Exel Oyj

Trademark Trial and Appeal Board

Oct 13, 2004

No. 75622840 (T.T.A.B. Oct. 13, 2004)

Mailed:
October 13, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Exel Oyj
________
Serial No. 75622840
_______
Charles E. Burpee and James L. Scott of Warner Norcross &
Judd LLP for Exel Oyj.
Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).1
_______
Before Simms, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Exel Oyj, a public limited company of Finland, has
applied to register the mark set forth below for "exercise
equipment, namely hand-held poles used to enhance the
exercise benefits of walking or running," in Class 28.
1 Judy Grundy and Richard S. Donnell examined the application.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 75622840
2
The application was filed January 19, 1999 based on
applicant's statement of its bona fide intention to use the
mark in commerce on or in connection with the identified
goods. Applicant has disclaimed exclusive rights to the
term "walker" apart from the mark as shown in the
application.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
originally citing a number of registrations but eventually
issuing a final refusal of registration based on three.
However, the examining attorney noted in her brief that one
of these three has been cancelled and so the refusal is now
based on only two registrations.2 The first of the two
remaining cited registrations is Registration No. 1488669
for the mark NORDICTRACK for a "cross country ski simulator
and exercise unit," in Class 28;3 and the second is
Registration No. 2652123 for the mark NORDICTRACK in
stylized form for goods identified as "exercise equipment,
2 The later-issued of the two registrations includes a claim of
ownership of the earlier-issued registration. Thus, while the
copies of USPTO records herein list different registrants, we
assume that assignment records would reveal common ownership.
Indeed, applicant has treated the registrations as if they are
owned by one entity.
3 This registration issued May 17, 1988, and the USPTO has
accepted and acknowledged, respectively, Section 8 and 15
affidavits filed by the registrant.
Ser No. 75622840
3
namely, aerobic exercise equipment, treadmills, stationary
cycles, cross country ski simulator machines, elliptical
cross trainers, rowing machines, stair climbers, rider-type
exercisers, air walker-type exercisers, spot toning
exercisers, strength training machines, and stepper
exercise machines," in Class 28.4 The mark in the second
registration is set forth below.
The examining attorney has asserted that NORDIC is the
dominant element of the involved marks and that these marks
yield similar commercial impressions. In addition, the
examining attorney argues that the involved goods are
related because they are all items of exercise equipment
and, even though applicant's goods are specifically
different than registrant's goods, they would be within the
natural zone of expansion for registrant.
In support of its application, applicant asserts that
the mere fact that NORDIC is the first part of each of the
involved marks does not necessarily make it the dominant
part of each. In regard to its own mark, applicant asserts
that WALKER is the dominant part, because of its visual
4 This registration issued November 19, 2002.
Ser No. 75622840
4
prominence, and contends that the disclaimer of rights in
that term does not preclude it from being perceived as the
dominant element of the composite mark. Applicant also
contends, in essence, that "Nordic" is a weak term when
used on or in connection with items related to "Nordic"
skiing events, so that WALKER and TRACK, respectively, will
be considered the dominant elements in applicant's and
registrant's marks.
To support the contention that "Nordic" has a
particular connotation and must be considered weak in
connection with the involved goods, applicant relies on a
definition of the term retrieved from an Internet-
accessible dictionary and on the asserted issuance and
existence of certain third-party registrations that include
the term.5 Applicant asserts that, as of its April 22, 2004
visit to the site, www.merriam-webster.com defines "Nordic"
as meaning "of or relating to competitive ski events
5 Though the web-based dictionary definition was not introduced
until applicant filed its brief, the examining attorney has not
objected to its introduction and we have considered it. In
addition, though applicant has not introduced copies of the
third-party registrations and has only referred to them in a list
which provides the mark, the identification of goods or services
(or a portion thereof), and the registration number, the
examining attorney did not object to the introduction of the list
and in fact has discussed the third-party registrations. Thus,
we have considered the list, though its probative value is very
limited because it does not provide information on the status of
any of the registrations, whether they are registered on the
Ser No. 75622840
5
involving cross-country racing, ski jumping, or biathlon,"
and "of, relating to, or being cross-country skiing." In
its main brief, applicant generally argues that "Nordic" is
weak and suggestive, but in its reply brief, applicant more
forcefully argues that, as used by registrant, "Nordic" is
not suggestive but is merely descriptive.
In regard to the involved goods, applicant contends
that they are not competitive; that registrant's goods are
expensive items of indoor exercise equipment and would not
be purchased on impulse; that the classes of customers
differ because registrant's goods would be marketed to
consumers seeking equipment for indoor exercise, while
applicant's goods would be targeted to consumers engaging
in outdoor exercise; and that even if we were to assume
that the goods would be sold in the same stores, they would
be sold in different sections of those stores.
We analyze the issue of likelihood of confusion using
the factors that were articulated in the case of In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Principal or Supplemental Registers or under Section 2(f), or
whether any include disclaimers.
Ser No. 75622840
6
“The likelihood of confusion analysis considers all
DuPont factors for which there is evidence of record but
‘may focus ... on dispositive factors.’” Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1003 (Fed. Cir. 2002) (citations omitted).
In many cases, two key, although not exclusive,
considerations are the similarities or differences between
the marks and the similarities or differences of the goods
and services. See, e.g., Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The 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”).
The similarity or dissimilarity of the marks is
assessed by comparing the marks as to appearance, sound,
connotation and commercial impression. Herbko
International Inc. v. Kappa Books Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002). Moreover, it is well-
settled that marks, when compared, must be considered in
their entireties, not simply to determine what points they
have in common or in which they may differ. Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983). Nonetheless, “there is nothing
Ser No. 75622840
7
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.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Moreover, it is not a necessary prerequisite
for a finding of likelihood of confusion that marks be
found similar in all respects, i.e., in sight, sound and
meaning, and a likelihood of confusion may be found
principally on similarity in one or two of these. See,
e.g., In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113
(Fed. Cir. 1983) ("the [USPTO] may reject an application ex
parte solely because of similarity in meaning of the mark
sought to be registered with a previously registered
mark").
We agree with applicant that WALKER is the visually
dominant element in its mark. On the other hand, it will
not be perceived as the most dominant or distinctive
portion of the mark when it is spoken, as when the goods
may be asked for by name. Further, in terms of the
connotation of the mark, WALKER is clearly highly
suggestive or descriptive when used on or in connection
Ser No. 75622840
8
with applicant's goods,6 so that it is the NORDIC portion
that will contribute more to any distinctive meaning the
composite may have in the mind of a consumer. Moreover, we
disagree with applicant's contention that NORDIC, when used
in its and registrant's composite marks, will have only the
connotation of certain types of skiing.
Applicant has introduced what it states is the
definition of "Nordic" at www.merriam-webster.com, but did
not provide a printout of that definition. In our visit to
the website, we found that the definition reported by
applicant is the third of three definitions for "Nordic" as
an adjective; there are also three definitions for the term
as a noun. Of the six definitions, five refer to "Nordic"
people, i.e., of the "Germanic peoples" of Northern Europe
or Scandinavia. We have also referred to Webster's Third
New International Dictionary (unabridged 1993) at page
1540.7 This dictionary includes two listings for "Nordic"
alone and a total of seven definitions, but none of them
refer to skiing.
6 It is obvious that "hand-held poles used to enhance the
exercise benefits of walking" will be used by walkers, and thus
WALKER may be viewed as descriptive of a class of consumers for
applicant's goods.
7 We may take judicial notice of dictionary definitions. See
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser No. 75622840
9
When used as an element of applicant's composite mark,
NORDIC is more likely to be perceived as a reference to
Northern Europe and/or Northern Europeans than to
particular forms of skiing, because applicant's goods are
not used for skiing. Similarly, the majority of the items
listed in the identification of goods for cited
Registration No. 2652123 (for the mark NORDICTRACK in
stylized form) are not for skiing or indoor training for
skiing, e.g., "treadmills, stationary cycles, …elliptical
cross trainers, rowing machines, stair climbers, rider-type
exercisers, air walker-type exercisers, spot toning
exercisers, strength training machines, and stepper
exercise machines." Thus, when NORDIC is used as an
element in registrant's composite stylized mark, and is
considered in relation to these goods, it is equally likely
that consumers would perceive the mark as having a more
general connotation of Northern Europe and not merely of
particular types of skiing. In short, we find that the
connotations of the respective marks will be much the same.8
8 We note that the other cited registration, for NORDICTRACK in
typed form, is for only a skiing simulator. Thus, even though
the record does not establish that the skiing definition of
"Nordic" is the primary definition, it may be that when
registrant uses NORDICTRACK in conjunction with a skiing
simulator, it will have a skiing connotation. Even then,
however, we find that the predominant meaning of "Nordic" is of
the people of Northern Europe or Scandinavia.
Ser No. 75622840
10
Considering the marks in regard to sight, sound and
meaning, we find the similarity in sound and meaning to
outweigh the differences in appearance. Thus, if these
similar marks were used on or in connection with goods that
would be perceived as related, confusion would be likely.
Thus, we now turn to consider the goods.
As the examining attorney has observed, goods need not
be competitive or even likely to be used in conjunction
with each other for there to be a likelihood of confusion.
It is sufficient that they are of the type that consumers
would conclude that there was some relationship, as through
source or sponsorship. The examining attorney has not put
any evidence in the record to establish that items of
indoor exercise equipment are routinely or regularly
produced or marketed by the same entities that produce or
market hand-held poles for use in outdoor walking or
running. Nonetheless, based on the involved
identifications of goods, we find it obvious that the
product of applicant (its hand-held poles for walking and
running) and many of those of registrant (treadmills, stair
climbers, air walker-type exercisers, and stepper exercise
machines) are likely to be marketed to the same class of
consumers, e.g., those who walk or run for exercise.
Ser No. 75622840
11
We are not persuaded that applicant and registrant
must be viewed as marketing their products to different
classes of consumers simply because registrant's products
are for stationary, indoor use and applicant's product is
for outdoor use. Applicant has provided no support for its
contention that indoor exercisers and outdoor exercisers
are distinctly different groups. We find it more likely
that an individual who enjoys walking for exercise would be
likely to do it indoors or outdoors, as the individual's
schedule and the weather permit, and that such an
individual would be a prospective purchaser of both
products.
We also are unpersuaded that confusion will be avoided
because registrant's products are asserted by applicant to
be more expensive than applicant's product. While there is
nothing in the record about the costs of the respective
products, we accept for the sake of argument that
registrant's goods are more expensive and purchasers of the
same would be deliberative. It does not follow, however,
that purchasers of registrant's goods, or those who may
have considered purchasing registrant's goods but have not
actually done so, will be deliberative in their purchasing
decisions when contemplating a purchase of what applicant
admits are its less expensive goods.
Ser No. 75622840
12
Finally, applicant has provided no support for its
contention that items of indoor exercise equipment and
outdoor exercise equipment are routinely sold in different
sections of stores. Intuitively, it would seem that
exercise products would be sorted in stores not by whether
the activities are engaged in outdoors or indoors but
rather, by the type of activity.
Based on the similarities in the marks, the related
nature of the involved goods, and their likely marketing to
the same class of consumers, we find that confusion is
likely. We do not agree with applicant's argument that
refusing registration of applicant's mark is tantamount to
providing registrant with the exclusive right to use NORDIC
in conjunction with exercise, fitness and/or sporting
activities. Each application must be considered on its own
merits, vis a vis marks previously registered. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). Refusal of registration to applicant in this
instance is simply that, a refusal to register applicant's
mark for the identified goods, and has no bearing on the
examination of future applications by applicant or others
for other marks.
Decision: The refusal of registration under Section
2(d) is affirmed.