Sunex International Inc.

Trademark Trial and Appeal Board

Nov 27, 2001

No. 75468354 (T.T.A.B. Nov. 27, 2001)

11/27/01

Hearing: Paper No. 16
October 18, 2001 TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Sunex International, Inc.
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Serial No. 75/468,354
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James M. Bagarazzi of Dority & Manning for applicant.

Scott Craven, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
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Before Simms, Cissel and Quinn, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by Sunex International,
Inc. to register the mark HEAVY HITTERS for “power driven
heavy duty impact wrenches for professional mechanics in
the automotive aftermarket.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the

1 Application Serial No. 75/468,354, filed April 15, 1998, based
on an allegation of a bona fide intention to use the mark.
Applicant subsequently filed an amendment to allege use setting
forth dates of first use of July 20, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/468,354
2
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the previously registered mark HEAVY
HITTER for “hand tools, namely, hammers, axes, mallets,
sledgehammers, and picks”2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney submitted briefs, and
an oral hearing was held before this panel.
The Examining Attorney maintains that the marks are
essentially identical, differing only in the
singular/plural form of “HITTER(S).” The Examining
Attorney also asserts that the goods are related and that
both types of goods are likely to be found in an automotive
shop. In connection with his remarks directed to the
goods, the Examining Attorney has relied upon third-party
registrations to show that the goods are of a type which
may emanate from a single source under the same mark. The
Examining Attorney has discounted the absence of actual
confusion and the sophistication of purchasers, both
factors being pressed by applicant in urging that the
refusal be reversed.
Applicant contends that the marks create different
commercial impressions, with applicant’s conveying “the

2 Registration No. 2,253,961, issued June 15, 1999.
Ser No. 75/468,354
3
laudatory connotation of persons who are VIPs rather than
any descriptive attribute of the tool itself” whereas
registrant’s mark conveys “the impression of an implement
that is used to deliver a forceful blow.” (brief, p. 3)
Applicant also asserts that the nature of the tools is
different, drawing distinctions between them (machine-
powered versus muscle-powered, rotational force versus
linear collision force, precision versus non-precision,
fastening versus destruction, use by skilled professional
mechanics versus manual laborers, and classified in
different international classes). All of the distinctions,
according to applicant, show that the goods are
fundamentally unrelated. Applicant also has relied on the
absence of any actual confusion in the marketplace,
furnishing two declarations of Martin Huguet, applicant’s
vice president of sales and marketing. Based on the
declarations, more than $350,000 of applicant’s products
have been sold over a two-year period without any actual
confusion between its mark and registrant’s mark.
Applicant goes on to contend that the goods move in
distinctly different trade channels to different classes of
purchasers.
We affirm.
Ser No. 75/468,354
4
Our 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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the marks HEAVY HITTER and HEAVY
HITTERS, they differ, of course, by only one letter, with
applicant’s mark being the plural form. As such, we find
that the marks are virtually identical in sound, appearance
and meaning. The differences in connotation argued by
applicant are not likely to be perceived by prospective
purchasers.
Insofar as the goods are concerned, it is not
necessary that the goods be identical or even competitive
in nature in order to support a finding of likelihood of
confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
Ser No. 75/468,354
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the goods originate from or are in some way associated with
the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Further, the
identifications of goods in the application and the cited
registration control the comparison of the goods. See:
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813, 1815 (Fed. Cir. 1987)[“[T]he question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-à-vis the
goods and/or services recited in [the] registration, rather
than what the evidence shows the goods and/or services to
be.”]; and In re Elbaum, 211 USPQ 639 (TTAB 1981).
When the goods are compared in light of the legal
constraints cited above, we find that applicant’s “power
driven heavy duty impact wrenches for professional
mechanics in the automotive aftermarket” are related to
registrant’s “hand tools, namely, hammers, axes, mallets,
sledgehammers, and picks.” As articulated by the Examining
Attorney, the distinctions between the goods argued by
applicant are insufficient to avoid confusion when the
goods are sold under virtually identical marks. For
purposes of the legal analysis of likelihood of confusion
herein, it is presumed that registrant’s registration
Ser No. 75/468,354
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encompasses all goods of the nature and type identified,
that the identified goods move in all channels of trade
that would be normal for such goods, and that the goods
would be purchased by all potential customers. In re
Elbaum, supra at 640.
Although the goods may be specifically different, both
applicant’s and registrant’s goods may be used in the same
auto shops by the same auto mechanics. While applicant’s
goods are limited to such products sold to professional
mechanics in the automotive aftermarket, there are no
limitations in registrant’s identification of goods and,
thus, we must presume that registrant’s hammers and mallets
may be used by professional mechanics in the automotive
aftermarket. That is, registrant’s hammers and mallets, as
broadly worded, must be presumed to be purchased and used
by auto shops that also use impact wrenches. This may be
especially the case in shops where tires are changed and/or
rotated. Accordingly, the goods, as identified, are
presumed to travel in the same or similar channels of trade
and are bought by the same or similar classes of
purchasers.
In finding that applicant’s power driven heavy duty
impact wrenches are related to registrant’s hand tools, we
have considered the four third-party registrations based on
Ser No. 75/468,354
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use which the Examining Attorney has submitted. The
registrations show particular marks registered by different
entities for both types of goods involved herein. Although
these registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them, they nevertheless have probative value to the extent
that they serve to suggest that the goods listed therein,
including impact wrenches and hammers and mallets, are of a
kind which may emanate from a single source. See, e.g., In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467, 1470 at n. 6 (TTAB 1988).
Applicant’s argument based on sophistication of
purchasers is not supported by any evidence in the record.
In any event, although this factor would favor applicant,
it is outweighed by the similarities between the marks and
the goods.
In finding likelihood of confusion, we have considered
Mr. Huguet’s declarations regarding the absence of actual
confusion between the involved marks despite applicant’s
sales under its mark exceeding $350,000. As a du Pont
factor, the absence of actual confusion weighs in
applicant’s favor. However, our assessment of this factor
is somewhat hampered by the lack of any specifics relating
Ser No. 75/468,354
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to the extent of use of registrant’s mark as well. Thus,
we are unable to tell, with any degree of confidence,
whether there has been a meaningful opportunity for
confusion to occur in the marketplace.
We find that purchasers familiar with registrant’s
hand tools, namely, hammers, axes, mallets, sledgehammers,
and picks sold under the mark HEAVY HITTER would be likely
to believe, upon encountering applicant’s mark HEAVY
HITTERS for power driven heavy duty impact wrenches for
professional mechanics in the automotive aftermarket, that
the goods originated with or were somehow associated with
or sponsored by the same entity.
Lastly, to the extent that any of the points argued by
applicant casts doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.