Decker Mfg. Corp.

Trademark Trial and Appeal Board

Jul 30, 2001

No. 75500807 (T.T.A.B. Jul. 30, 2001)

7/30/01 Paper No. 15
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Decker Manufacturing Corporation
________

Serial No. 75/500,807
_______

Larry E. Laubscher, Jr. of Laubscher & Laubscher for Decker
Manufacturing Corporation.

Bradley B. Bayat, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Hohein, Chapman and Holtzman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
Preliminarily, a recitation of the recent procedural
history of this appeal is in order. On May 16, 2001 the
Board issued a final decision on this appeal affirming the
Examining Attorney. Applicant timely filed a request that
the appeal be reopened because applicant’s attorney did not
receive a copy of the Examining Attorney’s February 23,
2001 appeal brief. On June 28, 2001 the Board vacated its
May 16, 2001 final decision, reopened this appeal, and
allowed applicant time to file a reply brief and/or a
request for an oral hearing. Applicant timely filed a
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/500807
2
reply brief on July 12, 2001 (via a certificate of
mailing). Applicant’s attorney’s law office was
subsequently telephoned by Board personnel to confirm
whether or not applicant had filed a request for an oral
hearing and was advised that applicant did not file a
request for an oral hearing. Thus, this appeal is now
fully briefed and ready for a final decision.
Decker Manufacturing Corporation seeks to register on
the Principal Register the mark D__ for goods identified,
as amended, as “metal fasteners, namely nuts and pipe
plugs” in International Class 6. The application was filed
June 10, 1998, based on Section 1(a) of the Trademark Act,
15 U.S.C. §1051(a), with applicant claiming dates of first
use and first use in commerce of August 1959. The
application also included the following statements: “The
mark comprises the letter D and a single digit numeral
denoting a class. The numeral is disclaimed apart from the
mark as shown.” The method of use clause states that the
mark is used by “applying it to the goods.” A specimen of
record is shown below (in reduced form)1:

1 We note that applicant’s drawing shows the mark as a letter “D”
in a horizontal line and immediately next to the blank space
(“__”), whereas applicant’s specimens show the letter “D” at the
top of the nut and the numeral (on the specimen it is a “9”) on
Ser. No. 75/500807
3

The Examining Attorney has refused registration on two
grounds: (1) that under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), applicant’s mark, when applied to its
identified goods, so resembles the previously registered
mark D for “metal studs and nuts,”2 in International Class
6, as to be likely to cause confusion, mistake or
deception; and (2) that the applied-for mark is a “phantom”
mark which violates the one mark per registration
requirement of Sections 1 and 45, 15 U.S.C. §§1051 and
1127, of the Trademark Act.

the bottom of the nut in vertical alignment, with the hole in the
nut spatially separating the letter and the numeral.
2 Registration No. 1,756,432, issued March 9, 1993, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed date of first use and first use in commerce is June 1,
1961.
Ser. No. 75/500807
4
When the refusals were made final, applicant appealed.
As explained above, the appeal is now fully briefed, and
applicant did not request an oral hearing.

“Phantom” Mark Refusal
The Examining Attorney contends that the line in
applicant’s mark represents a changing or “phantom”
element, specifically any of the single digit numbers (0-
9), and that under the Trademark Act an applicant may
properly seek to register only a single mark in an
application for registration.
Applicant contends that “there are no phantom elements
in the subject mark.” (Brief, unnumbered page 2).
However, applicant goes on to argue that because of the
statements included in the application describing the mark,
there are a very limited number of elements which can be
included in the mark, each numeral designating a type or
class of metal fasteners; and that all of the possible
single digit numerals placed with the letter D represent
minimal variances and “all represent a consistent
commercial impression.” (Brief, unnumbered page 2).
In its reply brief (submitted by applicant, as noted
previously, after receipt of the Board’s initial final
decision in this case), applicant contends that because its
Ser. No. 75/500807
5
application includes a statement that a portion of the mark
denotes a single digit number which has been disclaimed,
“members of the public are well advised as to the nature of
applicant’s mark.” (Reply brief, p. 2.) Applicant
attempts to distinguish its situation from that in the case
of In re International Flavors & Fragrances Inc., 183 F.3d
1361, 51 USPQ2d 1513 (Fed. Cir. 1999), arguing that the
International Flavors case involved a mark where the
“phantom” portion thereof could include an “unknown” number
of marks, whereas applicant seeks a mark with a limited
number of possible single digit numerals; and that, unlike
the situation in the International Flavors case, it is
possible to conduct a search of all permutations of
applicant’s mark, and in fact, “such a search would be
comparable to a search regarding a stylized mark.” (Reply
brief, p. 2.)
The Court of Appeals for the Federal Circuit addressed
the issue of “phantom” marks in In re International Flavors
& Fragrances Inc., supra, wherein the court stated as
follows (emphasis appears in the Court decision):
We agree with the Commissioner that
under the Lanham Act and the rules
promulgated thereunder, a trademark
application may seek to register only a
single mark. See, e.g., 15 U.S.C. §1051
(1994) (“The owner of a trademark...may
apply to register his or her trademark
Ser. No. 75/500807
6
under this chapter on the principal
register established:...”)
...The language of the relevant
regulations also contemplate that an
application may seek to register only a
single mark. See, e.g., 37 C.F.R.
§2.51(a)(1) (1998) (“In an application
under section 1(a) of the [Lanham] Act,
the drawing of the trademark shall be a
substantially exact representation of
the mark as used on or in connection
with the goods...).

The Court noted that the Trademark Act gives federal
procedural augmentation to the common law rights of
trademark owners; and the law serves as constructive notice
to the public of the registrant’s ownership of a mark,
thereby preventing another user of that mark from claiming
innocent misappropriation. Thus, “the mark, as registered,
must accurately reflect the way it is used in commerce so
that someone who searches the registry for the mark, or a
similar mark, will locate the registered mark.”
International Flavors, supra at 1517. “Phantom” marks do
not provide proper notice to other trademark users, thereby
defeating one of the vital purposes of the Trademark Act.
We agree with applicant that the “line” portion of its
mark represents a single digit numeral, and that there are
a finite number of single digit numerals, specifically,
ten. However, as the Court emphasized, the Trademark Act
provides for the application for registration of “a
Ser. No. 75/500807
7
trademark.” Even though the “mark” in applicant’s
application may represent a finite number of possible
marks, it clearly includes multiple marks. Moreover, any
search would necessarily require a search of at least ten
marks, one of which would be for “D0,” which could be
interpreted as the word “DO.” This is not comparable to a
search of “a stylized mark”; it is comparable to searching
at least ten stylized marks. Moreover, these multiple
marks create different commercial impressions.
The variable element in the International Flavors
case, supra, was also descriptive, but the Court
nonetheless found such applications are prohibited under
the statute. The “line” portion of applicant’s mark
represents a numeral which is a class designation. The
class designations are descriptive and applicant has
disclaimed same.
Applicant’s application for D__ is an attempt to
register several different marks in one application, which
is not permitted under the Trademark Act. Neither the fact
that there are only ten single digit numerals nor the fact
that each of the single digit numerals denotes a class of
metal fasteners alters the reality that in this application
applicant seeks to register several marks in one
application in contravention of the Trademark Act.
Ser. No. 75/500807
8
Section 2(d) Refusal
The Section 2(d) issue we must determine is whether
applicant’s mark is so similar to the cited registered mark
that, when used in connection with the same or similar
goods, it will be likely to cause confusion as to the
source or origin of the goods. See Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992). Our determination of likelihood of confusion
is based on an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue. See In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We turn first to a consideration of applicant’s goods
vis-a-vis those of the cited registrant. We find that the
goods are in part identical (“metal nuts”), and are
otherwise closely related (“metal fasteners, namely pipe
plugs” and “metal studs”). Applicant does not argue to the
contrary.
Likewise applicant does not argue, and we do not find,
any differences in the channels of trade or purchasers for
the respective goods. We must presume, given the
identifications, that such goods travel in the same
channels of trade, and are purchased by the same classes of
purchasers. See Canadian Imperial Bank of Commerce v.
Ser. No. 75/500807
9
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
Turning then to a consideration of the respective
marks, it is well settled that marks must be considered in
their entireties. However, our primary reviewing court has
held that in articulating reasons for reaching a conclusion
on the question of likelihood of confusion, there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
or portion of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties.
That is, one feature of a mark may have more significance
than another. See Sweats Fashions Inc. v. Pannill Knitting
Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987);
and In re National Data Corporation, 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1985).
Applicant concedes that the single digit numeral
(represented by the “line” element of its mark) denotes a
class of fasteners, and applicant voluntarily offered a
disclaimer of same. See In re Dana Corp., 12 USPQ2d 1748
(TTAB 1989).3 Thus, the letter “D” is the dominant portion

3 In our May 16, 2001 decision, the Board cited In re Dana Corp.,
12 USPQ2d 1748 (TTAB 1989) for the principle that terms used
merely as model, style or grade designations do not serve to
identify and distinguish one party’s goods from those of another;
and that this relates to the dominance of the letter “D” in
Ser. No. 75/500807
10
of applicant’s mark, and would be so perceived by
purchasers, especially in view of applicant’s actual use of
the letter “D” at the top of the nut and the numeral
spatially separated therefrom, appearing at the bottom of
the nut. In such circumstance, the marks are virtually
identical. See Textron Inc. v. Maquinas Agricolas “Jatco”
S.A., 215 USPQ 162 (TTAB 1982).
Moreover, consumers generally do not have the
opportunity to make side-by-side comparisons. The proper
test in determining likelihood of confusion is not a side-

applicant’s mark when analyzing the du Pont factor of
similarities between the marks. In attempting to distinguish the
Dana Corp. case, supra, applicant states in its reply brief (p.
4) as follows:
“In Dana, the applicant sought to register
alphanumeric designations which were not
inherently distinctive and which had not acquired
secondary meaning. In the instant application,
the mark which Applicant seeks to register has
been in use by Applicant since 1959. Given this
long and continuous use, Applicant asserts that
the mark has acquired secondary meaning.”
There is no evidence to support applicant’s claim of
acquired distinctiveness. Moreover, in this case, it
is unclear as to what exactly applicant asserts has
acquired distinctiveness (e.g., the mark “D__” has not
been used and has not acquired distinctiveness). Nor
has applicant specified which of the marks D0, D1, D2,
D3, etc. have been used to such an extent that each
separate mark has acquired distinctiveness. Finally,
applicant has acknowledged the numeral designations
are descriptive and that they are class designations
of applicant’s goods; thus, the principle of the Dana
Corp. case, supra, applies herein. In any event, a
claim of acquired distinctiveness cannot overcome the
Section 2(d) refusal.
Ser. No. 75/500807
11
by-side comparison of the marks, but rather is based on the
similarity of the general overall commercial impressions
engendered by the involved marks. See Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). See also, 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).
While the mark applied for by applicant is D__, the
mark as actually used by applicant, as evidenced by
applicant’s specimens, clearly shows that the letter and
the numeral are spatially separated. Thus, we disagree
with applicant’s argument that “the mark as represented in
the application is the mark which will be used by consumers
as a source identifier, namely D and a single digit
number.” (Reply brief, p. 3.) (Emphasis added.) The
purchasing public forms its impressions of trademarks as
they are actually used in the marketplace, not as they
appear in federal trademark applications/registrations.
Based on applicant’s specimens of record, showing the
letter “D” spatially distant from the single digit numeral
(whichever one of ten such numbers), the purchasing public
will not perceive applicant’s mark as D__, but rather would
Ser. No. 75/500807
12
see only the letter “D” at the top, with the number
designation denoting the class of metal fastener being
purchased. Applicant’s mark, as shown on its specimens,
would be remembered by purchasers as the letter “D,” which
is identical to the cited registered mark.4
Applicant’s argument that there has been
contemporaneous use for over 39 years without evidence of
actual confusion is not persuasive. There is no evidence
of the circumstances of use by any party (e.g., nationwide
use or use in separate or limited areas; substantial sales
and/or advertising or very limited sales and/or
advertising). Nor is there any information from the cited
registrant regarding its experience as to actual confusion
or lack thereof. Applicant did not offer a written consent
from the cited registrant. See In re Kent-Gamebore Corp.,
__ USPQ2d __ (TTAB, May 10, 2001). Applicant’s argument

4 We are, of course, aware that the Examining Attorney originally
cited two registrations: Registration No. 1,756,432, which is
the basis for the final refusal in this appeal, and Registration
No. 1,263,383, which was not maintained as a basis for refusal in
the Examining Attorney’s final Office action. Applicant’s
argument that its mark “D__” is distinguishable from the cited
registration for “D”, as well as from the other once-cited
registration for the mark shown below

for, inter alia, “bolts, nuts, screws,” is not persuasive of a
different result herein. While the Patent and Trademark Office
strives for consistency, each case must be decided on its own
facts and record. Of course, we do not have before us any
information from the file for Registration No. 1,263,383.
Ser. No. 75/500807
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that because of the long period of contemporaneous use
without evidence of actual confusion, “such an agreement is
not necessary” (reply brief, p. 4), is not persuasive where
there is simply no evidence regarding the relative scope
and nature of the respective uses of the marks by applicant
and registrant.
Finally, applicant argues regarding the du Pont factor
of market interface between applicant and registrant that
they “have long been members of the same commercial
market,” but that applicant is not aware of any objections
from registrant regarding applicant’s mark; and that “[i]f
the mark is published, Registrant will have the opportunity
to oppose the same.” (Reply brief, p. 4.)
The applicant in the case of In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997) made
this same argument, and the Court responded as follows (at
1535):
Dixie argues alternatively that the PTO
should pass the mark to publication and
allow the registrant to oppose the
applicant’s mark, if it chooses. But
it is the duty of the PTO and this
court to determine whether there is a
likelihood of confusion between two
marks. (Citation omitted.) It is also
our duty ‘to afford rights to
registrants without constantly
subjecting them to the financial and
other burdens of opposition
proceedings.’ (Citations omitted.)
Ser. No. 75/500807
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Otherwise protecting their rights under
the Lanham Act would be an onerous
burden for registrants.

Because we find that confusion is likely to occur in
this case, it is not appropriate to allow applicant’s mark
to be published.
Based on the similarity of the marks, the identical
and/or related goods, identical trade channels and same
classes of purchasers, we find that applicant’s use of its
mark on its goods would be likely to cause confusion,
mistake or deception in view of the cited registrant’s
mark.
Decision: The refusal to register under Section 2(d),
and the refusal to register a “phantom” mark, are both
affirmed.