Wheel Technology Ltd.

Trademark Trial and Appeal Board

Oct 1, 2008

No. 78884488 (T.T.A.B. Oct. 1, 2008)

Mailed: October 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wheel Technology Ltd.
________

Serial No. 78884488
_______

Jonathan Moskin of White & Case LLP for Wheel Technology
Ltd.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Drost, Cataldo and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Wheel Technology Ltd. has filed an application on the
Principal Register for the mark ROTO SHAVE (in standard
characters with SHAVE disclaimed) for “electric razors,
non-electric razors, razor blades and razor cases” in
International Class 8.1
Registration has been finally refused pursuant to

1 Application Serial No. 78884488 was filed on May 16, 2006,
based upon applicant’s assertion of its bona fide intent to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 78884488
2
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark so resembles the mark ROTORAZOR (in
standard characters) in Registration No. 29875072 for
“razors for cutting hair” in International Class 8, as to
be likely, if used on or in connection with the identified
goods, to cause confusion, to cause mistake, or to deceive.
Applicant and the examining attorney have filed main briefs
on the issue under appeal. In addition, applicant filed a
reply brief.
Evidentiary Matters
Before turning to the substantive ground for refusal,
we note that applicant has submitted five exhibits
(Exhibits A through E) with its main brief. These exhibits
consist of materials that previously were made of record by
applicant during prosecution of the involved application.
As such, the materials comprising Exhibits A through E are
at best duplicative and cumulative of evidence timely made
of record, and thus need not and should not be resubmitted.
See Life Zone, Inc. v. Middleman Group, Inc., ___USPQ2d___,
(TTAB July 15, 2008).
Further, we note that both applicant and the examining
attorney have submitted definitions of “roto” with their
briefs. Both definitions agree that “roto” is an

2 Issued on August 23, 2005.
Ser No. 78884488
3
abbreviation for various terms, most notably “rotogravure.”3
In addition, the examining attorney submitted a definition
of “rotogravure” with his brief. However, none of these
dictionary definitions apply to the goods recited in the
involved application or cited registration. As a result,
none is helpful in coming to our determination on the issue
under appeal. Accordingly, while we will exercise our
discretion to take judicial notice of these definitions, we
have not relied upon them in our determination herein.4
Likelihood of Confusion
Our determination under Trademark Act §2(d) is based
upon an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,

3 The examining attorney relies upon Random House Unabridged
Dictionary (2006) and The American Heritage Abbreviations
Dictionary (3rd Ed. 2005), and applicant relies upon The Oxford
English Dictionary (2nd Ed. 1989) for these definitions.
4 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).

Ser No. 78884488
4
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
We review the relevant du Pont factors as they apply
to this case.
The Goods
We begin by comparing applicant’s goods with those of
registrant. In making our determination under the second
du Pont factor, we look to the goods as identified in the
involved application and cited registration. See 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

Ser No. 78884488
5
identification of goods set 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.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”)
In this case, applicant’s goods are identified as
“electric razors, non-electric razors, razor blades and
razor cases” and registrant’s goods are identified as
“razors for cutting hair.” Thus, on the face of the goods
as recited in the application at issue and the cited
registration, “electric razors” and “non-electric razors”
encompass registrant’s “razors for cutting hair,” which are
more narrowly identified inasmuch as they recite a
particular function, namely, cutting hair. Put another
way, registrant’s “razors for cutting hair” are a subset of
applicant’s more generally identified electric and non-
electric razors. We are not persuaded by applicant’s
arguments and evidence that registrant’s goods are actually
narrower in nature and scope than indicated in its
identification of goods. See Octocom Systems, Inc. v.
Ser No. 78884488
6
Houston Computers Services Inc., supra. Nor do we find
that registrant’s goods, as identified, are so ambiguous as
to require reliance upon extrinsic evidence in order to
come to a determination with regard to their similarity to
those of applicant. Cf. In re Trackmobile, Inc., 15 USPQ2d
1152 (TTAB 1990); and Acomb v. Polywood Plastics Corp., 187
USPQ 188 (TTAB 1975).
In addition, it is commonly understood that razor
blades are the cutting portion of razors, and that they
become dull and must be replaced with sharp blades in order
for razors to function. It is further understood that
“razor cases” may be used to hold or store razors.
Inasmuch as applicant’s identification of goods does not
specify the types of razors with which its blades and cases
may be used, it must be presumed that such may be used with
“razors for cutting hair.” See Paula Payne Products v.
Johnson Publishing Co., supra. Thus, applicant’s “razor
blades” are related to registrant’s “razors for cutting
hair” inasmuch as the former are a necessary and integral
part of the latter. Further, applicant’s “razor cases” are
related to registrant’s “razors for cutting hair” inasmuch
as the former may be used to hold or store the latter.
As such, based upon the goods recited in the involved
application and the cited registration, we find that
Ser No. 78884488
7
applicant’s goods encompass in part or otherwise are
related to those provided by registrant.5 The legal
identity in part of the goods is a factor that weighs
heavily against applicant.
Channels of Trade
Neither applicant’s goods nor those of registrant
contain any restrictions as to the channels of trade in
which they are distributed or the class of purchasers to
whom they are marketed. It is settled that in making our
determination regarding the channels of trade, we must look
to the goods as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., supra; and Paula Payne Products v.
Johnson Publishing Co., supra. Because as noted above the

5 Applicant, in its briefs, requests remand of the involved
application to submit an unspecified amendment to limit its
identification of goods, and argues that it was prevented from
doing so during examination of its application due to the
examining attorney’s failure to articulate the basis for his
contention that applicant’s goods are related to those of
registrant. We note, however, that the examining attorney stated
his position that applicant’s goods encompass those of registrant
in both his first and final Office actions as well as his denial
of applicant’s request for reconsideration. Applicant thus was
afforded two opportunities to submit an amendment to its
identification of goods during examination of its application,
and a further opportunity to submit such an amendment with a
request for remand or as part of its main brief. See TBMP
§1205.01 However, applicant never filed a proposed amendment to
its identification of goods, and will not now be heard to argue
for the first time in its brief that it seeks an additional
opportunity to do so. See Trademark Rule 2.142(g). See also
TBMP §1218. Accordingly, applicant’s request for remand is
denied.
Ser No. 78884488
8
goods are legally identical in part and otherwise related,
and there are no restrictions in the application or
registration, registrant’s goods are presumed to move in
the same channels of trade as those of applicant and be
available to the same classes of potential consumers. See
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Accordingly,
this du Pont factor further favors a finding of likelihood
of confusion.
The Marks
We turn then to the first du Pont factor, i.e.,
whether applicant’s ROTO SHAVE mark and registrant’s
ROTORAZOR mark are similar or dissimilar when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We note
initially that the test under the first du Pont factor is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in terms of their overall
commercial impression that confusion as to the source of
the goods or services offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
Ser No. 78884488
9
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
In this case, the marks ROTO SHAVE and ROTORAZOR are
similar in appearance and sound. Both marks share the
identical first term ROTO, followed by the disclaimed,
descriptive term SHAVE in applicant’s mark and the highly
descriptive term RAZOR in that of registrant. Furthermore,
we note that ROTO, the word which the marks share in
common, is also the first word in the marks. Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988)(“…[it is] a matter of some importance
since it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered.”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, supra.
In addition, the marks as a whole are substantially
similar in connotation and commercial impression. The
examining attorney submitted during examination of the
involved application definitions of RAZOR and SHAVE.
According to these definitions, RAZOR is defined as
a sharp-edged cutting instrument used especially
for shaving the face or other body parts; a
device for holding a razorblade, with guards to
prevent cutting of the skin; an electric
instrument with vibrating or rotating blades used
Ser No. 78884488
10
for shaving; and to shave cut, or remove with or
as with a razor.6

SHAVE is defined as “to remove the beard or other body hair
from, with a razor or shaver; to cut (the beard, for
example) at the surface of the skin with a razor or
shaver.”7 By definition, when used as a verb, RAZOR is
essentially identical in meaning to SHAVE. When used as a
noun, RAZOR is highly similar in meaning to SHAVE in that
the former is defined as the device used to perform the
latter. As such, ROTO SHAVE and ROTORAZOR both connote a
rotating device used to cut facial, head or body hair.
ROTO SHAVE and ROTORAZOR thus have the same connotation as
applied to the goods both of applicant and registrant, and
convey highly similar commercial impressions.
Thus, based upon the foregoing analysis, we find that
applicant’s mark is highly similar to that of registrant in
appearance, sound, connotation and overall commercial
impression. As such, this du Pont factor also weighs
heavily against applicant.
Strength of Registrant’s Mark
Applicant argues that registrant’s ROTORAZOR mark is
“best categorized as descriptive (as previously argued) –

6 The American Heritage Dictionary of the English Language, (4th
Ed., 2000), retrieved from Bartleby.com.
7 Id.
Ser No. 78884488
11
or at most weakly suggestive” (brief, p. 13) and that there
is no “evidence of secondary meaning that the term has
acquired broader significance” (brief, p. 12).
We point out, however, this is an ex parte proceeding,
and applicant is not permitted to overcome a refusal by
arguing that a cited registration is merely descriptive.
See In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534-35 (Fed. Cir. 1997). See also Hecon Corporation
v. Magnetic Video Corporation, 199 USPQ 502, 507 (TTAB
1978) (“Applicant has also contended that the term
‘COPYCORDER’ is ‘particularly descriptive’ of opposer’s
goods and thus is entitled to but a limited scope of
protection. Aside from the fact that the term ‘COPYCORDER’
is, in our opinion, only suggestive as applied to either
opposer’s or applicant’s goods, the assertion of
descriptiveness constitutes a collateral attack upon the
validity of opposer’s pleaded registration and as such
cannot be entertained herein in the absence of a
counterclaim to cancel the same”). Therefore, inasmuch as
the cited mark is registered on the Principal Register, we
must assume that it is at least suggestive and we cannot
entertain applicant’s argument that the registered mark is
descriptive of registrant’s goods or otherwise lacking in
secondary meaning.
Ser No. 78884488
12
Applicant further argues that “the USPTO registry
lists 262 applications or issued registrations
incorporating the primary element ‘ROTO’” (brief, p. 14),
and that, as a result, registrant’s ROTORAZOR mark is weak
and entitled to a narrow scope of protection. However,
applicant has not submitted copies of any of the asserted
third-party registrations or applications. To make third-
party applications or registrations of record, applicant
must submit a copy thereof or a printout from the USPTO’s
electronic database prior to the briefing stage of the
case. See In re Duofold, Inc., 184 USPQ 638, 640 (TTAB
1974). Moreover, in his final Office action the examining
attorney advised applicant that its mere assertion of the
existence of these registrations and applications is
insufficient to make them of record at a point when
applicant could have corrected the error. See TBMP
§1208.02. We therefore have given no consideration to
applicant’s unsupported assertions regarding the putative
weakness of registrant’s mark due to third-party
registrations of similar marks.
We accordingly find that, on the record in this case,
the mark in the cited registration is entitled at least to
a sufficient scope of protection to prevent registration of
a confusingly similar mark for goods that are legally
Ser No. 78884488
13
identical in part. See Spoons Restaurants Inc. v. Morrison
Inc., 23 USPQ2d 1735, 1740 (TTAB 1991), aff’d unpub.,
(Appeal No. 92-1086, Federal Circuit, June 5, 1992). Cf.
In re Broadway Chicken, Inc., 38 USPQ2d 1559 (TTAB 1996).
Summary
Neither applicant nor the examining attorney has
discussed any of the remaining du Pont factors. We note,
nonetheless, that none seems to be applicable, inasmuch as
we have no evidence with respect to them.
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal to register is affirmed.