Tibban

Trademark Trial and Appeal Board

Sep 14, 2007

No. 76639252 (T.T.A.B. Sep. 14, 2007)

Mailed:
September 14, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tibban
________

Serial No. 76639252
_______

Edwin D. Schindler, Esq. for James A. Tibban.

Amy C. McMenamin, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Drost, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On May 23, 2005, James A. Tibben (“applicant”) filed
an application (Serial No. 76639252) to register the mark
SAND GUZZLER (in standard character form) on the Principal
Register for the following goods in International Class 7,
as amended:
Earth moving and sand sorting machinery, namely,
mud pumps, well drilling machines, and mud and
sand separator tanks.

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 76639252
2
The application claims first use anywhere and first use in
commerce in April 2004. On June 22, 2006, applicant
entered a disclaimer of the term SAND.
The examining attorney has issued a final Office
action which refuses registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, as used in connection with his goods, so
resembles (i) the mark “GUZZLER” (in standard character
form) of Registration No. 1284986 (registered on July 10,
1984 and renewed); and (ii) the mark

of Registration No. 2871627 (registered on August 10,
2004), as to be likely to cause confusion. Both
registrations issued to the same registrant and recite the
following goods; “vehicle-mounted vacuum loading,
transporting and dumping machines.”
Applicant has appealed the final refusal, and both
applicant and the examining attorney have filed briefs. We
affirm.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act bars registration of
a mark when that mark so resembles a registered mark that
Ser No. 76639252
3
it is likely, when applied to the goods, to cause confusion
or mistake or to deceive potential consumers as to the
source of the goods. 15 U.S.C. § 1052(d). The question in
a Section 2(d) analysis is not whether people will confuse
the marks, but whether the marks will confuse people into
believing that the goods they identify come from the same
source. In re West Point-Pepperell, Inc., 468 F.2d 200,
201, 175 USPQ 558, 559 (CCPA 1972).
Our determination of the examining attorney's refusal
to register the mark 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. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 1361, 177 USPQ 563, 567 (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, 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). See
also, In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
Ser No. 76639252
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A. Similarity of the Marks
In considering the similarity or dissimilarity of the
marks, our focus is on whether the marks, when compared in
their entireties, are similar or dissimilar as to
appearance, sound, connotation, and commercial impression.
du Pont, 476 F.2d at 1361, 177 USPQ at 567; Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005).
Applicant’s two-word mark consists of the term SAND
followed by the term GUZZLER. While a mark is to be
considered as a whole in determining likelihood of
confusion, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” Packard Press, Inc. v. Hewlett-Packard Co.,
227 F.3d 1352, 1357, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000);
In re National Data Corp., 753 F.2d 1056, 1058, 224 USPQ
749, 751 (Fed. Cir. 1985); Sweats Fashions, Inc. v. Pannill
Knitting Co., 833 F.2d 1560, 1566, 4 USPQ2d 1793, 1798
(Fed. Cir. 1987); In re Appetito Provisions Co., Inc., 3
USPQ2d 1553, 1554 (TTAB 1987). Because SAND is a merely
descriptive term that identifies the material which
Ser No. 76639252
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applicant's machines sort and a term which applicant has
disclaimed, GUZZLER is the dominant part of applicant’s
mark. While a mark must be considered in its entirety,
greater weight may be given to the dominant portion of a
mark in determining whether there is a likelihood of
confusion. See National Data Corp., 753 F.2d at 1060, 224
USPQ at 752.
GUZZLER is the only term in the mark of Registration
No. 1284986. With regards to Registration No. 2871627 for
the mark GUZZLER NX, because GUZZLER is an English language
word and NX is not a word at all, and the record does not
indicate that NX is a recognized abbreviation, we find that
GUZZLER is the dominant term in this mark.
Applicant contends that GUZZLER is suggestive and
therefore not entitled to the same scope of protection as
would be accorded to a fanciful or arbitrary mark.
According to applicant, “‘GUZZLER’ is suggestive of an
‘excess,’ such as that of an excess to consume”; and that
“[a]s it pertains to ‘earth moving’ equipment and related
machinery, … would be suggestive of an ability to move
large quantities of sand and other materials.” Applicant’s
brief at 5. (Emphasis in the original.) In support of his
argument, applicant relies on the following dictionary
definition of “guzzle” from The American Heritage
Ser No. 76639252
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Dictionary of English Language (4th ed. 2000), submitted
with its response to the first Office action; “[t]o drink
greedily or habitually; [t]o consume to excess; [t]o drink,
especially alcoholic beverages, greedily or habitually.”
The examining attorney counters with the observation that
“applicant's machinery cannot ‘drink greedily’ or ‘consume
to excess,’ thus, the term ‘GUZZLER,’ when applied to the
identified goods, is fanciful, invoking vividly personified
visualizations of greedy eating machines gobbling up earth
and mud.” Brief at pp. 4 - 5.
We are not persuaded that the term GUZZLER when used
in connection with the goods involved in this appeal should
be accorded a reduced level of protection so as to allow
the registration of applicant's mark. While the term
GUZZLER used as a mark or as part of a mark in connection
with such goods evokes an image of the goods processing
large amounts of earth, even if it is somewhat suggestive
of a feature of applicant's machinery, it is not, however,
so suggestive as to permit the registration of applicant’s
mark. Moreover, suggestive marks are entitled to
protection under Section 2(d) of the Trademark Act just as
are arbitrary or fanciful marks. In re Am. Beauty Prods.
Co., Inc., 223 USPQ 828, 829 (TTAB 1984); McCarthy,
Trademark & Unfair Competition § 11:20A (2d ed. 1984).
Ser No. 76639252
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With the foregoing in mind, we now consider the
similarity and dissimilarity of the sound, meaning,
appearance and commercial impressions of the marks,
beginning with the mark of Registration No. 1284986.
Registrant’s single word mark is identical to the dominant
term in applicant’s mark. Because both marks contain the
term GUZZLER, and applicant’s mark only differs by the
addition of the merely descriptive word SAND, the two marks
are similar in appearance and sound. Further, applicant’s
addition of the term SAND does not change the meaning of
the marks – the disclaimed term SAND merely identifies the
material which applicant’s goods process. Finally, the
commercial impression of the marks are the same, with both
marks evoking the same image of machinery processing
sizable amounts of material.
With regards to GUZZLER NX, as noted above, GUZZLER is
identical to the dominant term in applicant's mark. In
view of this shared term, the marks are similar in sound.
The marks are also similar in overall appearance.
Applicant's mark is depicted in standard character form;
applicant hence is not limited to presentation of his mark
in any particular stylization, and may end up with
stylization very similar in appearance to that shown in
registrant’s mark. See Squirtco v. Tomy Corp., 697 F.2d
Ser No. 76639252
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1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983); 37 C.F.R.
§ 2.52(a). Further, applicant may adopt a stylization
where SAND appears in smaller lettering than GUZZLER,
thereby enhancing the prominence of GUZZLER. As for the
commercial impression and the meaning of the marks, we find
them to be similar too for the reasons mentioned above –
the addition of NX does not change the commercial
impression or the meaning.
In sum, we find that applicant’s mark and the two
cited marks are more similar than dissimilar. We thus
resolve the first du Pont factor against applicant.
B. Similarity of the Goods
We next consider the similarity or dissimilarity of
applicant’s “earth moving and sand sorting machinery,
namely, mud pumps, well drilling machines, and mud and sand
separator tanks” and registrant’s “vehicle-mounted vacuum
loading, transporting and dumping machines.” The goods or
services of an applicant and a registrant need not be
similar or competitive to result in a likelihood of
confusion. In re Int’l Tel. & Tel. Corp., 197 USPQ 910,
911 (TTAB 1978). It is sufficient that the respective
services are such that they would or could be encountered
by the same persons under circumstances that could, because
Ser No. 76639252
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of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. Id.
Here, registrant has identified its goods broadly
without any field of use limitations. There is,
consequently, an apparent relationship between applicant’s
goods and registrant’s goods in that they both involve the
movement of soil, including mud and sand. Additionally,
both goods may be used in the construction industry. In
fact, applicant’s goods could be used in tandem with
registrant’s goods; applicant’s goods may be employed in
drilling wells or extracting mud, and registrant’s goods
may be employed to remove the resulting loose soil or mud.
Additionally, the examining attorney has affirmatively
established that consumers would mistakenly believe
applicant’s and registrant’s goods originated from a common
source. The examining attorney submitted with his final
Office action third-party registrations that each cover
goods like those identified by applicant and registrant.1
These registrations are probative in that they suggest that

1 The examining attorney also submitted webpages from various
manufacturers, distributors and Internet sellers with his first
Office action as evidence that consumers would expect that goods
of the type specified by Applicant and registrant originate from
a common source. These webpages have extremely limited probative
value because they do not show goods of the type identified in
both applicant's and registrant’s identification of goods or do
not show such goods under the same or similar marks.

Ser No. 76639252
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the goods listed therein may come from a single source.
See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1218 (TTAB
2001). The registrations include the following:
(1) Registration No. 2375448; “PENTEX CORPORATION”
for, inter alia, earth moving machines equipped
with parts for excavating dirt, loading, lifting,
and transporting materials and drilling holes
into the earth;

(2) Registration No. 2467407; “TRIC” for, inter alia,
excavating equipment, underground boring
machines, earth moving machines, mud pumps, and
vacuum pumps;

(3) Registration No. 2593606; “VERMEER” for, inter
alia, earth moving and earth boring machines,
underground boring machines, vacuum equipment
such as vacuum evacuation systems consisting
primarily of vacuum pumps and structural parts
therefor for use on horizontal boring and
directional drilling machines;

(4) Registration No. 2773869; “GEKKO SYSTEMS” for,
inter alia, borers, excavators, bulldozers,
graders, and earth moving machines;

(5) Registration No. 76290109; “JOY” for, inter alia,
drilling machines and machinery for loading,
hauling, and dumping of minerals;

(6) Registration No. 3058484; “AMKODOR” for, inter
alia, bulldozers and earth drilling machines; and

(7) Registration No. 3019926; “MULTIONE” for, inter
alia, earth moving machines and dumpers.

The third party registrations show that consumers, familiar
with registrant’s goods, are likely to conclude that
applicant’s goods sold under a similar mark are from the
same source. Accordingly, we find the second du Pont
Ser No. 76639252
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factor regarding the similarity of the goods weighs against
applicant.
II. Conclusion
After considering all the evidence of record and the
arguments in this case, we conclude that applicant’s mark
SAND GUZZLER when used in connection with “earth moving and
sand sorting machinery, namely, mud pumps, well drilling
machines, and mud and sand separator tanks,” is likely to
be confused with registrant’s marks GUZZLER and GUZZLER NX
both for “vehicle-mounted vacuum loading, transporting and
dumping machines” so as to be likely to cause confusion as
to the source of the goods.
Decision: The examining attorney’s refusal to
register applicant’s mark for the identified goods on the
ground that it is likely to cause confusion under Section
2(d) of the Trademark Act with Registration Nos. 1284986
and 2871627 is affirmed.