4162 Doerr Road, Inc. dba Marshall Distributing, Inc.

Trademark Trial and Appeal Board

Mar 22, 2002

No. 75582753 (T.T.A.B. Mar. 22, 2002)

03/22/02
Hearing:
06 FEB 2002 Paper No. 14
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 4162 Doerr Road, Inc.
d/b/a Marshall Distributing, Inc.
________

Serial No. 75/582,753
_______

John K. McCulloch of Reising, Ethington, Learman &
McCulloch, PLLC for 4162 Doerr Road, Inc. d/b/a Marshall
Distributing, Inc.

Cimmerian Coleman, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______

Before Hanak, Chapman and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On November 4, 1998, 4162 Doerr Road, Inc. d/b/a
Marshall Distributing, Inc. (applicant) filed an
application to register the mark HI-TORQUE (in typed form)
on the Principal Register for goods ultimately identified
as “land vehicle parts, namely, snowmobile drive belts” in
International Class 12. The application contains a date of
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 75/582,753
2
first use and a date of first use in commerce of November
1, 1991.
The Examining Attorney has refused to register
applicant’s mark on two grounds. First, the Examining
Attorney held that applicant’s mark is not registrable
under the provisions of Section 2(d) of the Trademark Act
because of a registration for the following mark for
“starter motors for land vehicles” in International Class
7.1 15 U.S.C. § 1052(d).

The Examining Attorney determined that there would be a
likelihood of confusion when the marks HI-TORQUE and HI-
TORQUE and design are used on the identified goods. The
Examining Attorney also refused to register applicant’s
mark under the provisions of Section 2(e)(1) of the
Trademark Act because the Examining Attorney found that the
term was merely descriptive of applicant’s goods. 15
U.S.C. § 1052(e)(1).

1 Registration No. 1,858,370 issued on October 18, 1994. A
Section 8 affidavit has been accepted.
Ser. No. 75/582,753
3
After the Examining Attorney made the refusals to
register final, this appeal followed. Both applicant and
the Examining Attorney filed briefs. An oral hearing was
held on February 6, 2002.
Regarding the refusal under Section 2(d), the
Examining Attorney’s position is that the marks are nearly
the same and the “only difference between the marks is the
stylization in the registrant’s mark in which a lightning
bolt forms the letter ‘T’ in “TORQUE.’” Examining
Attorney’s Br. at 4. According to the Examining Attorney,
this difference between the marks does not obviate the
similarity between the marks. The Examining Attorney also
determined that both applicant’s and registrant’s goods are
used on land vehicles. Registrant’s “starter motors for
land vehicles” could include starter motors for
snowmobiles. The Examining Attorney included several
third-party registrations that suggested that the source of
various motors would also be the source of drive belts.
The Examining Attorney concluded that applicant’s and
registrant’s goods “are likely to be marketed in the same
manner and purchased though common trade channels,” and
thus, when similar marks are used on these goods, there is
a likelihood of confusion. Examining Attorney’s Br. at 10.
Ser. No. 75/582,753
4
The Examining Attorney also refused to register
applicant’s mark on the ground that the term “hi torque” is
merely descriptive as applied to drive belts because it is
“a type of drive belt.” Examining Attorney’s Br. at 11.
The Examining Attorney submitted evidence that “high” is
defined as “of great force” and “torque” refers to “turning
or twisting force.”2 In addition, the Examining Attorney
included printouts of stories retrieved from an electronic
database to show the descriptive nature of the term HI
TORQUE.
Poly Chain is a registered tradename for synchronous,
high-torque drive belts.
Industrial Maintenance & Plant Operations, March 31,
1999.

A 9-ram high torque drive belt drives a leadscrew in
the elevation can mechanism.
Plastic Engineering, May, 1995.

A recent addition to the flexible belt family is the
HTD (high torque drive) belt. HTD belts, also known
as second-generation synchronous belts, are toothed
and require installation of mating toothed-drive
sprockets.
Energy User News, March, 1995.

The maker drives are instead transmitted through high
torque drive belts to separate gear boxes.
Tobacco International, May 1, 1991.

High torque drive belts are available for applications
that require greater load carrying capability.
Automation, January, 1991.

2 American Heritage Dictionary of the English Language, Third
Edition (1992).
Ser. No. 75/582,753
5
Turning to the transmission, he said whereas previous
machines had used a lot of shafts and gears, these had
been replaced in the Passim 7000 with high torque
drives and belts, and this had contributed to a
significant reduction in noise.
World Tobacco, November, 1990.

Another important benefit of high torque drive belts
is maintenance-free operations.
American Metal Market, October 15, 1984.

The Examining Attorney relies on this evidence to show
that high torque drive belts are a type of belt, and the
term, therefore, would describe a significant attribute of
applicant’s goods.
Applicant responds to the likelihood of confusion
refusal by pointing out that the cited registration has the
“T” in “torque” in the form of a lightning bolt and that
the differences in the marks outweigh their similarities.
Regarding the goods, applicant maintains that drive belts
for snowmobiles and starter motors for land vehicles are so
widely different that they are classified in two different
international classes. In addition, applicant argues that
“even if it is assumed that a dealer sells both starter
motors and drive belts, as suggested by the examining
attorney, it is unlikely that a prospective purchaser would
assume that the manufacturer of the starter motor is the
same as or has a relationship with the manufacturer of the
drive belt.” Applicant’s Br. at 7.
Ser. No. 75/582,753
6
Applicant also refers to two other registrations. One
is for the mark HYTORQ and design (No. 1,717,507) for “oil
hydraulic vane pumps and parts therefor, oil hydraulic gear
pumps and parts therefor, worm gear reducers, gear speed
reducers, winches and hoists.” The other (No. 2,007,693)
is for HY TORQ for “marine propellers for commercial and
pleasure boats.”3 Applicant states that “[i]t is not
believed that any one seeing a snowmobile drive belt would
be any more likely to assume that such belt emanates from
the manufacturer of starter motors, and vice versa, than
one would assume that starter motors, small engines, and
pumps emanate from the same source.” Applicant’s Br. at 9.
As to the descriptiveness refusal, applicant maintains
that:
A drive belt may, and indeed does, enable the
transmission of torque from one component to another,
but to arrive at this characteristic of the drive belt
one must perform a mental exercise that associates the
drive belt not only with the drive generating means,
but also with the object to which the drive generating
means is coupled by the drive belt.

Applicant’s Br. at 15-16.

3 Applicant also refers to a third registration, HIGH TORQUE (No.
1,091,591) for “mowers and small internal combustion engines” on
the Supplemental Register. This registration expired on February
22, 1999.
Ser. No. 75/582,753
7
Applicant concludes by arguing that if its mark “is
deemed to be descriptive, it is not merely descriptive.”
Applicant’s Br. at 16.4
Inasmuch as we agree with the Examining Attorney that
there is a likelihood of confusion and that the mark is
merely descriptive, we affirm the Examining Attorney’s
refusals to register.
I. Likelihood of Confusion
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (CCPA 1973. In considering the evidence of
record on these factors, we must 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).
First, we turn to the similarity of the marks. The
question here is whether the marks create the same
commercial impression. The test is not whether the marks

4 Applicant’s offer in its Appeal Brief to seek registration
under the provision of Section 2(f) of the Trademark Act is
untimely. 37 CFR § 2.142(d) (Record should be complete prior to
appeal). Applicant did not request a remand to the Examining
Attorney. TBMP § 1207.02.
Ser. No. 75/582,753
8
can be distinguished in a side-by-side comparison, but
whether they are sufficiently similar in their overall
commercial impression so that confusion as to the source of
the goods marketed under the respective marks is likely to
result. “[T]here is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of the 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).
Here, the marks are for the identical term “HI
TORQUE.” While applicant argues that there are differences
between the marks, they consist only of the presence of a
hyphen in applicant’s mark, a design of lightning bolt for
the letter “T” in registrant’s mark, and the stylized
lettering of registrant’s words. The presence or absence
of a hyphen does not change the pronunciation of the marks
and the slight change in the appearance of the marks does
not change the marks’ meanings or commercial impressions.
Applicant admits that the lightning bolt design “is
suggestive of electrical characteristics such as normally
associated with starter motors.” Applicant’s Br. at 5.
When the marks are considered in their entireties, we
cannot agree with applicant that the differences outweigh
Ser. No. 75/582,753
9
their similarities. The design element in registrant’s
mark, which is suggestive of the goods, would not overcome
the fact that both marks contain the same words, and
applicant’s mark is devoid of any design element.
Potential purchasers are likely to use the words in the
registration when they refer to the goods. Registrant’s
design does not serve to eliminate the likelihood of
confusion. See In re Dixie Restaurants, 105 F.3d 1405,
1406, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Federal
Circuit held that the addition of the words “The” and
“Cafe” and a diamond-shaped design to registrant’s DELTA
mark still resulted in a likelihood of confusion). See
also In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-
65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S and design
for grocery and general merchandise store services found
likely to be confused with BIGGS and different design for
furniture); Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products).
Second, we must consider the goods as they are
identified in the application and registration. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
Ser. No. 75/582,753
10
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”). The goods
in this case are “land vehicle parts, namely, snowmobile
drive belts” and “starter motors for land vehicles.” From
the identification of goods, it is clear that both
registrant’s and applicant’s goods are parts for land
vehicles. We also note that registrant’s goods are defined
simply as “starter motors for land vehicles” so we must
assume that these starter motors include starter motors for
snowmobiles.5 The Examining Attorney has included evidence
to show that drive belts and various motors are sold under
the same mark (Registration Nos. 2,045,412; 2,093,982;
1,776,262; and 1,780,162). See In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-
party registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a

5 Contrary to applicant’s argument, the fact that registrant’s
and applicant’s goods are classified in different classes is not
relevant. National Football League v. Jasper Alliance Corp., 16
USPQ2d 1212, 1216 n.5 (TTAB 1990) (“The classification system was
established for the convenience of the Office rather than to
indicate that goods in the same class are necessarily related or
that classification in different classes indicates that they are
not related”).
Ser. No. 75/582,753
11
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993).
Thus, applicant’s and registrant’s identified goods
would both include parts for snowmobiles. Purchasers of
starter motors and drive belts for snowmobiles would
include the same people who were interested in repairing or
servicing snowmobiles. The Board has previously recognized
that in similar situations confusion would be likely.
Mufflers and automotive motors, although different,
nevertheless comprise automotive parts and accessories
which, as argued by the examiner, could be purchased
through the same trade channels including dealers,
service stations, automotive accessories and supply
stores and outlets by the same classes of purchasers
such as repairmen, dealers and motorists.

In re Magic Muffler Service, Inc., 184 USPQ 125, 126 (TTAB
1974). See also In re Delbar Products, Inc., 217 USPQ 859,
861 (TTAB 1981) (“While it is clear that applicant's
vehicle mirrors and registrant's automobile parts are
specifically different products, nevertheless they both
comprise automotive parts and accessories which could be
purchased through the same channels of trade”).6

6 We are aware of the case of Hi-Shear Corp. v. National
Automotive Parts Association, 152 USPQ 341, 344 (TTAB 1966), in
which the Board held that the mark N.A.P.A. HI-TORQUE, “hi
torque” disclaimed, for power tools was not confusingly similar
to the mark HI-TORQUE on the Supplemental Register for screws and
bolts. The presence of applicant’s house mark, the differences
in the goods, and the admitted descriptiveness of the term “hi-
torque” by both parties are all factors that are not present in
this case.
Ser. No. 75/582,753
12
We cannot agree with applicant’s argument that “it is
unlikely that a prospective purchaser would assume that the
manufacturer of the starter motor is the same as or has a
relationship with the manufacturer of the drive belt.”
Applicant’s Br. at 7. As with automobile parts, it is
likely that starter motors and drive belts for snowmobiles
when sold under very similar marks would lead prospective
purchasers to believe that there is a single source of the
goods.
Applicant argues that there are two registrations for
the term “high torque” for marine propellers and hydraulic
vane pumps, and this fact supports the registration of
applicant’s mark. However, these goods are less related
because registrant’s goods include parts for snowmobiles
while the third-party registrations do not. Even if the
goods in the third-party registrations were considered to
be closely related to applicant’s goods, it is not clear
how this fact would justify the registration of another
confusingly similar registration.
Applicant argues that there has been no actual
confusion in this case. It is unnecessary, however, to
show actual confusion in establishing likelihood of
confusion. Giant Food, Inc. v. Nation's Foodservice, Inc.,
710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983); J & J
Ser. No. 75/582,753
13
Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18
USPQ2d 1889, 1892 (Fed. Cir. 1991). Moreover, an ex parte
proceeding provides no opportunity for the registrant to
show instances of actual confusion. Thus, the applicant’s
assertion of a lack of evidence of actual confusion does
not significantly demonstrate that there is no likelihood
of confusion in this case.
Applicant also discusses the remaining du Pont factors
and concludes that there is no likelihood of confusion. We
can agree with applicant that several of the factors would
favor applicant and that there is no evidence on other
factors. However, when we balance the fact that the marks
are for the identical words and the goods include parts for
snowmobiles, we conclude that there is a likelihood of
confusion.
Finally, applicant requests that we resolve doubts in
favor of publishing its mark for opposition. This request
is contrary to long established case law.
If there be doubt on the issue of likelihood of
confusion, the familiar rule in trademark cases, which
this court has consistently applied since its creation
in 1929, is that it must be resolved against the
newcomer or in favor of the prior user or registrant.
The rule is usually applied in inter partes cases but
it applies equally to ex parte rejections.

In re Pneumatiques, Caoutchouc Manufacture et
Platitudes Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729
Ser. No. 75/582,753
14
(CCPA 1973). See also Dixie Restaurants, 41 USPQ2d at 1535
(“Dixie argues alternatively that the PTO should pass the
mark to publication and allow the registrant to oppose the
applicant's mark, if it chooses. But it is the duty of the
PTO and this court to determine whether there is a
likelihood of confusion between two marks”). Therefore, we
decline to follow applicant’s suggestion.
II. Descriptiveness
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). See also In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). We
look at the mark in relation to the goods or services, and
not in the abstract, when we consider whether the mark is
descriptive. Abcor, 588 F.2d at 814, 200 USPQ at 218.
Courts have long held that to be “merely descriptive,” a
term need only describe a single significant quality or
property of the goods. In re Gyulay, 820 F.2d 1216, 1217,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987); Meehanite Metal Corp.
v. International Nickel Co., 262 F.2d 806, 807, 120 USPQ
293, 294 (CCPA 1959).
Ser. No. 75/582,753
15
While applicant argues that “a drive belt does not,
itself, possess the property of torque, either high or
low,” (Applicant’s Br. at 15) the Examining Attorney has
included evidence to show that the term “high torque” is
commonly used to describe a type of drive belt.7 The
Examining Attorney’s evidence does show that drive belts in
various industries are described as “high torque.” There
is nothing incongruous about applying the term “high
torque” to a drive belt. We also note that, while it is
not conclusive evidence, applicant’s specimens appear to
use the term in a descriptive manner in the phrase
“Ultimate Hi-Torque Performance.” Similarly, the Board has
previously held that the term HI-TORQUE “can be used to
describe any product which is designed to withstand or
develop a high torque action.” Hi-Shear Corp., 152 USPQ at
343. See also In re Chicago Pneumatic Tool Co., 160 USPQ
628 (TTAB 1968) (EVEN-TORK is merely descriptive of a
clutch that is a component of a power-operated
screwdriver). Applicant’s term “hi-torque” would thus be
merely descriptive of drive belts used in, or designed to
withstand, high torque action.

7 The slight misspelling of the word “high” does not change the
descriptive nature of the mark. Hi-Shear Corp., 152 USPQ at 343
(HI-TORQUE “is the phonetic equivalent of the words ‘HIGH
TORQUE’”).
Ser. No. 75/582,753
16
Applicant argues that the suggestive nature of its
mark is supported by three registrations. First, “[e]ven
if some prior registrations had some characteristics
similar to Nett Designs' application, the PTO's allowance
of such prior registrations does not bind the Board or this
court.” Nett Designs, 57 USPQ2d at 1566. Second, the
three registrations to which applicant refers are for
different goods, and two of these registrations have design
elements. The fact that these registrations have issued
hardly compels a conclusion that applicant’s mark is not
descriptive. We do not have the record of those cases but
in this case there is significant evidence of the common
use of the term “hi torque” to describe drive belts.

Decision: The refusals to register the mark are affirmed.