No. 85341468 (T.T.A.B. Jun. 6, 2013)

Brooker Chemical Corporation

Trademark Trial and Appeal BoardJun 6, 2013

No. 85341468 (T.T.A.B. Jun. 6, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 6, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Brooker Chemical Corporation _____ Serial No. 85341468 _____ Thomas A. Rozsa for Brooker Chemical Corporation. David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _____ Before Holtzman, Wolfson and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Brooker Chemical Corporation filed, on June 8, 2011, an intent-to-use based application to register on the Principal Register the special form mark Serial No. 85341468 2 for “non-poisonous bait for rodent traps” in Class 21. The application contains a disclaimer of all wording except “MAGNET” and “RATS & MICE CAN’T RESIST IT!”, and a detailed description of the mark.1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when applied to applicant’s goods, so resembles the following six previously registered marks, owned by the Woodstream Corporation, as to be likely to cause confusion: 1. MAGNET (in standard characters) for “insect traps and bait stations”;2 2. FLY MAGNET (in standard characters, FLY disclaimed) for “insect bait stations, insect traps and insect bait clips” in Class 21;3 1 The description, in its entirety, reads as follows: The mark consists of a rectangle and within the rectangle at the top are the words "THE ULTIMATE BAIT FOR RODENT TRAPS". Beneath the words and to the right side of the rectangle is an image of a mouse within a circle. There is a diagonal line extending through the circle and under the mouse. In the lower right hand corner of the rectangle and in the lower right portion of the circle are the words "BAITS OVER 100 TRAPS". Underneath the words "THE ULTIMATE BAIT" and to the left side of the rectangle is the word "MOUSE" wherein the "O" in "MOUSE" is comprised of a mouse with a diagonal line extending through the "O". To the right of the "E" in "MOUSE" is a lighting [sic] bolt. Underneath the word "MOUSE" is the word "MAGNET". Underneath the word "MAGNET" are the words and punctuation "RATS & MICE CAN'T RESIST IT!". Underneath the words and punctuation "RATS & MICE CAN'T RESIST IT!" are four bullet points with the following words and punctuation to the right of each bullet point "SAFE FOR PETS & CHILDREN*", "NON-TOXIC", "CLEAN, EASY & CONVENIENT". "10 MULTI-USE PACKETS". 2 Registration No. 2074260. Renewed. 3 Registration No. 2461028. Renewed. Serial N 3. R tr 4. R d fo 5. M (M fo C 6. M (M fo W O analysis 4 Registr 5 Registr 6 Registr acknowle 7 Registr acknowle o. 853414 OACH MA aps and b OACH MA isclaimed, r “insect t MOSQU OSQUIT r “chemic lass 21;6 a MOSQU OSQUIT r “insect t hen the re ur determ of all of t ation No. 1 ation No. 1 ation No. 3 dged. ation No. 3 dged. 68 GNET (in ait station GNET a the stippli raps and b ITO MAG O disclaim al attracta nd ITO MAG O disclaim raps” in Cl fusal was ination of he probati 992084. Re 994162. Re 008322. Se 008321. Pa standard s” in Class nd design ng is a fea ait station NET and ed) nts for in NET and ed) ass 21.7 made fina the issu ve facts in newed. newed. ction 8 & 1 rtial Sectio 3 characte 21;4 in the sp ture of the s” in Class design i sect traps design i l, applican e of likeli evidence 5 combined n 8 & 15 co rs, ROACH ecial form mark) 21;5 n the spe ” in Class n the spe t appealed hood of co that are r declaration mbined dec disclaim shown b cial form 5 and “in cial form . nfusion is elevant to accepted a laration acc ed) for “in elow (ROA shown b sect traps shown b based on the factor nd epted and sect CH elow ” in elow an s set Serial No. 85341468 4 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 Drilling 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 USPQ 24 (CCPA 1976); and In re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999). We turn first to a comparison of the marks. We must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005), quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. The test, under the first du Pont factor, 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 impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). On the other hand, different features may be Serial N analyze Gold Me re Natio weight t consider the ave impress (TTAB 1 B with reg the ter applican registra R applican Applica MAGNE 8 Applica o. 853414 d to deter dal Candy nal Data o a particu ation of th rage purc ion of trad 975). earing the istrant’s m m MAGN t’s mark nt’s mark egistrant's t's compo nt's mark T creates nt extends 68 mine whet Corporat Corp., 224 lar featur e marks haser, wh emarks. S se principl ark MAG ET, the a create a MAGNET entire m site mark is cluttere an impact this argum her the m ion, 220 F USPQ at e of a mar in their en o normall ee Sealed es in mind NET. App dditional complete .8 We disa ark is MA is conv d with ot apart from ent to all of 5 arks are .2d 759, 10 751 (nothi k, provided tireties). y retains Air Corp. , we first c licant arg wording ly differe gree. GNET. O eyed by her word these ot the cited re similar. P 5 USPQ 2 ng improp the ultim The focus a general v. Scott P ompare ap ues that a and desig nt comm ne of the the wordi and design her elemen gistrations rice Cand 66, 268 (C er in givin ate conclu is on the rather t aper Co., plicant’s m lthough th n elemen ercial im strongest ng MOUS elements ts. The p . y Compan CPA 1955) g more or sion rests recollectio han a spe 190 USPQ ark e marks s ts presen pression impression E MAGN , but MO hrase "Ra y v. ; In less on a n of cific 106 hare t in from s of ET. USE ts & Serial No. 85341468 6 Mice Can't Resist it!" is subordinate to MOUSE MAGNET both visually and in meaning, and the remaining wording, along with MOUSE, is disclaimed and merely provides descriptive information about applicant's products, thereby contributing less to the overall commercial impression of the mark. Consumers would look to the wording MOUSE MAGNET and particularly the word MAGNET, rather than to the descriptive and informational elements, to identify and distinguish source. See National Data, 224 USPQ at 752 (“a descriptive component of a mark may be given little weight”). See also In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (finding JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once the commercial significance of the descriptive and otherwise non- dominant terms JOSE, GOLD and ALE are properly discounted). As to the mouse design, which appears on the right side of the mark and as a substitute for the letter “O” in the word MOUSE, and the lightning bolt, it is well- established that, when a mark consists of both words and a design, the words are normally given greater weight because they would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Even if we were to consider the mouse design as creating a separate commercial impression from the wording in the mark, it is unlikely that consumers would rely on the design to call for the goods; rather they will refer to Serial No. 85341468 7 MOUSE MAGNET in requesting the goods. Moreover, the mouse design merely reinforces the descriptive meaning of the word MOUSE with respect to the identified goods. In addition, the lightning bolt visually connects the wording MOUSE MAGNET to the mouse design, further emphasizing the significance of the term MOUSE MAGNET. Because MAGNET is registrant's entire mark and the most prominent portion of applicant's mark, which features the wording MOUSE MAGNET, we find that there are significant similarities between the marks in sound, meaning and commercial impression. See, e.g., The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA CONCEPT and surfer design is similar to the mark CONCEPT). See also, In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (E-CELL is similar to the mark E). We further find that registrant's five other MAGNET-inclusive marks -- FLY MAGNET, ROACH MAGNET (with and without design) and M MOSQUITO MAGNET (with design, in two different formats) -- have significant similarities to applicant’s mark in that the first word in each of the registered marks is the generic word for the type of pest the device is intended to eliminate. This linguistic pattern, which also is present in applicant’s mark, reinforces the connection between applicant’s mark and registrant’s MAGNET and MAGNET-inclusive marks. Purchasers may likely assume that MOUSE MAGNET in applicant's mark is yet another variant of registrant's FLY MAGNET, ROACH MAGNET and M MOSQUITO MAGNET marks or that it identifies another product in registrant's MAGNET line. Serial No. 85341468 8 Although applicant argues that MAGNET is a weak or “generic” mark that is broadly used, there is no evidence to indicate that MAGNET is used by anyone other than the registrant, or that the mark may somehow be considered weak in connection with the identified goods in the cited registration. In this regard, we note that in response to the first Office action, applicant submitted a list of third- party registrations and applications taken from USPTO electronic records, of marks that include the word MAGNET. However, despite the examining attorney’s advice in the Final Office action, applicant did not properly make the registrations or applications of record. “To make a third-party registration of record, a copy of the registration, either a copy of the paper USPTO record, or a copy taken from the electronic records of the Office, should be submitted.” TBMP § 1208.02. “[T]he submission of a list of registrations is insufficient to make them of record....” In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). The Board does not take judicial notice of registrations residing in the USPTO. In re Lar Mor International, Inc., 221 USPQ 180 (TTAB 1983). Given the lack of evidence to the contrary, when used on the parties’ pest control devices, the term MAGNET would appear to be identically suggestive of attracting a pest. Further, as discussed above, the additional wording in applicant's mark is descriptive or informational, and the design elements contribute relatively little to the overall commercial impression thereof. The marks therefore share similar connotations and commercial impressions. Serial No. 85341468 9 In view of the foregoing, we find that when applicant's mark and registrant's marks are compared in their entireties, they are sufficiently similar in appearance, sound, connotation and commercial impression that, if used in connection with related goods, confusion would be likely to occur. As such, this du Pont factor favors a finding of likelihood of confusion. We next consider the similarity or dissimilarity of the goods. It is well settled that the goods of applicant and registrant need not be identical or competitive, or even offered through the same channels of trade, to support a holding of likelihood of confusion. It is sufficient that the respective goods of applicant and registrant are related in some manner, or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarity of the marks, give rise to the mistaken belief that they originate from the same source. See Hilson Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). We make our determination regarding the similarity of the goods, channels of trade and classes of purchasers based on the goods as they are identified in the application and registration, respectively. Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Accordingly, we must compare applicant’s goods, which are identified as “non-poisonous bait for rodent traps” to registrant’s “insect traps and bait stations,” “insect bait clips” and “chemical attractants for insect traps.” Serial No. 85341468 10 Initially, we note that by its very nature, and as applicant’s identification of goods makes clear, applicant’s bait is used with rodent traps to attract and/or trap rodents. While registrant’s goods are used to attract and/or trap insects rather than rodents, applicant’s goods and registrant’s goods are inherently related to the extent that they are both used to control common household pests. As evidence of the relationship between applicant’s and registrant’s goods, the examining attorney has made of record excerpts from several third-party websites indicating that the same manufacturers may offer traps, glue boards, bait stations, including pre-filled bait stations, as well as bait, and further that the same devices may be used to attract, catch and/or eliminate both rodents and insects: •Ortho offers ant baits, glue traps, snap traps, and bait and bait stations, including pre-filled bait stations to eliminate rodents ; •Victor sells non-toxic pre-baited rat and mouse glue trays and glue boards for “use for capturing mice and well as other household pests such as insects, small snakes and roaches” and a “patented pheromone” insect glue trap that “attracts & traps a wide variety of insects and traps the nymphs and eggs to prevent further infestations!” ;9 •Seabright offers mouse traps, sticky traps and ribbons with color attractants to trap flying insects, and baits to eliminate roaches, explaining: “Seabright baits are formulated to attract the emerging nymphs (babies), before they mature, thus ending the cycle.” The website further states: “Seabright’s success lies in powerful food- grade attractants contained in traps and baits. Together, traps and baits are the most effective way to make your property Roach Free.” ; 9 We note that registrant owns the Victor product line. Serial No. 85341468 11 •Atlantic Catchmaster sells mouse and insect glue boards, which, as one reviewer explains, “will also catch insects such as silverfish, roaches, etc. … These traps come pre-baited with a scented glue that smells vaguely of popcorn, so no bait is required….” ; and •Masterline offers “versatile” mouse/insect glue board traps intended to “[t]arget pests: Mice and small insects such as spiders, scorpions, centipedes, etc.” . The examining attorney also submitted a number of use-based, third-party registrations which show that various entities have adopted a single mark for rodent traps and insect traps and/or bait stations. Although none of the registrations list “bait”, per se, in the identification of goods, three of the registrations include devices that appear to perform the same function as “bait,” i.e., to attract or lure a pest. The pertinent portions of the registrations are as follows: •Registration No. 2910813 (TRAPPER 24/7 and design) for “mechanical rodent traps used with glue boards for attracting and monitoring the presence of rodents, and mechanical insect traps used with glue boards for attracting and monitoring the presence of insects”; •Registration No. 3754782 (VICTOR) for “glue boards, glue traps and bait stations for attracting and/or trapping insects, rodents and/or animals”;10 and •Registration No. 4005074 (ECOLAB) for “mouse traps,” “rat traps” and “insect traps with a pheromone- monitoring badge for luring moths.” Third-party registrations which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or 10 Registrant owns this registration. Serial No. 85341468 12 services are of a type which may emanate from a single source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Overall, the evidence favors a finding of likelihood of confusion with respect to the du Pont factor regarding the relatedness of the goods. Regarding the channels of trade and classes of purchasers, because the identifications of goods in the application and registrations contain no limitations as to channels of trade or classes of purchasers, it is presumed that the goods move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods. See Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v. Camera- Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). In addition, the examining attorney submitted evidence from Lowe’s and Walmart to show that applicant’s goods and registrant’s goods are of a type that are commonly sold in the pest control departments of those stores. Accordingly, the du Pont factors of channels of trade and classes of purchasers favor a finding of likelihood of confusion. Applicant did not address the examining attorney’s evidence, or submit evidence on its own behalf. Instead, applicant argues that consumers would not be confused as to the types or intended purposes of the goods, because the goods are used to eradicate different types of pests. However, the issue is not whether Serial No. 85341468 13 purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830 (TTAB 1984). In light of the discussion above, we conclude that consumers familiar with registrant’s “insect traps and bait stations,” “insect bait clips” and “chemical attractants for insect traps” sold under its MAGNET and MAGNET-inclusive marks would be likely to believe, upon encountering applicant’s “non-poisonous bait for rodent traps” sold under the applied-for mark, that the goods originated with or are somehow associated with or sponsored by the same entity. This is particularly true where, as here, the goods involved are relatively inexpensive. Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). We have carefully considered all of applicant’s arguments and evidence, even if not specifically discussed herein, but have not found them persuasive. To the extent that any of applicant's points raises a doubt about likelihood of confusion, that doubt is required to be resolved in favor of the prior registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984). Decision: The refusal of registration under Trademark Act Section 2(d) is affirmed.