Gold Glass Group Corp.

Trademark Trial and Appeal Board

May 30, 2000

No. 75029618 (T.T.A.B. May. 30, 2000)

Paper No. 19
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 30, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Gold Glass Group Corporation
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Serial No. 75/029,618
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Myron Amer of Myron Amer, P.C. for Gold Glass Group
Corporation.
Matthew Pappas, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Gold Glass Group Corporation (applicant) seeks to
register CLICK-STOP RETRACTABLE BLADE in typed drawing form
for “utility knife blade holders and knives.” The intent-
to-use application was filed on December 8, 1995.
Applicant disclaimed the exclusive right to use RETRACTABLE
BLADE apart from the mark in its entirety.
Ser No. 75/029,618
2
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, if applied to applicant’s goods, would be
likely to cause confusion with the mark CLIK-STOP,
previously registered in typed drawing form for “adjustable
wrenches.” Registration No. 670,555 issued December 12,
1958.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
At the outset, one procedural matter needs to be
addressed. In the first Office Action, the Examining
Attorney correctly referred to the registered mark as CLIK-
STOP. In response, applicant incorrectly referred to the
registered mark as CLICK-STOP. Thereafter, both applicant
and the Examining Attorney have continuously referred
(incorrectly) to the registered mark as CLICK-STOP. This
is not particularly suprising given the fact that CLIK-STOP
(the correct rendition of the registered mark) and CLICK-
STOP (the incorrect rendition of the registered mark) are
identical in terms of pronunciation and connotation, and
are almost identical in terms of visual appearance.
Ser No. 75/029,618
3
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarities of the marks. 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.”).
Considering first the goods, the Examining Attorney
has made of record a considerable body of evidence
demonstrating that both knives and wrenches (including
adjustable wrenches) are sold under the same marks by the
same companies. In addition, the Examining Attorney has
made of record a substantial body of evidence demonstrating
that knives and wrenches (including adjustable wrenches)
are often used together in performing certain jobs or
tasks.
Applicant has not disputed the foregoing. Indeed,
applicant has acknowledged that “utility knives and
wrenches are well known to craftsmen, like carpenters,
plumbers, etc., and would therefore be sold in a retail
store catering to craftsmen.” (Applicant’s brief page 1).
Instead, applicant merely argues the obvious, namely, that
Ser No. 75/029,618
4
knives and adjustable wrenches are different products.
(Applicant’s brief page 1).
In order for there to exist a likelihood of confusion,
applicant’s goods and registrant’s goods need not be
identical. Rather, they need only be related to a degree
such that if identical or clearly similar marks were used
on both products, consumers would assume that both products
emanated from a common source. In this case, it is beyond
dispute that adjustable wrenches and knives are sold to the
same purchasers; are sold in the same channels of trade;
are used in conjunction with one another to perform certain
jobs or tasks; and are often marketed by the same companies
under the same marks. In light of the foregoing, we find
that adjustable wrenches and knives are closely related
tools.
Turning to a consideration of the marks, we note that
while marks must be compared in their entireties, there is
nothing improper in giving more weight to one portion of a
mark than to another portion of a mark. Considering
applicant’s mark CLICK-STOP RETRACTABLE BLADE, we find that
the words RETRACTABLE BLADE are clearly descriptive of a
type of knife whose blade can be retracted. Indeed,
applicant attached to its brief a picture of its knife
which shows that applicant’s knife does indeed have a
Ser No. 75/029,618
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retractable blade. Thus, applicant quite properly
disclaimed the descriptive words RETRACTABLE BLADE.
In essence, applicant has adopted registrant’s mark
CLIK-STOP in its entirety; modified it ever so slightly by
changing the spelling of CLIK to the correct spelling of
CLICK; and then added the wording RETRACTABLE BLADE, which
is clearly descriptive of a type of knife, and indeed, is
descriptive of applicant’s particular knife. It is been
repeatedly stated “that one may not appropriate the entire
mark of another and avoid a likelihood of confusion by the
addition thereto of descriptive or otherwise subordinate
matter.” Bellbrook Dairies v. Hawthorn-Mellody Dairy, 253
F.2d 431, 117 USPQ 213, 214 (CCPA 1958) and cases cited
therein.
We firmly believe that consumers familiar with CLIK-
STOP adjustable wrenches, would, upon seeing the mark
CLICK-STOP RETRACTABLE BLADE on knives, assume that both
products emanated from a common source and that the words
Ser No. 75/029,618
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RETRACTABLE BLADE merely described the particular type of
knife.
Decision: The refusal to register is affirmed.
R. F. Cissel
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board