DGR Associates, LLC

Trademark Trial and Appeal Board

Jun 7, 2013

No. 85143447 (T.T.A.B. Jun. 7, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
June 7, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DGR Associates, LLC
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Serial No. 85143447
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Philip D. Speicher of Mathis Marifian & Richter Ltd. for DGR Associates, LLC.
Michelle E. Dubois, Trademark Examining Attorney, Law Office 107 (J. Leslie
Bishop, Managing Attorney).
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Before Seeherman, Wolfson and Shaw, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
DGR Associates, LLC (“applicant”) seeks registration on the Principal
Register of the mark DISRUPT (in standard characters) for “organic environmental
prophylactic and desiccant powder to prevent growth of microorganisms in food-
animal and companion-animal production facilities” in International Class 5.1
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), contending that
applicant’s use of its mark for its identified goods is likely to cause confusion with

1 Application Serial No. 85143447 was filed on October 1, 2010, based on applicant’s
allegation of its bona fide intent to use the mark in commerce.
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Reg. No. 3121349 for the mark DISRUPT MICRO-FLAKE (typed drawing) for
“insecticides and pesticides for domestic and agricultural use impregnated with
insect pheromones, attractants, repellants, and other active ingredients either alone
or in combination, formulated in polymer laminates in micro-flake form suitable for
aerial or ground spray application to control pest insects through disruption of
mating, repellency, toxicity, or other effect, or a combination thereof” in
International Class 5.2
After the examining attorney made the refusal final, applicant appealed to
this Board. We reverse the refusal to register.
Evidentiary Issue
The examining attorney has objected to the evidence submitted by applicant
with its appeal brief.
Trademark Rule 2.142(d) provides, in pertinent part:
(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.
….

Because it is untimely, we have not considered the evidence submitted for the first
time with applicant’s brief. See also, TBMP § 1207.01 and authorities cited in that
section. Nor will we take judicial notice of the web pages from Wikipedia submitted
with applicant’s appeal brief. See In re IP Carrier Consulting Group, 84 USPQ2d

2 Registered July 25, 2006; Sections 8 and 15 combined declaration has been accepted and
acknowledged.
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1028, 1032 (TTAB 1028) (Board will consider evidence taken from Wikipedia so long
as the non-offering party has an opportunity to rebut that evidence.).
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also, Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). In considering
the evidence of record on these factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 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); see also, In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). In
this particular case, we also consider the strength of the registrant’s mark, and the
trade channels and classes of purchasers to be particularly relevant factors.
A. Strength of the Registrant’s Mark
The cited mark, DISRUPT MICRO-FLAKE, is highly suggestive of the shape
and size, and function or characteristic, of registrant’s insecticides and pesticides.
The term MICRO-FLAKE in the mark refers to the fact that registrant’s goods are
formulated in a particular shape and size, i.e., “micro-flake form.” The term
DISRUPT refers to a function or characteristic of the goods: pesticides and
insecticides that prevent the spread of insect pests “through disruption of mating.”
That the word “disrupt” in the mark has this particular meaning is corroborated by
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the copies of the certificates issued by the Environmental Protection Agency to
registrant that have been submitted by applicant.3 In these certificates, registrant’s
goods are described as insecticides that “disrupt” the mating pattern of particular
insects, thereby reducing the population of the targeted species without actually
killing them.
Because registrant’s mark DISRUPT MICRO-FLAKE is highly suggestive of
the nature of the goods, it is entitled to only a narrow scope of protection. As the
Court stated in Sure-Fit Products Company v. Saltzson Drapery Company, 254 F.2d
158, 117 USPQ 295, 297, in which no likelihood of confusion was found between
SURE-FIT and RITE-FIT for ready-made slip covers:
It seems both logical and obvious to us that where a party
chooses a trademark which is inherently weak, he will not
enjoy the wide latitude of protection afforded the owners
of strong trademarks. Where a party uses a weak mark,
his competitors may come closer to his mark than would
be the case with a strong mark without violating his
rights. The essence of all we have said is that in the
former case there is not the possibility of confusion that
exists in the latter case.
With this principle in mind, we consider the similarity of the marks.
B. Comparison of the Marks
Keeping in mind the limited scope of protection to which the registrant’s
mark is entitled, we must consider the marks in their entireties as to appearance,
sound, connotation and commercial impression, to determine the similarity or
dissimilarity between them. Palm Bay, 73 USPQ2d at 1692; In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We recognize that both

3 Attached to Applicant’s Response to Office action dated July 15, 2011.
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marks contain the same term, DISRUPT, and that consumers will likely focus on
this shared term, as it is the first term in the cited mark and the only term in
applicant’s mark. See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988). Nonetheless, the similarity of the marks in sight and
sound engendered by this shared term are outweighed by the differences in
meaning and overall commercial impressions of the marks. The term DISRUPT in
registrant’s mark suggests the method by which registrant’s goods inhibit insect
infestations (by disrupting their mating patterns). This suggestion is absent in
applicant’s mark. Applicant’s mark suggests general prevention of disease by
interruption of the spread of bacteria, but does not impart the idea of disruption of
the mating patterns of microorganisms; this specialized meaning of registrant’s
mark is absent in applicant’s mark. See e.g., Coach Services, Inc. v. Triumph
Learning LLC, 96 USPQ2d 1600 (TTAB 2010), aff'd, 101 USPQ2d 1713 (Fed. Cir.
2012) (COACH for educational software does not create likelihood of confusion with
COACH for handbags, luggage, etc.); In re Sears, Roebuck & Co., 2 USPQ2d 1312
(TTAB 1987) (CROSSOVER for brassieres creates a different commercial
impression from CROSSOVER for ladies’ sportswear); and In re British Bulldog,
Ltd., 224 USPQ 854 (TTAB 1984) (PLAYERS for shoes engenders a different
commercial impression from PLAYERS for underwear).
Due to their dissimilarities in meaning and commercial impression, we find
that the marks are not confusingly similar. This du Pont factor weighs against a
finding of likelihood of confusion.
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C. Comparison of the Goods; Trade Channels and Classes of Purchasers
Turning to the goods at issue, the law is clear that the question of likelihood
of confusion must be determined based on the identification of goods and services in
the application and cited registration, regardless of what the record may reveal as
to the actual nature of the goods and services, the particular channels of trade or
the class of purchasers to which the goods and services are directed. Octocom Sys.,
Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002).
In this case, at first blush, the products appear to serve somewhat similar
purposes. Applicant’s goods prevent the growth of microorganisms; registrant’s
goods prevent the spread of insect pests. However, taking into account the
limitations of the goods as identified in the application and registration, we find
that the record does not support a finding that the goods are related such that
confusion is likely among the relevant classes of consumers. Registrant makes
insecticides and pesticides “for domestic and agricultural use.” Applicant’s goods
are not for agricultural or for domestic use but rather are for use in “food-animal
and companion-animal production facilities,” a non-agricultural, commercial use.
Regarding classes of customers and overlap of distribution channels, there is a
potential for overlap only insofar as both identifications identify commercial users.
However, applicant’s customers would be for commercial purchasers such as
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keepers of “hog farrowing houses and poultry houses”4 or, perhaps, dog breeding
facilities. Applicant’s customers, thus, are likely to be careful, discriminating
purchasers. Registrant’s commercial customers would likely be farmers engaged in
agriculture, growing crops or cultivating orchards or forests. Again, such customers
are likely to be careful and discriminating.
In support of her position that the goods overlap, the examining attorney has
submitted copies of three use-based, third-party registrations, as follows:
Registration No. 1277659 for the mark SPARTAN and
design for, inter alia, “disinfectant and deodorizer for
general use in killing bacteria on inanimate surfaces and
for use in hospitals and institutions; insecticide; wick
deodorant”;5
Registration No. 2967615 for the mark BYOCOAT for
“antimicrobial preparations, compounds, and solutions for
use as a disinfectant or biocide in the treatment of a
variety of surfaces and articles all for the remediation
and/or protection against the growth and development of
microbes, microorganisms, molds, bacteria, fungi, and
insects;”6 and
Registration No. 3713780 for the mark TERMIMOLD for,
inter alia, “antibacterial/antimicrobial tape for the
purpose of destroying bacteria, mold and mildew;
antimicrobial coatings to treat the growth of mold,
mildew, bacteria and fungus on various surfaces; mold
inhibitors for treating mold growth in and around
buildings; pesticides for termites, mold and mildew use;
preparations to destroy mildew.” 7

4 July 15, 2011 Response to initial Office action.
5 Registered May 15, 1984; renewed.
6 Registered July 12, 2005; Sections 8/15 combined declaration accepted and acknowledged.
7 Registered November 24, 2009. A fourth registration, Reg. No. 2947626, has been
cancelled and we therefore have not considered it.
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The probative value of third-party registrations residing in the USPTO is limited to
showing that the goods may be of a type which emanate from a single source. See
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785
(TTAB 1993). These three registrations are simply too few in number from which
we may draw a conclusion that customers would expect a single company to sell
both insecticides/pesticides and disinfectants for animal production facilities.
Further, we must conclude that these three registrations were the best support the
examining attorney could find. Cf., In re Homes & Land Publishing Corp., 24
USPQ2d 1717, 1718 (TTAB 1992) (three Nexis articles submitted by examining
attorney to show genericness presumed to provide the best support of the refusal to
register available from that source); In re The Monotype Corp. PLC, 14 USPQ2d
1070, 1071 (TTAB 1989) (“We must conclude that, because the Examining Attorney
is presumed to have made the best case possible, the 46 stories not made of record
[from search that uncovered 48 stories] do not support the position that CALISTO is
a surname….”).
The examining attorney has also submitted several pages from websites, but
we find this internet evidence unpersuasive as well. The examining attorney
argues that “it is common for one company to offer chemical products for the control
of insects as well as products for the control of bacteria, fungi, or moisture.”
Examining Attorney’s Appeal Brief, p. 11 (unnumbered). The evidence shows that
some companies that sell insecticides for agricultural purposes also sell fungicides
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(and fungi are a type of microorganism), but to the extent products exist that
control both insects and microorganisms, such as fungus, these products are for
agricultural purposes and are designed to act on plants but not on animals. None of
the websites advertising fungicide suggests that such product is also suitable for
use in animal production facilities.8
The evidence also shows that some companies sell insecticides and pesticides
for both agricultural purposes and for use in association with livestock.9 There are
also products that act as both a pesticide/insecticide against bugs on plants and
against bugs on or digested by animals.10 But these web pages fail to connect
insecticides or pesticides with products that kill microorganisms in indoor facilities.
The evidence falls short in demonstrating that applicant’s goods are related to those
listed in the registration.
Accordingly, these du Pont factors weigh against a finding of likelihood of
confusion.

8 For example, Ohio Earth Food sells dusts and sprays to kill bugs and fungus on plants.
The products are not advertised as being suitable for use in animal enclosures. At
www.ohioearthfood.com, attached to Office action dated March 21,2012.
9 For example, Arbico Organics advertises “natural, non-irritating, chemical-free horse
sprays, repellents and insecticides” as well as a pesticide useful for controlling infestations
in one’s “greenhouse, field crop, nursery, or orchard.” At www.arbico-organics.com,
attached to Office action dated August 19, 2011. At www.cedarbugfee.com, a product sold
under the brand “Cedar Bug-Free” is identified as being effective in killing flies that infest
horses and other livestock, as well as being effective in controlling insects that damage
plants. Attached to Final Office action dated March 21, 2012.
10 For example, see webpages at www.gardenharvestsupply.com, attached to Final Office
action dated March 21, 2012, advertising diatomaceous earth as an organic insecticide, for
removing parasites in “environment, pets and people.”
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D. Balancing the factors.
Registrant’s mark DISRUPT MICRO-FLAKE is highly suggestive of the
goods, being insecticides and pesticides that are sold in the form of small flakes to
prevent the spread of insect pests by disrupting their mating patterns. Accordingly,
the mark is relatively weak. Applicant’s mark does not share the connotation
embodied in registrant’s mark, and although both marks contain the common term
DISRUPT, overall, the marks create different commercial impressions. In addition,
the goods are distinguishable: registrant’s goods kill harmful insects found in
domestic and agricultural settings; applicant’s goods kill microorganisms found in
animal production facilities. Accordingly, we find that applicant’s registration of
the mark DISRUPT for the goods identified in its application is not likely to cause
confusion with the mark DISRUPT MICRO-FLAKE for the insecticides and
pesticides identified in the cited registration.
Decision: The refusal to register applicant’s mark DISRUPT is reversed.