Eaton Corp.

Trademark Trial and Appeal Board

Dec 8, 2011

No. 85030456 (T.T.A.B. Dec. 8, 2011)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: December 8, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Eaton Corp.
________

Serial No. 85030456
_______

Daniel S. Kalka, Esq. for Eaton Corp.

William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Zervas and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Eaton Corp., seeks registration on the
Principal Register for the standard character mark MLOCKER
for “land vehicle differential” in International Class 12.1
Registration has been finally refused pursuant to
Trademark Act §2(d), 15 U.S.C. §1052(d), on the ground that

1 Application Serial No. 85030456 was filed May 5, 2010 based
upon applicant’s assertion of its bona fide intent to use the
mark in commerce.
Ser. No. 85030456
2
applicant’s mark so resembles the marks shown below in
Registration No. 2327919,2

and Registration No. 2327940,3

both owned by the same entity and reciting a wide variety
of automotive goods including “differential carrier
assemblies, differentials and parts thereof” in
International Class 12, as to be likely, if used on or in
connection with the identified goods, to cause confusion,
to cause mistake, or to deceive. Applicant and the

2 Issued on March 14, 2000. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. Renewed.
3 Issued on March 14, 2000. Section 8 affidavit accepted;
Section 15 affidavit acknowledged. Renewed.

Ser. No. 85030456
3
examining attorney have filed main briefs on the issue
under appeal, and applicant filed a reply brief.
Likelihood of Confusion
Our determination under Trademark Act §2(d) is based
upon 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 and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
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
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant
Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999), and cases
cited therein.
Ser. No. 85030456
4
We review the relevant du Pont factors as they apply
to this case.
The Goods and Trade Channels
Turning to our consideration of the recited goods, we
observe that the “land vehicle differential” in the
application and the “differential carrier assemblies,
differentials and parts thereof” in the cited registrations
appear on the face of their identifications to be closely
related, if not legally identical. Specifically,
registrant’s “differentials and parts thereof” encompass
applicant’s more narrowly identified “land vehicle
differential.” Further, registrant’s “differential carrier
assemblies” encompass land vehicle differential carrier
assemblies and thus are related to applicant’s “land
vehicle differential.” We note in addition that applicant
does not dispute that its goods are related to those of
registrant.
Because the goods are identical and/or closely related
and there are no restrictions as to their channels of trade
or classes of purchasers, we must assume that the goods
are, or will be, sold in all the normal channels of trade
to all the usual purchasers for such goods, and that the
channels of trade and the purchasers for applicant’s and
registrant’s goods would be the same. See Interstate
Ser. No. 85030456
5
Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB
2000). For that reason, we are not persuaded by
applicant’s argument that its goods will travel in narrowly
defined channels of trade.4
Sophistication of Consumers
Applicant further argues that the involved goods would
be purchased solely by sophisticated consumers. i.e.,
“extremely knowledgeable mechanics who know the products,
their specifications and installation of such products.”5
Even assuming the identification inherently conveys this
meaning, there is nothing in the record to support a
finding that the goods and purchasing process are of such a
nature that purchasers could distinguish marks that are
found to be highly similar for legally identical or closely
related goods. See, e.g., Electronic Design & Sales, Inc.
v. Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992) (record confirms that opposer’s services
are expensive and are purchased only by experienced

4 We note that applicant submitted a link to its Internet website
with its brief in support of its position that its goods travel
in narrow channels of trade. The examining attorney is correct
that to the extent this link is intended to serve as evidence, it
is untimely. Trademark Rule 2.142(d). Moreover and as discussed
above, we look to the identification of goods in the subject
application for any recited limitations to the channels of trade
therefor. See Interstate Brands Corp. v. McKee Foods Corp.,
supra.
5 Applicant’s brief, p. 5.

Ser. No. 85030456
6
corporate officials after significant study and contractual
negotiation and that the evaluation process used in
selecting applicant’s products requires significant
knowledge and scrutiny). As is frequently stated, even if
consumers are knowledgeable in a particular field that does
not necessarily mean that they are immune from source
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
The Marks
We turn then to the du Pont factor to which the
applicant and examining attorney have devoted most of their
arguments, namely, the similarities or dissimilarities
between applicant’s mark and those of registrant. In
coming to our determination, we must compare the marks in
their entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports, supra. The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. In making our
determination, we bear in mind that, "[w]hen marks would
appear on virtually identical ... [goods or] services, the
degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines." See Century 21
Ser. No. 85030456
7
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992), cert. denied, 506 U.S.
1034 (1994). See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB
1980).
The examining attorney argues that “applicant’s mark
in standard characters, MLOCKER, is legally identical to
registrant’s stylized marks, M and M with circle design.6
In support of his position, the examining attorney made of
record with his Office actions copies of third-party
registrations and prior registrations owned by applicant
for goods similar to those in the involved application in
which the term LOCKER is disclaimed; and printouts from
Internet webpages in which the term LOCKER is used to
describe a feature or characteristic of differentials. As
a result, the examining attorney argues “the applicant’s
addition of the generic term LOCKER is of minor
significance when looking at the overall commercial
impression. The dominant portion of applicant’s and
registrant’s marks is the letter M.”7
We observe, however, that even if we view registrant’s
marks as consisting solely of a stylized letter M, these

6 Examining attorney’s brief, unnumbered page 4.
7 Id. at 8.
Ser. No. 85030456
8
marks differ sharply from applicant’s MLOCKER mark in
appearance and sound. Notwithstanding the weakness of the
term in connection with the goods, LOCKER contributes to
both the visual and aural impression created by applicant’s
MLOCKER mark. Furthermore, the marks in the cited
registrations consist of highly stylized letter designs, as
shown below:
and
and thus include characteristics of both design and word
marks. As stated by our principal reviewing court:
There is no general rule as to whether letters or
design will dominate in composite marks ... the
spoken or vocalized element of a design mark,
taken without the design, need not of itself
serve to distinguish the goods. The nature of
stylized letter marks is that they partake of
both visual and oral indicia, and both must be
weighed in the context in which they occur. ...
“It must be remembered that [registrant’s]
trademark consists of highly stylized letters and
is therefore in the gray region between pure
design marks which cannot be vocalized and word
marks which are clearly intended to be.” In
Georgia-Pacific the court observed that even if
the letter portion of a design mark could be
vocalized, that was not dispositive of whether
there would be likelihood of confusion. A design
Ser. No. 85030456
9
is viewed, not spoken, and a stylized letter
design can not be treated simply as a word mark.

In re Electrolyte Laboratories Inc., 913 F.2d 930, 16
USPQ2d 1239, 1240 (Fed. Cir. 1990) quoting Georgia-Pacific
Corp. v. Great Plains Bag Co., 614 F.2d 757, 760, 204 USPQ
697, 699 (CCPA 1980).
In this case, the degree of stylization in
registrant’s marks in which the letter M is comprised
solely of various geometric shapes, is so high that they
are more akin to design marks rather than simply stylized
displays of the letter “M” as the examining attorney
argues. See In re TSI Brands Inc., 67 USPQ2d 1657 (TTAB
2002). Considering the marks in their entireties we find
that registrant’s marks are so highly stylized that they
project the image of design marks and the letter takes on
its significance only by reference to registrant’s trade
name Mohawk Manufacturing & Supply Co., Inc. Id. at 1663.
In contrast, the significance of applicant’s mark is
focused on the letters MLOCKER in standard characters,
notwithstanding the weakness of LOCKER in relation to the
goods. Thus, we find that the marks are not so similar in
sound, appearance, connotation or commercial impression,
that, merely because such marks share the letter M,
confusion as to origin or association is likely. Id.
Ser. No. 85030456
10
In view thereof, even considering the relatedness of
the goods, we believe that applicant’s MLOCKER mark is not
so similar to registrant’s marks that the contemporaneous
use of the respective marks in connection with legally
identical or closely related goods is likely to cause
confusion.
Based upon the foregoing, we find that the
dissimilarities between applicant’s mark and the marks in
the cited registrations outweigh the similarities. Thus,
the first du Pont factor regarding the dissimilarity of the
marks strongly favors applicant. Moreover, we find this
factor is determinative and, despite the legal identity of
the goods, we conclude that the marks are sufficiently
dissimilar that confusion is not likely between applicant’s
mark and the marks in the cited registrations.
Decision: The refusal to register is reversed.