Hancor, Inc.v.Mollewood Export, Inc.

Trademark Trial and Appeal Board

Mar 31, 2005

No. 91156211 (T.T.A.B. Mar. 31, 2005)

kuhlke
Mailed: March 31, 2005

Opposition No. 91156211

Hancor, Inc.

v.

Mollewood Export, Inc.

Before Hohein, Bucher and Chapman, Administrative Trademark
Judges.

By the Board:

This case now comes before the Board for consideration
of applicant’s motion (filed November 11, 2004) for summary
judgment on the issue of likelihood of confusion under
Section 2(d) of the Trademark Act. The motion has been
fully briefed.1
BACKGROUND/PLEADINGS
Applicant has filed an application for registration of
the mark SURE-LOK (in typed form) for “collapsible
containers made from processed wood materials utilizing a

1 The Board has exercised its discretion and has considered
applicant’s reply brief filed on December 17, 2004. Trademark
Rule 2.127(e).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O BOX 1451
Alexandria, Virginia 22313-1451 THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91156211
2
metal clip for use in the automotive parts industry” in
Class 20.2
In its notice of opposition, opposer alleges, inter
alia, that: opposer “has been, and is now, using the mark
SURE-LOK throughout the United States...in connection with
the sale of plastic corrugated pipe and tubing with integral
coupling means for use in drainage systems, storm sewers and
sanitary sewers”; opposer’s piping products are “sold to
customers in the construction, building, agricultural,
recreational, residential and specialty markets”; opposer
distributes molded HDPE reusable tanks and containers,
manufactured by a third party; “applicant’s products are
used in the same market as opposer’s products”; and because
of the “identical nature of the respective marks and the
related nature of the goods and/or services of the
respective parties” applicant’s mark is “likely to cause
confusion, or to cause mistake, or to deceive.”
Opposer pleaded ownership of the following
registration: SURE-LOK for “plastic corrugated pipe and
tubing with smooth interior using an integral bell coupler

2 Application Serial No. 76376791 filed on February 28, 2002,
claiming July 18, 2001 as the date of first use and first use in
commerce.

Opposition No. 91156211
3
for drainage systems, storm sewers, and sanitary sewers” in
International Class 17.3
Applicant, in its answer, has denied the salient
allegations of the notice of opposition.
SUMMARY JUDGMENT STANDARD
Generally, summary judgment is appropriate in cases
where the moving party establishes that there are no genuine
issues of material fact which require resolution at trial
and that it is entitled to judgment as a matter of law.
Fed. R. Civ. P. 56(c). An issue is material when its
resolution would affect the outcome of the proceeding under
governing law. Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 248 (1986). However, a dispute over a fact which would
not alter the Board’s decision on the legal issue will not
prevent entry of summary judgment. See, for example,
Kellogg Co. v. Pack’Em Enterprises Inc., 951 F.3d 330, 21
USPQ2d 1142 (Fed. Cir. 1991). A fact is genuinely in
dispute if the evidence of record is such that a reasonable
fact finder could return a verdict in favor of the nonmoving
party. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987
F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). The nonmoving
party must be given the benefit of all reasonable doubt as

3 Registration No. 1940853, issued on December 12, 1995, filed on
October 26, 1994, Section 8 affidavit accepted, Section 15
affidavit acknowledged, and claiming first use and first use in
commerce on May 19, 1994.
Opposition No. 91156211
4
to whether genuine issues of material fact exist, and the
evidentiary record on summary judgment, and all inferences
to be drawn from the undisputed facts, must be viewed in the
light most favorable to the nonmoving party. See Opryland
USA, Inc. v. Great American Music Show, Inc., 970 F.2d 847,
23 USPQ2d 1471 (Fed. Cir. 1992); Olde Tyme Foods Inc. v.
Roundy's Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
THE PARTIES’ EVIDENCE AND ARGUMENTS
Applicant’s evidence on summary judgment includes: (1)
opposer’s responses to applicant’s first requests for
admission; (2) opposer’s responses to applicant’s
interrogatory Nos. 3, 6 and 14; (3) opposer’s produced
documents, specifically, excerpts from opposer’s 2003
product catalogs; and (4) the affidavit of Christopher J.
Fildes, applicant’s outside counsel, together with the
exhibits identified therein. The exhibits include printouts
of opposer’s and a third party’s web pages.
In response, opposer has submitted: (1) a copy of
opposer’s Registration No. 1940853; (2) opposer’s responses
to applicant’s interrogatory Nos. 23, 24 and 25; (3)
opposer’s responses to applicant’s second set of document
requests; (4) the declaration of William E. Altermatt,
opposer’s vice president of marketing; and (5) applicant’s
responses to opposer’s first set of interrogatories.
Opposition No. 91156211
5
Applicant argues that, in this case, the dissimilarity
of the goods is dispositive. Applicant states that opposer,
in response to a request for admission, has admitted that it
does not use the mark SURE-LOK on collapsible wooden crates
and, in response to an interrogatory, has stated that it has
not yet considered expanding the products it sells in
connection with its SURE-LOK mark. Therefore, applicant
asserts, the goods and the nature of the goods sold in
connection with the parties’ marks are undisputed.
Applicant contends that the goods recited in its
application are clearly distinct from the goods recited in
opposer’s registration and the septic and water storage
tanks opposer allegedly distributes. Applicant explains
that its containers made of processed wood materials are
used to contain and transport items when in use and are
collapsible for ease of storage when not in use, as
distinguished from opposer’s corrugated pipe and tubing,
which is used as a conduit for “liquids in drainage systems
as well as storm and sanitary sewers.” Further, applicant
describes its trade channels as the “packaging and shipping
markets” which are different from opposer’s self-described
construction, building, agricultural, recreational,
residential, and specialty markets. Applicant concludes
that the parties’ goods are so vastly different that as a
Opposition No. 91156211
6
matter of law, on this basis alone, there cannot be a
likelihood of confusion.
Opposer, in response, states that the parties’ marks
are identical in all respects; they are spelled exactly the
same, hyphenated the same, and contain no design aspect that
differentiates the marks. Further, opposer states that the
parties’ goods are similar “in that they utilize a unique
releasable structure to join two pieces of the product” and
this “unique latching feature associated with each company’s
product weighs in favor of denying [applicant’s]
registration.” With regard to channels of trade, opposer
argues that “it is viable that one of [opposer’s]
competitors could use [applicant’s] shipping containers to
ship plastic pipe and accessories.”
Further, opposer argues that its mark is famous, noting
that opposer sold, in the last year alone, approximately
$100,000,000 worth of product in connection with its SURE-
LOK mark and has spent on average $1,000,000 a year to
advertise and market the SURE-LOK product. Opposer argues
that the lack of any actual confusion is the result of the
“minimal amount of money spent by [applicant] to promote its
products and the relatively short period of time during
which there has been concurrent use.”
Opposition No. 91156211
7
ANAYLSIS
In determining whether there is any genuine issue of
material fact relating to the legal question of likelihood
of confusion, the Board must consider all of the probative
facts in evidence which are relevant to the factors bearing
on likelihood of confusion, as identified in In re E.I du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See Sweats Fashions v. Panhill Knitting Co., 833
F.2d 1560, 4 USP2d 1793, 1797 (Fed. Cir. 1987). As noted in
the du Pont decision itself, various factors, from case to
case, may play a dominant role. Id., 476 F.2d at 1361, 177
USPQ at 567. Further, a single du Pont factor may be
dispositive in certain cases. Kellogg Co. v. Pack’em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir.
1991) (marks dissimilar); Pure Gold, Inc. v. Syntex (U.S.A.)
Inc., 221 USPQ 151 (TTAB 1983), aff’d, 739 F.2d 624, 222
USPQ 741 (Fed. Cir. 1984) (goods dissimilar).
The key likelihood of confusion factor in this case is
the dissimilarity between the parties’ goods as identified
in their respective registration and application, and as
attested to in the notice of opposition and opposer’s
responses to applicant’s discovery requests.
The evidence of record clearly establishes that there
is no genuine issue of material fact that the parties’
respective goods are not related. Opposer uses the mark in
Opposition No. 91156211
8
connection with plastic piping and tubing with an integral
bell coupler for drainage systems, storm sewers and sanitary
sewers, in contrast to applicant’s collapsible wooden
containers utilizing a metal clip for use in the automotive
parts industry. There is no evidence in the record before
us to rebut the obvious dissimilarity of the parties’ goods.
The only thing offered by opposer is a statement that both
parties’ products use a “unique latching feature.” This
could be said for a glass jar and a screen door; it is not
sufficient to raise a genuine issue of material fact.
Moreover, opposer’s argument that there is a “viable”
relationship between the parties’ goods because the channels
of trade could overlap if a competitor’s piping were shipped
in applicant’s containers is not well taken; particularly,
in view of the fact that the identification of goods in the
application specifically limits applicant’s goods to use in
the automotive parts industry. The Board cannot imagine,
nor has opposer come forward with any evidence or argument,
that the building and construction markets overlap with
packing and shipping of automotive parts industry.
For purposes of determining applicant’s motion for
summary judgment, we view all other du Pont factors,
including the fame of opposer’s mark,4 in opposer’s favor,

4 The Board notes, however, that even though, as opposer asserts,
its mark is famous, opposer’s emphasis of the “unique latching
feature” in the description of the goods in its brief reveals the
Opposition No. 91156211
9
but we find that the dissimilarity of the goods is so vast
as to preclude a likelihood of confusion. Therefore, we
find that no genuine issue of material fact remains for
trial on the issue of likelihood of confusion, and that
applicant is entitled to judgment as a matter of law.
In view of the above, applicant’s motion for summary
judgment on the issue of likelihood of confusion under
Section 2(d) of the Trademark Act is granted, judgment is
entered in favor of applicant and the opposition is
dismissed.
* * *

suggestive nature of the mark SURE-LOK. See In re General Motors
Corp., 23 USPQ2d 1465 (TTAB 1992) (highly suggestive nature of
term GRAND PRIX affords mark narrower scope of protection;
therefore, well known use on automobiles and use on automotive
replacement parts not likely to cause confusion.)