Daniel Heldt

Trademark Trial and Appeal Board

Jan 23, 2017

No. 86903948 (T.T.A.B. Jan. 23, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: January 23, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Heldt
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Serial No. 86903948
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Gene Bolmarcich, Law Offices of Gene Bolmarcich,
for Daniel Heldt.

Joanna M. Shanoski, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Zervas, Mermelstein, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Daniel Heldt (“Applicant”) seeks registration on the Principal Register of the mark
shown below for “Handyman service, namely, building repair and maintenance;
Interior sealing and caulking services; Building sealing and caulking services; Door
repair services; Installation, maintenance and repair of doors and fences; Cleaning of
gutters for residential homes and buildings; Lock repair services; Installation, repair
and replacement of locks; Carpentry services; Pressure washing services; Remodeling
of homes, buildings, kitchens and bathrooms; General building contractor services;
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Residential and commercial building construction; Construction of buildings and
residential homes, in International Class 37.1

The Trademark 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 so
resembles the mark shown in Registration No. 40816242 and reproduced below

for “building repair and maintenance services for residential and commercial
structures,” as to be likely, when used in connection with Applicant's services, to
cause confusion, mistake, or deception. After the Examining Attorney made the
refusal final, Applicant timely appealed and requested reconsideration, which was

1 Application Serial No. 86903948 was filed on February 10, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1(a), claiming first use and first use in commerce on November
1, 2007. Applicant has disclaimed the exclusive right to use “HANDYMAN SERVICE” apart
from the mark as shown.
2 The cited Registration No. 4081624 issued on January 10, 2012.
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denied. Applicant and the Examining Attorney have filed briefs. We affirm the refusal
to register.
I. Record on Appeal
The record on appeal includes Applicant’s specimen and pages from third-party
websites made of record by the Examining Attorney to show that the building repair
and maintenance services identified in the cited registration and the services
identified in the application in addition to “building repair and maintenance” services
are commonly provided under the same mark. May 26, 2016 and June 22, 2016 Office
Actions.
II. Likelihood of Confusion Refusal
Section 2(d) of the Trademark Act prohibits the registration of a mark that so
resembles a registered mark as to be likely, when used in connection with the goods
or services of the applicant, to cause confusion, mistake, or deception. Our
determination of likelihood of confusion under Section 2(d) is based upon an analysis
of all probative facts in the record that are relevant to the likelihood of confusion
factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). In every case under Section 2(d), two key considerations are
the similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The 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”). We turn first to the similarity of the services.
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A. Similarity of the Services, Trade Channels, and Classes of Customers
Our determination of the similarity of the services is based upon the
identifications of services in the application and in the cited registration. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The services do not have to be identical or
even competitive for confusion to be likely. “[L]ikelihood of confusion can be found ‘if
the respective [services] 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) (quoting 7-Eleven Inc.
v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
The identification of services in Applicant’s application includes “Handyman
service, namely, building repair and maintenance,” while the identification of services
in the cited registration is “building repair and maintenance services for residential
and commercial structures,” a more narrowly recited version of the “building repair
and maintenance” services identified in the application. Applicant's services and the
services in the cited registrations are thus legally identical in part.3 The record also
shows that the other services identified in the application are frequently offered
under the same mark by companies who also offer building repair and maintenance

3 Likelihood of confusion may be found if it exists with respect to any one of Applicant’s
services and the services in the cited registration. See Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
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services, such that they are closely related to building repair and maintenance
services.4 This du Pont factor supports a finding of a likelihood of confusion.
The identity of the services in part impacts upon our analysis of two other du Pont
factors. First, because the services are identical in part, we must presume that their
channels of trade and classes of customers are identical for purposes of the third du
Pont factor. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012). This du Pont factor thus also supports a finding of a likelihood of confusion.
Second, the identity of the services in part reduces the degree of similarity
between the marks necessary for confusion to be likely. See, e.g., Shen Mfg. Co. v. Ritz
Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); In re Bay State
Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016). We turn now to the du Pont factor
regarding similarity of the marks.
B. Similarity of the Marks
This du Pont factor focuses on “‘the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.’” Palm
Bay Imports Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The
proper test is not a side-by-side comparison of the marks, but instead whether the
marks are sufficiently similar in terms of their commercial impression such that

4 In his brief, Applicant does not address any du Pont factor other than the similarity of the
marks. 7 TTABVUE 2-3.
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persons who encounter the marks would be likely to assume a connection between
the parties.” Coach, 101 USPQ2d at 1721 (quotation omitted).
The Examining Attorney argues that “the wording is the dominant feature of both
marks,” 9 TTABVUE 5 (citing Viterra, 101 USPQ2d at 1908), and that “the word
portions are very similar, and create the same meaning and a highly similar
impression. Both marks have the common wording HANDY and DAN. The marks
have a highly similar sound and meaning, and make the same commercial impression
even though the common terms are used in reversed order. Specifically, both indicate
that the services are provided by a person named DAN who is HANDY or a
HANDYMAN.” 9 TTABVUE 6.
Applicant acknowledges that “the word ‘Dan’s’ is the prominent part of the mark,
with ‘HANDYMAN SERVICE’ serving as a descriptive designator for the services”
and that “consumers would focus on the possessive name ‘Dan’s’ as the primary
source identifier,” 7 TTABVUE 2, but argues that the “mere fact that both marks
refer to a man named ‘Dan’ is heavily outweighed by the many differences in overall
look, sound, and meaning.” 7 TTABVUE 3. Applicant also argues that “names are
weak source identifiers,” that consumers “will not automatically assume that there
can only be one person named Dan who provides services of this type,” 7 TTABVUE
3, n.1, that the word “handy” is used differently in each mark, and that the words in
the cited mark are “a play on the expression ‘handy dandy.’” 7 TTABVUE 2-3.
We find that the marks are quite similar. Although marks must be compared as
to appearance, sound, connotation and commercial impression, “[i]n a particular case,
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any one of these means of comparison may be critical in finding the marks to be
similar.” M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1550-51 (TTAB 2010) (citing
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)).
We agree with the Examining Attorney that the words in the cited mark are more
significant than the design as source identifiers. The marks sound similar when
verbalized as “Dan’s Handyman Service” and “handy dan” because both contain the
name Dan together with a form of the word “handy.” The transposition of these words
in the two marks does not significantly affect their similar impression on the ear
because both marks will be heard as identifying someone named “Dan” who is
“handy” or who offers “handyman services.” See, e.g., In re Nationwide Indus., Inc., 6
USPQ2d 1882, 1884 (TTAB 1988) (RUST BUSTER for rust-penetrating spray
lubricants found similar to BUST RUST for penetrating oil); Bank of Am. Nat’l Trust
and Savings Ass’n v. Am. Nat’l Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978)
(BANKAMERICA and BANK OF AMERICA found similar to AMERIBANC).
We find the close similarity of the marks in connotation and commercial
impression to be the most important means of comparison in finding the marks to be
similar. Applicant acknowledges that “both marks refer to a man named Dan,” 7
TTABVUE 3,5 and we agree with the Examining Attorney that the “name DAN
identifies a specific person in both marks.” 9 TTABVUE 6. In Applicant’s mark, the
“man named Dan” is identified to consumers, through the use of the possessive case,

5 There is no evidence in the record to support Applicant’s claim that names in general are
“weak source identifiers,” 7 TTABVUE 3, n.1, and Applicant cites no cases for that
proposition.
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as the owner of the “Handyman Service” that provides the services offered under the
mark, while in the cited mark, the “man named Dan” is similarly identified (and
depicted in cartoon form right next to his name) as the real or fictitious service
provider.6 We agree with the Examining Attorney that “the design portion for the
registrant’s mark does not add anything to the commercial impression to distinguish
the two marks because the rendering in the registrant’s mark appears to be a
depiction of a handyman.” 9 TTABVUE 5.7
Applicant argues that the marks are dissimilar in impression because the word
“handy” “is used in very different ways in each mark.” 7 TTABVUE 3. We disagree.
Applicant acknowledges that “handy” is “a highly descriptive word when used in
connection with ‘handyman services,’” 7 TTABVUE 3, and the different uses of the
word “handy” in the marks do not detract from the similarity of the marks in
connotation and commercial impression. To the contrary, the use of the word in
different forms in both marks in connection with the name “Dan” that is common to

6 Applicant argues that consumers “will not automatically assume that there can be only one
person named Dan who provides services of this type.” 7 TTABVUE 3, n.1. There is no
evidence in the record to support this argument or to show that the distinctiveness of the
name “Dan” as a mark for building repair and maintenance services has been reduced by
third-party uses or registrations of marks containing “Dan” for those services.
7 The marks differ somewhat in appearance because the word elements in the marks appear
in different forms of stylization and the cited mark contains design elements and a cartoon
figure that have no counterparts in Applicant’s mark, but those “design features merely
emphasize, in a pictorial way, the main word portion of the cited mark,” In re Wine Society of
America, 12 USPQ2d 1139, 1142 (TTAB 1989), and, in any event, “the proper test is not a
side-by-side comparison of the marks.” Coach, 101 USPQ2d at 1721 (quotation omitted). The
differences in appearance are outweighed by the close similarity of the marks in sound and,
in particular, connotation and commercial impression.
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the marks enhances the similarity of the marks in commercial impression because
the adjective “handy” defines the attribute that makes “Dan” a “handyman.”8
Applicant also argues that the cited mark “uses rhyming and a play on the
expression ‘handy dandy’ as a means of making a strong commercial impression on
consumers.” 7 TTABVUE 2-3. We disagree with this claim as well. The word portion
of the cited mark, “handy dan,” does not rhyme, Applicant made of record no evidence
regarding the claimed “expression ‘handy dandy,’” and we find that the words “handy
dan” in the cited mark do not evoke the words “handy-dandy” as that phrase is defined
in the Oxford Advanced American Dictionary and the Merriam-Webster Dictionary.9
The marks are similar in appearance, sound, and connotation and commercial
impression when they are considered in their entireties. This du Pont factor supports
a finding of a likelihood of confusion.
Conclusion
All of the relevant du Pont factors support a finding of a likelihood of confusion.
The parties’ services, channels of trade, and classes of customers are identical in part,

8 We may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in printed form or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). We judicially notice
that the adjective “handy” is defined in the Merriam-Webster Dictionary (www.merriam-
webster.com) as “clever in using the hand especially in a variety of useful ways,” while the
noun “handyman” is defined therein as “one competent in a variety of small skills or inventive
or ingenious in repair or maintenance work.”
9 We judicially notice the definition of the adjective “handy-dandy” as “very simple and easy
to use” (Oxford Advanced American Dictionary (www.oxfordlearnersdictionaries.com)), and
the definition of the noun “handy-dandy” as “a child’s game in which one child guesses in
which closed hand another child holds some small object” (Merriam-Webster Dictionary
(www.merriam-webster.com)).
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and the parties’ marks are sufficiently similar for confusion to be likely when they
are used for identical services. We find that a consumer who is familiar with the cited
mark for building repair and maintenance services for residential and commercial
structures and who encounters Applicant’s mark for the identical services would be
likely to believe that those services emanate from a common source.
Decision: The refusal to register is affirmed.