Liberty Safe & Security Products, Inc.v.Jeffrey P. Scarpelli

Trademark Trial and Appeal Board

Jun 17, 2008

No. 91173739 (T.T.A.B. Jun. 17, 2008)

Mailed: June 17, 2008

Opposition No. 91173739
Liberty Safe & Security
Products, Inc.

v.

Jeffrey P. Scarpelli

Before Grendel, Holtzman and Bergsman,
Administrative Trademark Judges.

By the Board:

This case is before the Board for consideration of
opposer’s motion for summary judgment and applicant’s cross
motion for summary judgment.
On August 26, 2005, Jeffrey P. Scarpelli (“applicant”)
filed an intent-to-use application (Serial No. 78701576)
for the mark FREEDOM SECURITY, in standard character
format, for services ultimately identified as follows:
Retail sales by mail solicitation,
telephone solicitation, personal
visitations to worksites, and at the
applicant's place of business featuring
safes, security filing cabinets, locks,
multi-location lock systems, keys, key
systems, video surveillance systems,
identification badge readers, and
access control systems having an input,
such as an identification card reader
or biometric reader, along with
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91173739
2
electromechanical door and gate
latching mechanisms, in Class 35; and,

Installation and repair services for
safes, security filing cabinets, locks,
multi-location lock systems, keys, key
systems, video surveillance systems,
identification badge readers, and
access control systems having an input
such as a card reader or biometric
reader, along with electromechanical
door and gate latching mechanisms, in
Class 37.

Applicant disclaimed the exclusive right to use the word
“security.”
Liberty Safe & Security Products, Inc. (“opposer”)
opposed the registration of applicant’s mark under Section
2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d).
Opposer alleged that applicant’s use of the mark FREEDOM
SECURITY, in connection with applicant’s services, is
likely to cause confusion with opposer’s mark FREEDOM SAFE
for metal safes.1

1 Registration No. 2251255, issued June 8, 1999; Section 8 and 15
affidavits accepted and acknowledged. Opposer disclaimed the
exclusive right to use the word “safe.”

Opposer also alleged that it has been using the marks FREEDOM
SECURITY and FREEDOM SECURITY BY LIBERTY for metal safes in
interstate commerce since at least as early as September 1, 2005
(Serial Nos. 78736196 and 78736186 both filed on October 19,
2005). Because the filing date of the application at issue
(August 26, 2005) predates opposer’s first use (and filing dates)
of its “Freedom Security” marks, applicant has priority of use
vis-à-vis those marks. Therefore opposer’s pleading is
inadequate to support the ground of priority of use and
likelihood of confusion, and it fails to state a claim upon which
relief can be granted. Zirco Corp. v. AT&T, 21 USPQ2d 1544 (TTAB
1991). See also Jimlar Corp. v. Army & Air Force Exchange
Opposition No. 91173739
3
Applicant admitted that opposer is the owner of
Registration No. 2251255 for the mark FREEDOM SAFE for
metal safes, but denied the remaining allegations in the
notice of opposition.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S.Ct. 2548
(1986). The evidence must be viewed in a light favorable
to the non-movant, and all justifiable inferences are to be
drawn in the non-movant's favor. See Lloyd's Food Products
Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir.
1993); Opryland USA Inc. v. Great American Music Show Inc.,
970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
Standing and Priority
Although applicant admitted that opposer is the owner
of Registration No. 2151255 for the mark FREEDOM SAFE for
metal safes, applicant did not admit that the registration

Service, 24 USPQ2d 1216, 1217 n.5 (TTAB 1992). In view thereof,
we will focus our discussion on a comparison of opposer’s mark
FREEDOM SAFE and applicant’s mark FREEDOM SECURITY.
Opposition No. 91173739
4
is still active and valid, nor did opposer submit a status
and title copy of the registration with its pleading or in
support of its motion for summary judgment. Moreover,
opposer did not produce any witness to testify that the
registration is still active and valid. Therefore, opposer
must rely on its common law use of the mark to FREEDOM SAFE
to prove its standing and priority of use.
Opposer introduced the declaration of Kim Waddoups,
the Chief Financial Officer of opposer. Mr. Waddoups
testified that opposer “has continuously used the mark
FREEDOM SAFE in commerce in connection with metal safe
products since at least as early as May 1, 1997.”2 The
testimony in Mr. Waddoups’ declaration is sufficient to
establish that opposer has a real interest in this
proceeding and that opposer has made prior use of the mark
FREEDOM SAFE in connection with metal safes. See National
Bank Book Co. v. Leather Crafted Products, Inc., 218 USPQ
826, 828 (TTAB 1993) (oral testimony may be sufficient to
prove the first use of a party’s mark when it is based on
personal knowledge, it is clear and convincing, and it has
not be contradicted); Liqwacon Corp. v. Browning-Ferris
Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral
testimony may be sufficient to establish both prior use and

2 Waddoups Dec. ¶5.
Opposition No. 91173739
5
continuous use when the testimony is proffered by a witness
with knowledge of the facts and the testimony is clear,
convincing, consistent, and sufficiently circumstantial to
convince the Board of its probative value); GAF Corp. v.
Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB
1976) (oral testimony may establish prior use when the
testimony is clear, consistent, convincing, and
uncontradicted). Inasmuch as opposer’s testimony regarding
the first use of its mark was proffered by someone with
knowledge, and it was clear, convincing, consistent and
uncontradicted, opposer has proven its standing and
priority of use.
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the 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 (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
Opposition No. 91173739
6
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”).
A. The similarity or dissimilarity and nature of
opposer’s products and applicant’s services.

The description of services in the application at
issue comprise the sale, installation and repair of a wide
variety of security products, including safes. On the
other hand, opposer has been using the mark FREEDOM SAFE in
connection with metal safes. Applicant has admitted that
the services set forth in its description of services are
related to opposer’s metal safes.
With respect to request no. 10
Admit that both Opposer and Applicant
user their respective marks in
connection with metal safes.
Applicant admits only partially to
the matter that Opposer and Applicant
use their respective marks in
connection with metal safes.
Applicant’s listing of goods/services
shows that Applicant’s mark will be
used in connection with safes and not
necessarily metal safes.

With respect to request no. 11
Admit that Applicant uses or intends
to use Applicant’s mark in connection
with the servicing of metal safes.
Applicant admits only partially to
the matter that Applicant uses or
intends to use Applicant’s mark in
connection with the servicing of metal
safes. Applicant’s listing of
Opposition No. 91173739
7
goods/services clearly shows that
Applicant’s mark will be used in
connection with the servicing of safes
and not necessarily metal safes.

With respect to request no. 12
Admit that the goods/services for
which Applicant is using or intends to
use with Applicants (sic) mark are
closely related to “metal safes” (sic)
Applicant admits only partially to
the matter that the goods/services for
which Applicant is using or intends to
use with Applicant’s mark are closely
related to “metal safes”.
Applicant’s listing of goods/services
for the mark FREEDOM SECURITY clearly
show (sic) that the word safes as being
used not “metal safes” (sic)3

It is well settled that likelihood of confusion is
determined on the basis of the services as they are
identified in the application. Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers

3 Applicant’s response to opposer’s requests for admissions
attached to opposer’s motion for summary judgment as Exhibit F.
Opposition No. 91173739
8
to which the sales of goods are directed”). As the Court
of Customs and Patent Appeals, the predecessor of our
primary reviewing court, explained in Tuxedo Monopoly, Inc.
v. General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

As indicated above, the services described in the
application are for the sale, installation and repair of a
wide variety of security products, including safes.
Because there are no restrictions or limitations as to the
type of safes described in the description of services, we
must presume that it includes all types of safes, including
metal safes. Squirtco v. Tomy Corp., 697 F.2d 1038, 216
USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation and nothing in the inherent nature of Squirtco’s
mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Opposition No. 91173739
9
To the extent that the application is for the sale,
installation and repair of safes, including metal safes,
and opposer is using its mark to identify metal safes,
applicant’s services and opposer’s products are related.
The fact that there are some differences in the description
of services for the application and opposer’s products does
not obviate the fact that applicant’s services and
opposer’s products are related. See Tuxedo Monopoly, Inc.
v. General Mills Fun Group, Inc., 209 USPQ at 988.
In view of the foregoing, there is no genuine issue of
fact regarding the similarity of applicant’s services and
opposer’s products.
B. The similarity or dissimilarity of likely-to-continue
trade channels.

As with the similarity or dissimilarity or nature of
opposer’s products and applicant’s services, applicant has
admitted that the products and services move in the same
channels of trade.
With respect to request no. 13
Admit that Applicant does currently
and/or does intend to offer its
goods/services used in connection with
Applicant’s mark for sale in the same
channels of trade as Opposer.
Applicant admits only partially to
the matter that Applicant does
currently and/or does intend to offer
its goods/services used in connection
with Applicant’s mark for sale in the
same channels of trade as Opposer.
Opposition No. 91173739
10
Applicant’s mark FREEDOM SECURITY
will be used according to its listing
of goods/services and will be working
in the security marketplace as work or
sales become available. Opposer’s
business practices or sales and
manufacturing of products are directed
according to its listing of
goods/services specifically metal
safes, whereas Applicant’s mark is
directed towards security marketplace
in general.

Because there are no restrictions or limitations in
applicant’s description of services, we must presume that
his services will be rendered in all channels of trade that
would be normal for such services, and that they would be
available to all classes of potential consumers, including
those who might purchase metal safes. See In re Linkvest
S.A., 24 USPQ2d at 1716; In re Elbaum, 211 USPQ at 640.
In view of the foregoing, there is no genuine issue of
fact regarding the similarity of the channels of trade
between applicant’s services and opposer’s products.
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
Opposition No. 91173739
11
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988).
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 so that confusion as to
the source of the goods offered under the respective marks
is likely to result. San Fernando Electric Mfg. Co. v. JFD
Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3
(CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086
(Fed. Cir. June 5, 1992). The proper focus is on the
recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335,
344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106, 108 (TTAB 1975). As applicant stated in response
to Request for Admission No. 13, the average consumer is in
the security marketplace.
While marks must be compared in their entireties, it
is not improper to accord more or less weight to a
particular feature of a mark. In re National Data Corp.,
Opposition No. 91173739
12
753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). In the
marks of the parties, the word “Freedom” is the dominant
portion of the marks because the words “Security” in
applicant’s mark and “Safe” in opposer’s mark are
descriptive. With respect to opposer’s mark, the word
“Safe” is clearly descriptive, if not generic, for metal
safes. With respect to applicant’s mark FREEDOM SECURITY,
the word “Security” is descriptive of applicant’s services
because it directly conveys information regarding the
subject matter of the services (i.e., security systems and
equipment). Applicant acknowledged the descriptive nature
of the word “Security” by disclaiming the exclusive right
to use the word in response to the March 16, 2005 Office
Action. Case law recognizes that disclaimed, descriptive
matter may have less significance in likelihood of
confusion determinations. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 24 USPQ2d at 752
(“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”). See also In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial
Opposition No. 91173739
13
impression”). In this case, the descriptive words
“Security” and “Safe” are unlikely to be used to
distinguish the marks.
The significance of the word “Freedom” is further
reinforced by its location as the first word of both marks.
As such it is the first word consumers will see when
encountering the marks of the parties, and therefore it is
more likely to have a greater impact on purchasers and be
remembered by them. Presto Products Inc. v. Nice-Pak Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon
the mind of a purchaser and remembered). See also See Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the
most prominent part of the mark VUEVE CLICQUOT because
“veuve” is the first word in the mark and the first word to
appear on the label); Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (upon encountering the marks, consumers
must first notice the identical lead word).
In comparing opposer’s mark FREEDOM SAFE and
applicant’s mark FREEDOM SECURITY, we note that both marks
consist of two words with the arbitrary word “Freedom” as
the first word in each mark followed by a descriptive word.
Opposition No. 91173739
14
Applicant’s substitution of the descriptive word “Security”
in its mark, FREEDOM SECURITY, for the descriptive word
“Safe” in opposer’s mark, FREEDOM SAFE, does not
distinguish applicant’s marks from opposer’s mark. See In
re Xerox Corp., 194 449 (TTAB 1977) (“6500” and “6500 LINE”
are basically the same because the addition of the
descriptive word “line” does not distinguish the marks).
See also, The Wella Corp, v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (the inclusion of
a suggestive or descriptive word to an otherwise arbitrary
term will not preclude a finding of likelihood of
confusion).
Moreover, because the word “Freedom” is an arbitrary
term when used in connection with applicant’s services and
opposer’s safes, consumers encountering the marks may
believe that they are somehow connected or affiliated with
each other. In this regard, we note that the words “Safe”
and “Security” have similar meanings. “Safe” means “secure
from liability to harm, injury, danger, or risk.”4
Specifically with respect to opposer’s safes, the word

4 The Random House Dictionary of the English Language
(Unabridged), p. 1690 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91173739
15
“Safe” means “a steel or iron box or repository for money,
jewels, papers, etc.” or “any receptacle or structure for
the storage or preservation of articles.”5 The word
“Security” means “freedom from danger, risk, etc.; safety.
. . . something that secures or makes safe; protection;
defense.”6 Because “Safe” and “Security” have essentially
the same meaning, the commercial impression engendered by
the marks FREEDOM SAFE and FREEDOM SECURITY is similar.
In view of the foregoing, there is no genuine issue of
fact regarding the similarity of the marks in terms of
appearance, sound, meaning, and commercial impression.
D. Balancing the factors.
After reviewing the arguments and supporting papers of
the parties in a light most favorable to applicant, and
drawing all justifiable inferences in favor of applicant,
we find that no genuine issue of material fact exists as to
the relevant likelihood of confusion factors made of record
under Section 2(d) of the Trademark Act of 1946. See Fed.
R. Civ. P. 56 (c). The marks of the parties are similar,
the services of the applicant and the products of opposer
are related, and the channels of trade and classes of
consumers are the same. In view of the foregoing,

5 Id.
6 Id. at 1731.
Opposition No. 91173739
16
opposer’s motion for summary judgment is granted, and
applicant’s cross motion for summary judgment is denied.
Decision: The opposition is sustained and
registration to applicant is refused.