impression of trademarks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
In comparing the marks, we first note that each of the
involved marks is dominated by the identical term
SAFEGUARD. Although applicant has voluntary disclaimed any
rights in the word SAFEGUARD, applicant’s mark must still
be considered in its entirety, including all disclaimed
matter, in determining likelihood of confusion under
Section 2(d). See In re National Data Corp., supra.
Applicant’s voluntary disclaimer of the word SAFEGUARD does
not remove the word from our analysis of the similarity of
applicant’s mark to registrant’s mark.
Ser No. 78579141
8
As such, the word SAFEGUARD is clearly the dominant
part of applicant’s mark. Although the concentric circles
in applicant’s mark cannot be ignored, it is well settled
that “[w]hen a mark consists of a word portion and a design
portion, the word portion is more likely to be impressed
upon a purchaser’s memory and to be used in calling for the
goods” and, therefore, “the word portion is normally
accorded greater weight in determining likelihood of
confusion.” See, e.g., In re Dakin’s Miniatures Inc., 59
USPQ2d 1593, 1596 (TTAB 1999); and In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). Thus, in
terms of what customers would refer to when asking about or
calling for applicant’s goods, it is the literal portion,
SAFEGUARD.
With respect to registrant’s mark, the word SAFEGUARD
is clearly the dominant portion thereof. Although the
disclaimed and descriptive word SECURITY cannot be ignored,
purchasers are more likely to rely upon the non-descriptive
portion as the indication of source. Moreover, SAFEGUARD
is the first word in registrant’s mark and, therefore, it
is more likely to be impressed upon the minds of purchasers
and remembered. Presto Products Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895 (TTAB 1988). When we consider the
marks in their entireties, giving appropriate weight to the
Ser No. 78579141
9
features thereof, we find that they are similar in sound
and appearance.
With respect to the meanings of the marks, we find
that applicant’s mark and registrant’s mark share a similar
meaning in that they convey “one that serves as protection”
due to the shared term SAFEGUARD. Furthermore, when the
marks are considered in their entireties, they engender
similar overall commercial impressions such that when
closely related goods and services are offered thereunder,
confusion would be likely to result among purchasers. In
particular, purchasers familiar with registrant’s SAFEGUARD
SECURITY services of monitoring burglar and security alarms
are likely to view applicant’s SAFEGUARD and design mark as
identifying complementary security products, i.e., burglar
and fire alarm systems, security cameras, and card access
control systems for doors and gates comprising computer
hardware and computer software for monitoring exterior door
and gate access, originating from registrant.
Applicant, in contending that the marks are not
confusingly similar, asserts in its brief that the word
“safeguard” is descriptive of registrant’s services; that
SAFEGUARD has been disclaimed in Registration Nos. 2440566,
1803106, and 1379739; and that “the number and nature of
SAFEGUARD marks is voluminous” as evidenced by a search of
Ser No. 78579141
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the USPTO TESS database.” (Brief, p. 5). Thus, according
to applicant, marks consisting of or containing the word
SAFEGUARD are entitled to a limited scope of protection.
“Third-party registrations can be used in the manner of a
dictionary definition to illustrate how a term is perceived
in the trade or industry.” In re Box Solutions Corp., 79
USPQ2d 1953, 1955 (TTAB 2006). However, the third-party
registrations to which applicant refers are not of record
in this case, and the Board does not take judicial notice
of registrations.
There is insufficient evidence for us to conclude that
SAFEGUARD is descriptive of registrant’s services.
Nevertheless, the dictionary definition demonstrates that
SAFEGUARD is suggestive of such services. Thus,
registrant’s mark is not entitled to the broadest scope of
protection. However, the mark is still entitled to
protection against registration of applicant’s similar mark
for closely related goods. See In re Colonial Stores,
Inc., 216 USPQ 793 (TTAB 1992). See also, King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974) [likelihood of confusion is to be avoided as
much as between weak marks as between strong marks].
Finally, according to applicant, the marks have
coexisted in the marketplace for approximately fourteen
Ser No. 78579141
11
years with no evidence of actual confusion. While a factor
to be considered, the absence or presence of actual
confusion is of little probative value where, as here, we
have little evidence pertaining to the nature and extent of
the use by applicant and registrant. In any event, the
test under Section 2(d) is not actual confusion but
likelihood of confusion. See Majestic Distilling, 65
USPQ2d at 1205 [“uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value”].
In view of the similarity of the marks, the identity
of the trade channels and purchasers, and the closely
related nature of applicant’s goods and registrant’s
services, we find that there is a likelihood of confusion
in this case.
Decision: The refusal to register under Section 2(d)
is affirmed.