EMSCO, Inc.

Trademark Trial and Appeal Board

May 21, 2010

No. 77506298 (T.T.A.B. May. 21, 2010)

Mailed: 5/21/10

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re EMSCO, Inc.
________

Serial No. 77506298
_______

Richard K. Thomson, Esq. for EMSCO, Inc.

David Taylor, Trademark Examining Attorney, Law Office 112
(Angela Wilson, Managing Attorney).
_______

Before Quinn, Zervas and Ritchie, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

EMSCO, Inc. filed an application to register the mark
shown below

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77506298
2
for “brooms; cloths for cleaning; mops” (in International
Class 21).1 Applicant disclaimed the words “Environmentally
Responsible Products.”
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s goods, so resembles the
previously registered mark RESCUE (in typed form) for
“scouring pads containing detergent and soap” (in
International Class 3)2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
Applicant contends that “registration is appropriate
as a matter of common sense because every single relevant
DuPont factor favors applicant” and “controlling precedents
as applied to the relevant DuPont factors of this case

1 Application Serial No. 77506298, filed June 24, 2008, alleging
first use anywhere and first use in commerce on March 13, 2008.
The following statements are in the application: “The color(s)
blue, green, white is/are claimed as a feature of the mark. The
mark consists of a globe featuring blue water with green land
mass with three white expanding arrows extending across the face
of the globe with ‘rescue’ written in blue letters adjacent the
globe and ‘environmentally responsible products’ written in blue
therebeneath.”
2 Registration No. 0763739, issued January 28, 1964; second
renewal.
3 Applicant submitted, for the first time with its brief, a
“sample” of registrant’s goods. The examining attorney in his
brief objected to the untimely submission. See Trademark Rule
2.142(d). The objection is sustained, and we have not considered
this evidence in making our decision.
Ser No. 77506298
3
mandate against finding a likelihood of confusion.”
(Brief, p. 5). More specifically, applicant argues that
the marks are dissimilar and convey different commercial
impressions and meanings. Applicant also contends that the
cited mark is weak, claiming that the term “rescue”
suggests or describes scouring pads that rescue the user
from a tough scrubbing job or dirty dishes. This meaning
is contrasted, applicant argues, with the meaning of
applicant’s mark that suggests rescuing the environment or
earth; applicant’s entire mark, according to applicant,
emphasizes the environmental impact of its goods.
Applicant further claims that the goods are not similar,
and that the examining attorney’s third-party registration
evidence does not establish to the contrary. Applicant
specifically criticizes this evidence in three regards:
none of the registrations includes the specific goods of
applicant and registrant; the registrations list goods
beyond the goods of applicant and registrant; and the
registrations are the only evidence bearing on the
similarity between the goods, making the evidence
insufficient as a matter of law. Applicant also draws a
distinction between prospective consumers for the
respective goods, namely that purchasers of applicant’s
goods are concerned about the environmental impact through
Ser No. 77506298
4
use of the goods, whereas there is nothing to indicate that
registrant’s goods are geared toward purchasers concerned
with environmental responsibility. Finally, applicant
points to the absence of any evidence of actual confusion
between the marks.
The examining attorney maintains that the marks are
similar, in that applicant’s mark is dominated by the
identical word RESCUE, which is identical to the entirety
of registrant’s mark. He also argues that the goods are
related and, in connection with this argument, submitted
third-party registrations showing that the same entity has
registered the same mark for the types of goods involved
herein. The examining attorney goes on to respond to each
of applicant’s other arguments, finding them to be
unpersuasive.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
Ser No. 77506298
5
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the du Pont factor of the
similarity between the marks. We must compare the marks in
their entireties as to appearance, sound, connotation and
commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the
first du Pont factor, 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
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
It is well settled that one feature of a mark may be
more significant than another, and it is not improper to
give more weight to this dominant feature in determining
the commercial impression created by the mark. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Ser No. 77506298
6
Cir. 1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”).
Where both words and a design comprise the mark (as in
applicant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, although we have taken into
account the design features of applicant’s mark, we find
that the dominant portion is the literal portion of
applicant’s mark.
When we consider the literal portion of applicant’s
mark, RESCUE ENVIRONMENTALLY RESPONSIBLE PRODUCTS, this
portion in turn is dominated by the word RESCUE. The word
RESCUE is more prominently displayed, appearing in large,
bold, thick letters, while the other words are in a small,
Ser No. 77506298
7
thin font. Further, the descriptive/generic words
ENVIRONMENTALLY RESPONSIBLE PRODUCTS are disclaimed and, as
is often the case with disclaimed words, clearly play a
subordinate role in the mark’s overall commercial
impression.
The dominant portion of applicant’s mark, RESCUE, is
identical to the entirety of registrant’s mark. Although
we have given more weight to the dominant RESCUE portion of
applicant’s mark, so as to be clear, in comparing the
marks, we ultimately have compared applicant’s mark in its
entirety with the cited mark.
In doing so, we find that the marks are similar in
sound and appearance, both sharing the identical word
RESCUE. Because registrant’s mark is registered in typed
form, the cited mark presumably could be used in the same
style as RESCUE in applicant’s mark. See, e.g., In re RSI
Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008). We
recognize that applicant’s mark includes design features,
but as noted above, these features are dominated by the
literal portion RESCUE that is identical to registrant’s
mark. Simply put, the additional words and design features
are insufficient to distinguish applicant’s mark from the
cited mark.
Ser No. 77506298
8
As to meaning, registrant’s mark, comprised solely of
the word RESCUE, suggests that the scouring pads will
assist the user in cleaning up a mess, that is, the product
will “rescue” the user from the mess itself, or perhaps
from an unenviable cleaning task. On the other hand, we
recognize that applicant’s mark, which includes additional
wording and the world globe design with circulating arrows,
might convey a somewhat different meaning, namely that
applicant’s cleaning products are friendly to the
environment and their use, as opposed to competitors’
products, serve to “rescue” the planet earth.
Nevertheless, in both cases, the marks convey the idea that
someone or something is saved or “rescued” by using the
product. Moreover, any difference in meaning is outweighed
by the similarities between the marks in sound and
appearance.
Given the identity in the dominant RESCUE portion of
the marks, but also considering the possible difference in
meanings, we find that the marks, when considered in their
entireties, engender similar overall commercial
impressions.
In sum, on balance, the similarities between the
marks, when considered in their entireties, outweigh the
Ser No. 77506298
9
differences, and we find this du Pont factor weighs in
favor of a finding of likelihood of confusion.
We next turn to consider the du Pont factor regarding
the similarity between the goods. It is not necessary that
the respective goods be competitive, or even that they move
in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originated from the same producer. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The question
of likelihood of confusion is determined based on the
identification of goods in the application vis-à-vis the
goods as set forth in the cited registration. In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir.
1993); and In re Jump Designs, LLC, 80 USPQ2d 1370, 1374
(TTAB 2006). The issue is not whether consumers would
confuse the goods themselves, but rather whether they would
be confused as to the source of the goods. Contrary to the
gist of a portion of applicant’s argument, the
classification of goods has no bearing on the question of
Ser No. 77506298
10
likelihood of confusion. National Football League v.
Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB
1990).
Applicant’s mops, brooms and cleaning cloths, as well
as registrant’s scouring pads, are all used in cleaning
tasks. Thus, the goods are very similar in terms of
purpose and use.
The examining attorney, in connection with his
argument that the goods are related, submitted several
third-party use-based registrations listing both types of
goods involved herein. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods are of a type which may emanate from a single
source. In re Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467 (TTAB 1988).
Applicant, in attempting to diminish the probative
value of this evidence, hones in on the fact that the
third-party registrations do not list the specific goods as
identified in the cited registration. The fact that the
registrations do not list the specific goods listed in the
cited registration, namely “scouring pads containing
detergent and soap,” but rather only “scouring pads,” is of
Ser No. 77506298
11
no moment for the reasons expressed by the examining
attorney. The registrations indicate that a single source
may use the same mark for both types of goods involved
herein, namely, on the one hand, mops, brooms, and/or
cleaning cloths, and, on the other, scouring pads. Thus,
the third-party registrations are probative of a
relationship between the cleaning products identified in
the involved application and cited registration.
Being similar cleaning products, the respective goods
of applicant and registrant are likely to travel in the
same trade channels (e.g., grocery stores, and discount
department stores such as Wal-Mart and Target, and are
likely to be located in the same aisle for household
cleaning supplies). Further, the goods would be purchased
by the same classes of consumers, including ordinary ones
who would use nothing more than ordinary care in making
their purchases. This is especially the case given the
nature of the cleaning products involved herein, inasmuch
as the goods are relatively inexpensive and subject to an
impulse purchase.
In sum, we find that the du Pont factors of similarity
between the goods, identical trade channels and purchasers,
and conditions of sale all weigh in favor of a finding of
likelihood of confusion.
Ser No. 77506298
12
Applicant also points to the absence of evidence of
actual confusion between the marks. A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of
actual confusion carries little weight, J.C. Hall Co. v.
Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA
1965), especially in an ex parte context. In any event,
the record is devoid of probative evidence relating to the
extent of use of applicant’s and registrant’s marks and,
thus, whether there have been meaningful opportunities for
instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); and Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). Accordingly, the du Pont factor of the length of
time during and conditions under which there has been
contemporaneous use without evidence of actual confusion is
considered neutral.
In making our decision, we have considered all of
applicant’s other arguments not specifically addressed
herein, and find them to be not persuasive.
We conclude that purchasers familiar with registrant’s
scouring pads containing detergent and soap sold under the
Ser No. 77506298
13
mark RESCUE would be likely to mistakenly believe, upon
encountering applicant’s mark RESCUE ENVIRONMENTALLY
RESPONSIBLE PRODUCTS and design for brooms, cloths for
cleaning and mops, that the goods originated with or are
somehow associated with or sponsored by the same entity.
In sum, it is likely that consumers familiar with
registrant’s mark and goods sold under the mark will view
applicant’s mark as a brand extension for a line of
environmentally-friendly products emanating from
registrant.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.