TruckCraft Corp.

Trademark Trial and Appeal Board

Sep 30, 2003

No. 75731589 (T.T.A.B. Sep. 30, 2003)

Mailed:
Sept. 30, 2003
Paper No. 12
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re TruckCraft Corporation
________
Serial No. 75731589
_______
John P. Halvonik for TruckCraft Corporation.
John S. Yard, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Seeherman, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
In the above-referenced application, applicant seeks
registration on the Principal Register of the mark
TRUCKCRAFT (in typed form) for goods identified in the
application, as amended, as “structural parts for trucks,
namely, dump truck bodies, truck bed flats, dumper beds,
dump truck bed and body inserts for pickup trucks,” in
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75731589
2
Class 12.1 The application is based on use in commerce
under Trademark Act Section 1(a), 15 U.S.C. §1051(a), and
1 We have corrected the identification of goods to reinsert
the inadvertently omitted word “namely.” The identification of
goods in the application as originally filed read “truck
equipment and accessories namely: dump bodies, truck flats,
pickup dump inserts, dumper beds, and de-icer systems.” In the
first Office action, the Trademark Examining Attorney found that
this identification of goods was unacceptable as indefinite and
because it included goods that were classified in more than one
international class. He suggested as follows:
[A]pplicant may amend the identification to substitute
any or all of the following if accurate:
International Class 7: Power operated, vehicle
mounted, salt and sand spreaders for winter road
maintenance; Power operated salt and sand spreaders
for winter road maintenance;
International Class 12: Structural parts for trucks,
namely, dump truck bodies, truck bed flats, dumper
beds, dump truck bed and body inserts for pickup
trucks.
In its response to this first Office action, applicant
requested that the identification of goods be amended to
“structural parts for trucks, dump truck bdoies [sic], truck bed
flats, dumper beds, dump truck bed and body inserts for pickup
trucks” in Class 12. In other words, applicant adopted the
Trademark Examining Attorney’s suggested Class 12 identification
of goods exactly, except that applicant omitted the word “namely”
after the opening phrase “structural parts for trucks.” The
Trademark Examining Attorney accepted and entered this amended
identification of goods, including its omission of the word
“namely.”
It is apparent that this omission of the word “namely” was
inadvertent on applicant’s part. Moreover, absent the word
“namely,” the amended identification of goods would be an
impermissible expansion of the scope of the identification of
goods as set forth in the original application, inasmuch as the
original identification of goods set forth specifically
enumerated “structural parts for trucks,” while the amended
identification of goods (which omits “namely”) would include no
such limitations but rather would cover any and all “structural
parts for trucks.” See Trademark Rule 2.71(a).
In view thereof, and to correct what obviously is an error
in applicant’s recitation of the requested amended identification
Ser. No. 75731589
3
January 15, 1992 is alleged in the application as the date
of first use of the mark anywhere and the date of first use
of the mark in commerce.
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that
the mark, as applied to the identified goods, so resembles
the mark depicted below
which is registered for “generators and alternators for
trucks” in Class 7, and “truck parts, namely, brake blocks,
oil seals, gearing, rebuilt clutches, water pumps, starters
and moisture ejectors” in Class 12,2 as to be likely to
cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
of goods (an error which should have been but was not corrected
by the Trademark Examining Attorney), we have amended the
identification of goods by reinserting the inadvertently omitted
word “namely.”
2 Registration No. 1,177,827, issued November 17, 1981 and
subsequently renewed. Section 8 and 15 affidavits accepted and
acknowledged. The identification of goods in the registration as
originally issued included “batteries and instruments, namely,
tachometers and speedometers for trucks” in Class 9, but that
class was subsequently deleted from the registration.
Ser. No. 75731589
4
Applicant has appealed the final refusal. Neither
applicant nor the Trademark Examining Attorney made any
evidence of record.3 Applicant and the Trademark Examining
Attorney filed opening briefs, but applicant did not file a
reply brief and did not request an oral hearing. We
reverse the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we 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).
We turn first to the issues of the similarity or
dissimilarity of the goods identified in applicant’s
application and the goods identified in the cited
3 Applicant attached evidentiary materials to its appeal brief,
and the Trademark Examining Attorney objected thereto in his
brief on the ground of untimeliness. The objection is well-
taken, and we have given applicant’s evidentiary materials no
consideration. See Trademark Rule 2.142(d), 37 C.F.R. §2.142(d).
Ser. No. 75731589
5
registration, the trade channels for such goods, and the
classes of purchasers for such goods. It is not necessary
that the respective goods or services be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods or
services are related in some manner, or that the
circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would 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 source or that
there is an association or connection between the sources
of the respective goods or services. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
We find that the Trademark Examining Attorney has
failed to establish that applicant’s goods and registrant’s
goods are sufficiently similar or related that confusion is
likely to result if the respective goods are marketed under
confusingly similar marks. The Trademark Examining argues,
first, that applicant’s identification of goods includes
“structural parts for trucks” and that the Class 12 goods
Ser. No. 75731589
6
identified in the cited registration are themselves
“structural parts for trucks,” and thus within the scope of
the goods identified in the application. As noted above at
footnote 1, however, we have corrected applicant’s
identification of goods to reinsert the word “namely” after
“structural parts for trucks,” such that applicant’s
identification of goods does not cover any and all types of
“structural parts for trucks,” but only those structural
parts specifically enumerated in the remainder of the
identification of goods, i.e., “dump truck bodies, truck
bed flats, dumper beds, dump truck bed and body inserts for
pickup trucks.” In view thereof, we are not persuaded by
the Trademark Examining Attorney’s argument that the Class
12 goods identified in the registration are encompassed
within or legally identical to the “structural parts for
trucks” identified in applicant’s application.4
4 Moreover, even if applicant’s identification of goods were
deemed to cover all “structural parts for trucks” rather than
just those specifically enumerated in the identification, we
cannot find on this record that registrant’s Class 12 goods,
i.e., “truck parts, namely, brake blocks, oil seals, gearing,
rebuilt clutches, water pumps, starters and moisture ejectors,”
are in fact “structural parts for trucks.” The Trademark
Examining Attorney has not submitted any evidence that
“structural parts for trucks” has a particular or specialized
meaning in the industry. Accordingly, we shall construe those
words in their normal sense, i.e., as referring to the parts of a
truck which pertain to or involve the basic structure of the
truck, such as the truck’s chassis and body. In this regard, we
note that the Trademark Acceptable Identification of Goods and
Services Manual, when it lists specific “structural parts” of
Ser. No. 75731589
7
The Trademark Examining Attorney argues,
alternatively, that even if the respective goods are not
legally identical, they nonetheless are similar and related
because they are all truck parts. He cites numerous
reported cases in which the Board has found that various
vehicles, vehicle parts and accessories are similar and
related for purposes of determining likelihood of
confusion. See, e.g., In re Jeep Corporation, 222 USPQ 333
(TTAB 1984), and cases cited therein. However, we do not
read these cases as establishing a per se rule that
vehicles, vehicle parts and accessories always must be
deemed to be related and similar. As the Board noted in In
re Jeep Corporation, supra, the decisions in which such
goods were found to be related
were based upon the facts that the goods in
question all comprised automotive parts,
accessories, and equipment which could be
purchased through the same channels of trade,
including dealers, service stations, automotive
accessory and supply stores, or the automotive
departments of general merchandisers, by the
vehicles, lists items which are or would be part of or attached
to the chassis or body of the vehicle, i.e., “bug shields as
structural parts of vehicles,” “hood shields as structural parts
of vehicles,” “mud flap brackets as structural parts of
vehicles,” and “side shields as structural parts of vehicles.”
The Class 12 goods identified in the cited registration, by
contrast, do not appear to be “structural parts” of this type,
but rather are parts pertaining to the engine, the transmission,
or other aspects of the mechanical operation of the truck.
Ser. No. 75731589
8
same classes of purchasers, such as mechanics,
dealers, and motorists.
222 USPQ at 334.
In the present case, however, there is no evidence
that registrant’s and applicant’s respective goods are the
types of parts, accessories and equipment which normally
would be purchased through the same channels of trade and
by the same classes of purchasers. Applicant has asserted,
credibly, that its “dump truck bodies, truck bed flats,
dumper beds, dump truck bed and body inserts for pickup
trucks” are, by their nature, highly specialized products
which are not sold through the same trade channels and to
the same classes of purchasers as are registrant’s more
basic replacement parts. Applicant’s goods are purchased
and used to change the basic function of a truck (as in
converting a pickup truck into a dump truck), or else are
used to finish the manufacture of larger trucks such as
commercial dump trucks, which come off the assembly line in
an unfinished state. These highly specialized goods, on
their face, do not appear to be the types of goods, like
registrant’s goods, that would be purchased or used by
truckers or truck repair shops in connection with basic
truck repairs, and there is no evidence in the record which
establishes such a relationship between the respective
Ser. No. 75731589
9
goods. This case therefore is distinguishable from In re
Jeep Corporation and the other cases cited by the Trademark
Examining Attorney.
In short, The Trademark Examining Attorney has
presented no specific argument or evidence as to why or how
the particular goods involved in this case are related or
similar, apparently relying instead on the existence of a
per se rule regarding the relationship between vehicle
parts and accessories. Because no such rule exists, and
because there is no basis in the record for concluding that
applicant’s and registrant’s respective goods are the types
of goods that normally are marketed in the same trade
channels and to the same classes of purchasers, we find
that the respective goods, their trade channels, and their
classes of purchasers are dissimilar rather than similar
for purposes of our likelihood of confusion analysis.5
Turning now to a comparison of the marks, we find that
they are more similar than dissimilar due to the fact that
they both prominently feature slight variations on the term
TRUCK CRAFT, i.e., TRUCKCRAFT and TRUCKRAFT. However, we
also find that this term is fairly suggestive as applied to
5 Our finding that the goods are dissimilar and unrelated is
based on the absence of evidence which would support a contrary
finding of similarity. That is not to say that, on a different
evidentiary record (for example in an inter partes proceeding),
we would not reach a different result.
Ser. No. 75731589
10
the truck parts identified in the application and
registration, respectively. In view thereof, we find that
the scope of protection to be afforded the registered mark
is narrower than it would have been if the mark were
stronger. Specifically, we find that the marks, although
similar, are not so similar that confusion is likely to
result from their contemporaneous use on the dissimilar and
unrelated goods identified in the application and
registration, respectively.
We also are persuaded by applicant’s contention that
its goods, by their nature, are of a type which are not
likely to be purchased on impulse, but rather with some
degree of care, a fact which further militates against a
finding of likelihood of confusion.
On balance, we find that the evidence of record on the
du Pont likelihood of confusion factors, including the
absence of evidence establishing that the respective goods
are similar or related, leads us to conclude that there is
no likelihood of confusion.
Decision: The refusal to register is reversed.