WD-40 Manufacturing Company

Trademark Trial and Appeal Board

Aug 31, 2007

No. 78554558 (T.T.A.B. Aug. 31, 2007)

Mailed: August 31, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re WD-40 Manufacturing Company
________

Serial No. 78554558
_______

Kathleen A. Pasulka of Procopio Cory Hargreaves & Savitch LLP for
WD-40 Manufacturing Company.

Elizabeth N. Kajubi, Trademark Examining Attorney, Law Office 107
(J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Hohein and Taylor, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

WD-40 Manufacturing Company has filed an application to
register on the Principal Register the mark "BIG BLAST CAN" and
design, as reproduced below,

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. No. 78554558
2
for "rust prevention and corrosion control, protective and
decorative coatings" in International Class 2 and "lubricating
oil and penetrating oil" in International Class 4.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "BLAST" and design, as illustrated below,

which is registered on the Principal Register for "lubricants,
and lubricating greases and oils for use on fitness equipment" in
International Class 4,2 as to be likely to cause confusion, or to
cause mistake, or to deceive.
Applicant has appealed and briefs have been filed.3 We
affirm the refusal to register.

1 Ser. No. 78554558, filed on January 26, 2005, which alleges a date of
first use anywhere and in commerce for each class of January 1, 2004
and sets forth the following description of the mark: "The mark
consists of the words BIG BLAST in red block lettering with the word
CAN in smaller red block lettering within a yellow parallelogram
across the S and T." The colors red and yellow are claimed as a
feature of the mark and the word "CAN" is disclaimed.

2 Reg. No. 2,447,799, issued on May 1, 2002, which sets forth a date of
first use of the mark anywhere and in commerce of December 1, 1999;
combined affidavit §§8 and 15.

3 The Examining Attorney, in her brief, notes that applicant's brief
"references evidence on the Principal Register and Internet." While
further observing that applicant has failed "to specify" or attach a
copy of "the referenced evidence," she "objects to the evidence
submitted by the applicant in its Brief as untimely and improper
[inasmuch] as it was not previously provided to the trademark
Ser. No. 78554558
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.4
Turning first to consideration of the goods at issue,
applicant contends in its brief that, as identified, registrant's
"lubricants, and lubricating greases and oils for use on fitness
equipment" are "limited to use on fitness equipment." Applicant,
in view thereof, further states in its brief that it "offers
herein to except out of its [International] Class 4 goods
specification, 'lubricating [sic; should be lubricants,] and
lubricating greases and oils for use on fitness equipment,' which

examining attorney." Trademark Rule 2.142(d) provides in relevant
part that "[t]he record in the application should be complete prior to
the filing of an appeal" and that the Board "will ordinarily not
consider additional evidence filed with the Board by the appellant ...
after the appeal is filed." In view thereof, and inasmuch as none of
the evidence referenced by applicant is proper subject matter for
judicial notice by the Board, the Examining Attorney's objection is
sustained and the evidence referenced by applicant will not be given
further consideration. We hasten to add, however, that even if such
evidence were to be deemed to form part of the record, it would not
change the disposition of this appeal.

4 The court, in particular, pointed out that: "The 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."
192 USPQ at 29.

Ser. No. 78554558
4
are the goods listed in Registrant's [registration for its]
Mark." Although, presumably, applicant maintains that by so
restricting the identification of its goods, none of its goods in
International Class 4 would be commercially or otherwise closely
related to registrant's goods and, thus, there would thereby be
no likelihood of confusion, applicant has not formally amended
its application and it is well settled that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the involved application and the
cited registration, including any limitation or restriction
stated therein, rather than in light of what the goods may
actually be as shown, for instance, by extrinsic evidence. See,
e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Moreover, it is noted that applicant fails to mention
in its brief whether its "rust prevention and corrosion control,
protective and decorative coatings" in International Class 2 are
commercially or otherwise closely related to registrant's goods,
which as previously noted are classified in International Class
4. To the extent, nonetheless, that by its silence applicant may
be of the view that confusion is unlikely because the respective
Ser. No. 78554558
5
goods are in different classes, suffice it to say that the
purpose of the United States Patent and Trademark Office in using
the classification system is for administrative convenience
rather than as an indication of whether goods are related or not.
See, e.g., Jean Patou Inc. v. Theon Inc., 9 F.3d 1171, 29 USPQ2d
1771, 1774 (Fed. Cir. 1993); National Football League v. Jasper
Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990); and In re
Leon Shaffer Golnick Advertising, Inc., 185 USPQ 242, 242 n.2
(TTAB 1974). The fact, therefore, that applicant's goods in
International Class 2 and those of the registrant in
International Class 4 are classified in different classes is not
an indication that such goods are unrelated; instead, that fact
is simply immaterial in determining the issue of likelihood of
confusion. See, e.g., In re Clay, 154 USPQ 620, 621 (TTAB 1967)
and cases cited therein.
The Examining Attorney, in her brief, accurately
observes that, as to applicant's goods in International Class 4,
its "lubricating oil" is in part "identical to registrant's
goods, 'lubricants.'" In addition, with respect to applicant's
offer to limit its goods to exclude "lubricants for use on
fitness equipment," she argues in her brief that:
Applicant believes that by so limiting the
goods that "[c]ustomers within the fitness
equipment industry will certainly be able to
distinguish" between the products offered
under the applicant's and registrant's marks.
(Applicant's Brief p. 3). This argument is
unmeritorious as it fails to consider that
registrant's goods are not only "lubricating
greases and oils for use on fitness
equipment" but are also identified to be
"LUBRICANTS" without any restriction on
channels of trade or use. ....
Ser. No. 78554558
6

The Examining Attorney also maintains that, in any
event, the record contains evidence sufficient to show that the
applicant's and registrant's goods are closely related, pointing
out that (citations omitted):
Specifically, in the Final Refusal, the
examining attorney attached copies of
printouts from the USPTO X-Search database,
which show a mere sampling of third[-]party
registrations of marks used in connection
with the same or similar goods as those of
the applicant and registrant in this case.
These printouts have probative value to the
extent that they serve to suggest that the
goods listed therein, namely, rust and
corrosion inhibitors as well as lubricants
and penetrating oil, are of a kind that may
emanate from a single source. ....
Furthermore, the evidence demonstrates that
lubricants often contain rust prevention and
corrosion preventatives. Hence, the
applicant's offer to limit its goods will not
obviate the relatedness of the goods ....

In particular, we note in this regard that the record contains
copies of four use-based third-party registrations (two of which
issued to the same third party) for marks which are variously
registered for "penetrating oils; water pump lubricants and rust
inhibitors"; "industrial lubricants and rust inhibitors"; and
"corrosion and rust inhibitors in the nature of coatings; [and]
anti-corrosion and anti-rust lubricants." Although it is the
case that such registrations are not evidence that the different
marks shown therein are in use or that the public is familiar
with them, the Examining Attorney is nonetheless correct that the
registrations have some probative value to the extent that they
serve to suggest that the goods listed therein are of the kinds
which may emanate from a single source. See, e.g., In re
Ser. No. 78554558
7
Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1217-18
(TTAB 2001); 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 n.6 (TTAB 1988), aff’d as not citable
precedent, No. 88-1444 (Fed. Cir. Nov. 14, 1988).
We agree with the Examining Attorney that the goods at
issue must be considered commercially or otherwise closely
related such that, if marketed under the same or similar marks,
confusion as to source or sponsorship would be likely to occur.
Not only does applicant seek registration for both "rust
prevention and corrosion control, protective, and decorative
coatings, on the one hand, and "lubricating oil and penetrating
oil," on the other, but as the Examining Attorney points out, the
cited registration lists "lubricants," a term which encompasses
applicant's "lubricating oil and penetrating oil." Moreover,
even if the cited registrant's identification of goods could be
read so that the limitation of "for use on fitness equipment"
therein applied to its "lubricants" and not just its "lubricating
greases and oils," it is still the case that even if applicant
were to amend its goods in International Class 4 so as to exclude
"lubricating oil and penetrating oil" which is "for use on
fitness equipment," its goods in International Class 2, namely,
"rust prevention and corrosion control, protective and decorative
coatings" still would be considered closely related to the cited
registrant's goods. This is because it is plain that
"lubricants, and lubricating greases and oils for use on fitness
equipment" help prevent rust and control corrosion and, thus,
Ser. No. 78554558
8
also serve as protective coatings. Applicant, we further
observe, does not contend otherwise nor has it furnished any
evidence to the contrary; instead, it even acknowledges in its
brief that the goods at issue are indeed "similar products."
Turning, then, to consideration of the respective
marks, applicant argues in its brief that confusion is not likely
because:
Registrant's Mark includes the
distinctive design elements of stylized
lettering inside a rough edged circle, which
circle appears to portray or bring to mind an
explosion or "blast," which is the impression
that the mark "BLAST" is intended to make.
In addition, the explosion design of the
Registrant's [M]ark creates a unique
impression not shared by Applicant's Mark.

Registrant's Mark is the one word, BLAST
(and the design element); Applicant's [M]ark
is three words. It is unlikely that the
purchasing public would ignore the first and
last words of Applicant's [M]ark and confuse
it with Registrant's Mark. Applicant's three
words are clearly different from Registrant's
one word mark. In addition, the word "BIG"
in Applicant's Mark carries its own meaning
and definitely holds at least equal dominance
with the word "BLAST." Moreover, "BIG" alone
is used as a mark on many products as
evidenced by the Principal Register and the
Internet. Therefore, Applicant's [M]ark and
Registrant's Mark are not likely to cause
confusion, even though they may be used in
connection with similar products. They are
not the same mark and they are not similar
enough to lead or to cause confusion.

We concur, however, with the Examining Attorney that,
when considered in their entireties, the respective marks are
"highly similar" and that confusion is therefore likely. As she
properly notes in her brief:
[O]ne feature of a mark may be recognized as
more significant in creating a commercial
Ser. No. 78554558
9
impression. Greater weight is given to that
dominant feature in determining whether there
is a likelihood of confusion. In re National
Data Corp., [753 F.2d 1056,] 224 USPQ 749
(Fed. Cir. 1985); Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693
(CCPA 1976); In re J.M. Originals Inc., 6
USPQ2d 1393 (TTAB 1988). It is well settled
that, where a mark contains a word portion
and a design portion, the word portion is
accorded greater weight in determining
likelihood of confusion. In re Dakin's
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB
1999); In re Appetito Provisions Co.[Inc.], 3
USPQ2d 1553 (TTAB 1987; Amoco Oil Co. v.
Amerco, Inc., 192 USPQ 729 (TTAB 1976); TMEP
§1207.01(c)(ii). Here, ... both marks
contain the term BLAST, which is most likely
to be recognized by a consumer. ....

With respect to applicant's contention that the marks
at issue are distinguishable because of the different number of
words therein, the Examining Attorney maintains that:
The issue ... is not the number of words in
the ... marks, [inasmuch] as the test of
likelihood of confusion is not whether the
marks can be distinguished when subjected to
a side-by-side comparison, but rather,
whether the marks create the same overall
impression. Recot[] Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894 ... (Fed. Cir.
2000); Visual Information Inst., Inc. v.
Vicon Indus. Inc., 209 USPQ 179 (TTAB 1980).
The focus is on the recollection of the
average purchaser who normally retains a
general rather than specific impression of
trademarks. Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB
1979); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
Here, the term BIG used in the context of
this mark simply serves as a modifier of the
dominant term, BLAST[,] and does not carry
equal dominance.

Lastly, while correctly noting that the term "CAN" in applicant's
mark, although disclaimed, may not be ignored, the Examining
Attorney contends that it is the words "BIG BLAST" in such mark
Ser. No. 78554558
10
which are "more significant in creating a commercial impression"
and, thus, when compared to registrant's mark, the respective
marks "are extremely similar and share the same dominant portion,
BLAST."
When considered in their entireties, it is readily
apparent that in terms of sound, appearance and connotation, the
dominant and principal source-distinguishing elements of
applicant's and registrant's marks are, respectively, the words
"BIG BLAST" and "BLAST," with the word "BIG" in applicant's mark,
since it is used as an adjective modifying the term "BLAST,"
serving simply to signify a larger "BLAST,"5 which is the same
term that constitutes the literal portion of registrant's mark.
While, as applicant contends, the design portion of registrant's
mark does indeed serve to underscore or bring to mind the meaning
of the term "BLAST" as an explosion," the same is true of the
primary design element of applicant's mark, in which the angular

5 Contrary to applicant's argument, there is no evidence of record
which supports the contention that "the word 'BIG' in Applicant's Mark
carries its own meaning and definitely holds at least equal dominance
with the word 'BLAST'" inasmuch as the word "'BIG' alone is used as a
mark on many products as evidenced by the Principal Register and the
Internet." See, e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974) [the Board does not take judicial notice of third-party
registrations of marks]. If applicant wanted the Board to consider
certain third-party registrations, the proper procedure for making
such registrations of record would be to submit either copies of the
actual registrations or the electronic equivalents thereof, i.e.,
printouts of the registrations which have been taken from the U.S.
Patent and Trademark Office's own computerized database prior to the
time for filing its appeal of the final refusal. See, e.g., In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 n.3 (TTAB 1995); In re
Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); and In re
Melville Corp., 18 USPQ2d 1386, 1388 n.2 (TTAB 1991). Similarly,
copies or printouts of any Internet uses should also have been timely
submitted. See Trademark Rule 2.142(d).

Ser. No. 78554558
11
and expanding size of the letters forming the words "BIG BLAST"
help connote the meaning of a large explosion.
Moreover, while applicant's mark also contains the word
"CAN," such word is clearly subordinate matter which scarcely
serves to differentiate applicant's mark from registrant's mark.
As our principal reviewing court has noted, while marks must be
considered in their entireties, including any descriptive or
other disclaimed matter therein, it is also the case that, in
articulating reasons for reaching a conclusion on the issue of
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 [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"[t]hat a particular feature is descriptive ... with respect to
the involved goods ... is one commonly accepted rationale for
giving less weight to a portion of a mark" and that, "[i]ndeed,
this type of analysis appears to be unavoidable." Id. In this
case, not only is the word "CAN" merely descriptive of the
containers in which applicant's products would be sold, as
confirmed by the disclaimer thereof, but visually such word
appears in a much smaller size lettering than the much larger and
bolder stylization of the lettering which underscores the
connotation of the words "BIG BLAST." Consequently, it is the
words "BIG BLAST" which dominate applicant's mark, with the word
"CAN" adding very little of source-indicating significance.
Ser. No. 78554558
12
Furthermore, it should be kept in mind that
registrant's mark is not limited to any particular color
combination for its display and, consequently, could be depicted
in a similar red and yellow color scheme to that utilized by
applicant for its mark. Cf. Phillips Petroleum Co. v. C. J.
Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) [a mark
registered in typed or standard character form is not limited to
the depiction thereof in any special form]. Overall, in light of
their substantial similarities in sound, appearance and
connotation, it is clear that applicant's and registrant's marks
convey substantially similar commercial impressions. See, e.g.,
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997). Confusion is therefore likely from
contemporaneous use of such marks in connection with,
respectively, applicant's and registrant's goods.
Finally, to the extent that applicant nonetheless
asserts that confusion is not likely because, as stated in its
brief, "[c]ustomers within the fitness equipment industry will
certainly be able to distinguish the products offered under the
Registrant's [BLAST] Mark as compared to those offered under
Applicant's BIG BLAST CAN [M]ark," we agree with the Examining
Attorney that even if customers for the respective goods are
considered to be sophisticated purchasers rather than ordinary
consumers, such would not avoid a likelihood of confusion. As
the Examining Attorney persuasively points out in her brief, it
is well established that the fact buyers may be knowledgeable and
discriminating as to the goods required to meet or take care of
Ser. No. 78554558
13
their equipment needs and, thus, would be expected to exercise
care and deliberation in their choice of goods "does not
necessarily preclude their mistaking one trademark for another"
or that they otherwise are entirely immune from confusion as to
source or sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Research &
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986);
In re Decombe, 9 USPQ 1812, 1814-15 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Accordingly, we conclude that purchasers who are
familiar or otherwise acquainted with registrant's "BLAST" and
design mark for its "lubricants, and lubricating greases and oils
for use on fitness equipment" would be likely to believe, upon
encountering applicant's substantially similar "BIG BLAST CAN"
and design mark for its "rust prevention and corrosion control,
protective and decorative coatings" and/or its "lubricating oil
and penetrating oil," that such identical in part and otherwise
commercially related products emanate from, or are otherwise
sponsored by or affiliated with, the same source. Such would
also be the case, moreover, even if applicant were to limit its
"lubricating oil and penetrating oil" so as to exclude therefrom
registrant's "lubricants, and lubricating greases and oils for
use on fitness equipment." Given the closely related nature of
the respective goods, customers for such products could
reasonably believe, even if they were to notice the relatively
minor differences in the marks at issue, that applicant's goods
constituted a separate or second line of products from the same
Ser. No. 78554558
14
source as the products offered by registrant for use on fitness
equipment.
Decision: The refusal under Section 2(d) is affirmed.