No. 86192202 (T.T.A.B. Dec. 28, 2015)

Lakeside Construction Fasteners, Inc.

Trademark Trial and Appeal BoardDec 28, 2015

No. 86192202 (T.T.A.B. Dec. 28, 2015)

This Opinion is Not a Precedent of the TTAB Mailed: December 28, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Lakeside Construction Fasteners, Inc. _____ Serial Nos. 86192117 and 86192202 _____ Stephen D. Schrantz of Schrantz Law Firm, PLLC for Lakeside Construction Fasteners, Inc. Brendan McCauley, Trademark Examining Attorney, Law Office 114, K. Margaret Le, Managing Attorney. _____ Before Wolfson, Adlin and Lynch, Administrative Trademark Judges. Opinion by Adlin, Administrative Trademark Judge: Lakeside Construction Fasteners, Inc. (“Applicant”) seeks registration of the mark T17 WOOD-X, in standard characters and in the form shown below (with T17 disclaimed in each application), for “Metal fasteners, namely, metal threaded fasteners with sealing washer for installing metal panels and sealing the Serial Nos. 86192117 and 86192202 2 panel; metal self-tapping fasteners with sealing washer for installing metal panels and sealing the panel; metal self-drilling fasteners with sealing washer for installing metal panels and sealing the panel.”1 The Examining Attorney refused registration under Section 2(d) of the Act on the ground that Applicant’s marks so resemble the registered mark WOODEX, in typed format, for “fasteners, namely, screws of metal,”2 that use of Applicant’s marks in connection with Applicant’s goods is likely to cause confusion or mistake or to deceive. After the refusals became final, Applicant appealed and filed motions for reconsideration which were denied. After the appeals resumed, Applicant and the Examining Attorney filed briefs. Appeals Consolidated These appeals involve common questions of law and fact and the records are substantially similar. Accordingly, we consolidate and decide both appeals in this single decision. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009); TBMP § 1214 (2015). Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 1 Application Serial Nos. 86192202 (the “‘202 Application”) and 86192117 (the “‘117 Application”), respectively, each filed February 12, 2014 under Section 1(b) of the Trademark Act, based on an intent to use the marks in commerce. The ‘117 Application includes this description of the mark: “The mark consists of ‘T17 WOOD-X’ stylized in which the ‘T17’ is located within a rectangle with rounded corners and a depiction of a threaded fastener is embedded in the letter ‘X’.” 2 Registration No. 2150581, issued April 14, 1998; renewed. Serial Nos. 86192117 and 86192202 3 (CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Here, the goods are obviously very closely related, if not legally identical, because “screws of metal,” such as those for which the cited mark is registered, are a type of “metal fastener,” for which Applicant seeks registration. Indeed, the Examining Attorney introduced evidence that: “fastener” is defined as “mechanically, any device that fastens; especially, a collective term for items such as screws, nuts, washers, bolts and the like”; and “screw” is defined as “a nail-shaped or rod-shaped piece with a spiral groove and a slotted or recessed head designed to be inserted into material by rotating (as with a screwdriver) and used for fastening pieces of solid material together.” Office Actions of December 5, 2014 (emphasis supplied).3 The close relationship between the goods is also evidenced by: (1) the design element of the mark in the ‘117 Application, which is described as including “a depiction of a threaded fastener,” just as Registrant’s goods are a type of threaded fastener; (2) printouts revealing that “Type 17” or “T17” screws, such as those referenced by the disclaimed 3 Printouts from Wiktionary (http://en.wiktionary.org/wiki/fastener#English) and Merriam- Webster (http://www.merriam-webster.com/dictionary/screw). Serial Nos. 86192117 and 86192202 4 portion of Applicant’s marks, include threads or spiral grooves; (3) Applicant’s promotional materials which reveal that its applied-for “metal fasteners” include metal screws, for which the cited mark is registered; and (4) Sterling Hardware’s listing of Registrant’s WOODEX product under the heading “Fasteners” and Registrant’s promotional material describing reasons for choosing “WOODEX™ fasteners.” Office Actions of May 22, 2014 (printouts from “bremick.com” and “unitedfasteners.com”); Office Action Responses of November 24, 2014 (copy of Applicant’s information/promotional sheet for its T17 WOOD-X fasteners and printout from “sterlinghardware.com”); Request for Reconsideration of June 15, 2015 (Registrant’s promotional material). Furthermore, the Merriam-Webster definition of “screw” is “a nail-shaped or rod-shaped piece with a spiral groove,” which is exactly what is depicted in the design mark in Applicant’s ‘117 Application. The Examining Attorney also made of record third-party use-based registrations showing that a single mark has been registered for goods such as those identified in the cited registration on the one hand and goods such as those identified in the involved applications on the other, including the following: NAFCO in typed format (Reg. No. 2402628) is registered for “metal threaded fasteners” and “metal fasteners” on the one hand and “metal screws” on the other. BAF (Stylized) (Reg. No. 2445101) is registered for “metal threaded fasteners” on the one hand and “metal screws” and “metal washers” on the other. HB (Stylized) (Reg. No. 2996549) is registered for “metal screws and metal fasteners, namely … metal threaded fasteners.” Serial Nos. 86192117 and 86192202 5 HEADLOK in standard characters (Reg. No. 3232246) is registered for “metal threaded fasteners and metal screws.” FULL-TORQUE in standard characters (Reg. No. 3625999) is registered for “metal fasteners, namely, threaded bolts to repair cracked metal or stripped threaded holes” and “metal threaded fasteners” on the one hand and “metal screws” on the other. DTF in standard characters (Reg. No. 3833863) is registered for “metal fasteners, namely, nuts, bolts, screws” and “metal threaded fasteners” on the one hand and “metal screws” on the other. GFX in standard characters (Reg. No. 3312579) is registered for “metal threaded fasteners, metal bolts, metal screws, and related metal hardware, namely metal nuts and metal washers for vessels.” ANCHORFAST AFCO SERVICE THAT EXCEEDS EXPECTATIONS & Design (Reg. No. 3907997) is registered for “metal fasteners, namely, bolts, nails, rivets, screws” and “metal threaded fasteners” on the one hand and “metal screws” on the other. YC in standard characters (Reg. No. 4045126) is registered for “metal threaded fasteners” on the one hand and “metal screws” on the other. DO IT ONCE. DO IT RIGHT. in standard characters (Reg. No. 4380573) is registered for “metal fasteners, namely, metal threaded fasteners, metal screws.” TS TRUE STAIN (Stylized) (Reg. No. 4106866) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. AEROPEM in standard characters (Reg. No. 4298838) is registered for “metal fasteners, namely … screws …” on the one hand and “metal threaded fasteners” on the other. Serial Nos. 86192117 and 86192202 6 WINER SCREW in standard characters (Reg. No. 4280906) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. RFT in standard characters (Reg. No. 4215275) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. FLASH-POINT in standard characters (Reg. No. 4273140) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. STICO (Stylized) (Reg. No. 4290243) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. FJ (Stylized) (Reg.. No. 4285811) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. ALBANYCOUNTYFASTENERS.COM QUALITY PRODUCTS THAT LAST – RIGHT OFF THE RACK & Design (Reg. No. 4367503) is registered for “metal fasteners, namely … screws …” on the one hand and “metal threaded fasteners” on the other. (Reg. No. 4540136) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. TENGDA & Design (Reg. No. 4594480) is registered for “metal screws” on the one hand and “metal threaded fasteners” on the other. INFASTECH in standard characters (Reg. No. 4268670) is registered for “metal fasteners and metal composite fasteners, namely, screws …,” “metal threaded fasteners” and “metal mechanical fastening and installation products, namely, screws ….” ELCO in standard characters (Reg. No. 4223360) is registered for “metal fasteners, namely screws …,” “metal Serial Nos. 86192117 and 86192202 7 threaded fasteners” and “metal fastener assemblies comprised of screws and washers sold together as a unit.” Office Action of December 16, 2014. “Third-party registrations which cover a number of differing goods and/or services, and which are based on use in commerce, although not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, may nevertheless have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). We are not persuaded by Applicant’s arguments that the goods are unrelated. As Applicant correctly points out, we “must look to the goods as identified in the application and the cited registration.” Applicant’s Appeal Brief at 8 (citing Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)). While Applicant’s goods as identified are all “for installing metal panels and sealing the panel,” there is nothing in Registrant’s unrestricted identification of goods – “fasteners, namely, screws of metal” – which would preclude them from also being used for installing metal panels or for sealing the panel.4 Furthermore, while Applicant’s goods all include a “sealing washer,” the evidence reveals that screws of metal such as those covered by the cited registration 4 In any event, Applicant’s amended identification of goods notwithstanding, Applicant promotes its goods sold under the T17 WOOD-X mark as “wood fasteners,” which are “designed for all types of decking substrate materials including hard woods.” Applicant’s Request for Reconsideration Ex. 4. Serial Nos. 86192117 and 86192202 8 may be used with, or offered by the same source under the same mark as, washers, and that Registrant’s WOODEX screws are sold in the same section of websites as washers, such as under the heading “Fasteners” and the sub-heading “Nuts, Bolts, Screws & Washers.” Office Action Responses of November 24, 2014 (printout from “sterlinghardware.com”); Office Actions of December 16, 2014 (third-party Reg. Nos. 4223361, 4276254, 4594480, 4540136, 4367503, 4285811, 4290243, 3312579 and 2445101); Denials of Requests for Reconsideration July 7, 2015 (printouts from “ihidaho.com,” “fastenerexperts.com” and “boltdepot.com”). “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Furthermore, the issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984). In this case, the goods are at least closely related. This factor therefore weighs in favor of a finding of likelihood of confusion. As for channels of trade, to the extent that “for installing metal panels and sealing the panel” could be considered a limitation, there is nothing in Registrant’s identification which would preclude its screws from being used for the same purpose. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (affirming Board finding that where the identification is unrestricted, “we must deem the goods to travel in all appropriate trade channels to Serial Nos. 86192117 and 86192202 9 all potential purchasers of such goods”). In any event, the evidence reveals that metal screws are offered in the same channels of trade as goods such as those Applicant offers. Denials of Requests for Reconsideration July 7, 2015 (printouts from “boltdepot.com,” “fastenal.com,” “grizzly.com” and “lawsonproducts.com”).5 This factor therefore also weighs in favor of a finding of likelihood of confusion. Turning to the marks, we agree with the Examining Attorney that WOOD-X is the dominant portion of Applicant’s marks, even though the descriptive and disclaimed term T17 appears first. Cunningham, 55 USPQ2d at 1846 (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). In fact, consumers familiar with Registrant’s WOODEX screws of metal who encounter Applicant’s mark may believe that it merely identifies Registrant’s “Type 17” or “T17” metal screws. The relatively minimal stylization and design element of the mark in the ‘117 Application are not enough to prevent confusion. Indeed, it is settled that where, as 5 The evidence that in one store Registrant’s products and products such as Applicant’s are displayed in different sections is not particularly meaningful, both because the goods are offered in the same retail outlet, and because in other retail outlets and websites the goods are displayed even more closely together. Serial Nos. 86192117 and 86192202 10 here, a mark is comprised of both words and a design, the words are normally accorded greater weight, because consumers are likely to remember and use the word(s) to request the goods. In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”); see also In re Viterra Inc., 671 F.2d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word and design mark likely will be the dominant portion”). This principle is particularly applicable here because consumers are unlikely to rely on Applicant’s realistic pictorial depiction of the goods as the primary source-indicating portion of the mark. Indeed, Applicant’s design, including its “depiction of a threaded fastener,” merely reinforces that, like Registrant, Applicant offers “fasteners,” which, like Registrant’s goods, are “threaded.” That Applicant’s mark includes WOOD-X while Registrant’s mark is WOODEX is not enough to avoid confusion. This portion of Applicant’s mark differs from Registrant’s mark by only one letter/character, and, more importantly, the difference does not affect the way the marks sound, which is essentially identical. We are not persuaded by Applicant’s argument that Registrant’s mark is intended to be pronounced “wood decks,” because to many consumers, Applicant’s mark will also sound like “wood decks.” Serial Nos. 86192117 and 86192202 11 We are also not persuaded by Applicant’s argument that confusion is unlikely because the WOOD “prefix” of Registrant’s mark “merely describes Registrant’s wood screws.” This is irrelevant where Registrant’s identification of goods is simply for metal screws, and includes no mention of wood. There is also no evidence that WOOD, even if used as a word by itself, is merely descriptive of “screws of metal.” In any event, this is an ex parte proceeding, and “inasmuch as the cited mark is registered on the Principal Register, we must assume that it is at least suggestive.” In re Fiesta Palms, 85 USPQ2d 1360, 1363 (TTAB 2007) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997)). Furthermore, even if Registrant’s mark used the word “wood” alone, and it suggested that Registrant’s metal screws are to be used on wood, Applicant’s mark also features the same word in the context of fasteners, and it would therefore have the same connotation in Applicant’s mark as in Registrant’s mark. Consumers encountering Applicant’s mark will not be aware that Applicant’s identification of goods indicates that its screws are used for “metal panels,” and may believe that Applicant’s goods could also be used for wood. In fact, this may be likely to occur because the record reveals that “Type 17” or “T17” screws such as those described by the disclaimed portion of Applicant’s mark may be used for timber. Office Actions of May 22, 2014 (printouts from “bremick.com” and “unitedfasteners.com”). In other words, Applicant’s marks suggest that Applicant’s fasteners may be used for wood, because both of its marks include “T17” and the word “wood,” and consumers will encounter the marks, not Applicant’s amended identification of goods which specifies that the fasteners are Serial Nos. 86192117 and 86192202 12 used to install and seal metal panels. And it does not escape notice that Applicant promotes its goods sold under the T17 WOOD-X mark as “wood fasteners,” which are “designed for all types of decking substrate materials including hard woods.” Applicant’s Request for Reconsideration Ex. 4. It is settled that the test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). Here, considered in their entireties, the marks are somewhat similar in appearance, similar in sound, and, especially taking into account the descriptive nature of T17, convey the same meaning. This factor therefore also weighs in favor of a finding of likelihood of confusion. Finally, Applicant’s argument that the relevant customers are “sophisticated” is unsupported by any evidence whatsoever. And there is nothing in either Applicant’s or Registrant’s identifications of goods which limit the goods to the construction industry or any other class of consumer, so we must presume that they will be purchased by sophisticated and unsophisticated members of the general public. Stone Lion Capital, 110 USPQ2d at 1162-63 (“Stone Lion effectively asks this court to disregard the broad scope of services recited in its application, and to instead rely on the parties’ current investment practices … the Board properly considered all Serial Nos. 86192117 and 86192202 13 potential investors for the recited services, including ordinary consumers seeking to invest in services with no minimum investment requirement.”) (emphasis in original). This factor is neutral. Conclusion Applicant’s and Registrant’s marks are each used for fasteners made of metal which travel in the same channels of trade, include the word “wood” followed by “x” or “ex” and create similar overall commercial impressions, and both Applicant and Registrant promote their goods for use with wood. Accordingly, confusion is likely. Decision: The Section 2(d) refusals to register Applicant’s marks are affirmed.