Andpak, Inc.Download PDFTrademark Trial and Appeal BoardApr 22, 2014No. 76705609 (T.T.A.B. Apr. 22, 2014) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 22, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Andpak, Inc. _____ Serial No. 76705609 _____ John Joseph Hall, Esq. for Andpak, Inc. Seth A. Rappaport, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _____ Before Kuhlke, Mermelstein and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Andpak, Inc., dba Zip-Chem Products (“applicant”) filed a use-based application on the Principal Register to register the mark SUR PREP, in standard character form, for goods ultimately identified as follows: Natural cleaning preparations and degreasing preparations specially formulated in liquid and aerosol form to meet and satisfy military and commercial specifications to remove various contaminants such as but not limited to grease, oil residues, oxidized dust, and adhesive residues on aircraft surfaces, with established channels of trade of goods limited to direct sales by applicant to highly sophisticated direct customers in the aircraft industry and through highly sophisticated distributors in the aircraft industry specially selected by Serial No. 76705609 2 applicant, said aircraft industry including both military and commercial aircraft, in Class 3. Applicant disclaimed the exclusive right to use the term “Prep.” In response to a now-withdrawn refusal to register the mark on the ground of mere descriptiveness, applicant offered—and the examining attorney accepted—a claim pursuant to Trademark Act § 2(f) that the mark has become distinctive of the identified goods. The Trademark Examining Attorney refused 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 mark so resembles the registered mark SUR-PREP, in typed drawing form, for “wiping products; namely, cleaning cloths, washing cloths, and non-abrasive glossing cloths,” in Class 21, as to be likely to cause confusion.1 Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“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”). These factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. 1 Registration No. 1823762, issued February 22, 1994; renewed. Serial N A. T a T significa Nahshin presenc Instrum did not v. Dayc hyphen hyphen) B. T co A T cloths, w o. 7670560 he similar ppearance he marks nce can b v. Prod. e or absen ent Inc. v. distinguish o Corpora is in lega . he similar ntinue ch pplicant is Natu prepa form speci not l adhe chann appli aircra distri appli and c he goods ashing clo 9 ity or diss , sound, co SUR PRE e attribut Source Int ce of a hy Brinkman MAGNU tion, 201 l contemp ity or dissi annels of t seeking to ral clea rations sp to meet fications to imited to sive residu els of tr cant to hig ft indus butors in cant, said ommercial in the cite ths, and n imilarity nnotation P and SUR ed to the ’l LLC, 10 phen is in n Corp., 9 M from MA USPQ 485 lation sub milarity a rade and c register i ning pr ecially fo and sat remove v grease, o es on air ade of go hly sophi try and the aircra aircraft in aircraft. d registra on-abrasiv 3 of the ma and comm -PREP ar hyphen i 7 USPQ2d significan 6 USPQ2d G-NUM); , 489 n.4 stantially nd nature lasses of co ts mark fo eparations rmulated isfy milit arious con il residue craft surfa ods limite sticated di through ft industry dustry in tion are “ e glossing rks in the ercial impr e virtuall n the reg 1257, 125 t to our u 1701, 17 Goodyear (TTAB 19 identical of the good nsumers. r the follow and in liquid ary and taminants s, oxidized ces, with d to dire rect custo highly s specially cluding bo wiping pro cloths.” ir entireti ession. y identical istered m 8 n.2 (TTA ltimate de 12 (TTAB Tire & Ru 78) (“Fas to “Fastfi s, establis ing goods degreasin and aeros commerci such as bu dust, an establishe ct sales b mers in th ophisticate selected b th militar ducts; na es in term . Little if ark. See B 2013) ( cision.”); 2010) (hyp bber Comp t-Finder” nder” wit hed, likely : g ol al t d d y e d y y mely, clea s of any e.g., “the Mag hen any with hout -to- ning Serial No. 76705609 4 In its September 15, 2011 response to an Office action, “[a]pplicant acknowledges that the question of likelihood of confusion must be determined on the goods recited in the cited registration and the goods recited in applicant’s application,” but then applicant references extrinsic evidence showing the differences in the nature of its actual goods and those of the registrant, their channels of trade and classes of consumers. While applicant’s description of goods has restrictions regarding the nature of the product (i.e., for use on aircraft as set by military and commercial specifications) and channels of trade (i.e., direct sales in the aircraft industry), the wiping products in the cited registration are broadly described and have no restrictions or limitations. Based on the description of goods in the cited registration, registrant’s wiping products could be used on aircraft pursuant to military and commercial specifications and they could be sold by direct sales in the aircraft industry albeit not by applicant. When considering the scope of the cited registration, we look to the registration itself, and not to extrinsic evidence about the registrant’s actual goods, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). See also In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration). Because there are no limitations as to channels of trade or classes of purchasers in the description of goods in the cited registration, we must presume Serial No. 76705609 5 that registrant’s goods move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods, such as purchasers in the aircraft industry for both military and commercial aircraft, and that they could be sold through direct sales. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“we give full sweep to appellant’s registration description of goods”); Kalart Co. v. Camera-Mart, Inc., 119 USPQ at 139-40; In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). In applicant’s May 8, 2013 response to an Office action, applicant submitted four unverified statements from three of applicant’s customers and a distributor that “confirm and verify” that applicant’s customers and distributors “would reject towel products for use to remove contaminants from aircraft surfaces for failure to satisfy the military and commercial specifications of the SUR PREP Registration Guide.”2 The following excerpt is from the statement by Paula Mello, Parts Manager for the Aircraft Shop for El Aero Services, Inc., is representative. We note that the four statements are essentially the same. 2 Despite the fact that registrant’s description of goods is “wiping products; namely, cleaning cloths, washing cloths, and non-abrasive glossing cloths,” applicant reviewed a profile of registrant in Bloomberg Businessweek magazine (investing.businessweek.com) which described registrant as offering “foodservice towels, wet wipe towels, multipurpose cleaning towels, and cleaning and sanitizing towels for foodservice cleaning applications in high volume areas, in kitchen/deli and food prep areas, and on tables and counters. It also offers general purpose towels for general purpose wiping; and dusting towels for multi- purpose dusting applications.” Hall Declaration, Exhibit 3, attached to the September 15, 2011 response to Office action. Applicant’s arguments improperly focuses on extrinsic evidence regarding registrant’s use of its mark rather than addressing applicant’s broader description of goods. Serial No. 76705609 6 My company requires SUR PREP products and any product for use to remove contaminants from aircraft surfaces to satisfy the military and commercial requirements listed on the Specification Guide for such use. Although my company may use towels for cleaning generally, towels are unable to remove contaminants from aircraft surfaces. Further, towels are unable to satisfy the military and commercial requirements of the Specification Guide. Consequently, my company rejects towels for use in removing contaminants from aircraft surfaces. The Specification Guide for removing contaminants from aircraft surfaces to satisfy military and commercial requirements is a list identifying which SUR PREP products meet military specifications and/or commercial specifications. It is not a specification per se. The Specification Guide does not set forth any requirements for the products used to remove contaminants from aircraft. In other words, there is nothing in the Specification Guide indicating whether towels or any other wiping products are used as part of removing contaminants from aircraft (e.g., wiping down or wiping off the aircraft after the application of a decontaminant or subsequently polishing the aircraft after the decontamination process). The customer statements contend that towels are unable to remove contaminants and are unable to satisfy the military and commercial requirements of the Specification Guide. As indicated above, the Specification Guide made of record is a list of applicant’s products that purportedly meet military and commercial specifications. There is nothing of record that sets forth the elements or requirements of the specification. Moreover, the customers’ contentions do not mean that towels or other wiping products are not used in the process of removing Serial No. 76705609 7 contaminants or otherwise may not be used in the process of cleaning and polishing an aircraft. The customer statements contend that their companies reject towels for use in removing contaminants from aircraft surfaces. All that means is that a towel alone cannot remove contaminants from aircraft surfaces. Other wiping cloths may be used to clean and polish aircraft. Applicant explains that its customers and distributors would reject the towels in the cited registration because they are “not identified as satisfying military and commercial requirements for removal of contaminants from aircraft surfaces and would be rejected on that ground by the SUR PREP sophisticated direct customers and distributors.” However, as indicated above, the wiping products in the cited registration are not subject to any restrictions or limitations and, therefore, the wiping products may include wiping products that meet military and commercial aircraft specifications.3 3 It would have been helpful had applicant introduced evidence to explain that “wiping products” are not used on aircraft or, if they are, what kind of wiping products are used for aircraft and the terms used to refer to such wiping products. For example, if accurate, applicant could have explained why registrant’s wiping products as defined in the cited registration are not used in the aircraft industry and what term or terms are used in the aircraft industry to reference suitable wiping products. In the absence of any other definition of the terms as they are used in the relevant trade, we give the registrant’s “cleaning cloths [and] washing cloths” their ordinary and unrestricted meaning, i.e., cloths for any kind of cleaning and washing, including cloths used for cleaning and washing aircraft. In any event, applicant was not without a remedy. Applicant could have filed a petition for cancellation or restriction of the cited registration on the ground of abandonment alleging that registrant is no longer using (or never used) the mark in connection with wiping products used in the aircraft industry. Johnson & Johnson v. Obschestvo s Ogranitchennoy, 104 USPQ2d 2037, 2038 n.2, 2039 (TTAB 2012) (counterclaim seeking partial cancellation as to only three of the items identified in the class based on abandonment due to nonuse Serial No. 76705609 8 To show that the goods are related, the Trademark Examining Attorney submitted use-based, third-party registrations registered for both cleaning preparations and cleaning cloths. Third-party registrations which individually cover a number of different goods that are based on use in commerce have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The following registrations may serve to suggest that cleaning preparations and cleaning cloths emanate from a single source under the same mark:4 Mark Reg. No. Goods FULLER 1402725 All-purpose degreaser; Dust cloths, anti-fog cleaning cloths TOUGH GUY 3864758 All-purpose cleaning preparations; preparations for cleaning vehicle surfaces; degreasing preparations; detergents for land, air and water vehicles; Cleaning cloths KEY FOOD 3694631 Detergent; all-purpose cleaner; Cleaning cloths without an intent to resume use is a counterclaim of abandonment sufficiently stated notwithstanding reference to Section 18); DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d 1434, 1437 (TTAB 1995) (because applicant sought to strike from opposer's registration goods specifically listed therein, such as “open reel audio tape,” on the grounds that opposer was no longer using and had no intent to resume use of its mark on such goods, it was proper to plead abandonment and applicant did not need to plead that a finding of likelihood of confusion will be avoided by the restriction it sought). 4 We have not included the entire description of goods for each registration. We have listed only the goods relevant to this decision. Serial No. 76705609 9 Mark Reg. No. Goods ACUITY 3283440 Chemical solvents for cleaning and degreasing; general purpose cleaners; degreasing preparations for all purpose use; vehicle detergents and shampoo; electrical equipment aerosol cleaner and lubricant; Wiping cloths AMSAN 3076262 All-purpose cleaning preparations; Dusting or cleaning cloths GUARDSMAN PRO SERIES 3179775 General purpose cleaning liquids and powders; Cleaning cloth CLEANWELL 3930061 All-purpose cleaning preparations; Cleaning cloths with disinfecting properties JOHNSON WAX PROFESSIONAL 2646351 All-purpose cleaning preparations, other than for use on the body; Cleaning cloths METHOD 3388928 All-purpose cleaning preparations; Dusting or cleaning cloths We acknowledge that none of the third-party registrations specifically include cleaning preparations or degreasers for aircraft. However, the third-party registrations referenced above include “all-purpose” and “general purpose” cleaning preparations or degreasers without any limitation or restriction as to use. When interpreting the description of goods, “[t]he common understanding of words or phrases used in an identification determines the scope and nature of the goods or services.” TMEP § 1402.03 (October 2013). See also TMEP § 1402.07 (“for the purpose of determining the scope of an identification, the examining attorney should consider the ordinary meaning of the wording apart from the class number Serial No. 76705609 10 designation.”). Where a description of goods is broadly constructed, we must allow for all possible products that may fall within the description. See In re Wacker Neuson SE, 97 USPQ2d 1408, 1409 (TTAB 2010), citing Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We also do not read limitations into the identification of goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration.”). Thus, an all-purpose cleaning preparation or degreaser may be used in the aircraft industry.5 It is settled that it is not necessary that the respective goods be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis. That is, the issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The goods need only be sufficiently related that consumers would be likely to assume, upon encountering the goods under similar marks, that the goods originate from, are sponsored or 5 As noted above in footnote 2, if the “all-purpose cleaning preparation” or degreaser is a term of art and has a meaning other than that suggested by the plain meaning of the description of goods, it was incumbent upon applicant to submit that evidence. See TMEP § 1402.03 (October 2013) (“The common understanding of words or phrases used in an identification determines the scope and nature of the goods or services.”). On the other hand, the third-party websites submitted by the Trademark Examining Attorney have no probative value because they do not include cleaning preparations and degreasers used in the aircraft industry. Unlike the third-party registrations where we must give terms such as “all-purpose” a broad scope of protection, the third-party websites show use of specific products, none of which were used in connection with aircraft. Serial No. 76705609 11 authorized by, or are otherwise connected to the same source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this regard, even when goods are not intrinsically related, the use of identical marks, as in this case, can lead to the assumption that there is a common source, particularly when the marks at issue are virtually identical. In re Shell Oil Co., 992 F.2d 1024, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993). In view of the foregoing, we find that applicant’s natural cleaning preparations and degreasing preparations that are specifically formulated for aircraft surfaces and registrant’s wiping products are complementary products because registrant’s wiping products, as set forth in the description of goods, may be used to clean and polish aircraft even if not specifically with applicant’s natural cleaning preparations and degreasing preparations. If goods are complementary in nature, or used together, this relatedness can support a finding of likelihood of confusion. See, e.g., In re Martin's Famous Pastry Shoppe, Inc., 223 USPQ at 1290. In addition, because there is no restriction as to the channels of trade and classes of consumers in the description of goods in the cited registration, we must presume that registrant’s wiping products may be sold to the aircraft industry. C. Degree of consumer care. Applicant asserts that its customers “are highly sophisticated direct customers in the aircraft industry and applicant’s distributors are highly Serial No. 76705609 12 sophisticated distributors in the aircraft industry specially selected by applicant.”6 Even assuming that applicant’s customers exercise a high degree of care when purchasing aircraft cleaning preparations and degreasers, this does not mean that they are equally skilled in distinguishing between similar trademarks, especially in this case where the marks are legally identical and used on complementary products. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers ... are not infallible."). See also Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); and In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). D. Balancing the factors. Because the marks are virtually identical, the goods are related, and we must presume that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark SUR PREP for “natural cleaning preparations and degreasing preparations specially formulated in liquid and aerosol form to meet and satisfy military and commercial specifications to remove various contaminants such as but not limited to grease, oil residues, oxidized dust, and adhesive residues on aircraft surfaces, with established channels of trade of goods limited to direct sales by applicant to highly sophisticated direct customers in the aircraft industry and through highly sophisticated distributors in 6 Applicant’s Brief, pp. 3-4. Serial No. 76705609 13 the aircraft industry specially selected by applicant, said aircraft industry including both military and commercial aircraft” so resembles the mark SUR-PREP for “wiping products; namely, cleaning cloths, washing cloths, and non-abrasive glossing cloths” as to be likely to cause confusion. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation