Cris E. Pasto

Trademark Trial and Appeal Board

Mar 8, 2004

No. 76238187 (T.T.A.B. Mar. 8, 2004)

Mailed: March 8, 2004
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Cris E. Pasto, dba Cepco Tool Company
________
Serial No. 76238187
_______
Michael F. Brown of Brown & Michaels, PC for Cris E. Pasto,
dba Cepco Tool Company.
Won T. Oh, Trademark Examining Attorney, Law Office 114 (K.
Margaret Le, Managing Attorney).
_______
Before Simms, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant has filed an application to register on the
Principal Register the mark RES-Q-JACK for goods amended to
read “emergency equipment, namely a vehicle stabilization
system comprised of stands for hand jacks, connectors,
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76238187
2
pins, straps, fittings and tubing” in International Class
8.1
The Examining Attorney has 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 its
goods, so resembles the registered mark, RES-Q-RENCH,2 for
“multipurpose emergency manually operated tools, namely,
wrenches, glass breakers, pry bars, and cutters” in
International Class 8, as to be likely to cause confusion,
mistake or deception.
After the refusal was made final, applicant appealed.
Briefs have been filed.3 Applicant did not request an oral
hearing.
The Examining Attorney essentially contends that the
marks RES-Q-JACK and RES-Q-RENCH are similar in sound,
appearance, connotation and commercial impression; that the
parties’ respective goods are related or complementary; and
1 Application Serial No. 76238187, filed April 9, 2001. The
application is based on applicant’s claimed dates of first use
and first use in commerce of November 11, 1998 and April 26,
1999, respectively.
2 Registration No. 2,508,861, issued November 20, 2001 on the
Principal Register.
3 Applicant submitted with its reply brief a “supplemental
declaration” of applicant. This evidence is untimely under
Trademark Rule 2.142(d) and the Board has not considered it.
Even if it had been considered, it would not alter our decision
herein.
Ser. No. 76238187
3
that the channels of trade and purchasers are the same or
overlapping.
Applicant makes arguments regarding the following du
Pont4 factors:
(1) the marks are dissimilar in sound,
appearance and connotation;
(2) the goods are dissimilar in nature and
purpose;
(3) the channels of trade factor, even if
overlapping, is not entitled to very much
weight;
(4) the purchasers and conditions of sale are
different;
(5) registrant’s mark is not famous;
(6) registrant’s mark is weak and entitled to
only a narrow scope of protection;
(7) there have been no instances of actual
confusion; and
(8) the potential for confusion is de minimis.
Looking first to the marks, it is obvious that they
are not identical. However, both involved marks are
constructed in a similar manner. Specifically, both marks
share the beginning term “RES-Q” (a misspelling of the word
“rescue”) followed by a hyphen and a suggestive or
descriptive term relating to the involved product (a wrench
type tool or a stabilization system which includes a stand
for a hand jack). The first part of a mark is often the
part impressed upon the mind of the purchaser, and the most
likely to be remembered. See Presto Products, Inc. v.
4 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser. No. 76238187
4
Nice-Pak Products, Inc., 9 USPQ2d 1895 (TTAB 1981). These
marks are similar in sound and appearance.
Relevant purchasers may note the difference in the
last syllable of these marks, but they would still think
these goods come from the same source because of the
parallel construction of the marks, specifically “RES-Q”
followed by the name of a tool. That is, purchasers
familiar with registrant’s emergency tools (such as
wrenches and cutters) sold under the registered mark
RES-Q-RENCH, upon seeing applicant’s mark RES-Q-JACK on
emergency equipment in the form of a vehicle stabilization
system (including a stand for a hand jack), would assume
that applicant’s goods come from the same source as
registrant’s goods, and merely refers to a different piece
of emergency equipment.
Both marks connote the idea of equipment used in
various emergency situations to aid in the rescue of
people.
It is the impression created by each of the involved
marks, each considered as a whole, that is important. See
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997); Kangol Ltd. v. KangaROOS U.S.A. Inc., 974
F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); and Franklin
Mint Corp. v. Master Manufacturing Co., 667 F.2d 1005, 212
Ser. No. 76238187
5
USPQ 233 (CCPA 1981). See also, 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:41 (4th
ed. 2001). These marks do not create separate and distinct
commercial impressions.
We find that the marks, considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression.
Turning next to a consideration of the goods involved
in this case, we start with the well-settled principle that
the question of likelihood of confusion in Board
proceedings regarding the registrability of marks, must be
determined based on an analysis of the goods or services
identified in applicant’s application vis-a-vis the goods
or services recited in the registration(s). See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). Further, it is also well
settled that goods or services need not be identical or
even competitive to support a finding of likelihood of
confusion. Rather, it is enough that the goods or services
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be seen by the same persons under circumstances which could
Ser. No. 76238187
6
give rise, because of the marks used therewith, to a
mistaken belief that they emanate from or are in some way
associated with the same producer or that there is an
association between the producers of each party’s goods or
services. See In re Peebles Inc., 23 USPQ2d 1795, 1796
(TTAB 1992); and In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
In this case, even though the involved goods are
separate types of emergency equipment, we find that
applicant’s emergency equipment namely, a vehicle
stabilization system and registrant’s multipurpose
emergency manually operated tools namely, wrenches, glass
breakers, pry bars and cutters are related goods. The
issue is not whether purchasers would confuse the goods,
but rather whether there is a likelihood of confusion as to
the source of the goods. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984).
Both identifications of goods are restricted to the
“emergency” context. Thus, it is clear that both
applicant’s and registrant’s goods are equipment used by
emergency rescue personnel. The goods are complementary in
that they are both used in emergency situations such as
vehicular accidents to stabilize the vehicle(s) and to
extricate people therefrom. See In re Martin’s Famous
Ser. No. 76238187
7
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984). That is, there is a commercially significant
relationship between applicant’s emergency equipment,
namely, a vehicle stabilization system and registrant’s
emergency equipment, namely, multipurpose tools such as
wrenches and cutters. See Hewlett-Packard Company v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”); and Recot
Inc. v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000)(“even if the goods in question are
different from, and thus not related to, one another in
kind, the same goods can be related in the mind of the
consuming public as to the origin of the goods. It is this
sense of relatedness that matters in the likelihood of
confusion analysis.”).
The identified goods of both applicant and registrant
are limited to emergency uses. Thus, these goods would be
sold in the same or at least overlapping channels of trade.
Applicant did not contest this issue. (“Even assuming that
the goods are encountered in the same trade channels, this
Ser. No. 76238187
8
single factor alone is not sufficient to support a finding
of likelihood of confusion.” Brief, p. 8.)
Applicant urges that the purchasers and the conditions
of sale are “quite different.” (Brief, p. 8.)
Specifically, applicant, Cris Pasto, avers in a declaration
(submitted with his request for reconsideration) that the
typical purchasers of his vehicle stabilization system are
government municipalities, while the typical purchasers of
registrant’s tools are individuals; that applicant’s goods
cost approximately $2,500 while registrant’s wrench costs
about $20; and that purchasers of applicant’s goods are
sophisticated and purchase only after substantial research
and approval.
Even though applicant avers that his customers are
typically government municipalities, and registrant’s
customers are typically individuals, there is no such
limitation in either identification of goods. Registrant’s
emergency tools, which could be sold to individuals, could
also be sold to government municipalities. Thus, we find
that there is at least a segment of similar purchasers.
While we agree with applicant that the purchase of the
involved emergency equipment would be made after some level
of careful consideration (particularly applicant’s rather
expensive vehicle stabilization system), the sophistication
Ser. No. 76238187
9
of the purchasers does not require a finding of no
likelihood of confusion. Sophisticated purchasers are not
immune from confusion as to the origin of the respective
goods, especially when sold under very similar marks. See
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Total Quality Group Inc., 51
USPQ2d 1474 (TTAB 1999); and In re Decombe, 9 USPQ2d 1812
(TTAB 1988). That is, even relatively sophisticated
purchasers of this emergency equipment could believe that
the respective goods come from the same source, if offered
under the involved very similar marks. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and Aries Systems Corp. v.
World Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB 1992).
Applicant strongly urges that the registered mark is
entitled to a limited scope of protection because of the
number of registered marks including some form of the word
“rescue” therein; and that consumers will distinguish
between such marks.5 Applicant specifically asserts that
“there are over 200 live, registered trademarks that
incorporate some form of the word ‘rescue’”; and that there
5 To whatever extent, if any, that applicant is arguing the du
Pont factor of “the number and nature of similar marks in use on
similar goods,” that factor is irrelevant in this case because
there is no evidence of any uses of other “RES-Q” marks. See
Octocom Systems Inc. v. Houston Computer Services, Inc., supra.
Ser. No. 76238187
10
are “eleven registered marks for goods in the medical and
emergency context.” (Emphasis in original)(Brief, pp. 9-
10.)
In support thereof applicant submitted photocopies of
printouts from the USPTO’s Trademark Electronic Search
System (TESS) of the eleven third-party registrations in
arguably relevant fields; and a printout of a three-page
list of 93 third-party records (also from the USPTO’s
Trademark Electronic Search System (TESS)), including
references to pending and abandoned applications, as well
as cancelled and expired registrations. The three-page
list of 93 applications and registrations does not include
any information as to ownership, the involved goods or
services, disclaimers, or whether the marks are registered
under Section 2(f) or on the Supplemental Register. Thus,
the probative value of this evidence is extremely limited.
Moreover, applications are evidence of nothing except that
each was filed on a particular date.
With regard to the eleven registered marks for which
applicant provided copies thereof, assuming arguendo the
establishment, as applicant argues, that all the goods in
these third-party registrations are related, nonetheless
this evidence does not compel a different result herein.
Most of the marks in the third-party registrations create a
Ser. No. 76238187
11
different commercial impression from that of applicant’s
mark and the cited registered mark. See, for example,
JB-RES-Q for emergency vehicles, namely rescue trucks and
ambulances (Registration No. 1,736,251); RESCUELINK for
software for medical therapeutic apparatus, namely
communication software for portable automatic external
defibrillators (Registration No. 1,993,989); RESCUE WRAP
(“wrap” disclaimed) for emergency thermal blankets for
patient transport (Registration No. 1,905,021); and RESCUE
LITE (“lite” disclaimed) for portable high intensity lamps
for marking, warning, signaling, distress and search
operations (Registration No. 1,010,695).
We acknowledge that there are a few third-party
registrations which are closer in relation to the marks
and/or the goods involved in the application now before us.6
However, as stated in the TMEP §1207.01(d)(iii) (3d ed.
2002)(Revision 1, June 2002): “Generally, the existence of
third-party registrations cannot justify the registration
of another mark that is so similar to a previously
6 See RES-Q-VAC for aspiration pump, hospital infant delivery
room neonatal suction pump, endotracheal adapter, adult suction
pump and yankauer (Registration No. 1,762,635); and RES-Q-FLO for
mouth to mask manual resuscitators to administer mouth to mouth
resuscitation without mouth to mouth contact (Registration No.
1,345,903).
Ser. No. 76238187
12
registered mark as to create a likelihood of confusion, or
to cause mistake, or to deceive.”
To the extent applicant is arguing that the registered
mark RES-Q-RENCH is diluted in the marketplace due to
third-party uses of similar marks, again there is no
evidence regarding use in the marketplace. In fact, it is
well settled with regard to the weight given to third-party
registrations, that these registrations are not evidence of
use in the marketplace or that the public is familiar with
them. Thus, we cannot assume that the public will
(presumably) come to distinguish between them. As the
Court of Appeals for the Federal Circuit stated in the case
of Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992):
Under Du Pont, “[t]he number and
nature of similar marks in use on
similar goods” is a factor that must
be considered in determining
likelihood of confusion. 476 F.2d at
1361, 177 USPQ at 567 (factor 6).
Much of the undisputed record
evidence relates to third party
registrations, which admittedly are
given little weight but which
nevertheless are relevant when
evaluating likelihood of confusion.
As to strength of a mark, however,
registration evidence may not be
given any weight. AMF Inc. v.
American Leisure Prods., Inc., 474
F.2d 1403, 1406, 177 USPQ 268, 269
(CCPA 1973)(“The existence of [third
party] registrations is not evidence
Ser. No. 76238187
13
of what happens in the market place
or that customers are familiar with
them. ...”) (Italics emphasis in
original.)
See also, Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989).
Moreover, the USPTO strives for consistency of
examination, but as often noted by the Board, each case
must decided on its own merits. We are not privy to the
records of the third-party registration files, and
moreover, the determination of registrability of those
particular marks by trademark Examining Attorneys cannot
control the merits in the case now before us. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). See also, In re Kent-Gamebore Corp., 59
USPQ2d 1373 (TTAB 2001); and In re Wilson, 57 USPQ2d 1863
(TTAB 2001).
Regarding the du Pont factor of the fame of the prior
mark, applicant asserts in his declaration that the cited
mark is not famous. In general, fame does not play a role
in ex parte appeals because evidence to demonstrate fame is
not available to Examining Attorneys. Although evidence of
fame can be dispositive in finding likelihood of confusion,
the absence of such evidence does not compel a result of no
Ser. No. 76238187
14
likelihood of confusion. In this case, the other involved
du Pont factors persuade us that confusion is likely.
Although applicant has averred that there have been no
instances of actual confusion in the four years since
applicant commenced use of his mark, this statement is
insufficient to establish a finding of this duPont factor
in applicant’s favor. See In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). Importantly, in the case before us there is no
evidence of applicant’s and the cited registrant’s
geographic areas of sales, or the amount of the sales under
the respective marks. Further, there is no information
from the registrant. In any event, the test is likelihood
of confusion, not actual confusion. See Weiss Associates
Inc. v. HRL Associates Inc., supra; and In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984).
Applicant argues that he has prior use; and that if
confusion were likely, he would have opposed registration
of the now registered mark. This is unpersuasive as
priority is not an issue in an ex parte appeal. See In re
Wilson, supra, 57 USPQ2d at 1867 (footnote 9). Further, it
is the duty of the USPTO to determine the question of
likelihood of confusion in the appeal now before us. See
In re Dixie Restaurants, supra, 41 USPQ2d at 1535.
Ser. No. 76238187
15
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, it must
be resolved against the newcomer as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.