FMC Corp.

Trademark Trial and Appeal Board

Sep 10, 1998

No. 74677288 (T.T.A.B. Sep. 10, 1998)

Hearing:
December 3, 1997
Paper No. 14
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 10, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re FMC Corporation
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Serial No. 74/677,288
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Timothy D. Pecsenye and Mark N. Epstein of Blank, Rome,
Comisky & McCauley for applicant.
Adam C. Striegel, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
____________
Before Hanak, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
FMC Corporation has filed a trademark application to
register the mark shown below for “traps, namely bait
stations containing an oxidative phosphorylation uncoupler
for attracting and killing ants.”1

1 Serial No. 74/677,288, in International Class 21, filed April 28,
1994, based on an allegation of a bona fide intention to use the mark
in commerce.
Serial No. 74/677,288
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles the
following two previously registered marks, both owned by the
same party, that, if used on or in connection with applicant’s
goods, it would be likely to cause confusion or mistake or to
deceive:
ALL STAR, for, among other goods, “pesticides, namely bug and
ant killing compositions for institutional and industrial use,
in International Class 5”;2 and

2 Registration No. 1,636,612, issued March 5, 1991, and owned by BRT,
Inc. [Sections 8 and 15 affidavits accepted and acknowledged.] The
additional goods recited in the registration, but not cited as relevant
by the Examining Attorney, are “janitorial preparations, namely, toilet
bowl disinfectants, disinfectants for institutional use, deodorizing
preparations for institutional use” in International Class 5; and
“janitorial cleaning preparations, namely, paint, spot, grease, stain,
and graffiti removers, hand soaps, and floor cleaners; floor waxes,
floor polishes, floor buffing and stripping compositions; furniture
polish; liquid drain cleaners; carpet and upholstery shampoos; glass,
tile and oven cleaning compositions; anti-static sprays for
institutional and industrial use; and preparations for use on floor
cleaning tools, namely, dust mop sprays,” in International Class 3.
Serial No. 74/677,288
3
for, among other goods, “janitorial preparations for
institutional and industrial use; namely, . . . pesticides, in
International Class 5,”3
Applicant has appealed. Both the applicant and the
Examining Attorney have filed briefs and an oral hearing
was held. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). Turning, first, to consider the
marks, the Examining Attorney argues that the marks are
nearly identical; that one of registrant’s marks is the
term ALL STAR; that the word portion of both applicant’s
and registrant’s design mark is dominant and each would be
perceived as the term ALL STAR; that applicant’s mark and

3 Registration No. 1,867,389, issued December 13, 1994, and owned by BRT,
Inc. The additional goods recited in the registration, but not cited
as relevant by the Examining Attorney, are “janitorial preparations for
institutional and industrial use; namely, paint removers; spot
removers; grease removers; stain removers; graffiti removers; hand
soaps; floor cleaners; floor waxes, floor polishes; floor buffing
compositions; floor stripping compositions; furniture polish; liquid
drain cleaners; carpet shampoos; upholstery shampoos; glass cleaning
compositions; tile cleaning compositions; oven cleaning compositions;
antistatic sprays; and dust sprays,” in International Class 3; and
Serial No. 74/677,288
4
registrant’s design mark similarly merge the two words ALL
and STAR into a single word and include a design of a five-
pointed star; that the fact that applicant’s mark drops the
second “L” in “ALL” does not change its connotation as “ALL
STAR” nor does it distinguish applicant’s mark visually or
aurally; and that ALL STAR suggests “premier athletes who
have distinguished themselves within a given sport.”
Applicant contends, on the other hand, that the design
portion of its mark is predominant and sufficiently
distinguishes its mark from registrant’s marks; and that
the different spelling of applicant’s mark further
distinguishes it. Applicant submitted with its brief a
list of third-party registrations for ALL STAR/ALSTAR marks
and contends that, in view of these registrations,
registrant’s mark is a weak mark, entitled to a narrow
scope of protection, and, therefore, the differences
between applicant’s and registrant’s marks are sufficient
to avoid a likelihood of confusion.
We do not find applicant’s arguments to be well taken.
First, in view of the Examining Attorney’s objection, we
have not considered applicant’s evidence. Not only did
applicant submit its evidence of third-party registrations
in an untimely manner with its brief, but, as the Examining

“janitorial preparations for institutional and industrial use; namely,
Serial No. 74/677,288
5
Attorney notes, its submission is from an unidentified
source.4 Even if we were to consider the registrations to
be properly of record, they do not convince us that
registrant’s mark is a weak mark in connection with the
identified goods. The vast majority of the third-party
registrations listed are for goods and services not even
remotely related to the goods identified herein and many of
the marks include additional features. Moreover, third-
party registrations by themselves do not show that the
marks are in actual use, much less that the actual use has
been so extensive that consumers have become accustomed to
distinguishing between various ALLSTAR/ALSTAR marks. See,
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462, 463 (CCPA 1973) [“But in the absence of evidence
showing the extent of use of any such marks . . . [the
registrations] provide no basis for saying the marks so
registered have, or may have, any effect at all on the
public mind so as to have a bearing on likelihood of
confusion.”].

disinfectants; and deodorizing preparations,” in International Class 5.
4 The evidentiary record in an application must be complete prior to
the filing of the notice of appeal. See, 37 CFR 2.142(d); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Further, in order to
make registrations of record, soft copies of the registrations
themselves, or the electronic equivalent thereof, i.e., printouts of
the registrations taken from the electronic records of the Patent and
Trademark Office’s (PTO) own data base, must be submitted. See,
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Serial No. 74/677,288
6
We agree with the Examining Attorney that the word
portions of both applicant’s mark and registrant’s design
mark predominate over relatively minor design elements. In
both marks, the designs consist essentially of simple
typestyles and star designs, which merely reinforce the
connotations of the words ALLSTAR and ALSTAR. Likewise,
any spelling and spacing differences do not adequately
distinguish applicant’s mark from registrant’s marks.
The proper test for determining the issue of
likelihood of confusion is the similarity of the general
commercial impression engendered by the marks. Due to the
consuming public’s fallibility of memory, the emphasis is
on the recollection of the average customer, who normally
retains a general rather than a specific impression of
trademarks or service marks. Spoons Restaurants, Inc. v.
Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-
1086 (Fed. Cir. June 5, 1992); and In re Steury
Corporation, 189 USPQ 353 (TTAB 1975). We find this
principle particularly relevant in this case in view of the
fact that, while applicant’s and registrant’s star designs
are not identical and appear in different places relative
to the words, both applicant’s mark and registrant’s design
and word marks contain substantially similar components and

Serial No. 74/677,288
7
are likely to be perceived predominantly as the term ALL
STAR. We find that the overall commercial impressions of
both applicant’s mark and registrant’s marks are
substantially similar.
Turning to the goods, we note the well-established
principle that when the marks at issue are the same or
nearly so, the goods in question do not have to be
identical to find that confusion is likely. As we stated
in In re Concordia International Forwarding Corp., 222 USPQ
352, 356 (TTAB 1983), “. . . the greater the degree of
similarity in the marks, the lesser the degree of
similarity that is required of the products or services on
which they are being used in order to support a holding of
likelihood of confusion.” It is instead sufficient that
the goods are related in some manner and that their
character or the circumstances surrounding their marketing
are such that they are likely to be encountered by the same
people in situations that would give rise to the mistaken
belief that the producer was the same. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The Examining Attorney submitted a dictionary
definition of “pesticide” as “a chemical used to kill
pests, esp. insects and rodents”; and argues that
applicant’s bait stations include a chemical. At the
Serial No. 74/677,288
8
hearing in this case, applicant conceded that its bait
stations include a chemical. Thus, we find it reasonable
to conclude that applicant’s goods can be described as
containing pesticides.
In support of his position that purchasers are likely
to conclude that, when identified by confusingly similar
marks, the goods of applicant and registrant emanate from
the same source, the Examining Attorney submitted copies of
numerous third-party registrations that contain both “bait
traps” and “pesticides” in the identification of goods.
Although third-party registrations which cover a number of
differing goods and/or services, and which are based on use
in commerce, are not evidence that the marks shown therein
are in use on a commercial scale or that the public is
familiar with them, such registrations nevertheless have
some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
We find that the record in this case is sufficient to
warrant the conclusion that applicant’s goods, containing
what applicant concedes is a pesticide, and registrant’s
goods, which comprise pesticides, are closely related. As
Serial No. 74/677,288
9
identified, both goods are used to kill ants. While
registrant’s goods are limited to industrial and
institutional use, applicant’s goods are not limited as to
channels of trade and could reasonably encompass sales for
industrial and institutional use. Applicant has submitted
no evidence contradicting the reasonable conclusion that
purchasers are likely to believe that applicant’s and
registrant’s goods, if identified by confusingly similar
marks, emanate from the same source.
Applicant seeks to distinguish its goods from those of
registrant by arguing that applicant’s product is a trap,
whereas registrant’s product is a chemical that requires
application by a janitor; that the channels of trade for
the respective goods are different, based on the nature of
the goods; and that the large institutional purchasers of
applicant’s goods are likely to be sophisticated, careful
purchasers. Not only has applicant provided no evidence in
support of its contentions, but the identifications of
goods in the application and registrations do not support
such distinctions. “The question of likelihood of
confusion must be determined based on an analysis of the
mark as applied to the goods and/or services recited in
applicant’s application vis-à-vis the goods and/or services
recited in [the] registration, rather than what the
Serial No. 74/677,288
10
evidence shows the goods and/or services to be.” Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987).
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark and registrant’s marks, their contemporaneous use on
the closely related goods involved in this case is likely
to cause confusion as to the source or sponsorship of such
goods.
Decision: The refusal under Section 2(d) of the Act
is affirmed.
E. W. Hanak
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board