Creative Action, Inc.

Trademark Trial and Appeal Board

Dec 18, 2003

No. 76180488 (T.T.A.B. Dec. 18, 2003)

Mailed:
December 18, 2003
Paper No. 17
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Creative Action, Inc.
________
Serial No. 76180488
_______
Wayne D. Porter, Jr. of Rankin Hill Porter & Clark LLP for
Creative Action, Inc.
Idi Aisha Clark, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hairston, Chapman and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Creative Action, Inc. seeks registration on the
Principal Register for the mark shown below:
for “invalid walkers, namely, wheeled walkers and rollators
with waist-level handles to facilitate ambulation and an
integral lift mechanism to lift items,” in International
Class 10.1
1 Application serial no. 76180488 was filed on December 13,
2000, based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76180488
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This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
shown below:
registered for “wheelchairs for disabled persons for
transport by land, and replacement parts for the
aforementioned goods,” in International Class 12,2 as to be
likely to cause confusion, to cause mistake or to deceive.
Applicant filed an appeal brief as did the Trademark
Examining Attorney. The Trademark Examining Attorney’s
appeal brief was mailed on August 18, 2003. Under the
Trademark Rules, applicant had until Monday, September 8,
2003 to file a reply brief.3 Because applicant did not file
2 Registration No. 2308356 issued on January 18, 2000.
3 “… The appellant may file a reply brief within twenty days
from the date of mailing of the brief of the examiner.” 37
C.F.R. §2.142(b)(1).
Serial No. 76180488
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a reply brief until October 23, 2003, it was untimely filed
and has not been considered. Additionally, the untimely
reply brief contained a request for an oral hearing. An
oral hearing was not scheduled as this request was also
untimely. (In addition, the request for oral hearing was
contained within the reply brief rather than being filed as
a separate paper.)4
We affirm the refusal to register.
Applicant argues that the overall impressions of these
two marks are different given that “EZ” and “Easy” are
different; that the words WHEELER and WHEEL are different;
that the design elements are different; and that “ee-zee”
marks are weak given the large number of marks having such
prefixes that have been registered for goods in
International Classes 10 and 12.
The Trademark Examining Attorney responds that the
involved marks are confusingly similar; that the goods
herein are closely related and move through the same
channels of trade to the same types of consumers; and that
applicant has failed to prove that the cited mark is weak.
4 “If the appellant desires an oral hearing, a request
thereof should be made by a separate notice filed not later than
ten days after the due date for a reply brief …” 37 C.F.R.
§2.142(e)(1).
Serial No. 76180488
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Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the relatedness of the goods as listed
in the cited registration and in the instant application.
Registrant claims rights in it mark on “wheelchairs for
disabled persons ….” Applicant intends to use its mark on
“wheeled walkers and rollators” to “facilitate ambulation”
for the “invalid.”
On its webpage, applicant’s “EZWheeler™ Cart” is
described as a device that “Brings the
Load … UP … to you!” A picture of the
product was made of record by applicant
and by the Trademark Examining Attorney.
The Trademark Examining Attorney also included a screen
print from a website dedicated to brain injury survivors
and caregivers. This third-party site contains an
Serial No. 76180488
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extensive discussion of the ways in which “rolling walkers”
or “rollators” provide support, stability, balance and
endurance for the person suffering from a loss of mobility:
Imagine a walker that glides. A walker you don't have to lift to
move forward. A walker with wheels that turn and pivot. A walker
with locking brakes, a basket for storage, and a seat for resting.
Imagine a rollator. Ahhhhh!5
Consistent with the design of its rollator, applicant
emphasizes the fact that its wire basket can be raised and
lowered. Like all walkers with wheels, this device does
not take the user anywhere, but requires the user to walk.
Nonetheless, applicant’s identification of goods begins by
listing the target consumers as being “invalid[s]”6 capable
of “ambulation.” Hence, these goods are designed for
people suffering a disability but who can still ambulate.
Registrant’s identification of goods also confirms the
obvious – that wheelchairs are generally designed for, and
marketed to, disabled persons. While perhaps most
wheelchairs are used by those who cannot walk at all,
clearly some wheelchairs are used by persons suffering from
5 See http://www.bindependent.com/hompg/bi/bindep/
store/aisles/s-needs/mobility/mobility.htm
6 invalid 1. suffering from disease or disability; SICKLY,
DISABLED; …, Webster’s Third New International Dictionary,
Unabridged (1993). We take judicial notice of this definition.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Serial No. 76180488
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temporary immobility or limited mobility who are still at
times able to ambulate – the very same population that
would use applicant’s rollator. Moreover, with the
progression of age, disease or other disabling conditions,
a rollator user could well have to rely upon a wheelchair
at some point in the future.
Even if one should presume that these goods are used
by distinctly separate subgroups among the disabled
population, as noted by the Trademark Examining Attorney,
it is well settled that goods need not be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. Instead, it is sufficient that
the goods are related in some manner; or that the
circumstances surrounding their marketing are such that
they would be encountered by the same persons in an
environment that would give rise, because of the similarity
of the marks employed thereon, to the mistaken belief that
applicant's goods originate from or are in some way
associated with the registrant. See Turner Entertainment
Co. v. Nelson, 38 USPQ2d 1942 (TTAB 1996); In re Phillips-
Van Heusen Corp., 228 USPQ 949 (TTAB 1986); General Mills
Fun Group, Inc. v. Tuxedo Monopoly, Inc., 204 USPQ 396
(TTAB 1979), affirmed 648 F.2d 1335, 209 USPQ 986 (CCPA
Serial No. 76180488
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1981); and Autac Inc. v. Viking Industries, Inc., 199 USPQ
367 (TTAB 1978).
The Trademark Examining Attorney has placed into the
record a webpage showing that scooters, wheelchairs, lifts,
walkers and rollators are marketed through the same
channels of trade and sometimes under the same trademarks
(e.g., Invacare).7 This confirms that these goods would be
considered commercially related by an appreciable number of
purchasers.
Applicant has repeatedly argued that another factor
weighing in its favor is the fact that registrant’s
wheelchairs are classified in International Class 12 (e.g.,
as a vehicle) while applicant’s rollators are classified in
International Class 10 (e.g., as a medical device).
However, arguments as to different classifications for the
respective goods have no persuasive value in this context.
The classification system is simply for the convenience of
the Office and has no bearing on the relationship of the
goods. See In re Leon Shaffer Golnick Advertising, Inc.,
185 USPQ 242 (TTAB 1974).
Hence, we agree with the Trademark Examining Attorney
that these goods are closely related, and that they move
7 See http://www.discountscooters.com/
Serial No. 76180488
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through the same channels of trade to similar types of
consumers.
We turn then to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound and connotation.
In summarizing her comparison of the involved marks,
the Trademark Examining Attorney argues that these marks
“ … convey the same commercial impression and are therefore
confusingly similar.” (Trademark Examining Attorney’s
appeal brief, p. 3)
In turn, applicant argues that because: (i) “EZ” and
“Easy” do not look the same; (ii) the word WHEELER in its
mark has a different sound, meaning and appearance than
registrant’s mark with the word WHEEL; and (iii) the design
elements do not look the same, we should find that these
marks create different overall commercial impressions.
As noted by the Trademark Examining Attorney, the
issue is not whether a side-by-side comparison of the marks
would make distinctions apparent, but rather whether the
marks create a similar overall commercial impression in
connection with the goods with which they are, or are
intended to be, used. Visual Information Institute, Inc.
v. Vicon industries Inc., 209 USPQ 179 (TTAB 1980).
Serial No. 76180488
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In determining what the overall commercial impressions
of the marks are, we must focus on the perception and
recollection of the average purchaser of the goods in
question, recognizing that people normally retain general,
rather than specific, impressions of trademarks. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir., June 5, 1992).
Applying this standard, we find that these marks are
similar in appearance and pronunciation. We also find that
as to appearance, the somewhat different types of wheels
depicted in these two composite marks (each suggestive of
the type of wheels found on these respective products) is
not significant enough to cause a difference in overall
commercial impressions of the marks, as applicant has urged
us to conclude. As to the meaning of these marks, we find
that both marks have the same suggestive connotation,
namely, that with “minimal effort” on the part of the
disabled person, these “wheeled” items provide mobility for
the user.
Serial No. 76180488
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Finally, in applicant’s supplemental brief of December
6, 2002,8 applicant argues that frequently occurring
variations on the words “Easy” and “Wheel,” including
combinations of these two words, make this a crowded field
where consumers are conditioned to look to other parts of
composite marks for distinguishing features. Applicant
cites to Board precedent in support of its position:
Evidence of widespread third-party use, in a
particular field, of marks containing a
certain shared term is competent to suggest
that purchasers have been conditioned to
look to the other elements of the marks as a
means of distinguishing the source of goods
or services in the field.
In re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996).
However, applicant did not submit its showing of these
third-party registrations until the time of its
supplemental brief. At that juncture, applicant clearly
8 Following the Office’s final refusal to register of January
18, 2002, applicant filed a timely Notice of Appeal on July 18,
2002. In its appeal brief, applicant amended the identification
of goods. The Board expressly offered applicant the option to
file a supplemental brief if it desired after hearing again from
the Trademark Examining Attorney. The Trademark Examining
Attorney then assigned to the case found the amended
identification of goods to be acceptable, withdrew on a second
registration earlier cited under Section 2(d) of the Act, but
denied reconsideration on the refusal to register based on the
remaining cited registration. This Office action was mailed on
October 23, 2002. Then applicant did submit a supplemental brief
to the Board on December 4, 2002 which contained copies of a
large number of third-party registrations that applicant
retrieved from the United States Patent and Trademark Office’s
automated search records during November 2002.
Serial No. 76180488
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could have requested a remand to have the Trademark
Examining Attorney consider this evidence. Then, had a
remand been granted, the Trademark Examining Attorney would
have had the opportunity to submit evidence to rebut the
evidence submitted by applicant. Because applicant did not
request a remand, and thus the case was not remanded to the
Trademark Examining Attorney for further examination, the
Trademark Examining Attorney has consistently refused to
consider these registrations. In her brief, she properly
objects to this proffered evidence on the ground of
untimeliness, and asks us to refuse to consider this
additional evidence under Trademark Rule 2.142(d).9 We
sustain the objection, and we have not considered the
exhibits to applicant’s supplemental brief.
Even if we had considered this evidence, we hasten to
add that it would not have persuaded us to reach a
different conclusion in this appeal. Third-party
registrations, by themselves, are not entitled to much
9 “(d) The record in the application should be complete prior
to the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence
filed with the Board by the appellant or by the examiner
after the appeal is filed. After an appeal is filed, if
the appellant or the examiner desires to introduce
additional evidence, the appellant or the examiner may
request the Board to suspend the appeal and to remand the
application for further examination.” 37 C.F.R. §2.142(d).
Serial No. 76180488
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weight in determining whether confusion is likely. See In
re Hub Distributing, Inc., 218 USPQ 284 (TTAB 1983). Such
registrations are not evidence of what happens in the
marketplace or that the public is so familiar with the use
of such marks that the other elements are emphasized in
order to allow purchasers to distinguish among such marks.
National Aeronautics and Space Administration v. Record
Chemical Co., 185 USPQ 563 (TTAB 1975). In any event,
marks that convey different commercial impressions than
applicant’s mark (e.g., EZ BIG WHEEL, WHEEL-EZY, etc.), or
similar marks registered for quite different goods (e.g.,
cleaning preparations, motorcycle stands, specialized
computer applications for automobile financing, etc.), can
hardly be the basis for concluding that the cited mark is a
weak trademark.
Moreover, if applicant had timely submitted evidence
showing that registrant’s arguably suggestive mark should
be treated as a relatively weak mark, we note that even
weak marks registered on the Principal Register are
entitled to the statutory presumptions of Section 7(b) of
the Act, and hence should be protected against the
registration by a subsequent user of a highly similar mark
Serial No. 76180488
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for closely related goods. See Hollister Incorporated v.
Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976).
In conclusion, we find that these marks have the same
commercial impression, and that they are used, or are
intended to be used, on related products that often move
through the same channels of trade to the same classes of
ordinary purchasers. Based on the evidence in this record,
we cannot conclude that registrant’s mark is weak and
therefore entitled to a narrowed scope of protection.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is hereby affirmed.