Atico Int’l. USA Inc.

Trademark Trial and Appeal Board

Oct 29, 2002

No. 76251522 (T.T.A.B. Oct. 29, 2002)

Mailed: October 29, 2002
Paper No. 9
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Atico International USA Inc.
___________
Serial No. 76/251,522
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Peter T. Cobrin and Clyde A. Shuman of Gibbons, Del Deo,
Dolan, Griffinger & Vecchione for Atico International USA
Inc.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
____________
Before Quinn, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Atico International USA Inc. has filed an application
to register the mark ALCO on the Principal Register for a
variety of goods in multiple classes.1
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,

1 Serial No. 76/251,522, filed May 4, 2001, based on an allegation of a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76/251,522
2
15 U.S.C. 1052(d),2 on the ground that applicant’s mark so
resembles the mark ALCO, previously registered for “retail
services in connection with variety and discount stores,”3
that, if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.4
Additionally, the Examining Attorney has issued a final
requirement for amendment to the identification of goods.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Identification of Goods
In the first Office action, the Examining Attorney
issued the requirement for an amendment to the
identification of goods, setting forth the deficiencies and
required amendments. Applicant responded by adopting all of
the amendments suggested by the Examining Attorney.
In the final refusal, the Examining Attorney stated
that the identification of goods remained indefinite because

2 The refusal pertains to all goods in the application, including those
identified in Class 20, which was added in applicant’s reply brief to
correctly classify goods previously listed in another class.
3 The refusal to register under Section 2(d) also included as a citation
the mark ALCO YES in a design format, previously registered for
“discount department store services” [Registration No. 1,644,718 issued
May 14, 1991, to Duckwall-Alco Stores, Inc., in International Class 42].
This registration has been cancelled. In his brief, the Examining
Attorney withdrew this registration as a basis for refusal.
Serial No. 76/251,522
3
“memo boards” should be moved from International Class 21 to
International Class 16.5 In its main brief, applicant made
this required change.
The Examining Attorney, in his brief, without
acknowledging applicant’s amendment, set forth further
alleged deficiencies and required changes, not previously
stated, to the identification of goods and classification.
In its reply brief, applicant adopted, in its entirety, the
identification of goods suggested in the Examining
Attorney’s brief, including paying the additional fee
necessary for the additional class.
We are disturbed by the piecemeal manner in which the
Examining Attorney has addressed the inadequacies in the
identification of goods. At each stage of examination,
applicant has tried to comply with the Examining Attorney’s
requirements for amendment to the identification of goods,
only to be met with new requirements. Because applicant has
submitted an amendment that adopts the exact identification
of goods suggested by the Examining Attorney in his brief,
we find that this amendment renders moot the refusal to

4 Registration No. 865,520 issued February 25, 1969, to Duckwall-Alco
Stores, Inc., in International Class 35. This registration was renewed
for a period of twenty years from February 25, 1989.
5 Because proper classification of goods is a matter of USPTO
administration, the Examining Attorney should have simply notified
applicant that the improperly classified goods were being moved to the
proper class. Both classes were already part of the application and no
additional fees were necessary. See Trademark Manual of Examining
Procedure, Sections 707.02 and 1401.03(b).
Serial No. 76/251,522
4
register on the ground that the identification of goods is
indefinite.6
Applicant’s goods are, thus, identified as follows:
Scissors and utility knives, in International
Class 8;
Pocket calculators and protractors, graduated
rulers, in International Class 9;
Photograph albums, appointment pads, stationery
boxes, crayons, desk caddies, desk organizers,
drawing compasses, erasers, memo pads, pens,
rubber stamps, score pads, paper staplers,
telephone number and address books, art sets
comprised of color pens, color pencils, crayons,
oil pastels, watercolors pencils, palette,
erasers, sharpeners, rulers, cutter, stapler,
tacks, sponge, carrying case with handle, white
water color, markers, brushes, scissors, glue and
paper notepad, binders, book covers, chalk, clip
boards, colored pencils, composition books, copy
paper, correcting fluid for type, correcting tape
for type, day planners, dry erase markers,
envelopes, paper expandable files, filler paper,
glue and glue sticks for stationery or household
use, highlighter markers, hole punches, index
cards, laser paper, markers, math sets consisting
primarily of pencil sharpeners, eraser, six-inch
ruler, protractor, triangles, pencil, compass,
divider, and mechanical pencil, mechanical
pencils, multipurpose paper, notebooks, paint
brushes, painting sets, vinyl and metal paper
clips, paper shredders, pencil cases, pencil
grips, pencil pouches, pencil sharpeners, pencils,
permanent markers, portfolio folders, push pins,
rubber bands, drawing rulers, social stationery,
staple removers, stencils, stick-on notes,
stickers, adhesive tape for stationery for
household use, writing pads, finger paints, in
International Class 16;

6 Should applicant ultimately prevail in this appeal, prior to
publication for opposition, this application should be forwarded to the
appropriate USPTO office for entry of the amended identification of
goods.
Serial No. 76/251,522
5
Tote bags and backpacks, in International Class
18;
Locker accessories, namely, personal organizers,
non-metal locks, picture frames, mirrors, in
International Class 20;
Locker accessories, namely, lunch boxes, in
International Class 21;
Artist aprons, in International Class 25; and
Children’s play mats for use in connection with
playing, exercise and sleeping, in International
Class 28.
Likelihood of Confusion
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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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 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
the cases cited therein.
The Examining Attorney contends that confusion is
likely because the marks are identical and the goods and
services are related to the extent that applicant’s goods
Serial No. 76/251,522
6
may be sold in registrant’s retail variety and discount
stores. In support of this contention, the Examining
Attorney submitted copies of third-party registrations for
marks identifying both retail store services and various
goods including many of those identified in the application.
Applicant contends there is no likelihood of confusion,
arguing that four third-party registrations, which have been
subsequently expressly abandoned, for the mark ALCO for
goods encompassed by applicant’s identified goods, did not
prevent the registration of the cited mark;7 and that there
is no evidence that any of the goods sold at registrant’s
retail stores are identified by registrant’s ALCO retail
store mark. In support of this latter point, applicant
submitted with its brief an excerpt allegedly from
registrant’s Internet web site [www.duckwall.com, May 31,
2002] to show that the goods advertised by registrant
therein were identified by manufacturers’ brand names.8
Considering, first, the marks, it is clear, and
applicant does not dispute, that applicant’s mark is
identical to the mark in the cited registration. In this
regard, the Board has stated, “[i]f the marks are the same

7 Each case must be decided on its facts. Therefore, we can draw no
conclusions from applicant’s allegations regarding the state of the
register or examination in another case.
8 The evidentiary record in an application must be complete prior to the
filing of the notice of appeal. See, 37 CFR 2.142(d); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). However, because the
Examining Attorney did not object to this evidence and addressed it in
his brief, we have considered this evidence in reaching our decision.
Serial No. 76/251,522
7
or almost so, it is only necessary that there be a viable
relationship between the goods or services in order to
support a holding of likelihood of confusion.” In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Considering the goods and services involved in this
case, we note that the question of likelihood of confusion
must be determined based on an analysis of the goods recited
in applicant’s application vis-à-vis the services recited in
the registration, rather than what the evidence shows the
goods or services actually are. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987). See also, Octocom Systems, Inc. v. Houston
Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.
Cir. 1992); and The Chicago Corp. v. North American Chicago
Corp., 20 USPQ2d 1715 (TTAB 1991). Further, it is a general
rule that goods or services need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that goods or services are
related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
Serial No. 76/251,522
8
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991),
and cases cited therein.
While applicant has shown us evidence of registrant’s
advertisements of other manufacturers’ branded products on
its Internet web site, we are bound by the broad recitation
of services in the cited registration. There is nothing in
the language of this recitation that precludes registrant
from using its service mark also on goods available through
its retail services. Further, the question is not whether
registrant can or does use its mark in such a manner;
rather, the question is whether there is a sufficient
relationship between applicant’s goods and registrant’s
services that consumers exposed to applicant’s mark on its
goods would believe those goods emanate from registrant or a
related source. In this regard, applicant does not seem to
dispute that its products may be sold at retail variety and
discount stores; and the Examining Attorney’s evidence of
third-party registrations with goods and services
encompassing those in this case suggests that consumers are
accustomed to seeing such goods and services emanate from
the same source or related sources.
In view of the fact that applicant’s mark and
registrant’s mark are identical, we find that the goods and
services involved herein are sufficiently related that the
Serial No. 76/251,522
9
contemporaneous use of ALCO by applicant and registrant on
the goods and services involved in this case is likely to
cause confusion as to the source or sponsorship of such
goods and services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.