Amada Machine Tools Co., Ltd.

Trademark Trial and Appeal Board

Aug 25, 2016

No. 79165053 (T.T.A.B. Aug. 25, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 25, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Amada Machine Tools Co., Ltd.
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Serial No. 79165053

Jeffrey H. Handelsman and Jeffrey H. Bernstein of Greenblum & Bernstein, P.L.C.
for Amada Machine Tools Co., Ltd.
April Roach, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Taylor, Gorowitz, and Goodman,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Amada Machine Tools Co., Ltd. (“Applicant”) seeks registration on the Principal
Register of the mark GPSAW (in standard character form) for, as amended,
“Blades for band saws for metal working; band saws for
metal working,” in International Class 7.1

1 Application Serial No. 79165053 is a request for extension of protection of International
Registration No. 1246800, pursuant to the Madrid Protocol, Trademark Act § 60, et. seq., 15
U.S.C. § 1141, et seq. The International Registration date is December 18, 2014, and the
USPTO was notified of the request for extension on May 14, 2015. Pursuant to Trademark
Act § 67, 15 U.S.C. § 1141g, Applicant claims a priority date of July 7, 2014.

Serial No. 79165053
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The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the registered mark SUPER GP (in standard
characters) for “saw blades for power saws” in International Class 72 as to be likely
to cause confusion, mistake or deception.3:
After the Trademark Examining Attorney made the refusal final, Applicant
appealed and filed a request for reconsideration. When the request for
reconsideration was denied, the appeal was instituted. We affirm the refusal to
register.
I. Likelihood of confusion.
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192

2 Registration No. 3296479, issued on September 25, 2007; Section 8 and 15 combined
declaration accepted and acknowledged.
3 Registration No. 1547975 for the mark for “pneumatic power tools and pneumatic
power tool accessories” was also cited. The citation was withdrawn after Applicant requested
reconsideration.
Serial No. 79165053
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USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
A. Similarity of goods, channels of trade and class of customers.
We start our analysis with the second and third du Pont factors, the similarity of
the goods, the channels of trade, and the class of customers. When determining the
relationship between the goods,
[i]t is well settled that the issue of likelihood of confusion
between applied-for and registered marks must be
determined on the basis of the goods as they are identified
in the involved application and cited registration, rather
than on what any evidence may show as to the actual
nature of the goods, their channels of trade and/or classes
of purchasers.
In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161-1162 (Fed. Cir. 2014). Applicant’s goods are identified as “blades for band saws
for metal working; band saws for metal working.”
A “band saw” is defined as
“a type of powered saw that is used especially for making
curved cuts in wood.”
“a saw in the form of an endless steel belt running over
pulleys; also: a power saw using this device usually with
the blade in a vertical position.”
Merriam-Webster Online Dictionary, www.merriam.webster.com/
dictionary/band+saw.4

4 Exhibit to Office Action dated July 21, 2015.
Serial No. 79165053
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The goods in the cited registration are identified as “saw blades for power saws.”
As identified, “saw blades for power saws,” include “blades for band saws for metal
working.” Accordingly, Applicant’s goods are in-part legally identical to the goods in
the cited registration.
The Examining Attorney has also submitted evidence establishing that saw
blades for power saws, including band saws, are sold under the same mark, by the
same companies as power saws, including band saws. See: www.jettools.com (sells
metal working saws and saw blades)5 and www.csunitec.com (sells power operated
band saws and band saw blades and accessories).6 As such, Applicant’s band saws are
also related to the power saw blades in the cited registration. See In re Davey Products
Pty Ltd., 92 USPQ2d 1198, 1202-1203 (TTAB 2009)
It is well established that absent restrictions in the application and registration,
legally identical goods are presumed to travel in the same channels of trade to the
same class of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d, 1905, 1908
(Fed. Cir. 2012). Here, because the goods are in-part legally identical, as well as very
closely related, they are presumed to travel in the same channels of trade to the same
classes of purchasers.
Accordingly, the second and third du Pont factors favor a finding of likelihood of
confusion.

5 Exhibits to Office Action dated May 22, 2015, TSDR pp. 11-15.
6 Id. at 16-20.
Serial No. 79165053
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B. Similarity of the marks
We next determine the similarity or dissimilarity of the marks in their entireties,
keeping in mind that “[w]hen marks appear on virtually identical goods, the degree
of similarity necessary to support a conclusion of likelihood of confusion declines.”
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
In comparing the marks we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Moreover, the emphasis
must be on the recollection of the average purchaser who normally retains a general,
rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644,
1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975).
Further, while “the similarity or dissimilarity of the marks is determined based
on the marks in their entireties … 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 the ultimate conclusion rests on a consideration of the marks in their
Serial No. 79165053
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entireties.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
The common element in both Applicant’s and Registrant’s marks is the letter
combination, “GP.” Since the word “saw” is generic for Applicant’s goods, GP is the
dominant portion of Applicant’s mark GPSAW.7
In the cited registration, the common term is combined with the word “SUPER.”
“Super” is a laudatory term that has been held to be descriptive. See: In re Positec
Grp. Ltd., 108 USPQ2d 1161, 1173 (TTAB 2013) (SUPERJAWS is merely descriptive
of “machine and hand tools, including ‘jaws’ for precision clamping’ and ‘metal vice
jaws.’”). The laudatory term, “SUPER,” which is an adjective, modifies the noun “GP.”
As such, “GP” is also the dominant part of the mark. We recognize that the letters
“GP” have been disclaimed, but that does not remove them from the mark or reduce
their dominance. We also acknowledge that the disclaimer of the letters “GP” in the
cited registration indicate that the entire mark SUPER GP weak.
Although weak, the designation “GP” is the dominant part of each mark. However,
“even suggestive or weak marks are entitled to protection from the use of a very
similar mark for legally identical [goods].” In re Max Capital Group Ltd., 93 USPQ2d
1243, 1246 (TTAB 2010). See In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982).
Accordingly, we find the marks SUPER GP and GP SAW are similar and the first
du Pont factor favors a finding of likelihood of confusion.

7 Since Applicant’s mark is depicted as a single term, a disclaimer of descriptive matter is not
required.
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C. The number and nature of similar marks in use on similar goods.
The existence of thirteen third party registrations for marks consisting of or
containing the letter combination “GP” introduced by Applicant8 does not affect our
finding. The thirteen registrations, which are owned by nine different entities are for
various goods in Class 7. However, unlike the cited registration, none of these
registration covers “saws” and therefore, they do not establish the strength of the
letter combination “GP”9 with respect to Applicant’s goods.
Accordingly, we find the sixth du Pont factor to be neutral.
D. Conclusion.
Having considered all the evidence and argument on the relevant du Pont factors,
whether discussed herein or not, regarding likelihood of confusion between
Applicant’s mark GPSAW (in standard characters) for “blades for band saws for metal
working; band saws for metal working,” we find that Applicant’s mark is likely to
cause confusion with the mark SUPER GP (in standard characters) for “saw blades
for power saws” in the cited registration.

Decision: The refusal to register Applicant’s mark GPSAW is affirmed.

8 Applicant listed thirteen registrations and one application containing the letter
combination, GP. The application is neither evidence of use or the strength of the term.
Accordingly, we have not considered it.
9 While the goods in Registration No. 1547975 for the mark include “saws,” the citation
of this registration was withdrawn, likely because of the differences in the marks.