Hagemeyer North America, Inc.

Trademark Trial and Appeal Board

Aug 30, 2007

No. 78582349 (T.T.A.B. Aug. 30, 2007)

Mailed:
Aug. 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hagemeyer North America, Inc.
________

Serial No. 78582349
_______

Sidney R. Brown of Jones, Day for Hagemeyer North America,
Inc.

Saima Makhdoom,1 Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Walters, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark VERSAPRO, in standard character form, for Class
5 goods identified in the application, as amended, as
“industrial deodorants, germicides, insect repellents, weed
killers for commercial use, insecticides, air fresheners,

1 A different Trademark Examining Attorney handled this case
prior to appeal.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78582349

2
rubbing alcohol, herbicides, and all-purpose
disinfectants.”2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the goods
identified in the application, so resembles the mark
VERSAPRO, previously registered3 on the Principal Register
(in standard character form) for

Air compressors, tool bits for machines, bits for
power drills, drill chucks for power drills,
electric handle-held drilling machines and parts
therefor, pile drivers, pneumatic hammers, impact
wrenches, hydraulic jacks, electric knives, air
brushes for applying paint, power-driven
wrenches, extension bars for power tools, power
tools, namely drills, routers, saws,
screwdrivers, shears, wrenches and ratchet
wrenches

in Class 7, and

Bits for hand drills, blades for hand saws,
manual jacks, pocket knives, garden tools, namely
trowels, weeding forks, spades, hoes, hand tools,
namely pliers, shovels, wrenches, screwdrivers,
hammers, saws, scrapers, ratchet wrenches, socket
sets, clamps, drills, planners [sic – planers?],
tweezers, knives, scissors

2 Serial No. 78582349, filed on March 8, 2005. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

3 Reg. No. 2540609, issued on February 19, 2002. Affidavits
under Sections 8 and 15 accepted and acknowledged.

Ser. No. 78582349

3

in Class 8, as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant and the Trademark Examining Attorney have
filed appeal briefs. After careful consideration of the
evidence of record and the arguments of counsel, we reverse
the Section 2(d) refusal to register.
Our likelihood of confusion 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin with the first du Pont factor, which requires
us to determine the similarity or dissimilarity of the
marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. We find that
Ser. No. 78582349

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applicant’s VERSAPRO mark is identical in every respect to
the cited registered VERSAPRO mark. The first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as recited in the
application and in the cited registration. It is settled
that it is not necessary that the goods be identical or
even competitive in order to support a finding of
likelihood of confusion. That is, 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. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
Ser. No. 78582349

5
USPQ 910 (TTAB 1978). Finally, in cases such as this where
the applicant’s mark is identical to the cited registered
mark, there need be only a viable relationship between the
respective goods in order to find that a likelihood of
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001); and In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The Trademark Examining Attorney contends that certain
of applicant’s goods as identified in the application are
similar and related to certain of the goods identified in
the cited registration.4 In particular, the Trademark
Examining Attorney contends that applicant’s “weed killers
for commercial use,” “insecticides,” and “herbicides” are
related to registrant’s various garden tools, for purposes
of the second du Pont factor. According to the Trademark
Examining Attorney, these goods of applicant’s are related
to registrant’s garden tools because they are complementary
products which are used together in maintaining lawns and

4 If confusion is likely as to any of the goods or services
identified in a particular class in an application, Section 2(d)
bars registration as to all of the identified goods or services
in that class in the application. See Shunk Mfg. Co. v. Tarrant
Mfg. Co., 381 F.2d 328, 137 USPQ 881 (CCPA 1963); Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 n.9
(TTAB 2004); In re Alfred Dunhill Ltd., 224 USPQ 501, 504 (TTAB
1984); and In re Multivox Corp. of America, 209 USPQ 627, 632
(TTAB 1981).
Ser. No. 78582349

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gardens, and, further, that applicant’s weed killers and
herbicides are related to registrant’s garden tools because
they are competitive or alternative products which offer
either chemical or organic methods of performing the same
function, i.e., controlling weeds. The Trademark Examining
Attorney has made of record a printout from the website of
Home and Garden TV (HGTV), which states that gardeners can
control weeds by using either hand tools or herbicides.
We find that this evidence does not suffice to
establish that the respective goods are similar and
related, for purposes of the second du Pont factor.
Applicant’s products are chemicals, not garden tools. Even
if we assume that chemicals and garden tools might be used
together (or alternatively) for lawn and garden care, the
evidence of record does not establish that manufacturers of
chemical products also manufacture garden tools, or that
purchasers would assume or expect such disparate goods to
originate from a single source. The second du Pont factor
weighs against a finding of likelihood of confusion.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels in which
applicant’s and registrant’s respective goods are marketed.
The Trademark Examining Attorney contends that registrant’s
garden tools and applicant’s insecticides, herbicides and
Ser. No. 78582349

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weed killers are sold in the same trade channels and to the
same classes of purchasers. She has submitted evidence
consisting of of the websites of two hardware/garden supply
retailers and two industrial supply companies which offer
for sale a wide variety of products, including both weed
killers, insecticides and herbicides like applicant’s and
garden tools like registrant’s. However, hardware stores
and industrial supply companies sell quite a wide variety
of products, a fact which lessens the probative weight to
be accorded to this factor in our likelihood of confusion
analysis. On balance, we find that the third du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Under the fourth du Pont factor (conditions of
purchase), we find that the purchasers of registrant’s
garden tools and applicant’s herbicides and insecticides
would include both professional landscapers or gardeners
and ordinary homeowners. Ordinary homeowners would
exercise only an ordinary degree of care in purchasing the
respective products. We assume that professional
purchasers are more knowledgable about these products, but
we cannot conclude that such knowledge necessarily would
eliminate any likelihood of confusion. For these reasons,
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we find that the fourth du Pont factor, if it weighs in
applicant’s favor, does so only slightly.
Upon balancing all of the du Pont factors for which
there is evidence of record, we conclude that there is no
likelihood of confusion. Although the marks are identical
and the goods move in the same trade channels to the same
purchasers, including to ordinary homeowners, we find that
purchasers simply are unlikely to assume or expect that
applicant’s chemical products and registrant’s garden tools
originate from a single source. This is so,
notwithstanding the fact that the respective products might
be used together or alternatively in caring for lawns and
gardens. The tenuous relationship between the respective
goods does not satisfy even the lesser “viable
relationship” standard required to support a finding of
likelihood of confusion in cases involving identical marks,
like this case. Stated differently, we find that the
dissimilarity of the goods under the second du Pont factor
is dispositive in this case, outweighing all of the
evidence of record pertaining to the other du Pont factors
in our likelihood of confusion analysis. See Kellogg Co.
v. Pack’Em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142
(Fed. Cir. 1991).

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Decision: The refusal to register is reversed.