James E. Winner, Jr.

Trademark Trial and Appeal Board

Oct 21, 1998

No. 74541822 (T.T.A.B. Oct. 21, 1998)

Paper No. 24
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 21,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re James E. Winner, Jr.
________
Serial No. 74/541,822
_______
Robert V. Vickers of Vickers, Daniels & Young for
applicant.
Richard C. Cole, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
_______
Before Sams, Seeherman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
James E. Winner, Jr. has filed an application to
register the mark THE WIZARD for “anti-theft devices for
motor vehicles, namely, electronic ignition locks.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the

1 Ser. No. 74/541,822, filed June 24, 1994, based on a bona fide
intent to use.
Ser No. 74/541,822
2
ground of likelihood of confusion with the registered mark
THE WIZ for “intrusion detectors for use in alarm systems.”2
Applicant and the Examining Attorney have filed
briefs, but the request for an oral hearing was withdrawn.
Looking first to the marks involved, we fail to see
the distinction which applicant is attempting to draw
between the connotations and commercial impressions of THE
WIZARD and THE WIZ. Although applicant argues that
“wizard” connotes a “sorcerer” or “magician” and “wiz”
connotes a “generally smart person”, with no magical
powers, the dividing line is not so clear. In the excerpt
introduced by applicant from Webster’s Collegiate
Thesaurus, the word “wizard” is explicitly set forth as one
synonym for the word “wiz”, while the second level of
synonyms for “wizard” are all terms such as “expert”,
“whiz” and “wiz”. Even in the Lexis/Nexis database
excerpts submitted by applicant, we find evidence of the
interchangeable use of the terms “wizard” and “wiz”. We
cannot agree with applicant that reference to Bill Gates as

2 Reg. No. 1,138,618, issued Aug. 12, 1980, which sets forth
first use dates of Jan. 16, 1978. Combined §§ 8 and 15 affidavit
filed.
Ser No. 74/541,822
3
“Microsoft wizard boy” (The Boston Globe, Apr. 1, 1995) or
to a French financier as a “financial wizard” (The New York
Times, Apr. 2, 1995) denotes magical powers beyond that of
a person of outstanding ability. Instead the term “wizard”
appears to be used in these articles in the same sense that
“wiz” is used in the reference to Stan Winston, as “the
special effects creator who was the wiz behind Jurassic
Park” (The Orlando Sentinel, Mar. 23, 1995).
Thus, we agree with the position taken by the
Examining Attorney that the marks are “remarkably similar
in overall appearance and meaning.” As he points out, the
definition of “wizard” from Random House College Dictionary
which he has made of record also demonstrates the
interchangeable use of the words “wizard” and “wiz”,
“wizard” being described therein as “also called whiz,
wiz.” Furthermore, we agree with the Examining Attorney
that the prefacing of both marks with the word THE
increases the similarity of the overall impressions created
by the two marks. We do not believe that consumers would
make the distinction argued by applicant, that applicant’s
mark THE WIZARD, when used with its ignition lock, connotes
magic, but registrant’s mark THE WIZ, when used with an
intrusion device, connotes skill or effectiveness.
Ser No. 74/541,822
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We turn next to applicant’s argument that the terms
“wizard” and “wiz” are weak, and thus entitled to a limited
scope of protection when used in connection with electronic
goods. Applicant has submitted soft copies of several
third-party registrations which it contends illustrate the
common use of the word “wizard” or “wiz” or a combination
of words including “wiz” by others for consumer electronic
products.
Upon review of these registrations, we find that the
goods for the most part are computer products, either
software or hardware. Others include such unrelated goods
as stereo equipment, hand drills and tape measures. The
retail services for which the mark THE WIZ is registered
are in the area of computer products and consumer
electronics. None of the goods or services is directed to
anti-theft devices or alarm systems. While applicant’s
anti-thief device may be electronic in operation, all
electronic products, regardless of their function, cannot
be considered related goods for purposes of Section 2(d).
We find the third-party registrations to be for unrelated
goods and services, thus failing to establish that the
words “wizard” or “wiz” have any significance for any type
of security devices. See In re Mitsubishi Jidosha Kogyo
Kabushiki Kaisha, 19 USPQ2d 1633 (TTAB 1991).
Ser No. 74/541,822
5
Furthermore, the existence of third-registrations is
not evidence of what happens in the market or that
consumers are familiar with them. See Olde Tyme Foods Inc.
v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1543 (Fed. Cir.
1992); AMF Inc. v. American Leisure Prods. Inc., 474 F.2d
1403, 177 USPQ 268 (CCPA 1973). Thus, in the absence of
any probative evidence of the alleged weakness of
registrant’s mark, we find the scope of protection for the
mark should not be restricted.
With respect to the goods of the parties, it is
sufficient for the purpose of finding likelihood of
confusion that the goods and/or the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
conditions that could give rise to the mistaken belief,
because of the use of similar marks, that they emanate
from, or are associated with, the same source. See In re
Vienna Sausage Manufacturing Co., 16 USPQ2d 2044 (TTAB
1990); In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB
1988).
Applicant contends that the present goods are not
interchangeable, do not perform the same functions and
would not even be likely to be viewed by the same
consumers, in that the registrant’s goods are only a
Ser No. 74/541,822
6
component of an alarm system, not a finished product. The
Examining Attorney, on the other hand, maintains that the
products, while not identical, are both used for the
prevention of theft and conceivably could be used
conjointly on the same vehicle, to attempt to prevent both
entrance to the car and access to the ignition system.
At the outset, we find no basis for considering
registrant’s intrusion devices as other than consumer goods
which might be purchased by the general public. There is
no limitation in the identification of goods which leads us
to believe, as applicant argues, that the devices are sold
only to manufacturers as components for use in the end
manufacture of alarm systems. They could just as well be
purchased by the ordinary consumer for use as a part of an
alarm system. Nor is there any limitation as to the area
of use of registrant’s intrusion devices. It is common
knowledge that sensing devices are used on automobiles to
prevent the intrusion of thieves, as well as used to detect
intruders in the home. Furthermore, even if opposer’s
devices were used as a part of a home alarm system, both
security devices would be available to the same consumers.
Upon encountering THE WIZ intrusion device as a part of a
home alarm system and THE WIZARD automobile anti-theft
device, these consumers might well assume that the goods
Ser No. 74/541,822
7
emanate from the same source or at the very least are
associated with the same source.
Accordingly, on the basis of the relevant duPont
factors, we conclude that the likelihood of confusion has
been established.
Decision: The refusal to register under Section 2(d)
is affirmed.
J. D. Sams
E. J. Seeherman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
Ser No. 74/541,822
8