Byrne Electrical Specialists, Inc.

Trademark Trial and Appeal Board

Oct 10, 2019

87543597 (T.T.A.B. Oct. 10, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 10, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Byrne Electrical Specialists, Inc.
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Serial No. 87543597

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Matthew D. Kendall of Gardner, Linn, Burkhart & Ondersma LLP,
for Byrne Electrical Specialists, Inc.

Karen S. Derby, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Zervas, Wellington and Heasley,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Byrne Electrical Specialists, Inc. (“Applicant”) seeks registration on the Principal
Register of the mark WILLOW in standard characters for “extension cords configured
and styled to be supported along furniture articles in work areas, all of the foregoing
excluding goods in the fields of industrial equipment or services, heating, ventilation
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and air conditioning (“HVAC”) equipment, water supply equipment or pumps” in
International Class 9.1
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with the marks and , both
on the Principal Register for goods that include electric cables; electric wires; electric
converters; electric plugs; electric sockets, and voltage surge protectors in
International Class 9.2 Both marks are described as consisting of the word WILO in
stylized font, without any meaning in a foreign language.
After the Examining Attorney issued a Final Office Action, Applicant appealed
and filed a request for reconsideration. The Examining Attorney denied the request
for reconsideration, the appeal was resumed and Applicant and the Examining
Attorney filed briefs. We affirm the refusal to register.
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177

1 Application Serial No. 87543597, filed on July 26, 2017 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use on June 1, 2015 and first use in
commerce on September 17, 2015.
2 Registration Nos. 4833976 and 4890788, registered on October 20, 2015 and January 26,
2016, respectively. Color is not claimed as a feature in Registration No. 4833976.
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USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
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.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We consider each DuPont factor for which there is evidence and argument. See, e.g.,
In re Guild Mortgage Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
a. The Marks
We compare Applicant’s WILLOW mark and Registrant’s WILO mark “in their
entireties as to appearance, sound, connotation and commercial impression.” Palm
Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). When comparing
marks, the test is not whether the marks can be distinguished in 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 offered
under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe
des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
Further, marks “‘must be considered ... in light of the fallibility of memory ....’” In re
St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting
San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196
USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
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customer, who retains a general rather than specific impression of the marks.
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Because “[s]imilarity in any one of these elements may be sufficient to find the
marks confusingly similar,” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing
In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)), and WILLOW
and WILO may be, and likely are, pronounced identically in view of the common
lettering in the same order,3 the marks are sufficiently similar to find confusion is
likely. Applicant’s arguments regarding the pronunciation of each mark is not
persuasive because “[t]here is no correct pronunciation of a trademark that is not a
recognized word.” In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA
1969). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1912 (Fed. Cir.
2012) (“It is also true, as the Board recognized, that there is no correct pronunciation
of a trademark, and consumers may pronounce a mark differently than intended by
the brand owner.” (citing Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d
1862, 1863 (TTAB 2002) (finding similarity between LEGO and MEGO, despite the
applicant’s contention that consumers would pronounce MEGO as “me go”)).
The DuPont factor regarding the similarity of the marks thus favors a finding of
likelihood of confusion.

3 Applicant acknowledges that it is not possible to predict how every member of the public
will pronounce a particular mark and that the marks could be pronounced the same.
Applicant’s brief at 6, 7 TTABVUE 7.
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b. The Goods, Channels of Trade and Classes of Purchasers
We next consider the second and third DuPont factors, concerning the relatedness
of Applicant’s and Registrant’s respective goods and channels of trade. DuPont, 177
USPQ 567. The Examining Attorney need not prove, and we need not find, similarity
as to each and every good listed in Applicant’s identification of goods. It is sufficient
for a refusal based on likelihood of confusion that relatedness is established for any
item encompassed by the recitation of services in a particular class in the application.
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d,
866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
It is not necessary that the goods in both Applicant’s and Registrant’s
identifications of goods be similar or even competitive to support a finding of
likelihood of confusion. Instead, likelihood of confusion can be found “if the respective
products are related in some manner and/or if the circumstances surrounding their
marketing are such that they could give rise to the mistaken belief that they emanate
from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012).
Applicant makes no argument regarding the goods, trade channels and classes of
purchasers.
Extension cords and the other goods that are the subject of this appeal often
emanate from a single source under a single mark, as evidenced by the use-based
third-party registrations introduced by the Examining Attorney, e.g.:
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• Registration No. 1835234 for electric extension cords and
various electric cables and wires.4
• Registration No. 2787247 for “electrical power extension
cords, electrical voltage surge protectors and portable
safety outlets.”5
• Registration No. 2960259 for “electric plugs; electric
sockets; circuit breaking receptacles, namely, electric
ground fault circuit interrupt GFCI receptacles, and,
circuit breakers; electrical power extension cords and
electrical connectors.”
• Registration No. 3547520 for “electrical power
distribution blocks; electrical power extension cords; power
distributing boxes; extension cables; extension cords;
electric sockets; electrical sockets; moveable sockets; multi-
outlet socket blocks.”6
• Registration No. 3448331 for “electric plugs, plug
adaptors, plug connectors, plug-in connectors, extension
cables, extension cords, adapter plugs, adapters, electric
sockets, electric outlet covers, light switches, circuit
testers, electrical outlet boxes, electrical cable joints in the
nature of electrical cable connectors.”7
These third-party registrations serve to suggest that extension cords and other
electrical goods such as those identified in the cited registrations may be provided by
the same source under the same mark. In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1091-92 (TTAB 2016); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).

4 May 31, 2018 Office Action, TSDR 19-20.
5 Id. at 21-22.
6 Id. at 23-24.
7 Id. at 25-26.
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The Examining Attorney has also introduced webpages demonstrating that
extension cords and other electrical goods emanate from a single source under a
single mark:
•www.staples.com - QVS extension cords and surge
protectors;8
•www.acehardware.com - Monster connector cables and
plugs, surge protectors and extension cords;9
•www.acehardware.com – ACE extension cords, electric
converters and electric sockets;10
•www.staples.com – GE extension cords, electric plugs,
and voltage surge protectors;11 and
•www.360electrical.com – offering extension cords and
voltage surge protectors.12
This evidence supports a finding that extension cords and the other electrical
goods identified in the cited registrations are related products. See, e.g., In re Davey
Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).13
As to trade channels and classes of purchasers, we base our determination
regarding the similarities between the parties’ goods, channels of trade and classes

8 Nov. 2, 2017 Office Action, TSDR 22-23. All references to the application record are to the
Trademark Status and Document Retrieval (“TSDR”) system.
9 Id. at 6-9.
10 May 31, 2018 Office Action, TSDR 10, 18.
11 Nov. 2, 2017 Office Action, TSDR 24-25.
12 Id. at 27.
13 The Examining Attorney argues that “electrical cables” are legally identical to Applicant’s
goods, for the first time in her brief. 9 TTABVUE 6.
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of purchasers on the goods as they are identified in the applications and registration,
respectively. Octocom Sys. Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). The application and cited
registrations contain no limitation as to channels of trade or classes of customers.
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) quoted in
Mr. Recipe, 118 USPQ2d at 1091. Rather, the evidence shows that extension cords
and the variety of electrical goods identified in the cited registrations may be sold via
overlapping retail channels of trade on the Internet to the general public.
Based on the record evidence, we find that Registrant’s and Applicant’s electrical
goods are related, and travel through the same channels of trade to the same classes
of customers.
In view of the foregoing, the DuPont factors regarding the goods, trade channels
and classes of purchasers weigh in favor of finding a likelihood of confusion.
c. Strength of the Cited Marks
The existence of similar marks in use on similar goods and services is “relevant to
show that a mark is relatively weak and entitled to only a narrow scope of protection.”
Palm Bay Imps., 73 USPQ2d at 1693. According to Applicant, “the frequent
appearance of ‘ILO’ as a formative in other third party marks demonstrate that WILO
and WILLOW can be distinguished in the minds of the relevant public.”14 Applicant
cites to the following registered marks:

14 7 TTABVUE 9.
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• ILO (stylized), Reg. No. 5238637 for apparatus and
instruments for steering, switching, converting, storing,
regulating or controlling electricity, in particular electric
control devices for land vehicles.
• MILO, Reg. No. 5504296 for electronic transmitters and
receivers for receiving video and audio from the internet
and other broadband means and transmitting directly to
televisions, monitors and mobile devices.
• MILO, Reg. No. 4487942 for solar cells; solar batteries;
photovoltaic solar modules for production of electricity;
solar panels for production of electricity; power supplies.
• WHILO, Registration No. 5261907 for downloadable
mobile applications for enabling electronic
communications network users to create, upload,
bookmark, view, annotate, publicly or privately share,
discover, donate, and/or purchase data, infom1ation and
media content concerning goods, services and experiences;
all the aforesaid data, information and content being in the
field of gift shopping and not in the fields of industrial
equipment or services, heating, ventilation and air
conditioning (“HVAC”) equipment, water supply
equipment or pumps.15
These registered marks have no probative value because they are not sufficiently
similar to Registrant’s marks and goods that are the subject of the refusal to register
and Applicant has not indicated why such goods should be considered to be similar.
See In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017)
(disregarding third-party registrations for other types of goods where the proffering

15 Applicant also submitted a page from the Official Gazette showing a pending application
for the mark VILLO for various electronic goods. 4 TTABVUE 19-20. Third-party
applications, as opposed to registrations, have no probative value other than as evidence that
the applications were filed. See Mr. Recipe, LLC, 118 USPQ2d at 1089; In re Phillips-Van
Heusen Corp., 63 USPQ2d 1047, 1049 n.4 (TTAB 2002). The mark is also not sufficiently
similar to Registrant’s marks.
Serial No. 87543597
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party had neither proven nor explained that they were related to the goods in the
cited registration).
d. Conclusion
We have considered all of the evidence and arguments of the Examining Attorney
and Applicant. In view of the marks which are identical in sound, the related goods,
and the overlapping trade channels and classes of purchasers, we conclude that
confusion is likely between Applicant’s WILLOW mark for “extension cords
configured and styled to be supported along furniture articles in work areas, all of the
foregoing excluding goods in the fields of industrial equipment or services, heating,
ventilation and air conditioning (“HVAC”) equipment, water supply equipment or
pumps” and Registrant’s WILO (stylized) marks for electric cables; electric wires;
electric converters; electric plugs; electric sockets, and voltage surge protectors.
Decision: The refusal to register under Section 2(d) is affirmed.