Bacou USA Safety, Inc.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75308169 (T.T.A.B. Nov. 30, 2000)

11/30/00 Paper No. 17
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bacou USA Safety, Inc.1
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Serial No. 75/308,169
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Elliot A. Salter of Salter & Michaelson for applicant.
Susan R. Stiglitz, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
____________
Before Hohein, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
A trademark application has been filed to register
the mark BANDIT for “safety eyewear, namely, spectacles,
frames and lens therefor.”2
The examining attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15

1 Bacou USA Safety, Inc. is the current owner of record of this
application, by assignment recorded in the USPTO from the original
applicant, Uvex Safety, Inc.
2 Serial No. 75/308,169, in International Class 9, filed June 13, 1997,
based on an allegation of a bona fide intention to use the mark in
commerce. Applicant filed an amendment to allege use and specimens on
March 16, 1998, alleging first use and first use in commerce as of
November 17, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/308,169
2
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark BAND-IT, previously registered for
“eyeglass retaining band,”3 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
We address, as a preliminary matter, applicant’s
principal contention against the refusal in this case
“that the PTO should be estopped from refusing to
register Applicant’s mark as likely to cause confusion
with cited Reg. # 1,518,775 because such a position is
completely inconsistent with a past decision of the PTO
involving essentially the same marks and the same facts.”
[Applicant’s reply brief, p. 3.] Applicant explains that
the USPTO allowed for publication a third-party prior
pending application, referenced in the examining
attorney’s first office action, Serial No. 74/725,956,
for the mark BANDITOS for “safety glasses, safety goggles

3 Registration No. 1,518,775 issued January 3, 1989, for a period of 20
years, in International Class 9. [Sections 8 and 15 affidavits accepted
and acknowledged, respectively.] The current owner of record in the
USPTO is Outlook Eyewear Company Corporation.
Serial No. 75/308,169
3
and impact resistant spectacles.” Applicant states as
follows:
Applicant had come to the conclusion that since
the term BANDITOS appeared to be the pluralized
Italian translation of the term BANDIT, although
not technically so, and since the goods in the
BANDITOS application were basically the same as
those of Applicant. Applicant logically assumed
that if it could acquire or remove the BANDITOS
application, Applicant’s application would then
successfully go forward for the same reasons
that the BANDITOS application had gone to
publication and been allowed.
Applicant further states that, to avoid having the
BANDITOS application as an obstacle to registration
herein, applicant concluded an agreement with the owner
of the BANDITOS application to abandon the BANDITOS
application, and that application has been abandoned.
Applicant argues that “[u]nder the doctrine of Stare
Decisis, the PTO should be required to stand by the
precedent it set when it allowed the BANDITOS application
over the then existing Reg. No. 1,518,775 for the mark
BAND-IT for ‘eyeglass retaining band.’”
The Board is not estopped from making a finding on
the issue of likelihood of confusion in an ex parte
appeal by the position or arguments of either the
examining attorney in this case or of another examining
attorney in a third-party pending application. The Board
must decide an ex parte appeal based only on the facts in
Serial No. 75/308,169
4
the record of that case. Not only is the record of the
alleged BANDITO application not part of the record before
us in this case, but, not withstanding applicant’s
assertions to the contrary, the BANDITO mark is not the
same as or substantially similar to applicant’s BANDIT
mark, nor are the goods identical.4
Turning to the issue on appeal, 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.
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in

4 The doctrine of stare decisis is inapposite in this case. In an ex
parte appeal, the Board would not accord a decision of an examining
Serial No. 75/308,169
5
their entireties, are similar in terms of appearance,
sound, connotation and commercial impression. The test
is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather
whether the marks are sufficiently similar in terms of
their overall commercial impressions that confusion as to
the source of the goods or services offered under the
respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See, Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975). Furthermore, although the
marks at issue must be considered in their entireties, it
is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985).
Applicant admits that “the marks are phonetically
equivalent” [applicant’s brief, p. 6]; but contends that
the connotations are different. Applicant states that
BAND-IT, in connection with “eyeglass retaining bands”

attorney on the issue of likelihood of confusion stare decisis effect.
Serial No. 75/308,169
6
connotes “putting a band around one’s head” [id.], but
that, in connection with applicant’s mark, BANDIT
connotes “a thief or a rogue.” We agree with the
examining attorney that the marks are phonetically
equivalent and similar in appearance. We agree with
applicant that the connotations of marks may be
distinguished by the hyphen in registrant’s mark, such
that BAND-IT more likely connotes putting a band on one’s
eyewear and/or around one’s head, whereas BANDIT more
likely connotes a thief or rogue. However, we find this
factor to be outweighed by the marks’ similarities in
sound and appearance. We find that the marks, considered
in their entireties, have substantially similar overall
commercial impressions.
Turning to consider the goods involved in this case,
we note that the question of likelihood of confusion must
be determined based on an analysis of the goods or
services recited in applicant’s application vis-à-vis the
goods or 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
Serial No. 75/308,169
7
(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 association between the
producers of each parties’ goods or services. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases
cited therein.
The examining attorney has submitted copies of
numerous third-party registrations for marks identifying
goods including both eyeglasses and spectacles, for both
safety and other wear, and retaining bands therefor.
Third-party registrations which cover a number of
differing goods, and which are based on use in commerce,
although not evidence that the marks shown therein are in
use on a commercial scale or that the public is familiar
with them, may nevertheless have some probative value to
Serial No. 75/308,169
8
the extent that they may serve to suggest that such goods
or services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988). We considered as probative in
this case only those third-party registrations based on
use in commerce.
Based on the record, we find the goods sufficiently
related that, if used or registered in connection with
confusingly similar marks, confusion as to source is
likely. We are not convinced otherwise by applicant’s
argument that
its products are safety wear, whereas the goods in the
cited registration are for use in connection with
“regular” eyewear. The cited registration is not so
limited and must be read to encompass retaining bands for
safety eyeglasses as well as for other types of
eyeglasses.
With regard to applicant’s assertion that it is
aware of no instances of actual confusion occurring as a
result of the contemporaneous use of applicant’s mark and
the mark in the cited registration, we note that, while a
factor to be considered, the absence or presence of
actual confusion is of little probative value where we
Serial No. 75/308,169
9
have little evidence pertaining to the nature and extent
of the use by applicant and registrant. Moreover, the
test under Section 2(d) is not actual confusion but
likelihood of confusion. See, In re Kangaroos U.S.A.,
223 USPQ 1025, 1026-1027 (TTAB 1984); and In re General
Motors Corp., 23 USPQ2d 1465, 1470-1471 (TTAB 1992).
Therefore, we conclude that in view of the
substantial similarities in sound, appearance and overall
commercial impressions of applicant’s mark, BANDIT, and
registrant’s mark, BAND-IT, their contemporaneous use on
the goods involved in this case is likely to cause
confusion as to the source or sponsorship of such goods.
If we had any doubt concerning our conclusion that
confusion is likely, we would be obligated to resolve
such doubt in favor of the registrant. See J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d
1889 (Fed. Cir. 1991); and In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed Cir. 1988).
Decision: The refusal under Section 2(d) of the Act
is affirmed.
G. D. Hohein
Serial No. 75/308,169
10
C. E. Walters
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board