Titan Inter-national, Inc.

Trademark Trial and Appeal Board

Apr 28, 2004

No. 76021045 (T.T.A.B. Apr. 28, 2004)

Hearing: Mailed:
23 MAR 2004 28 April 2004
Paper No. 21
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Titan International, Inc.
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Serial No. 76021045
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Daniel A. Rosenberg of Davis, Brown, Koehn, Shors &
Roberts, P.C. for Titan International, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
_______
Before Quinn, Hohein and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On April 5, 2000, Titan International, Inc.
(applicant) applied to register the mark CONTRACTOR FWD (in
typed form) on the Principal Register for goods ultimately
identified as “tires, namely, tires for vehicles used in
the construction, earthmoving, and mining industries” in
International Class 12.1
1 Serial No. 76021045. The application alleges a date of first
use and a date of first use in commerce of January 1, 1994.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76021045
2
The examining attorney2 raises three grounds for
refusing to register applicant’s mark. First, the
examining attorney refuses to register applicant’s mark
under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a registration3 for the following mark
for “rubber tires for vehicles” also in International Class
12:
The second refusal also is based on Section 2(d) of
the Trademark Act. In this refusal, the examining attorney
maintains that applicant’s mark CONTRACTOR FWD is
confusingly similar to three registrations for the mark
FWD. One registration is for the mark FWD in typed form
for “trucks, fire engines, truck-trailers, trailers, and
custom-made vehicles, and parts thereof” in International
Class 12.4 The second registration is for the mark shown
2 The current examining attorney was not the original examining
attorney in this case.
3 Registration No. 245,262 issued August 7, 1928, third renewal.
Uniroyal Goodrich Tire Company is currently listed as the owner
of the registration.
4 Registration No. 698,490 issued May 31, 1960, second renewal.
The registrant is currently listed as FWD Corporation.
Ser No. 76021045
3
below for “trucks, truck trailers, and custom-made land and
amphibious vehicles” in International Class 12.5
The third registration6 is for the mark shown below for
“motor-driven trucks” in International Class 12.
In the third refusal, the examining attorney requires
applicant to disclaim the letters FWD inasmuch as the
examining attorney held that the term is merely descriptive
of applicant’s goods. Section 6(a) of the Trademark Act,
15 U.S.C. § 1056(a).
When the refusals were made final, applicant filed an
appeal.
5 Registration No. 709,270, issued January 3, 1961, second
renewal. FWD Corporation is listed as the owner of the
registration.
6 Registration No. 107,444, issued November 30, 1915, fourth
renewal. FWD Corporation is also listed as the owner of this
registration.
Ser No. 76021045
4
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
First Refusal – Registration No. 245,026
We start our analysis with a comparison of applicant’s
and registrant’s marks. Applicant’s mark is for the mark
CONTRACTOR FWD in typed form. Registrant’s mark is for the
stylized mark CON-TRAK-TOR. The words CON-TRAK-TOR and
CONTRACTOR would be pronounced, at a minimum, very
similarly if not identically. While there are differences
between the ways the marks would appear because of the
hyphens in registrant’s mark, they are otherwise similar in
appearance. The presence of the letters FWD does not
significantly change the pronunciation or appearance of the
Ser No. 76021045
5
mark. The letters appear at the end of applicant’s mark
and the letters, as will be discussed subsequently, even if
not descriptive, clearly have some significance in the
field of motor vehicles. If “the dominant portion of both
marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225
USPQ 624, 624 (TTAB 1985). See also Wella Corp. v.
California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422
(CCPA 1977)(CALIFORNIA CONCEPT and design held likely to be
confused with CONCEPT for hair care products). In this
case, the dominant portion of both marks is very similar,
if not identical, in meaning and pronunciation, and very
similar in appearance.
Some exceptions to this general rule include
situations where the common term would not be perceived as
distinguishing the source because of its descriptiveness or
widespread use or where the marks convey significantly
different commercial impressions. Denisi, 225 USPQ at 625.
In this case, neither exception applies. We have no basis
to conclude that the term “contractor” would not be a
distinguishing feature and the meaning of both marks would
still be “contractor” with applicant adding the letters
FWD. Applicant suggests that only its mark would mean
“contractor” because registrant’s mark emphasizes the
Ser No. 76021045
6
“trak” potion of the mark. However, we must compare the
marks in their entireties and even when the “trak” portion
is noticed, ultimately purchasers would see that the entire
mark is the phonetic equivalent of “contractor.” Inasmuch
as applicant’s and registrant’s common term would likely be
pronounced the same, their meaning would be the same. In
addition, inasmuch as applicant’s mark is depicted in a
typed drawing, a difference in typed style cannot be
asserted. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983). Therefore, we conclude that
despite the slightly different spellings and the addition
of the letters FWD by applicant to its mark, we conclude
that the marks are similar in sound, appearance, and
meaning, and their overall commercial impressions would be
the same.
Another critical factor in any likelihood of confusion
analysis is whether the goods of the applicant and the
registrant are related. We must consider the goods as they
are described in the identification of goods in the
application and registration. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
Ser No. 76021045
7
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
Applicant’s goods are identified as “tires, namely,
tires for vehicles used in the construction, earthmoving,
and mining industries.” Applicant has, thus, limited its
tires to tires used in these specific industries. The
goods in the cited registration are also tires, and they
are identified simply as “rubber tires for vehicles.” The
term “vehicles” is broad enough to include vehicles used in
the “construction, earthmoving, and mining industries.”
Therefore, we must consider that registrant’s and
applicant’s goods are identical, at least to the extent
that both would include rubber tires for vehicles in the
construction, earthmoving, and mining industries. To the
extent that the goods are not restricted in the
registration, we must consider that they move through all
normal channels of trade. Schieffelin & Co. v. Molson
Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989)
(“[M]oreover, since there are no restrictions with respect
to channels of trade in either applicant's application or
opposer's registrations, we must assume that the respective
Ser No. 76021045
8
products travel in all normal channels of trade for those
alcoholic beverages”).
Applicant strongly argues that the buyers are
sophisticated and the goods are expensive. Assuming that
tires for vehicles in these specialized industries are
expensive and the purchasers sophisticated, we are not
convinced that even these factors demonstrate that there is
no likelihood of confusion. We emphasize that the goods
are considered to be identical and their channels of trade
and purchasers would also overlap. Even “careful
purchasers are not immune from source confusion.” In re
Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).
See also In re Hester Industries, Inc., 231 USPQ 881, 883
(TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”). "Human memories even of discriminating
purchasers ... are not infallible." In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), quoting, Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
Even sophisticated purchasers are likely to be confused
Ser No. 76021045
9
when marks as similar as the marks here are used on
identical products. Recommendations from users to the
purchasers of these tires could be made orally, which
greatly increases the likelihood that these marks used on
identical tires would be confusingly similar. Also,
because the marks appear very similar and have virtually
the same meaning, their commercial impression would
likewise be similar. Prospective purchasers would likely
assume that there was at least some association or
sponsorship between the marks CONTRACTOR FWD and CON-TRAK-
TOR when these marks are used on the same goods.
[I]t is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be
seen by the same persons under circumstances which
could 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 producer or that
there is an association between the producers of each
parties' goods or services.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Thus, we compare registrant’s mark CON-TRAK-TOR
(stylized) with applicant’s mark CONTRACTOR FWD and we
consider that both marks are for the same goods, i.e.,
tires for construction, earthmoving, and mining vehicles.
We conclude, in view of this, that confusion is likely in
this case. Our conclusion is buttressed by the principle
that when “marks would appear on virtually identical goods
Ser No. 76021045
10
or services, the degree of similarity necessary to support
a conclusion of likely confusion declines.” Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992).
Second Refusal - Registration Nos. 107,444;
698,490; and 709,207
We reach the opposite conclusion concerning the issue
of whether applicant’s mark for the identified goods is
confusingly similar to the three cited FWD registrations
for trucks and other vehicles. Here, the goods are not
identical. Applicant’s goods are tires for vehicles in the
construction, earthmoving, and mining industries.
Registrant’s goods are “motor-driven trucks” (No. 107,444);
“trucks, fire engines, truck-tractors, trailers, and
custom-made vehicles, and parts thereof” (No. 698,490); and
“trucks, truck tractors, and custom-made land and
amphibious vehicles” (No. 709,270). While there obviously
is a relationship between tires for trucks and trucks, the
goods themselves are not identical.
When we compare the marks CONTRACTOR FWD and FWD
(typed, stylized, and with a design), we apply the same
test we used previously. If “the dominant portion of both
marks is the same, then confusion may be likely
notwithstanding peripheral differences.” Denisi, 225 USPQ
Ser No. 76021045
11
at 624 (TTAB 1985). Here, while FWD would clearly be the
dominant part of registrant’s marks, it is not the dominant
part of applicant’s mark, which we have already found to be
the word “contractor.” We find that both Denisi exceptions
(225 USPQ at 625) are applicable here. First, as will be
discussed subsequently, FWD is a term or abbreviation with
a recognized meaning in association with vehicles, which
limits its distinctiveness. Second, the addition of the
dominant term CONTRACTOR to the mark CONTRACTOR FWD creates
a significantly different commercial impression than the
mark FWD alone. Therefore, we conclude that there is no
likelihood of confusion between applicant’s mark and the
three cited registrations for FWD when the marks are used
on the identified goods.
Third Refusal – Disclaimer of FWD
The last issue in this case is whether the examining
attorney properly required applicant to disclaim the term
FWD because it is merely descriptive for applicant’s
tires. A term is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Ser No. 76021045
12
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001); In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003) (A “mark is merely
descriptive if the ultimate consumers immediately
associate it with a quality or characteristic of the
product or service”). To be merely descriptive, a term
need only describe a single significant quality or
property of the goods. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp.
v. International Nickel Co., 262 F.2d 806, 120 USPQ 293,
294 (CCPA 1959). We look at the mark in relation to the
goods or services, and not in the abstract, when we
consider whether the mark is descriptive. Abcor, 200 USPQ
at 218.
The examining attorney argues that FWD “describes the
type of vehicles on which the applicant’s tires are used,
namely, four-wheel drive or front-wheel drive vehicles.”
Examining Attorney’s Brief at 12. The examining attorney
has submitted evidence from an acronym dictionary that
supports the fact that FWD is an abbreviation for either
“front wheel drive” or “four wheel drive.”7 Applicant, on
7 We grant the examining attorney’s request to take judicial
notice of definitions of “front wheel drive” and “four wheel
drive.”
Ser No. 76021045
13
the other hand, points out that the same acronym
dictionary indicates that another meaning for the letters
FWD is “forward.” Also, applicant notes that the three
cited registrations for FWD marks for vehicles do not
contain a disclaimer or any other indication that these
FWD marks have acquired distinctiveness.
The term FWD is an acronym for “front wheel drive” and
“four wheel drive.” However, the goods in the application
are not vehicles but tires. Merely because a term has a
descriptive meaning for a vehicle, it does not mean that it
is descriptive for all parts associated with the vehicle.
For example, the terms “automatic” and “manual” describe
the transmissions in a vehicle, but without more evidence,
they would not describe the tires or the carpets of the
vehicle. There is certainly a possibility that tires for
vehicles in the construction, earthmoving, and mining
industries are described by whether they are appropriate
for front-wheel, rear-wheel, or four-wheel drive vehicles.
However, there is no evidence of this in the record.
Our controlling precedent requires us to resolve any
doubts we may have on the question of descriptiveness in
the applicant’s favor. In re Morton-Norwich Products,
Inc., 209 USPQ 791, 791 (TTAB 1981) (The Board’s practice
is “to resolve doubts in applicant’s favor and publish the
Ser No. 76021045
14
mark for opposition”). In this case, we have our doubts as
to whether FWD is merely descriptive for applicant’s tires,
and therefore, we resolve those doubts in applicant’s
favor.
Decision: The examining attorney’s refusal to
register applicant’s mark because of Registration Nos.
107,444; 698,490; and 709,270 is reversed. The refusal to
register applicant’s mark CONTRACTOR FWD without a
disclaimer of the term FWD is reversed. The examining
attorney’s refusal to register applicant’s mark on the
ground that it is likely to cause confusion with the mark
for the identified goods in Registration No. 245,262 is
affirmed.