Black & Decker Corp.

Trademark Trial and Appeal Board

Aug 31, 2000

No. 75215991 (T.T.A.B. Aug. 31, 2000)

Paper No.
11
GDH/gdh
8/31/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Black & Decker Corporation
________
Serial No. 75/215,991
_______
Bruce S. Shapiro of The Black & Decker Corporation for Black &
Decker Corporation.
Robert Clark, Trademark Examining Attorney, Law Office 108
(David E. Shallant, Managing Attorney).
_______
Before Seeherman, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Black & Decker Corporation has filed an application to
register the mark "VERSAPAK" for "flashlights and [a]
combination flashlight with recharger for consumer use."1

1 Ser. No. 75/215,991, filed on December 19, 1995, which alleges a bona
fide intention to use the mark in commerce. Applicant claims
ownership of Reg. No. 1,998,552, issued on September 3, 1996, for the
mark "VERSAPAK" for "batteries, battery packs, [and] battery chargers
for use with tools and appliances."
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/215,991
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its goods, so resembles
the mark "VERSA-LITE," which is registered for "portable
electric high-intensity spotlights, searchlights, and
flashlights for use by electric utility, gas and telephone
personnel and by policemen and firemen,"2 as to be likely to
cause confusion, mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We reverse the refusal to
register.
Preliminarily, we note that in any likelihood of
confusion analysis, two key considerations are the similarity or
dissimilarity of the goods and the similarity or dissimilarity
of the marks. See, e.g., Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).3 Here, it
is obvious that registrant's flashlights for utility and public
safety use are the goods which are the closest, for purposes of
determining whether there is a likelihood of confusion as to
source or sponsorship, to applicant's flashlights for consumer

2 Reg. No. 1,717,869, issued on September 22, 1992, which sets forth
dates of first use of March 10, 1974; combined affidavit §§8 and 15.
3 The court, in particular, pointed out that: "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."
Ser. No. 75/215,991
3
use, and the Examining Attorney has consequently focused his
arguments on such goods. In this regard, the Examining Attorney
asserts that "[r]egistrant's flashlights and applicant's
flashlights could very well be used to do the same thing" and,
thus, that "the essence of the goods is not limited to a
particular use." Specifically, the Examining Attorney insists
that, "[d]espite applicant's contention that the applicant's and
the registrant's identifications [of goods] are highly limited
and specific, ... the identification used by registrant is very
broad and could encompass the flashlights identified by
applicant." This is because, according to the Examining
Attorney, the utility personnel and public safety workers who
constitute the users of registrant's goods "encompass a huge
number of consumers" and "[n]othing in the record indicates that
flashlights used by these consumers are any different from
flashlights intended for 'consumer use'."
We agree with applicant, however, that as identified
in the application and cited registration, there are significant
differences in the respective goods, in the channels of trade
for such goods and in the actual purchasers thereof so as
preclude a likelihood of confusion as to the origin or
affiliation of the goods. As applicant notes, an "everyday
flashlight is intended for purchase by the ordinary consumer who
does not have access to or the ability to purchase ...
Ser. No. 75/215,991
4
flashlights intended for use by police and fire units and
utility personnel." Plainly, the users of registrant's goods
would be issued or otherwise have access to a supply of such
goods, but they would rarely be the actual purchasers thereof;
instead, those goods would be bought by the purchasing
department of the utility company or that of the local
government unit which provides public safety services such as
police and fire protection. Applicant's goods, by contrast,
would be purchased through retail outlets by ordinary consumers
for their personal use.
Moreover, while the ranks of ordinary consumers
admittedly encompass persons whose vocations include police
work, fire fighting, or utility work for electric, gas or
telephone companies, such fact does not mean that they would
believe that lighting products of all kinds or uses necessarily
emanate from a common source. As applicant persuasively argues,
its goods and the generalized needs which they are designed to
meet are specifically different from the specialized nature of
the flashlights marketed by registrant for professional use.
In particular, we concur with applicant that such
differences are indeed reflected in the identifications of the
goods at issue and that, as a consequence thereof, the channels
of trade or distribution for the products are completely
different. According to applicant:
Ser. No. 75/215,991
5
Specifically, Applicant's goods are
typical flashlights found in the everyday
consumer outlet such as K-Mart or WalMart or
Home Depot or Sears. One distinguishing,
and highly marketable, feature of
Applicant's flashlight is the fact that it
carries a rechargeable battery pack which is
interchangeable with other household
products and power tools manufactured and
distributed by Applicant also under the
VERSAPAK mark.
Registrant's goods, on the other hand,
are ... flashlights for use by utility
personnel, police and firemen. By the very
definition of the goods, ... Registrant has
imposed a certain quality on the nature of
the goods it markets which distinguishes
them from the goods marketed by Applicant.
Registrant's goods must meet the
professional needs of its customers.
....
With [specific] regard to Registrant's
flashlights, the type, power, strength,
weight, size, required by professional
societies such as police and fire units of
Registrant's flashlights are different from
the type, power, strength, weight, size,
etc., needed by the everyday purchaser of an
everyday consumer flashlight. The
flashlights listed in Registrant's
registration are special issue goods which
most likely must meet certain standards and
guidelines posted by the professional
organizations [which purchase such
products]. ....
Thus the goods at issue are different
by their very nature.
In addition, we find that confusion is not likely
because the respective marks, "VERSAPAK" and "VERSA-LITE," when
considered in their entireties, have different suggestive
Ser. No. 75/215,991
6
connotations and therefore project different overall commercial
impressions. Specifically, we agree with applicant that, while
each of the marks includes the term "VERSA," the "similarity
ends there." Although the Examining Attorney contends,
correctly in our view, that the term "PAK" is the phonetic
equivalent of the word "pack," we disagree with his contention
that the term "PAK is descriptive of applicant's goods since
applicant's goods include a pack of flashlights or a pack
containing a flashlight and recharger." Nevertheless, as
applicant's remarks make clear, such term merely describes the
"rechargeable battery pack" feature which powers its flashlights
and is made for use with its rechargers. Moreover, as to the
term "LITE" in registrant's mark, such term is plainly the
phonetic equivalent of the word "light," which as the Examining
Attorney points out "is obviously descriptive of registrant's
portable lights."
The Examining Attorney concludes, however, that in
view of the descriptiveness of the "PAK" and "LITE" portions of
the respective marks, the term "VERSA" is the dominant element
of each of the marks. In particular, the Examining Attorney
insists that:
VERSA is a strong mark as applied to
registrant's goods. There is no evidence of
record that VERSA has any meaning in any
language and is, therefore, arbitrary as
Ser. No. 75/215,991
7
applied to spotlights, searchlights and
flashlights.
We concur with applicant, however, that "[c]onceptually, the
marks are different particularly when considered in relation to
the goods."
In this regard, it seems readily apparent to us that,
rather than being an arbitrary and hence strong element of the
respective marks, the term "VERSA" is suggestive of the
versatility of different features of applicant's and
registrant's goods. Applicant's "VERSAPAK" mark suggests that
the battery pack for its flashlights and combination flashlight
and recharger for consumer use is versatile in the sense that it
is "is interchangeable with other household products and power
tools manufactured and distributed by Applicant ...." The
"VERSA" portion of registrant's "VERSA-LITE" mark, on the other
hand, is suggestive of the versatility provided by the inherent
nature of registrant's goods, which unlike ordinary flashlights
for general consumer use, must meet the on-the-job demands of a
wide variety of professional applications or uses on a constant
basis (with the same, likewise, being true of registrant's
portable high-intensity spotlights and searchlights). The marks
"VERSAPAK" and "VERSA-LITE," therefore, have different,
suggestive connotations, when used with the goods associated
therewith, and overall engender sufficiently different
Ser. No. 75/215,991
8
commercial impressions so as to preclude a likelihood of
confusion.
Decision: The refusal under Section 2(d) is reversed.
E. J. Seeherman
G. D. Hohein
G. F. Rogers
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board