Hagemeyer North America, Inc.

Trademark Trial and Appeal Board

Aug 30, 2007

No. 78582334 (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. 78582334
_______

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
2 goods identified in the application, as amended, as:
Paint and paint products, namely, rust
preventatives in the nature of a coating; spray
paints for use on wood or metal equipment and

1 A different Trademark Examining Attorney handled this case
prior to appeal.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78582334
2
machinery; spray paints for interior or exterior
use; striping paints for use on floors, grounds,
walkways, and roadways; paint primer; coatings in
the nature of cold galvanizing compounds for
prevention of metal corrosion; insulating
varnishes; sealer coatings for use with
industrial machines and vehicles, namely,
ignition sealers; layout inks for use in
industrial metal cutting; and rust-inhibiting
oils for pipes, metal parts, equipment, and
machinery.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

2 Serial No. 78582334, 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. 78582334
3

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

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 affirm
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).
Ser. No. 78582334
4
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
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
Ser. No. 78582334
5
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
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).
Applying these principles in the present case, we find
that certain of the goods identified in applicant’s
application and certain of the goods identified in the
cited registration are similar and related, for purposes of
the second du Pont factor.4 In particular, we find that
applicant’s “paint and paint products, namely, ... spray

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. 78582334
6
paints for use on wood or metal equipment and machinery;
spray paints for interior or exterior use; striping paints
for use on floors, grounds, walkways, and roadways; paint
primers,” are related to the goods identified in the cited
registration as “air compressors,” “air brushes for
applying paint,” and “hand tools, namely, ... scrapers.”
The Trademark Examining Attorney has made of record an
entry from the online encyclopedia Wikipedia for “spray
painting,” which reads (in pertinent part) as follows
(emphasis added):

Spray painting is painting using a device that
sprays the paint.

There are several different technologies for
doing this.

1. Canned spray paint: The most common type
in the consumer market is an aerosol can of spray
paint.

2. Semi-professional spraypainting; there are
a variety of hand-held paint sprayers that either
combine the paint with air, or convert the paint
to tiny droplets and accelerate these out of a
nozzle. ...

3. Professional spraypainting: Automobile
body shops use air compressors and specialized
equipment to spray paint onto a car body. ...

Registrant’s “air brushes for applying paint” are a
method of spray painting, i.e., they are devices that spray
paint. They would fall within the “semi-professional”
Ser. No. 78582334
7
category set forth above, i.e., they are hand-held paint
sprayers that combine the paint with air. Likewise under
the “professional” category set forth above, registrant’s
“air compressors” are used in connection with spray
painting. These goods of registrant’s, and applicant’s
“spray paints,” are complementary products, or are
alternative methods of performing the task of spray
painting. Registrant’s “air compressors” also would be
used in connection with applying applicant’s “striping
paint” and “paint primer.”
Registrant’s broadly-identified “hand tools, namely
... scrapers” must be presumed to include paint scrapers.
Such goods obviously are complementary to and used together
in painting projects, to remove old paint and apply new
paint.
For these reasons, we find that applicant’s spray
paints, striping paints and paint primer are similar and
related to registrant’s air brushes for applying paint, air
compressors, and scrapers. As noted above, because
applicant’s mark is identical to the cited registered mark,
there need be only a viable relationship between the
respective goods in order to support a finding of
likelihood of confusion. We find that the requisite viable
relationship between the goods exists in this case. The
Ser. No. 78582334
8
second du Pont factor weighs in favor of a finding of
likelihood of confusion.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels for the
respective goods. Because there are no restrictions or
limitations as to trade channels or classes of purchasers
in either applicant’s or registrant’s identification of
goods, we must presume that these goods are marketed in all
normal trade channels and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). Applicant’s spray paints and primer paint and
registrant’s spray painting equipment would be purchased by
the same purchasers, including professionals, artists and
ordinary homeowners, in the same trade channels, including
art supply stores5 and hardware or home improvement stores.
Applicant’s striping paint and registrant’s air compressors
likewise would be purchased by the same commercial or
industrial purchasers in the same trade channels, including
hardware and home improvement stores, as well as from
industrial supply companies. We find that the third du
Pont factor weighs in favor of a finding of likelihood of

5 See, e.g., the website of Madison Art Shop
(www.madisonartshop.com), made of record by the Trademark
Examining Attorney.

Ser. No. 78582334
9
confusion.
The fourth du Pont factor requires us to consider
evidence pertaining to the conditions of purchase. The
purchasers of applicant’s and registrant’s goods would
include both professionals and ordinary homeowners.
Ordinary homeowners would exercise only a normal degree of
care in purchasing the products. We might presume that the
professional purchasers of such goods are somewhat
knowledgeable about the products involved, but we cannot
conclude on this record that such knowledge necessarily
would eliminate the confusion likely to be caused by the
use of the identical VERSAPRO mark on these related goods.
See, e.g., In re Decombe, 9 USPQ2d 1812 (TTAB 1988). Nor
does the record establish that these goods, as identified
in the application and registration, are so expensive that
the degree of care taken in purchasing them necessarily
would immunize purchasers from confusion. For these
reasons, we find that the fourth du Pont factor, if it
weighs in applicant’s favor at all, does so only slightly,
and not enough to overcome the evidence of record on the
other du Pont factors which supports a finding of
likelihood of confusion.
Balancing all of the evidence of record pertaining to
the relevant du Pont factors, we find that a likelihood of
Ser. No. 78582334
10
confusion exists. We have considered all of applicant’s
arguments to the contrary, but we find them to be
unpersuasive. To the extent that any doubts might exist as
to the correctness of our conclusion that confusion is
likely, we resolve such doubts against applicant. See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.

Decision: The Section 2(d) refusal is affirmed.