Aircraft Gear Corporation

Trademark Trial and Appeal Board

May 23, 2014

No. 85583123re (T.T.A.B. May. 23, 2014)

Mailed: May 23, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aircraft Gear Corporation
________

Serial No. 85583123
_______

Gordon M. Wright of Reinhart Boerner Van Deuren P.C. for Aircraft Gear
Corporation.
Matthew G. Galan, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
_______

Before Bucher, Bergsman and Lykos,
Administrative Trademark Judges.
Opinion by Lykos, Administrative Trademark Judge:

Aircraft Gear Corporation (“Applicant”), a corporation located in Rockford,
Illinois, applied to register on the Principal Register pursuant to Section 2(f),
15 U.S.C. § 1052(f), the mark displayed below

This Opinion is Not a
Precedent of the TTAB
Serial No. 85583123
2
for “parts for vehicular rear-wheel drive shafts, namely, universal joints, yokes, and
centering assemblies, conversion rings, dust shields, output flanges, and repair kits
for universal joints and centering assemblies comprising CV balls, ball seats, and
springs” in International Class 12.1
On April 4, 2014, the Board affirmed the Trademark Examining Attorney’s
refusal to register Applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s applied-for mark so
resembles the following three registered marks, all owned by the same entity also
with a principal address in Rockford, Illinois, that when used on or in connection
with Applicant’s identified goods, it is likely to cause confusion or mistake or to
deceive:
Registration No. 0574225 for the mark in stylized format on
the Principal Register pursuant to Section 2(f), for “clutch assemblies, clutch
driven discs, multiple disc clutches, power take-off and gear reduction units for
internal combustion engines, gear tooth drives, clutches for sprocket drives,
clutches for pulley drives and parts of the aforesaid goods for replacement and
repair,” in International Class 7;2

1 Application Serial No. 85583123, filed March 29, 2012, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), alleging April 1, 1985 as the date of first use anywhere
and in commerce. The description of the mark is as follows: “The mark consists of the word
‘ROCKFORD’ over the words ‘Drive Line’, with a line below ‘ROCKFORD’. There are five
long slashes before the ‘R’ in Rockford, and a stylized arrow pointing outward after the ‘D’
in Rockford.” Color is not claimed as a feature of the mark.
During ex parte prosecution, the examining attorney refused registration of the mark under
Section 2(e)(2) of the Trademark Act, 15 U.S.C. § 1052(e)(2), on the ground that Applicant’s
mark is primarily geographically descriptive. To obviate the refusal, Applicant amended to
seek registration of the mark pursuant to Section 2(f). The examining attorney accepted the
amendment and withdrew the refusal. Applicant also disclaimed the term “Drive Line”
apart from the mark as shown.
2 Registered May 12, 1953, alleging April 2, 1919 as the date of first use anywhere and in
commerce; fourth renewal.
Serial No. 85583123
3
Registration No. 1619742 for the mark in stylized format on
the Principal Register pursuant to Section 2(f) in part as to the word “Rockford,”
for “land vehicle powertrain components, namely, clutches, torque converters,
drivelines, universal joints, transmissions and power dividers,” in International
Class 12,3 and

Registration No. 2877197 for the mark ROCKFORD in typed format, on the
Principal Register pursuant to Section 2(f), for “land vehicle clutch and
transmission components, namely, clutch assemblies, clutch driven discs,
multiple disc clutches, fan clutches, hydraulic powershift clutches, mechanical
clutches, power dividers, torque converters, and parts of the aforesaid goods for
replacement and repair,” in International Class 12.4

On May 4, 2014, Applicant timely filed a request for reconsideration of the
Board’s decision pursuant to Trademark Rule 2.144.
The premise underlying a request for reconsideration of a Board decision in an
ex parte appeal is that “based on the evidence of record and the prevailing
authorities, the Board erred in reaching the decision it issued. The request may not
be used to introduce additional evidence, nor should it be devoted simply to a
reargument of the points presented in the requesting party’s brief on the case.
Rather, the request normally should be limited to a demonstration that, based on
the evidence properly of record and the applicable law, the Board’s ruling is in error
and requires appropriate change.” TBMP § 543 (3d. ed. rev. 2 June 2013),
discussing the application of Trademark Rule 2.129(c); 37 CFR § 2.129(c) (request
for reconsideration of final decision in an inter partes proceeding).

3 Registered October 30, 1990, alleging June 27, 1988 as the date of first use anywhere and
March 1, 1989 as the date of first use in commerce; renewed. The term “Powertrain” has
been disclaimed apart from the mark as shown. The lining in the drawing is a feature of the
mark and does not indicate color.
4 Registered August 24, 2004, alleging April 2, 1919 as the date of first use anywhere and
in commerce; renewed.
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Serial No. 85583123
5
As to the Board’s determination regarding the strength of the registered marks
as well as the number and nature of similar marks in use on similar goods, we
expressly considered Applicant’s argument that because “Rockford” in each of
Registrant’s marks is a geographically descriptive term, the cited registrations are
entitled to only a narrow scope of protection. We also considered the third-party
registrations for the marks ROCKFORD HEALTH SYSTEMS for “hospital
management services” and ROCKFORD ORTHOPEDIC for “medical services,
namely, orthopedic and musculoskeletal care” as well as the marks each
incorporating the geographic term “Chicago.” There was no error in finding that the
probative value of the two third-party ROCKFORD registrations highlighted by
Applicant was limited because they involved services unrelated to the involved
goods here. We made clear that the weakness or dilution of a particular mark is
generally determined in the context of the number and nature of similar marks in
use in the marketplace in connection with similar goods. Likewise, there was no
error in finding that the “Chicago” registered marks were completely irrelevant to
our analysis. Indeed, to re-argue this point in a Request for Reconsideration is a
waste of the Board’s limited resources. We further explained that because each of
Registrant’s cited marks are registered on the Principal Register under Section 2(f)
they must be presumed to have acquired distinctiveness which increases the scope
of protection.
Decision: The Board, not being persuaded of any error in the rendering of its
decision, hereby denies Applicant’s request for reconsideration.