Titan Tech-nologies Int’l., Inc.

Trademark Trial and Appeal Board

Sep 23, 2003

No. 76212284 (T.T.A.B. Sep. 23, 2003)

Mailed: 9/23/03
Paper No. 12
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Titan Technologies International, Inc.
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Serial No. 76/212,284
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Barry L. Kelmachter of Bachman & LaPointe, P.C. for Titan
Technologies International, Inc.
Matthew J. Pappas, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Titan Technologies International, Inc. has appealed
from the final refusal of the Trademark Examining Attorney
to register TITAN TECHNOLOGIES as a trademark for the
following goods and services:
power tools, namely, power wrenches
(Class 7);
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/212,284
2
wholesale distributorships featuring
power tools, namely, power wrenches;
on-line retail store services featuring
power tools, namely, power wrenches
(Class 35); and
technical consultation in the field of
power tools, namely power wrenches
(Class 42).
Applicant has disclaimed exclusive rights to the word
TECHNOLOGIES. The application, which was filed on February
20, 2001, is based on an asserted bona fide intention to
use the mark in commerce.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark TITAN TOOLS and
design, as shown below (TOOLS disclaimed), registered for
“hand tools and instruments, as follows: oil field hand
tools--namely, tongs, wrenches, swivels, flange spreaders,
pipe dollies, and wire line guides” in Class 8,1 that, if is
used on or in connection with applicant’s identified goods
and services, it is likely to cause confusion or mistake or
to deceive.2
1 Registration No. 1,154,616, issued May 19, 1981; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
2 Another registration owned by the same entity, No. 1,150,837
for TITAN for essentially the same goods, was originally cited by
the Examining Attorney, but this registration subsequently
expired.
Ser No. 76/212,284
3
Both applicant and the Examining Attorney have filed
appeal briefs.3 Applicant did not file a reply brief, and
did not request an oral hearing.
On September 8, 2003 this Board had occasion to
consider an appeal brought by applicant in connection with
its application to register the mark TITAN TECHNOLOGIES
INTERNATIONAL, INC. for the same goods as those in the
present application. That application, too, had been
refused registration by the Examining Attorney based on the
cited registration for TITAN TOOLS and design. We affirmed
the refusal of registration of that mark, and for
essentially the same reasons, we affirm the refusal in the
subject application.
3 Both applicant and the Examining Attorney have included with
their briefs numerous exhibits which are already of record, e.g.,
copies of numerous third-party registrations and copies of
excerpts taken from the NEXIS database. It is unnecessary to
resubmit with briefs all the exhibits which were previously
submitted, and such a practice is discouraged by the Board as it
needlessly clutters the file.
Ser No. 76/212,284
4
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). 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).
Turning first to the marks, they are very similar.
Both begin with the identical word TITAN, followed by words
which do not have source-identifying significance. In the
case of registrant’s mark, the word TOOLS is generic for
the goods identified in the cited registration. The mark
also includes a minor design element, but it is a “carrier”
of a relatively common shape, and consumers are not likely
to look to it as indicating the source of the goods.
Rather, it is the word TITAN, the only arbitrary portion of
the mark, that is likely to be noted and remembered. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Nor is the slight stylization of the words in the cited
registration sufficient to distinguish the marks. The type
font in which the words are displayed is not unusual; more
importantly, because applicant has applied to register its
Ser No. 76/212,284
5
mark as a typed drawing, it could depict its mark in a
similar typestyle.
As for applicant’s mark, the word TECHNOLOGIES is
descriptive, a fact which applicant has acknowledged by
disclaiming it. Again, it is the arbitrary word TITAN that
has the strongest source-identifying significance. We also
note that in a quote for equipment, submitted by applicant
as Exhibit B to its request for reconsideration and its
brief, its torque wrench is referred to by the word TITAN
alone, and its other products, as well as the company name,
are referred to as TITAN per se, e.g., “TITAN-6 Automatic
High Speed Low Clearance Hydraulic Torque Wrench Head,”
“Titan 2” Slim Line Swing Link that Ratchets Custom Made to
specific standards,” “TITAN PROVIDES YOU WITH UNMATCHED,
[sic] POWER, ACCURACY, RELIABILITY, AND ENGINEERING
INNOVATIONS,” “Titan Unit Price.” Just as applicant itself
appears to use TITAN per se as an abbreviation for its
trademark and trade name, consumers are likely to do the
same.
Although marks must be compared in their entireties,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). As discussed above,
Ser No. 76/212,284
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in applicant’s mark and the cited mark the word TITAN is
the dominant element to which we accord greater weight.
Thus, the similarities in the initial word TITAN in both
marks outweigh the differences in the generic and
descriptive words.
Applicant argues that the marks have different
connotations, and that applicant’s mark suggests a
corporate name while TITAN TOOLS suggests a large tool. We
disagree that consumers would ascribe different
connotations to the mark, such that they would regard them
as indicating different sources for the goods. Rather,
consumers are likely to view tools bearing the mark TITAN
TOOLS as coming from the same source as tools bearing the
mark TITAN TECHNOLOGIES, with TITAN TOOLS as a variant of
the TITAN TECHNOLOGIES mark.
Applicant has asserted that TITAN is a weak mark which
is entitled to a limited scope of protection. In support
of this position, it has submitted a number of third-party
registrations for goods and services in Classes 7 and 42.
However, an examination of these registrations shows that
none is for goods or services that are particularly similar
to either those in the cited registration or in applicant’s
application. For example, the first four registrations
submitted by applicant as exhibit A are for “indexing
Ser No. 76/212,284
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machines and conveyors for use in the precision movement of
parts to be machined along an assembly line” (Registration
No. 2,362,976); “spray guns for coating materials”
(Registration No. 2,301,520); “hoists and winches”
(Registration No. 2,276,419); and “portable airless and
high volume low pressure pumps for spraying paint and
applying coatings” (Registration No. 1,927,149). Applicant
argues that "many of the goods covered by [the third-party]
registrations, such as spray guns, hoists and winches,
pumps, motors, machine parts, and lathes, will be used by
the same people who use Applicant's goods and services and
by the people who use the goods identified in the [cited]
registration. Brief, pp. 4-5. However, it should be noted
that in many instances the goods listed in the third-party
registrations are for specific types of goods or
industries, e.g., spray guns for coating materials,
portable airless and high volume low pressure pumps for
spraying paint and applying coatings; machine parts, namely
hydraulic and pneumatic cylinders for use in the steel and
aluminum industry; airless piston pumps for use with spray
guns for coating materials; and computer controlled lathes.
It is not clear to us that these goods would be used by the
same people who use oil field hand tools, nor is it clear
that the industries which use such goods would use power
Ser No. 76/212,284
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wrenches. In any event, there are clear differences
between the goods listed in the third-party registrations
and the goods and services in applicant's application and
the cited registration. The differences in the services in
the third-party registrations are even greater, e.g.,
“testing and analysis of motor oils to detect the presence
of contaminants...” (Registration No. 2,418,585);
“designing computer hardware and software to the order
and/or specifications of others...(Registration No.
1,316,136); “providing temporary facilities to business and
government for disaster recovery” (Registration No.
2,138,769).
Thus, although third-party registrations can be used
in the manner of dictionary definitions to show that a term
has a significance in a particular field, see Mead Johnson
& Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977), or that
a registered mark is weak, see Conde Nast Publications Inc.
v. Miss Quality, Inc., 180 USPQ 149 (TTAB 1973), in this
case the goods and services in the third-party
registrations are so different that they are not probative
of either point. With respect to tools of the type
identified in applicant’s application and the cited
registration, we find that TITAN is not a weak term, and
the scope of protection to be accorded the cited
Ser No. 76/212,284
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registration extends to the goods and services identified
in applicant's application.
With respect to the goods, applicant’s goods are power
wrenches while the cited registration is for, inter alia,
oil field hand tools, namely wrenches. The Examining
Attorney has submitted several third-party registrations
which show that parties have adopted a single mark for both
power wrenches and hand tool wrenches. See Registration
No. 2,540,609, registered for, inter alia, power-driven
wrenches, power tools namely wrenches, and hand tools
namely wrenches; Registration Nos. 2,526,026 and 2,523,451
for, inter alia, power tools namely air impact wrenches and
hand tools namely wrench sets; and Registration No.
2,438,395 for, inter alia, power tools namely impact
wrenches and air ratchet wrenches and hand tools namely
wrenches. Third-party registrations which individually
cover a number of different items and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
The Examining Attorney has also submitted numerous
excerpts of articles from “The Oilman,” “Oil and Gas
Journal” and “Offshore” taken from the NEXIS database which
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indicate that power wrenches are used in oil fields, the
same venue in which the registrant’s hand tools are used.
For example, a February 26, 2001 article in “Oil and Gas
Journal” about slant rig, shallow-drilling operations
discusses power wrenches, and states that “the derrickman
operates a hydraulic power wrench for tubulars.” Applicant
has acknowledged that its goods may be sold to oil field
companies and workers.4
In view of this evidence, we find that applicant’s
goods and those of the registrant are related, and that
they may be sold to or encountered by the same classes of
consumers.
Applicant has asserted that its goods are expensive,
and has submitted evidence that a hydraulic torque head can
be $4,000 or more. Applicant has also stated that, as part
of a sale, its dealer or independent representative needs
to demonstrate the tools. In addition, typically special
items will require a price quotation, and will have to be
specially manufactured.
4 “Applicant’s goods ... are sold to a wide variety of companies
and individuals and are not limited to oil field companies and
workers.” Brief, p. 7. The fact that applicant’s goods may also
be sold to customers that are not involved in the oil industry,
or that registrant’s goods include hand tools other than
wrenches, does not obviate the likelihood of confusion. It is a
sufficient basis to find likelihood of confusion if some of the
respective goods are similar and are sold to the same classes of
consumers.
Ser No. 76/212,284
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We accept applicant’s position that its goods are
expensive and will be purchased with care. However, as the
Examining Attorney points out, even careful and
sophisticated purchasers are not immune from confusion as
to the source of goods, particular where, as here, the
goods of both applicant and registrant can be sold to the
same class of purchasers for use in oil field applications.
Thus, although purchasers may well notice the slight
differences in the marks, they are not likely to ascribe
the differences to differences in the sources of the goods,
but will view the marks as variants which both indicate a
single source for the goods. In saying this, we have
considered applicant’s argument that as part of the
purchase of the registrant’s goods the “tools are demoed to
make sure they are capable of meeting the customer’s
oilfield needs.” Brief, p. 7. While we accept applicant’s
view that this is the case in some instances (see the
discussion with respect to applicant’s Class 42 services,
infra), there is nothing inherent in the nature of (hand
tool) wrenches for oil field use that would always require
them to be personally demonstrated by a dealer or
representative of the registrant.
Ser No. 76/212,284
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Accordingly, we find that if applicant were to use the
applied-for mark in connection with its goods, confusion
would be likely.
As for applicant’s “technical consultation in the
field of power tools, namely power wrenches,” applicant
itself has stated that, with respect to the registrant’s
identified hand tools, “customers must be trained on the
use of their tools by representatives of the company
selling the tools.” Therefore, by applicant’s own
acknowledgement, technical consultation is, to some extent,
part of the process of buying and/or using hand tools.
Consumers who purchase the registrant’s wrenches and either
are aware of or avail themselves of this service are likely
to assume, upon seeing the mark TITAN TECHNOLOGIES in
connection with technical consultation for power wrenches,
that the services emanate from the same source.
We also find that confusion would be likely if
applicant were to use its mark in connection with “on-line
retail store services featuring power tools, namely power
wrenches” (Class 35). The relatedness between goods and
on-line retail store services featuring those goods is
obvious. Here, of course, registrant’s wrenches are hand
tools rather than power wrenches. However, because of the
relatedness of power wrenches and hand tool wrenches
Ser No. 76/212,284
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discussed above, and because virtually all items are now
sold on-line, consumers are likely to assume that there is
a sponsorship or association between hand tool wrenches
sold under the mark TITAN TOOLS and applicant’s identified
on-line retail store services rendered under the mark TITAN
TECHNOLOGIES.
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, we follow the well-
established principle that such doubt must be resolved
against the newcomer or in favor of the registrant, who is
the prior user of the mark. See In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.