Magner Corp. of America

Trademark Trial and Appeal Board

Jun 6, 2002

No. 75497927 (T.T.A.B. Jun. 6, 2002)

Mailed: June 6/2002

Hearing: Paper No. 16
March 14, 2002 BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Magner Corporation of America, by merger with Magner
Corporation1
________

Serial No. 75/497,927
_______

Peter L. Costas of Pepe & Hazard, LLP for Magner
Corporation of America, by merger with Magner Corporation.

Brendan Regan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Hanak, Chapman and Rogers, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
Magner Corporation of America (applicant) has appealed
from the final refusal of the Examining Attorney to

1 The records of the Assignment Branch of the USPTO indicate that
the original applicant, Magner Corporation, has merged into
Magner Corporation of America. (Reel 2189, Frame 0134.)
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser. No. 75/497927
2
register the mark shown below

for “coin sorters; coin counters and verifiers sold singly
and in combination, used for discrimination and counting of
coins; coin packagers; paper currency counters; currency
recognition and validation units; currency scales;
computers and software for recording and reporting
financial transactions” in International Class 9.2
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the basis of two registrations, both issued to Coin
Acceptors, Inc., and both for goods identified as “vending
machines and bill validators” in International Class 9 --
Registration No. 2,312,323, issued January 25, 2000, for
the mark MAG, and Registration No. 2,354,001, issued May
30, 2000 for the mark shown below

2 Application Serial No. 75/497,927, filed June 8, 1998, based on
applicant’s assertion of a bona fide intention to use the mark in
commerce.
Ser. No. 75/497927
3
(This registration includes a statement that the drawing is
lined for the color red but color is not a feature of the
mark.)
Briefs have been filed, and an oral hearing was held
before this Board on March 14, 2002.
Preliminarily, we will address two evidentiary
matters. First, the Examining Attorney requested in his
brief that the Board take judicial notice of attached
dictionary definitions of the terms “bill” and “currency.”
This request is granted. See 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).
See also, TBMP §712.01.
Second, applicant submitted three exhibits with its
brief and the Examining Attorney objected thereto,
requesting that the exhibits be given no consideration.
Exhibit A is simply a photocopy of the drawing page of
applicant’s application. (It was, of course, unnecessary
for applicant to submit same as an exhibit.) Exhibit B
consists of photocopies of literature about applicant’s
goods, and Exhibit C consists of printouts from a website
“coinco.com” about registrant’s goods.3 With regard to the

3 There is no indication in the printouts that “coinco.com” is
the website of registrant, Coin Acceptors, Inc. Nor is there any
Ser. No. 75/497927
4
latter two exhibits, during the ex parte prosecution
applicant had previously stated that it had attached
literature about both applicant and registrant. (See
Applicant’s August 17, 2000 Response to Second Office
Action, p. 3.) Inasmuch as the Examining Attorney then
assigned to this application did not make any mention of
same nor indicate that the materials were not attached, the
Examining Attorney’s belated objection is overruled. The
Board has considered applicant’s exhibits attached to its
brief on the case. Of course, as discussed more fully
later in this decision, the Board must nonetheless consider
the question of registrability in relation to the goods as
identified.
Essentially, the Examining Attorney argues that the
dominant feature of each mark is “MAG,” and applicant’s
slight stylization of lettering and the addition of the
Roman numeral “II” does not distinguish applicant’s mark
from registrant’s marks; that the marks are highly similar
in sound, appearance, connotation and commercial
impression; that registrant’s “bill validators” and
applicant’s “currency recognition and validation units” are

record in the Assignment Branch of the USPTO that the cited
registrations have been transferred to an entity named Coinco.
Despite this fact, we have considered this evidence assuming that
it is from registrant’s website.
Ser. No. 75/497927
5
particularly highly related; and that any doubt on the
issue must be resolved in registrant’s favor.
Applicant argues that its mark is not MAG alone but
includes a logo format and the registrant’s marks are MAG
alone and MAG in a logo format “clearly distinct” (brief,
p. 4) from that of applicant. Applicant strongly urges
that the goods are not related because registrant’s goods
(“bill validators”) are component parts of vending machines
or bill-changing machines sold to vending machine
manufacturers, while applicant’s “currency recognition and
validation units” are complete machines utilized by and
sold to financial institutions, armored car services and
large retail establishments; and that neither applicant nor
registrant sell to the general public, but rather, each
entity’s customers are sophisticated. Put another way,
applicant contends that the parties’ respective goods are
sold in different channels of trade to different and
sophisticated purchasers; and that merely because both
companies’ products process currency and coinage in some
manner “does not mean that there is a likelihood of
confusion between the goods.” (Brief, p. 5.)
The salient question to be determined is not whether
the goods of the parties are likely to be confused, but
rather whether there is a likelihood that the public will
Ser. No. 75/497927
6
be misled to believe that the goods offered under the
involved marks originate from a common source. See J.C.
Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960,
144 USPQ 435, 438 (CCPA 1965); and The State Historical
Society of Wisconsin v. Ringling Bros.-Barnum & Bailey
Combined Shows, Inc., 190 USPQ 25, 30 (TTAB 1976).
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
In considering the respective marks, we find
applicant’s mark is similar in sound, appearance,
connotation and commercial impression to the marks in each
of the two cited registrations. The word or letter portion
of each mark is “MAG.” The dollar bill design, the
underline in red and the stylized lettering in one of
registrant’s marks and the underline, the Roman numeral II
and the stylized lettering in applicant’s mark do not
obviate any likelihood of confusion, especially in light of
the fallible memories of consumers. See Spoons Restaurants
Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir., June 5, 1992).
As acknowledged by applicant “the roman numeral II
signifies a second version of several of the devices in the
Ser. No. 75/497927
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product grouping.” 4 (Applicant’s July 22, 1999 Response to
an Office action, p. 1). We agree that the marks MAG
(registrant’s mark) and MAG II (applicant’s mark) will be
perceived by the purchasing public as the related versions
of a mark for variations in a product line. That is,
purchasers may well assume that applicant’s mark MAG II and
design connotes the second generation of registrant’s
goods, the first generation of which are identified by the
marks MAG and MAG and design.
Turning to a consideration of the involved goods, it
is well settled that goods (and/or services) need not be
identical or even competitive to support a finding of
likelihood of confusion. It is sufficient that the goods
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See In re
Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992); and

4 The Board notes that applicant owns Registration No. 1,698,843,
issued July 7, 1992, for the mark MAGNER for “coin sorters; coin
counters and verifiers, and coin packagers, sold singly and in
combination, used for discrimination and counting of coins; paper
currency counters; currency scales; computers and software for
recording and reporting financial transactions”; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser. No. 75/497927
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Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB
1978).
In determining the question of likelihood of
confusion, the Board is constrained to compare the goods
(and/or services) as identified in the application with the
goods (and/or services) as identified in the cited
registration(s). If the registrant’s goods and the
applicant’s goods are described so as to encompass or
overlap, then applicant cannot properly argue that, in
reality, the actual goods of the applicant and registrant
are not similar. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); and In re Continental
Graphics Corp., 52 USPQ2d 1374 (TTAB 1999).
In this case, we shall focus our attention (as have
both applicant’s attorney and the Examining Attorney) on
certain items in the respective identifications of goods,
namely, applicant’s “coin sorters; coin counters and
verifiers...; paper currency counters; and currency
recognition and validation units” and registrant’s “bill
validators.”
It appears that “bill validators” in registrant’s
identification may be a term of art in the relevant field,
and thus the Board will consider the evidence submitted
Ser. No. 75/497927
9
with applicant’s brief (Exhibits B and C) in determining
the question of the similarities/dissimilarities and nature
of the respective goods. See In re Trackmobile Inc., 15
USPQ2d 1152 (TTAB 1990). However, even considering this
evidence, it does not establish, as applicant contends,
that these goods, as identified, are distinct and
unrelated. Applicant submitted photocopies of
informational brochures about its “currency counter,” “coin
counter/packager” and “coin sorters”; as well as printouts
of several pages from “coinco.com” which applicant states
is “the Coin Acceptors’ [registrant’s] website.” (Brief,
p. 2.) The printouts from the coinco.com website include
the following headings: “coin acceptors / bill acceptors /
card readers / controllers / international.” Moreover, the
website printouts include statements such as the following:
Coinco is the dominant coin and bill
acceptor brand in the world;

Together with the Coinco family of
products, this acquisition [of Money
Controls] has created the world’s
premier provider of products for
automated transaction needs. The
combined technologies provide coin
changers, coin validators, bill
acceptors and hoppers for any
application in virtually every country
of the world;

The company provides the world’s
largest variety of hoppers and
validators for a diverse range of
Ser. No. 75/497927
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markets including amusement, gaming and
vending; and

Coinco continues to provide leading-
edge coin and bill handling equipment
that works harder and smarter for you.

The information presumably from registrant’s website
is not supportive of applicant’s point. First, the website
information does not utilize the term “bill validators” but
rather uses the term “bill acceptors.” Further, there is
no clarification or explanation within the pages submitted
by applicant establishing precisely what the involved term
“validator” means in the industry.
Even if the very narrow definition of a bill validator
urged by applicant had been shown (which it was not) it is
not implausible that the registrant could begin making the
more advanced, more complicated money handling equipment
which is capable not only of validating a single
denomination bill, but equipment that can first recognize
the different denominations of currency and then validate
same.
The record does show that one use of “Coinco’s”
products is with vending machines, but it also shows that
these products are sold to a diverse range of markets
including the amusement and gaming industries. Further, we
do not read registrant’s identification of goods --
Ser. No. 75/497927
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“vending machines and bill validators” -- as limiting
registrant’s “bill validators” to only those which are a
component part of a vending machine. The word “and” must
be read in its common English meaning, that is, that
registrant has registered its marks for the two items set
forth in each of its identifications of goods. If
registrant sold only a vending machine with a bill
validator as a part thereof, presumably the identification
of goods would so read.
There is no stated restriction in either party’s
identification of goods as to relevant purchasers. But, we
agree that the general public would not generally purchase
vending machines and or bill validators. Applicant’s goods
encompass numerous items, some of which are likewise not
likely to be purchased by the general public (e.g.,
currency recognition and validation units, computers and
software for recording and reporting financial
transactions), but others (e.g., coin sorters) could
conceivably include common small coin sorters sold to the
general public. Even assuming that the relevant purchasers
for both parties’ identified goods would be sophisticated
purchasers, that does not mean that they are totally immune
from confusion as to the source of the goods and services.
See Wincharger Corporation v. Rinco, Inc., 297 F.2d 261,
Ser. No. 75/497927
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132 USPQ 289 (CCPA 1962); and In re Decombe, 9 USPQ2d 1812
(TTAB 1988).
We agree with the Examining Attorney that the goods,
as identified, are related; and applicant’s evidence does
not rebut the prima facie showing. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987).
Consumers familiar with registrant’s “bill validators”
sold under the marks MAG and MAG and design, would be
likely to believe, upon encountering applicant’s mark, MAG
II and design, for, inter alia, “currency recognition and
validation units” that the goods originated with or were
somehow associated with or sponsored by registrant.
Any doubt on the question of likelihood of confusion
must be resolved against the newcomer, as the newcomer has
the opportunity of avoiding confusion and is obligated to
do so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44
USPQ2d 1315 (Fed. Cir. 1997); and In re Hyper Shoppes
(Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed as to both cited registrations.