Trakloc Inter-national, LLC

Trademark Trial and Appeal Board

Aug 23, 2005

No. 76393557 (T.T.A.B. Aug. 23, 2005)

Mailed:
August 23, 2005
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trakloc International, LLC
________

Serial No. 76393557
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Kit M. Stetina of Stetina Brunda Garred & Brucker for
Trakloc International, LLC.

John S. Yard, Trademark Examining Attorney, Law Office 115
(Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Trakloc International, LLC, seeks registration on the
Principal Register of the mark TRAKLOC (standard character
drawing) for goods identified in the application, as
amended, as follows: “metal building materials namely
structural beams and posts for forming walls in residential
and commercial structures” in International Class 6.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to

1 Application Serial No. 76393557 was filed on April 10, 2002,
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76393557
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register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. §1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the identified goods, so resembles the following
registered mark as to be likely to cause confusion, to cause
mistake or to deceive:
REGISTRATION NO. 2628824 TRAC-LOC (standard character drawing)
for “flooring system comprising non-metal floor panels
and metal or plastic track for mechanically
interlocking the floor panels” in International Class
19.2

Applicant and the Trademark Examining Attorney
submitted briefs. Applicant did not request an oral
hearing. We reverse the refusal to register.
The Trademark Examining Attorney takes the position
that applicant’s mark and registrant’s mark are highly
similar in appearance and identical as to sound, connotation
and commercial impression; and that applicant’s and
registrant’s goods are both structural building products,
meaning they are highly related and would be sold through
the same channels of trade.

2 Registration No. 2628824 issued to Premark RWP Holdings,
Inc., on October 1, 2002, reciting a date of first use in commerce
at least as early as January 15, 2002.
Serial No. 76393557
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By contrast, in arguing for registrability, applicant
asserts that its mark, TRAKLOC, creates a different
commercial impression from registrant’s TRAC-LOC, and hence
its mark does not so resemble the cited mark such that there
is a likelihood of confusion; that these respective goods
are not related and will not move through the same channels
of trade; and that all of these goods will be directed to
sophisticated purchasers.
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973).
We turn first to the du Pont factor focusing on the
similarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In both marks, the term LOC is a phonetic equivalent of the
word “lock,” a highly suggestive term having the identical
connotation, whether applied to metal building materials for
forming walls or to an interlocking panels comprising a
flooring system. Similarly, the TRAC or TRAK (i.e.,
“track”) terminology is highly suggestive of these
respective goods.
Serial No. 76393557
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As to the cited mark, applicant argues that it is
significant that registrant’s presentation of its mark joins
the terms TRAC and LOC with a hyphen. Applicant argues that
a hyphen draws attention to itself, creating a pause between
the two terms.3 However, we agree with the Trademark
Examining Attorney that the hyphen in registrant’s cited
mark is actually not dividing these words. Rather, it is
placed in a natural break between the two words making up
this mark, linking the two words, as is often the case with
compound words. We find that punctuation and similar
symbols generally do not change the commercial impression of
a mark. In re Burlington Industries, Inc., 196 USPQ 718,
719 (TTAB 1977) [“[A]n exclamation point does not serve to
identify the source of the goods”]. Hence, the cited mark
“will be pronounced precisely the same as applicant’s non-
hyphenated mark and create precisely the same connotation.”
Trademark Examining Attorney’s brief, pp. 4-5.
Applicant also argues that registrant’s mark “correctly
spells” TRAC while its own proposed mark misspells TRAK in a

3 In support of this proposition, applicant submitted the
relevant pages on hyphen use for writers of prose from The Longman
Handbook For Writers and Readers. There is a problem, however,
with this submission. The Trademark Examining Attorney objected
to this evidence because the excerpt was submitted for the first
time with applicant’s appeal brief. Inasmuch as this material was
not timely and properly introduced into the record, the Trademark
Examining Attorney’s objection is sustained, and this evidence has
not been considered in reaching our decision.
Serial No. 76393557
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“fanciful” manner, suggesting to prospective purchasers that
these goods may be “unconventional” in some way.
Applicant’s brief, p. 4. However, again, we agree with the
Trademark Examining Attorney that the TRAC prefix in the
registrant’s mark is not a dictionary term either – both
“Trac” and “Trak” appearing to be equally fanciful
misspellings of the word “Track.”
Furthermore, as to the slight difference in appearance
between these two marks, the Trademark Examining Attorney
correctly argues that the test of likelihood of confusion is
not whether the marks can be distinguished when subjected to
a side-by-side comparison.
On this factor, we conclude that the marks are quite
similar as to appearance, and virtually identical as to
sound, connotation and commercial impression.
We turn next to the du Pont factor focusing on the
relationship of the goods as described in the application
and the goods listed in the cited registration.
In support of his position that the goods are closely
related, the Trademark Examining Attorney argues that the
fact that registrant’s panels are secured by a track
indicates the goods are “structural building materials” --
not surface floor coverings such as floor tiles, carpets or
resilient surface coverings typically found at flooring
Serial No. 76393557
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stores. As such, the Trademark Examining Attorney argues
that both applicant and registrant will be marketing
structural building materials. Trademark Examining
Attorney’s appeal brief, p. 5.
Applicant argues strenuously that the Trademark
Examining Attorney has failed to provide sufficient evidence
showing that the goods are related in order to support a
finding of likelihood of confusion.
By contrast, the Trademark Examining Attorney argues
that he has provided copies of ten representative third-
party registrations showing that the types of applicant’s
and of registrant’s goods are manufactured and marketed by
the same parties and sold under the same mark. He argues
that these third-party registrations have probative value to
the extent that they serve to suggest that the goods listed
therein, namely structural building beams and posts, on the
one hand, and flooring systems, on the other hand, are of a
kind that may emanate from a single source. In re Infinity
Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB
2001), citing 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 counters that these third-party registrations
do not support the position taken by the Trademark Examining
Serial No. 76393557
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Attorney, but rather that they actually demonstrate that
wood building products are generally manufactured and/or
marketed by different companies than those that manufacture
and/or market metal building products.
The Trademark Examining Attorney dismisses this
argument as follows:
It is further worth noting that the
registrant’s goods, like many building
material products, are comprised of both
metal and non-metal components, further
rendering the material composition argument
as insignificant. Additionally, the
classification of goods distinction between
international class 6 metal building products
and class 19 non-metal building products
neither creates nor recognizes separate
channels of trade. … The fact that the
United States Patent and Trademark Office
classifies goods or services in different
classes does not establish that the goods and
services are unrelated under Trademark Act
Section 2(d), 15 U.S.C. §1052(d). The
determination concerning the proper
classification of goods or services is a
purely administrative determination unrelated
to the determination of likelihood of
confusion. [citations omitted] For the
foregoing reasons, the applicant’s attempts
to distinguish the goods of the applicant …
must be considered unpersuasive.

Trademark Examining Attorney’s appeal brief, pp. 7-8.
While we certainly agree with the Trademark Examining
Attorney that the difference in International Classification
is not determinative herein, we are unwilling so easily to
dismiss the significance of the material composition of the
Serial No. 76393557
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structural building materials or the floor panels,
especially when interpreting the probative value of fewer
than ten third-party registrations having both types of
goods, which constitutes the totality of evidence in the
file. Furthermore, we disagree with the Trademark Examining
Attorney’s conclusion that applicant’s and registrant’s
goods are related merely because both can be characterized
as “structural building products.”
To the extent it is significant to our determination
that applicant’s beams and posts are metal and registrant’s
flooring panels are non-metal, we find that only one of the
registrations based on use submitted by the Trademark
Examining Attorney has both metal structural beams and posts
and non-metal flooring panels.4 This too is a registration
based on a foreign registration (Canadian), but that also
has dates of use in commerce for the two relevant classes of
goods. Registration No. 2449404 (PROWALL). However, this
is a rather thin reed upon which to base a finding of a
relationship between these goods. Absent any other evidence

4 In his brief, the Trademark Examining Attorney highlights
three of the ten registrations in particular. However, while two
of these three registrations [Reg. No. 2486509 (AMANCO and design)
and Reg. No. 2645059 (BI-STEEL)] list metal beams and posts as
well as non-metal flooring panels, both are registrations based
upon Section 44 of the Act – not on use in commerce in (or with)
the United States. Hence, they are of most limited probative
value. See Mucky Duck Mustard, supra at 1470 n.6.
Serial No. 76393557
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in the record to show the relationship of these respective
goods, we cannot agree with the Trademark Examining Attorney
that these goods “are highly related.” Rather, on this
record, we find that the respective goods, as identified,
are not related.
As to a related du Pont factor, given our finding that
the Trademark Examining Attorney has not shown these goods
to be related, we agree with applicant that absent any other
evidence, we also cannot find that they are likely to travel
through the same channels of trade as the registrant’s
goods.
As to the du Pont factor focusing on the conditions
under which and buyers to whom sales are made, applicant
argues that the likelihood of confusion will be minimized by
the care in purchasing taken by the relatively sophisticated
purchasers involved herein. On its face, registrant’s
description of goods suggests that these are not systems
designed for installation by the do-it-yourselfer.
Similarly, while the involved application has no limitations
on channels of trade or classes of purchasers, applicant has
asserted that its goods are typically purchased by
contractors and civil engineers, and that such professionals
are careful to specify the source of the metal structural
members to be purchased.
Serial No. 76393557
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Upon reviewing the entire record herein, especially
given the circumstances surrounding the purchase of
applicant’s goods, we accept from the identification of
goods that the only overlap of purchasers between
applicant’s goods and registrant’s goods involves persons
skilled in the building trades, who are somewhat
sophisticated, and will exercise care in purchasing the
involved goods from the correct source.
In conclusion, while we find that the marks are
similar, they are also highly suggestive. We also find, on
this record, that these goods are not related, they do not
necessarily move through the same channels of trade, and the
goods would be selected with care by sophisticated
purchasers.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is hereby reversed.