Guardian Int’l., Inc.

Trademark Trial and Appeal Board

Jan 14, 2002

No. 75597830 (T.T.A.B. Jan. 14, 2002)

1/14/02

Paper No. 17
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Guardian International, Inc.
________

Serial No. 75/597,830
_______

Jeffrey A. Smith of Millen, White, Zelano & Branigan for
applicant.

Scott Baldwin, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Guardian
International, Inc. to register the mark shown below

for “installation and maintenance of burglar alarms, fire
alarms, home and commercial security systems, voice
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/597,830
2
intercom systems and closed circuit television (CCTV) and
card access systems” (in International Class 37) and
“monitoring of burglar alarms, fire alarms and home and
commercial security systems” (in International Class 42).1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the marks shown below as
to be likely to cause confusion:

for “installation of burglar alarms and burglar alarm
protection services;”2 and

1 Application Serial No. 75/597,830, filed November 30, 1998,
alleging a date of first use and first use in commerce of January
1993. The word “Security” is disclaimed apart from the mark.
Applicant also claims acquired distinctiveness as to the word
“International” in its mark; the Examining Attorney accepted the
claim. The application includes the following description: “The
mark consists in part of a stylized letter G in an octagon
design.”
2 Registration No. 1,915,441, issued August 29, 1995, combined
affidavit under Sections 8 and 15. The terms “Protected By,”
“Burglar Alarm,” and “1-800” are disclaimed.
Ser No. 75/597,830
3

for “monitoring of security systems” and “installation of
security systems.”3 The registrations are owned by
different entities.4
When the refusals to register were made final,
applicant appealed. Applicant and the Examining Attorney
have filed briefs.5 An oral hearing was not requested.
Applicant acknowledges that its services and those
listed in the cited registrations are identical. Applicant
goes on to argue, however, that the term “guardian” is weak
as used in connection with security services and goods.
According to applicant, the scope of protection to be given
to each of the cited registrations is limited due to
extensive third-party use and many registrations of the

3 Registration No. 2,151,624, issued April 21, 1998. The words
“Protection Services” are disclaimed.
4 A third registration, Registration No. 1,141,617, owned by the
same entity that owns Registration No. 1,915,441 also was cited
in the final refusal. A check of Office records shows that
Registration No. 1,141,617 was canceled on December 2, 2001 for
failure to renew. Accordingly, the appeal with respect thereto
is moot.
5 Applicant, in its brief, updates the status of three third-
party applications, one of which has matured into a registration.
As applicant itself recognizes (reply brief, p. 4, n. 1), this
evidence was not timely submitted. Accordingly, we have not
considered it in reaching our decision.
Ser No. 75/597,830
4
term “guardian” in the security field. In support of its
position, applicant submitted a dictionary definition of
the word “guardian”; several third-party registrations of
marks incorporating the word “guardian” for security
services and goods; a computerized search report listing
common law uses of “guardian”; and excerpts retrieved from
the Internet pertaining to use of the word “guardian” in
the security industry.
The Examining Attorney highlights the identity of the
services, and maintains that the cited registrations and
applicant’s mark share the same dominant term “guardian.”
The Examining Attorney also asserts that this dominant term
is not weak. In connection with this later contention, the
Examining Attorney is not persuaded by applicant’s evidence
bearing on the use and registration of “guardian” in the
security field. The Examining Attorney concludes that the
marks engender substantially similar overall commercial
impressions.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. Du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key factors are the similarities
Ser No. 75/597,830
5
between the marks and the similarities between the
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In the present case, the services, as acknowledged by
applicant, are identical. Thus, we focus our attention, as
have applicant and the Examining Attorney, on the
similarities between the marks and the du Pont factors
relating thereto.
The term “guardian” is defined as “one that guards or
secures: one to whom a person or thing is committed for
protection, security, or preservation.” Webster’s Third
New International Dictionary (unabridged ed. 1986). Based
on the dictionary definition alone, it is clear that the
term “guardian” is at least highly suggestive in relation
to security services that involve the protection of
persons, things and/or places. Lest there be any doubt on
this point, the record includes examples of not only
numerous third-party registrations of marks incorporating
the term “GUARDIAN,” but also of over 100 common law uses
of the term by businesses in the security field.6 Thus, it

6 We agree with the Examining Attorney that the evidence
pertaining to uses outside of the security industry are not
probative. However, the entire record shows there are a
significant number of uses and registrations in connection with
security services and goods.
Ser No. 75/597,830
6
is not surprising that the two cited registrations, owned
by different entities, have coexisted on the register.
Although the term “guardian” is dominant in each of
the marks, the highly suggestive nature of the term
“guardian” is a significant factor in comparing the marks.
Given the multitude of uses of the term “guardian” in the
security industry, the evidence suggests that consumers
would be accustomed to distinguishing between marks
containing such a highly suggestive term upon other
elements of the marks. See: In re Bed & Breakfast
Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In
re Broadway Chicken Inc., 38 USPQ2d 1559 (TTAB 1996); and
Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d
1477, 1479 (TTAB 1987).
Indeed, we must compare the marks in their entireties,
and although the term “GUARDIAN” is dominant, each of the
involved marks includes additional different wording and
design features that cannot be ignored. Giant Food, Inc.
v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
395 (Fed. Cir. 1983). The additional wording and prominent
design features of each mark are different and, in our
view, sufficient to distinguish the marks. Applicant’s
mark includes a stop sign silhouette, whereas one cited
registration employs a law enforcement badge silhouette and
Ser No. 75/597,830
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the other a sideways chevron design. When the marks are
considered in their entireties, applicant’s mark engenders
an overall commercial impression sufficiently different
from each of the cited registrations that consumers are
unlikely to be confused even as to identical services.
See: Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1431 (TTAB 1993).
The marketplace reality of the security industry is,
not surprisingly, that the word “guardian” has in the past
appealed to others in the industry as an appropriate term
for a mark or part of a mark. Accordingly, the mere
inclusion of the term in the marks involved herein is not,
in and of itself, a sufficient basis for a finding of
likelihood of confusion where the marks are otherwise
distinguishable. We see the Examining Attorney’s view of
the likelihood of confusion as amounting to only a
speculative, theoretical possibility. See: Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992), citing
Witco Chemical Co. v. Whitfield Chemical Co., Inc., 418
F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff’g, 153
USPQ 412 (TTAB 1967).
In sum, in view of the highly suggestive nature of the
term “guardian” in the security industry, and the prominent
Ser No. 75/597,830
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differences in the other wording and designs between the
involved marks, we conclude that consumers are unlikely to
be confused as to the source of the services when the marks
are considered in their entireties.
Decision: The refusals to register are reversed.