Dalloz Safety, Inc.

Trademark Trial and Appeal Board

Jun 4, 2003

No. 75932374 (T.T.A.B. Jun. 4, 2003)

Mailed: 04 JUN 2003
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dalloz Safety, Inc.1
________
Serial No. 75/932,374
_______
Henry E. Bartony, Jr. of Bartony & Hare for Dalloz Safety,
Inc.
Christopher S. Adkins, Trademark Examining Attorney, Law
Office 101 (Angela Wilson, Managing Attorney).
_______
Before Hairston, Walters and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 2, 2000, Dalloz Safety, Inc. (applicant)
applied to register the mark TITAN BY MILLER (in typed
form) on the Principal Register for goods ultimately
identified as “fall protection equipment, namely safety
1 At the end of its appeal brief (p. 11), counsel identified
applicant as Dalloz Fall Protection Investment, Inc. (assignee).
USPTO records do not show an assignment to a party by that name
although there is an assignment to a party identified as Dalloz
Investment, Inc. (Reel/Frame No. 2423/0564).
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/932,374
2
belts, safety harnesses, safety lanyards and lifelines” in
International Class 9.2
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of two prior registrations owned by
different parties. The first registration is for the mark
TITAN (typed) for “protective gloves for industrial use” in
International Class 9.3 The second registration is also for
the mark TITAN (typed) for “industrial shoes and workboots”
in International Class 25.4
When the refusals were made final, applicant filed an
appeal.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
2 Serial No. 75/932,374. The application alleges a date of first
use and a date of first use in commerce of August 15, 1999.
3 Registration No. 2,127,114 issued January 6, 1998. The
registrant is listed as Mapa Pioneer Corporation.
4 Registration No. 1,781,498 issued July 13, 1993. Affidavits
under Section 8 and 15 have been accepted or acknowledged. The
current owner is listed as Bill Thompson, Inc.
Ser No. 75/932,374
3
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 start our analysis with a comparison of applicant’s
and registrants’ marks. In this case, all three marks
contain the identical word TITAN. It is the only word in
the registered marks. Applicant adds the phrase BY MILLER
to its mark. Applicant asserts that it owns two
registrations (Nos. 1,558,832 and 1,560,575) for the mark
MILLER. Applicant goes on and argues the mark MILLER “is a
very strong designation of origin in the fall protection
industry” and applicant “has gained substantial goodwill in
the area of fall protection” as a result of its ownership
of these marks. Brief at 8. Therefore, the mark TITAN BY
MILLER clearly designates the origin of the goods of”
applicant. Brief at 8.
The addition of a trade name or house mark to a
registered mark does not generally avoid confusion.
Menendez v. Holt, 128 U.S. 514, 521 (1888). However, the
addition of a house mark may avoid confusion when there are
recognizable differences between the common elements of the
marks. See Rockwood Chocolate Co. v. Hoffman Candy Co.,
Ser No. 75/932,374
4
372 F.2d 552, 152 USPQ 599 (CCPA 1967) (ROCKWOOD BAG-O-GOLD
for candy not confusingly similar to CUP-O-GOLD for candy).
Here, the differences between TITAN BY MILLER and TITAN are
slight and the addition of applicant’s MILLER mark does not
overcome the similarity of the marks. See In re C.F.
Hathaway Co., 190 USPQ 343 (TTAB 1976) (HATHAWAY GOLF
CLASSIC for knitted sports shirts confusingly similar to
GOLF CLASSIC for men’s hats).
In a similar case, the Board held that the mark SPARKS
and design and SPARKS BY SASSAFRAS and design were similar
in sound, appearance, and meaning.
Those already familiar with registrant's use of its
mark in connection with its goods, upon encountering
applicant's mark on applicant's goods, could easily
assume that "sassafras" is some sort of house mark
that may be used with only some of the "SPARKS" goods.
Conversely, those familiar with only applicant's mark
would, upon encountering the registered mark on
related goods, assume that all "SPARKS" products come
from a single source, and that that source was in some
instances further identified with the words "by
sassafras."
In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB
1986).
When we compare the marks, we not only look at the
drawing, but since applicant’s mark is displayed in typed
form, we also look at the specimens for help in visualizing
how the mark can be displayed.
Ser No. 75/932,374
5
The drawing presented with the application shows the
applicant's mark typed in capital letters, and under
Trademark Rule 2.51(d), this means that the
application is not limited to a mark depicted in
special form. Thus, the mark presented for
registration in accordance with said rule can be
considered to be in any form and to visualize what
form the mark can take, we are aided by the specimens
filed with the application as illustrating "the mark
as actually used." … The similarity between
applicant's mark as actually used and the cited
registered mark is quite apparent.
In re Richardson Ink Co., 171 USPQ 818, 819 (TTAB
1971). See also Phillips Petroleum Co. v. C.J. Webb, Inc.,
442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971)(CCPA pointed out
that the specimens emphasized the prominence of the “6-66”
part of the mark”); Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 749 F.2d 669, 223 USPQ 1281, 1284 (Fed
Cir. 1984) (“[T]rade dress may nevertheless provide
evidence of whether the word mark projects a confusingly
similar commercial impression. Applicant's labels support
rather than negate that of which opposer complains: that
SPICE VALLEY inherently creates a commercial impression
which is confusingly similar to that of SPICE ISLANDS”).
Here, a review of applicant’s specimens emphasizes the
prominence of the word TITAN. The words BY MILLER are
obviously displayed in much smaller print. See Apparel
Ventures, 229 USPQ at 226 (“The additional wording, ‘by
sassafras,’ is less significant in creating the commercial
Ser No. 75/932,374
6
impression of the mark as a whole. These words are very
small in comparison to ‘SPARKS’ and appear underneath
‘SPARKS’ in all lower case letters. Registrant’s mark is
only the word ‘SPARKS’”).
In any case, where likelihood of confusion is the
issue, we must view the marks in their entireties. When
the words BY MILLER are added to the word TITAN, the marks
are still extremely similar. Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA
Ser No. 75/932,374
7
1977)(CALIFORNIA CONCEPT and design held likely to be
confused with CONCEPT for hair care products).
The next factor we consider is whether the goods of
the applicant and the registrants are related. We must
consider the goods as they are described in the
identification of goods in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). To the extent
that the goods are not restricted in the identifications,
we must consider that they move through all normal channels
of trade. Schieffelin & Co. v. Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since there are
no restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade for those alcoholic beverages”).
Furthermore, it is not necessary for the examining attorney
Ser No. 75/932,374
8
to establish that the registrant and applicant are
competitors.
[G]oods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such
that they would be likely to be seen by the same
persons under circumstances which could give rise,
because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties'
goods or services.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Goods in Registration No. 2,127,114
We begin our discussion of the relatedness of the
goods by addressing the goods in the ‘114 registration.
These goods are identified as “protective gloves for
industrial use” in International Class 9. The examining
attorney’s evidence supports the conclusion that these
goods are related to applicant’s fall protection equipment.
The www.leonardsaftey.com and www.worknleisure.com website
printouts show hand protection and fall protection products
as available from the same site. Similarly, the Air Safe,
Inc. printout shows fall protection products and puncture
resistant gloves available from the same source. This type
of protective equipment is also likely to be used or
marketed together. See Virginian-Pilot, June 15, 1997
Ser No. 75/932,374
9
(“Suited up in flame-retardant shirt, elbow-length rubber
gloves, a harness and helmet, lineman Whitten gives a
reporter a hands-on demo”); Baltimore Sun, August 13, 1995
(“Team members also had to be willing to put up several
hundred dollars for personal equipment, such as helmets,
ropes, harnesses and gloves”); Providence Journal-Bulletin,
November 21, 1999 (“Bacou’s goal is to eventually market
‘protective products covering the whole body. That might
mean shoes, coveralls, aprons, gloves, hard hats and
harnesses’”). The examining attorney has also included
copies of two registrations to show that the same entity
has registered a common mark for protective gloves and fall
protection equipment. See Registration Nos. 2,372,695
(“Protective clothing, namely … work gloves and safety
equipment, including … safety harnesses”) and 1,253,653
(“Safety equipment and clothing – namely … gloves … safety
harnesses”). This evidence convinces us that applicant’s
fall protection equipment is related to registrant’s
protective gloves for industrial use. It is likely that
these products would be bought by the same purchasers,
namely, employers who would need to protect their employees
from occupational hazards. They also would be sold
together. Therefore, we conclude that there is a
likelihood of confusion when the mark TITAN is used on
Ser No. 75/932,374
10
protective gloves for industrial use and TITAN BY MILLER is
used on fall protective equipment.
Applicant also maintains that the “market for fall
protection equipment is quite unique and small.” Brief at
9. We note that applicant has not included any evidence of
this assertion. Indeed, the printouts that the examining
attorney has made of record do not hint that there is
anything unique about the fall protection market that would
somehow impact the likelihood of confusion analysis. If
applicant is arguing that because the market is “small and
unique,” the customers are sophisticated and less likely to
be confused, we note that “even careful purchasers are not
immune from source confusion.” In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See also In re
Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986)
(“While we do not doubt that these institutional purchasing
agents are for the most part sophisticated buyers, even
sophisticated purchasers are not immune from confusion as
to source where, as here, substantially identical marks are
applied to related products”).
Another point applicant makes without any evidentiary
support is that there are a large number of registrations
that contain the term TITAN. Brief at 4. We do not give
this unsupported statement any weight, but we do note that
Ser No. 75/932,374
11
applicant’s fall protection equipment and registrant’s
protective gloves are related, and even if these
registrations were of record, they would not support the
Office issuing another confusingly similar registration.
In re J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB 1988).
Goods in Registration No. 1,781,498
Regarding the goods in the ‘498 registration, we
arrive at the opposite conclusion on the question of
whether the goods are related. Applicant’s goods are
identified as fall protection equipment, namely, safety
belts, harnesses, lanyards, and lifelines in International
Class 9. The goods in the ‘498 registration are industrial
shoes and workboots in International Class 25. As noted
earlier, we must consider the goods as they are set out in
the identification of goods. Octocom Systems, 16 USPQ2d at
1787. We also do not read limitations into the
identification of goods, “in the absence of specific
limitations in the registration.” Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983). In this
case, the registration is limited to industrial shoes and
workboots in International Class 25. The registration does
not contain goods in International Class 9. The Trademark
Acceptable Identification of Goods and Services Manual
indicates that protective industrial boots are in
Ser No. 75/932,374
12
International Class 9. Therefore, we cannot conclude that
the ‘498 registration’s goods include protective boots.
Non-protective shoes and work boots are less likely to be
viewed as coming from the same source as safety belts,
harnesses, lanyards, and lifelines. As a result, we find
that these goods are not related and there is no likelihood
of confusion regarding Registration No. 1,781,498.
Decision: The examining attorney’s refusal to
register applicant’s mark because of Registration No.
1,781,498 is reversed. The examining attorney’s refusal to
register applicant’s mark on the ground that there is a
likelihood of confusion with the mark TITAN for the
identified goods in Registration No. 2,127,114 is affirmed.