Mannesmann GmbH

Trademark Trial and Appeal Board

Mar 18, 2014

No. 79109525 (T.T.A.B. Mar. 18, 2014)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: March 18, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re R.C. Mannesmann GmbH
________

Serial No. 79109525
_______

Stewart J. Bellus and Aimee L. Kaplan of Collard & Roe PC for R.C.
Mannesmann GmbH.

Bernice Middletown, Trademark Examining Attorney, Law Office 106 (Mary
Sparrow, Managing Attorney).
_______

Before Bucher, Cataldo and Gorowitz,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, R.C. Mannesmann GmbH, filed an application to register in
standard characters on the Principal Register the mark RC MANNESMANN
for
faucet aerators; constant flow regulators for water installations;
shower heads; shower hoses; toilet seats; toilet seats with
integrated shower
(International Class 11).1

1 Application Serial No. 79109525 was filed on December 15, 2011, seeking an
extension of protection under Section 66(a) of the Trademark Act, based upon
International Registration No. 1107749, issued on December 15, 2011.

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The trademark examining attorney refused registration under Section
2(d) of the Trademark Act on the ground that applicant’s mark, as used in
connection with its goods, so resembles the mark MANNESMANN,
previously registered in typed or standard characters2 on the Principal
Register for
tubes, tube joints, flexible metal tubing; copper, brass, and
manganesebronze pipes; corrugated metal culvert pipe,
expansion-joint piping, worm pipes, water piping, cast-iron
forged and drawn steel piping; gas piping and nipples, unions
and valves therefor; conduits and piping for steam, refrigerating,
water, air, naphtha, petroleum, and hydraulic purposes; flanged
piping, socket pipes, metallic pipe linings, steel pipe flanges and
fittings
(International Class 13)3

as to be likely to cause confusion, mistake or deception. When the refusal
was made final, applicant appealed.
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an
analysis of all of the probative facts in evidence that are relevant to the
factors set forth in 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 Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any
likelihood of confusion analysis two key, though not exclusive, considerations

2 “Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’
drawings. The mark on a typed drawing had to be typed entirely in capital letters.
A typed mark is the legal equivalent of a standard character mark.” Trademark
Manual of Examining Procedure (“TMEP”) § 807.03(i) (Oct. 2013).

3 Registration No. 0628522 issued on June 12, 1956. Third Renewal.
Ex Parte Appeal No. 79109525

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are the similarities between the marks and the similarities between the
goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We first turn our attention to a comparison of the marks. In
determining the similarity or dissimilarity of the marks, we must compare
the marks in their entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
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 their entireties that confusion as to the source of the goods offered
under the respective marks is likely to result.
In this case, applicant’s mark, RC MANNESMANN is nearly identical
to the registered mark, MANNESMANN, in that applicant’s mark wholly
incorporates that of registrant. MANNESMANN, the sole term comprising
registrant’s mark, is identical in appearance and sound to that term as it
appears in applicant’s RC MANNESMANN mark. There is no evidence that
MANNESMANN possesses any meaning or connotation in connection with
applicant’s or registrant’s goods. Applicant argues (brief, p. 2) that
“MANNESMANN merely is a surname, while Applicant’s mark RC
Ex Parte Appeal No. 79109525

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MANNESMANN contains the letters RC, a composite that creates the
impression of a full name.” However, even if we accept that MANNESMANN
is a surname, the addition of the initials RC to applicant’s mark does not
create a connotation that is separate and distinct from that of registrant’s
mark. To the contrary, the initials RC in applicant’s mark reinforce and
draw additional attention to the asserted surname MANNESMANN which,
as noted above, comprises registrant’s entire mark.
In view of the foregoing, we find the marks RC MANNESMANN and
MANNESMANN are nearly identical in appearance, sound and connotation.
Furthermore, both marks are presented in typed or standard characters and
therefore we must consider that they may be presented in the same
stylization found in the other’s mark. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1909 (Fed. Cir. 2012). See also Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed. Cir. 2000). As a result,
we find that, when viewed in their entireties, the marks are far more similar
than they are different and, overall, convey nearly identical commercial
impressions. That is to say, the marks appear to be variations of each other
that nonetheless point to a common source. As such, this du Pont factor
favors a finding of likelihood of confusion.
The Goods
We turn now to our consideration of the identified goods, noting that it
is not necessary that the goods at issue be similar or competitive, or even that
Ex Parte Appeal No. 79109525

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they move in the same channels of trade, to support a holding of likelihood of
confusion. It is sufficient instead that the respective goods are related in
some manner, and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be encountered by
the same persons under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they originate from the same
producer. See In re International Telephone & Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978).4
In this case, applicant’s goods are
faucet aerators; constant flow regulators for water installations;
shower heads; shower hoses; toilet seats; toilet seats with
integrated shower

and the goods in the cited registration are
tubes, tube joints, flexible metal tubing; copper, brass, and
manganesebronze pipes; corrugated metal culvert pipe,
expansion-joint piping, worm pipes, water piping, cast-iron
forged and drawn steel piping; gas piping and nipples, unions
and valves therefor; conduits and piping for steam, refrigerating,
water, air, naphtha, petroleum, and hydraulic purposes; flanged
piping, socket pipes, metallic pipe linings, steel pipe flanges and
fittings.

Evidence made of record by applicant (October 10, 2012 communication)
explains that “constant flow regulators” consist of “a precision O-ring
(dynamic elastomer), and engineered circular seating area (core) and a body

4 We observe that the while the cited registration originally identified such goods as
“stationary showers; lavatories; and shower-bath fixtures,” these goods and others
were deleted by subsequent amendment of the registration and are not being
considered in our determination herein.

Ex Parte Appeal No. 79109525

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(housing)” and are used to ensure constant and even water flow regardless of
the water line pressure. As identified, applicant’s constant flow regulators
appear to be related to registrant’s water piping, and conduits and piping for
water inasmuch as applicant’s goods may be used to regulate and ensure a
constant flow of water through the goods of registrant. In addition,
applicant’s faucet aerators, shower heads and hoses, and toilet seats with
integrated shower may be attached to registrant’s water piping and conduits.
Thus, applicant’s goods appear to be related on the face of their identification
to registrant’s water piping and conduits.
In addition, the examining attorney has made of record numerous use-
based third-party registrations, of which the following show that various
entities have adopted a single mark for goods identified in the involved
application and cited registration:
Registration No. 1432602 for, inter alia, shower heads, tubes,
valves;

Registration No. 2783730 for, inter alia, faucet aerators, hand
held shower heads, lavatory seats, shower heads, heat pipes to
cool heat producing components, pipes being part of sanitary
facilities;

Registration No. 4172328 for, inter alia, shower heads, hand-
held shower heads, faucets, bath spouts, plumbing fittings,
namely, valve trim; and

Registration No. 4080823 for, inter alia, steel piping
components, toilet seats.

Third-party registrations which individually cover a number of different
items and which are based on use in commerce serve to suggest that the
Ex Parte Appeal No. 79109525

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listed goods and/or services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). The evidence of record establishes that applicant’s goods are related to
the goods identified in the cited registration, and further may be identified
under the same mark. As such, this du Pont factor favors a finding of
likelihood of confusion.
Channels of Trade
In making our determination regarding the relatedness of the parties’
channels of trade, we look as we must to the goods as identified in the
involved application and cited registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Paula Payne Products v. Johnson Publishing Co., 473
F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Neither recitation of goods recites
any restrictions as to the channels of trade in which they may be
encountered. Thus, it is presumed that applicant’s and registrant’s goods at
issue move in all channels of trade normal for such goods, and that they are
purchased by all of the usual consumers for such goods. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119
USPQ 139 (CCPA 1958). As such, this du Pont factor is, at best, neutral.
Negotiation for Co-Existence Agreement
Applicant argues (brief, p. 6) that it has been discussing a co-existence
agreement with registrant and, “If such a consent ultimately is signed, it will
Ex Parte Appeal No. 79109525

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be submitted as further evidence that no likelihood of confusion exists.” We
observe that an executed consent or coexistence agreement between an
applicant and the owner of a cited registration filed in response to a refusal to
register under Section 2(d) may be persuasive evidence of no likelihood of
confusion. See, e.g., In re E.I. du Pont de Nemours & Co., 177 USPQ at 568;
and In re Donnay Int’l, S.A., 31 USPQ2d 1953, 1956 (TTAB 1994). However,
in this case it does not appear that applicant has submitted an executed
consent agreement or that any such agreement has been reached. Moreover,
as a general rule the USPTO does not suspend an application to give an
applicant time in which to secure a consent agreement. See TBMP § 716.02
(October 2013). Accordingly, applicant’s assertions regarding its negotiations
with the owner of the cited registration carry little, if any, weight in our
determination herein.
Summary
In light of the foregoing, we conclude that consumers familiar with
registrant’s goods sold under its above-referenced mark would be likely to
believe, upon encountering applicant’s related goods rendered under its
nearly identical mark, that the goods originate with or are associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by applicant raise a
doubt about likelihood of confusion, that doubt is required to be resolved in
favor of the prior registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
Ex Parte Appeal No. 79109525

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840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal under Section 2(d) of the Act is affirmed.