DNBA Trademarks Holding Inc.v.Buehler Ltd.

Trademark Trial and Appeal Board

Aug 26, 1998

No. 91099075 (T.T.A.B. Aug. 26, 1998)

Hearing: Paper No. 25
August 27, 1997 RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 26,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
DNBA Trademarks Holding Inc.
v.
Buehler Ltd.
_____
Opposition No. 99,075
to application Serial No. 74/594,343
filed on November 3, 1994
_____
Joseph B. Bowman of Kokjer, Kircher, Bowman & Johnson, P.C.
for DBNA Trademarks Holding Inc.
Kathy J. McKnight of Banner & Witcoff, Ltd. for Buehler Ltd.
______
Before Cissel, Hanak and Seeherman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
Based on its statement that it possessed a bona fide
intention to use the mark “VANGUARD” in commerce in
connection with “an apparatus for polishing microstructural
samples,” applicant filed the above-referenced application
for registration on the Principal Register in Class 7. At
the suggestion of the Examining Attorney, the
identification-of-goods clause was amended to describe the
Opposition No. 99,075
2
goods with which applicant intended to use the mark as
“automatic polishing machines for metallographic,
petrographic and ceramographic test samples.”
Following publication of the mark in the Official
Gazette, a timely notice of opposition was filed by DBNA
Trademarks Holding Inc. on September 26, 1995. As grounds
for opposition, opposer asserted that it owns a
registration1 of the mark “VANGUARD” for “abrasive tools,
particularly grinding wheels,” in Class 4; that “opposer,
through its authorized licensees, is involved in the field
of manufacturing, marketing and selling machines, tools and
accessories for material removal operations, specifically
including power operated asphalt, concrete, brick, ceramic,
glass, masonry, metal, refractory, stone, terrazzo, tile,
wall and cut-off saws, grinders, groovers, planers,
scarifiers, sanders, polishers, washers, particulate
collectors, drills, saw blades, wire brushes, profile
wheels, grinding wheels, lapidary blades, core bits and cup
wheels”; that opposer, through its predecessors and
licensee, has continuously used the mark “VANGUARD” in
connection with abrasive tools; and that applicant’s mark so
resembles opposer’s mark that, if it were used in connection

1 Reg. No. 674,071, issued to opposer’s predecessor on the
Principal Register on February 17, 1959; combined affidavit under
Sections 8 and 15 timely filed in 1964; renewed Feb. 17,1979.
The registration claims use since Feb. 26, 1958.
Opposition No. 99,075
3
with the goods set forth in the application, confusion would
be likely.
Applicant’s answer denied the salient allegations set
forth in the notice of opposition.
A trial was conducted in accordance with the Trademark
Rules of Practice. The record includes the testimony, with
exhibits, of Lyle Stone, President of North American Sales
for Diamant Boart, Inc., opposer’s licensee; of William
Joyce, applicant’s Vice President of Sales; and the rebuttal
testimony of Richard Norland, Manager of Technical Services
at Diamant Boart2. A number of documentary exhibits and
discovery responses were also made of record by appropriate
notices of reliance.
Opposer has objected to our consideration of
applicant’s exhibit nos. 1, 2 and 3 on the ground that they
are irrelevant to the issues before the Board in this
proceeding; to exhibit nos. 5, 6, 7, 8, 10, 11 and 12 on the
ground that applicant should not be allowed to introduce
these exhibits after it failed to produce them in response

2 Applicant properly objected to portions of Mr. Norland’s
testimony that were improper for rebuttal because they exceeded
the scope of the testimony of Mr. Joyce. We therefore have not
taken Mr. Norland’s testimony into consideration as it relates to
the products opposer sells, the trade channels through which they
move, the entities which buy them, and the uses to which they are
put. These issues, however, were discussed in some detail by
opposer’s other witness, Mr. Stone, during opposer’s testimony
period, and his testimony is not inconsistent with Mr. Norland’s.
Even if we were to have considered Mr. Norland’s testimony in its
entirety, our decision on the merits of this opposition
proceeding would not have changed.
Opposition No. 99,075
4
to discovery requests from opposer; and to the third-party
registrations submitted by applicant on the ground that they
are irrelevant.
Opposer’s objection to the first three exhibits is
denied. The objection to these exhibits was not timely made
during the deposition of the witness, but these exhibits
would be admissible even if the objection had been raised
then. Although they do not show applicant’s use of the mark
“VANGUARD” in connection with applicant’s products, they do
explain the process of metallographic sample preparation,
and that process is the one in which applicant’s automatic
polishing machines are used. Exhibits 1, 2 and 3 are
therefore not irrelevant to issues in this proceeding.
Opposer’s objection to exhibits 5 through 8 and 10
through 12 is not well taken either. As applicant points
out, these exhibits are advertising and promotional
materials which, although not produced responsive to
opposer’s discovery requests, are nonetheless similar to the
representative samples which applicant did provide for
opposer during discovery. Opposer has not asserted that the
objected-to exhibits are materially different from those
supplied responsive to Interrogatory 19, nor has opposer
claimed that applicant put opposer at any disadvantage by
introducing these exhibits instead of the similar materials
Opposition No. 99,075
5
supplied during discovery. We have therefore considered
these exhibits.
Opposer’s objection to the third-party registrations
introduced by applicant is also denied. Third-party
registrations, while not probative of the use of the marks
therein, may nonetheless be used to show that particular
terms have been adopted as marks or components of marks in a
particular field, and that such terms have recognized
meanings in that particular field of business. Red Carpet
Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404,
(TTAB 1988).
On October 4, 1996, applicant moved to amend the
identification of goods in its opposed application. The
proposed amendment constitutes a limiting or narrowing of
the identification-of-goods clause which had been of record
since applicant had amended the application after the first
Office Action. Opposer filed arguments objecting to the
amendment and applicant filed a brief in reply. The Board
then deferred ruling on the proposed amendment until the
case was ready for decision on its merits.
Applicant’s motion to amend the identification of goods
at this juncture is denied. As the Board pointed out in its
January 17, 1997 decision deferring ruling on the motion
until final hearing, in view of the lateness of the motion
and the facts that opposer has not consented to the proposed
Opposition No. 99,075
6
amendment and, in fact, strenuously opposes it, the question
for the Board to resolve is whether the issue of likelihood
of confusion has been tried as if the proposed amendment to
the application had been accepted with the implied consent
of opposer. See TMBP 514.3. Applicant argued that once it
had actually begun use of the mark on its polishing
machines, it could more accurately describe them, and that
when this was made clear during the course of the testimony,
it became even clearer that confusion with opposer’s mark is
unlikely. The record, however, when considered in its
entirety, does not support the conclusion that both parties
to this action proceeded under the assumption that the Board
would resolve this dispute by considering applicant’s goods
in the limited terms reflected by the proposed amendment.
In any event, even if we were to consider applicant’s
goods as they are identified in the proposed amendment, our
decision would be the same. As is typical in opposition
proceedings involving the issue of likelihood of confusion,
for an applicant to limit or restrict the description of
goods in its application does not solve the problem when the
goods as opposer has identified them in its registration are
just as closely related to applicant’s goods as presently
specified in the application as they are to the goods as
they are more narrowly identified in the proposed amendment.
In such circumstances, unless the applicant also asks the
Opposition No. 99,075
7
Board to restrict or limit opposer’s registration under
Section 18 of the Act, the proposed restriction limiting
applicant’s goods is to no avail.
The applicant in the instant case made no such claim
under Section 18. The Board has considered opposer’s goods
as they are identified in the pleaded registration and
applicant’s goods as they are identified in the application
as it was amended responsive to the first Office Action, and
not as they were identified in the amendment proffered by
applicant on October 4, 1996.
Both parties filed briefs on the merits of the
opposition, and an oral hearing before the Board was held on
August 27, 1997. Based on careful consideration of the
arguments of the parties and the relevant legal authorities,
we sustain the opposition. Opposer has clearly established
its prior use of the mark “VANGUARD,” and has shown that
confusion is likely in view of the identity of the
trademarks of the parties and the relationship between
opposer’s goods, as broadly described in the registration,
and applicant’s goods, as they are specified in the
application.
There is no dispute concerning the fact that both
parties use the same mark. Applicant contends that
“VANGUARD” is a weak mark, entitled to only a narrow scope
of protection because it is a laudatory term which has been
Opposition No. 99,075
8
adopted and registered by a number of businesses. While we
agree that the dictionary definition and the third-party
registrations of record make it clear that the term has a
certain laudatory suggestiveness to it, in that the term
designates the leading position in a given field, this fact
does not permit applicant to register the identical mark for
closely related goods. In that regard, we note that the
third-party registrations applicant made of record are not
for the same goods that are under consideration in this
case, but instead include products as disparate as dental
and medical appliances, hinges, enclosures for lighting
fixtures, plastic pipe, hydraulic pumps, electric fans and
blowers, knives and so forth. The term “VANGUARD” is
suggestive, but both parties use the same mark, and it has
the same suggestiveness as applied to applicant’s goods that
it has in connection with opposer’s products.
Applicant argues that the evidence shows that its goods
are actually sold through different channels of trade to
people who would not ordinarily constitute the market for
opposer’s products, and that the purposes for which the
respective goods are used are also different. It is well
settled, however, that in resolving the question of whether
confusion is likely, the Board must consider the goods as
they are set forth in the opposed application and the
registration pleaded by opposer, without restrictions or
Opposition No. 99,075
9
limitations which are not reflected therein. Toys R Us,
Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983), and cases
cited therein.
In the instant case, the unchallenged registration
opposer owns lists opposer’s goods as “abrasive tools,
particularly grinding wheels.” This identification does not
exclude as purchasers of opposer’s products laboratory
technicians, and it is broad enough to include not just the
grinding wheels opposer sells for grinding down paved
surfaces or the decks of concrete structures, but also the
kinds of grinding wheels used by dentists, jewelers and even
laboratory technicians who prepare samples of materials for
microstructural analysis. These abrasive tools could be
used in an interim step, prior to the polishing operation,
in the process of preparing specimens of materials for such
testing.
Moreover, grinding can be accomplished by mounting a
group of saw blades mounted on a single shaft. Even
applicant admits that a saw with a blade bearing opposer’s
registered trademark, “VANGUARD,” could be the very tool
used to cut out a section of material, such as concrete or
the reinforcing bars used within concrete, from which
smaller samples would be taken for polishing in applicant’s
automatic polishing machines prior to testing for structural
defects. At the oral hearing before the Board, counsel for
Opposition No. 99,075
10
applicant argued that this scenario was unlikely, but he
nonetheless acknowledged that it could happen this way.
In our view, the complementary nature of these products
as they are identified in the application and registration,
respectively, makes confusion not just possible, it makes it
likely. Both applicant and opposer sell abrasive cutting
equipment, grinding equipment and polishing equipment.
Opposer sells abrasive cutting and grinding tools under the
“VANGUARD” mark. Applicant sells polishing equipment under
the “VANGUARD” mark. If the quality control technician
charged with obtaining and preparing the samples of rebar
and concrete discussed above were to use a “VANGUARD” saw or
grinding wheel to cut off or grind down a specimen for
testing, and then were to use a “VANGUARD” automatic
polishing machine to further prepare the sample for testing,
he or she would be likely to make the reasonable, albeit
erroneous, conclusion that a single source is responsible
for both tools bearing the mark.
We of course recognize that both parties’ goods would
be sold to specialized personnel, rather than to the general
public, but even if a reasonable amount of care is exercised
in purchasing these products, confusion is still likely to
occur when the users of these complementary devices are
confronted with identical marks on them.
Opposition No. 99,075
11
That applicant is not aware of any incidents of actual
confusion caused by its use of the same mark that opposer
has used and registered is not determinative of the issue in
favor of applicant. Proof of actual confusion is not a
prerequisite to a finding of likelihood of confusion.
Towers v. Advent Software Inc., 17 USPQ2d 1471 (TTAB 1989).
That the parties have not yet competed directly in the
relatively narrow field of automatic polishing machines for
metallographic, petrographic and ceramographic test samples
may have reduced the opportunity for actual confusion to
have occurred. In any event, evidence of such confusion is
not necessary to support our conclusion that confusion is
likely.
If we were left with any doubt as to the result in this
case, such doubt would necessarily be resolved in favor of
the prior user and registrant, and against applicant as the
newcomer, who had the opportunity and the duty to select a
mark that would avoid confusion with the mark of opposer.
Kenner Parker Toys Inc. v. Rose Art Industries Inc., 22
USPQ2d 1453 (Fed. Cir. 1992); and J & J Snack Food Corp. vv.
McDonald’s Corp., 18 USPQ2d 1889 (Fed. Cir. 1991).
Opposition No. 99,075
12
The opposition is accordingly sustained, and
registration to applicant is refused.
R. F. Cissel
E. W. Hanak
E. J. Seeherman
Administrative Trademark Judges,
Trademark Trial and Appeal Board