MDG Tools, Inc.Download PDFTrademark Trial and Appeal BoardJun 2, 2010No. 76673145 (T.T.A.B. Jun. 2, 2010) Copy Citation June 2, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re MDG Tools, Inc. ________ Serial No. 76673145 _______ Jonathan O. Owens of Haverstock & Owens LLP for MDG Tools, Inc. Yat-sye I. Lee, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop, Managing Attorney). _______ Before Hairston, Mermelstein and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: MDG Tools, Inc. filed an application for the mark MAGNOGRIP, in standard character form, for goods ultimately identified as follows: (Based on intent to use) accessory, namely, tool belt clip containing magnet, for holding work pieces, namely, screws, nails, bolts and nuts for convenience of the wearer during work; (Based on use in commerce) wrist bands containing magnet, for holding work pieces, namely, screws, nails, bolts and nuts for convenience of the wearer during work, in Class 8; and THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 76673145 2 (Based on intent to use) work gloves containing magnet, for holding work pieces, namely screws, nails, bolts and nuts for convenience of the wearer during work, in Class 21. The Trademark Examining Attorney refused registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. §1052(d), because applicant’s mark MAGNOGRIP, when used in connection with tool belt clips, wrist bands and work gloves “for holding work pieces,” so resembles the mark MAGNAGRIP, in typed drawing form, for “holders for articles of magnetic material such as knives, kitchen utensils, and hand tools,” in Class 21, as to be likely to cause confusion.1 Preliminary Issue In applicant’s May 14, 2009 response, it argued that there were 15 registrations for marks containing the prefix “MAGNA” in Classes 21 and 41. Applicant neither referred to any specific marks nor did it list any of those registrations. The examining attorney issued her final refusal on June 8, 2009. In the final refusal, the examining attorney responded to applicant’s argument regarding the 15 third-party registrations by searching the Trademark Office database and finding only seven live 1 Registration No. 0519152, issued December 27, 1949; third renewal. Serial No. 76673145 3 registrations containing the letter string M-A-G-N preceding the word “Grip.” The examining attorney made those registrations of record and asserted that they were of little relevance because none of them were for similar goods. In its September 4, 2009, request for reconsideration, applicant repeated its argument that the mark in the cited registration is weak and, therefore, entitled to only a narrow scope of protection because there are “15 marks that contain the prefix ‘MAGNA,’ in addition to the cited reference MAGNAGRIP in International Class (sic) 021 and 41” and this time applicant listed the marks, but still did not provide copies of the registrations. In an Office Action dated October 5, 2009, the examining attorney denied the request for reconsideration without referencing applicant’s list of “Magna” registrations. In its appeal brief, applicant repeated the argument regarding the weakness of the mark in the cited registration and referenced the third-party “Magna” registrations. In her brief, the examining attorney lodged an objection to the list of third-party registrations in applicant’s brief on the ground that the registrations were not properly made of record. The objection is overruled. Serial No. 76673145 4 The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the record. In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). To make registrations of record, soft copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TARR, or TRAM)) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994). However, if the applicant submits improper evidence of third-party registrations, the examining attorney should object to the evidence in the next Office action (in this case, the September 4, 2009 Office Action denying the request for reconsideration), or the Board may consider the objection to be waived. See In re 1st USA Realty Professionals, 84 USPQ2d 1581, 1583 (TTAB 2007) (Board considered applicant’s own registration, provided for the first time on appeal, because it had been referred to during prosecution and the examining attorney addressed the issue without objection; Board also allowed evidence of a list of third-party registrations because the examining Serial No. 76673145 5 attorney did not advise applicant of the insufficiency of the list while there was still time to correct the mistake); In re Broyhill Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001) (objection to evidence waived where it was not interposed in response to applicant’s reliance on listing of third-party registrations in response to initial Office action). If the applicant files an appeal, the examining attorney should continue the objection to the evidence in her appeal brief. As indicated above, in the September 4, 2009 Office Action, the examining attorney should have lodged an objection to the applicant’s list of third-party registrations and advised applicant regarding the proper procedure for introducing the registrations into evidence.2 Had the examining attorney followed the proper procedure set forth above, and in TMEP §710.03 (6th ed. 2010), applicant would have had until December 8, 2009 to properly make the third-party registrations of record. In view of the foregoing, the examining attorney’s objection to the third-party registrations is overruled and we will consider 2 In her June 8, 2009 “final” office action, the examining attorney could have advised applicant that the argument it made in its May 14, 2009 response was unsupported by any evidence and instructed applicant as to the proper way to make the third-party registrations of record. Serial No. 76673145 6 the registrations for whatever probative value they may have. 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 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 goods and/or services. 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”). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont 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 & Serial No. 76673145 7 Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we are mindful 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 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). The marks MAGNOGRIP and MAGNAGRIP are similar in terms of appearance and sound because both marks begin with the letters “M-A-G-N” and end with the word “GRIP.” The only difference between the marks is the letter “O” in the Serial No. 76673145 8 middle of applicant’s mark instead of the letter “A.” Because both marks are compound terms (MAGNA or MAGNO and GRIP), many purchasers may fail to notice the different vowel in the middle of applicant’s mark. Thus, the difference between the marks is not likely to overcome the similarities. See Russell Chemical Co. v. Wyandotte Chemicals Corp., 337 F.2d 660, 143 USPQ 252, (CCPA 1964) (SENTOL for industrial detergents adapted for cleaning dairy equipment held likely to be confused with SEN-TROL for detergents used in power dishwashing machines because “[d]eletion of the ‘r’ from SEN-TROL has but little effect … upon the eyes of the viewer”); In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (CAYNA is confusingly similar to CANA); General Electric Co. v. Raychem Corp., 184 USPQ 766, 767 (TTAB 1974) (FLAMTROL for insulated wire likely to be confused with FLAMENOL for electric wires, cables and conductors); Sterling Drug, Inc. v. Sun Chemical Corp., 142 USPQ 330, 333 (TTAB 1964) (WARCOCIDE for industrial germicidal chemicals is likely to cause confusion with WARFICIDE for rodenticide). Likewise, applicant’s use of the letter “O” instead of the letter “A” in the middle of the mark is not sufficient to distinguish the marks aurally. The registered mark is Serial No. 76673145 9 likely to be pronounced MĂG NŌ GRĬP and applicant’s mark is likely to be pronounced MĂG NĂ GRĬP; and the slight difference in the pronunciations is not likely to have any effect upon consumers. While both marks appear to be coined terms, they engender the identical commercial impression: magnetic grip. In considering the marks in their entireties, we find that the similarities between the marks outweigh the differences because in the normal marketing environment, purchasers would not have the luxury of examining the marks in minute detail. Also, as noted above, the memory of the average purchaser is not infallible, and he/she may retain only a hazy, rather than a specific, recollection of the marks. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1468 (TTAB 1988). Considering the similarities between the marks, a purchaser who sees one mark and later encounters the other is likely to think that the second mark is related to the first mark. See Hercules Inc. v. National Starch & Chemical Corp., 223 USPQ 1244, 1246 (TTAB 1984) (“it is a fundamental tenet of our trademark law that exact similitude is not required to conclude that two marks are confusingly similar. Thus, when there are small differences between the marks, the differences may be Serial No. 76673145 10 insignificant in obviating the likelihood of confusion when compared to the marks’ overall similarities”). B. The similarity or dissimilarity and nature of the goods. It is well settled that likelihood of confusion is determined on the basis of the goods as they are identified in the application and the cited registration. Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). In analyzing the similarity or relatedness of the goods, it is not necessary that the respective goods be identical or even competitive to find that they are related for purposes of likelihood of confusion. The issue is not whether consumers would confuse the goods themselves, but rather whether they would be confused as to the source of the goods. In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984). The goods need only be sufficiently related that consumers would be likely to assume, upon encountering the goods under similar marks, that the goods originate from, are sponsored or authorized by, or are otherwise connected to the same source. In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, Serial No. 76673145 11 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). In this case, applicant’s goods are a tool belt clip, wrist band, and work gloves containing a magnet for holding work pieces, namely screws, nails, bolts and nuts, while the registered mark is for “holders for articles of magnetic material such as knives, kitchen utensils, and hand tools.” For our purposes, the goods listed in the registration are holders for hand tools.3 The goods at issue are related because they are all used for holding tools and equipment: registrant’s goods are tool holders and applicant’s goods are for holding fasteners and the like. Thus, both sets of goods could be encountered by the same consumers or users (e.g., carpenters, mechanics, non- professional do-it-yourselfers) under circumstances likely to give rise to the mistaken belief that they emanate from the same source because of the similarity of the marks. The examining attorney submitted third-party registrations to show the relatedness of the goods. Third- party registrations which individually cover a number of 3 Likelihood of confusion may be found based on any item that comes within the identification of goods in the involved application and registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 209 USPQ 986, 988 (CCPA 1981); In re Davey Products Pty Ltd., 91 USPQ2d 1198, 1202 (TTAB 2009). Serial No. 76673145 12 different goods that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re Mucky Duck Mustard Co. Inc., 6 USPQ2d at 1470 n.6. The registrations listed below are representative.4 Mark Reg. No. Goods SIGNATURE SERIES 3275631 Tool holders; tool pouches for attachment to tool belts GRIP TIGHT TOOLS 3313101 Tool holders; tool pouches for attachment to tool belts; work gloves IRWIN 2978383 Tool holders; tool pouches for attachment to tool belts WORKSMART 2978757 Tool holders; tool pouches for attachment to tool belts CHIX CAN FIX 3325961 Tool holders; tool pouches for attachment to tool belts; protective work gloves CLC 3203569 Tool holders; tool pouches for attachment to tool belts PROWARE 3321388 Tool holders; tool pouches for attachment to tool belts 4 Applicant’s goods include tool belt clips, not tool belts per se. Accordingly, we did not include registrations that listed tool belts without clips or some other type of tool belt attachment. Also, we only listed the relevant goods. Serial No. 76673145 13 The examining attorney submitted excerpts from the SEARS website advertising the sale of CRAFTSMAN magnetic tool storage mat and CRAFTSMAN tool holders that attach to a tool belt and CRAFTSMAN work gloves. Also, the examining attorney submitted excerpts from the Overstock.com website advertising GRIP magnetic mechanics gloves and the Amazon.com website advertising GRIP magnetic tool holders. Amazon.com also advertised both a MASTER MAGNETICS belt magnet for holding drill bits and fasters as well as a MASTER MAGNETICS magnet tool holder. Applicant argues the description of goods contains inherent restrictions which distinguish the goods for purposes of determining likelihood of confusion. Registrant’s mark is for holders for articles of magnetic materials such as knives, kitchen utensils, and hand tools in International Class 21. In contrast, the Applicant’s registration (sic) is limited to accessory, namely [tool belt clip, work gloves and wrist bands] containing magnet, for holding work pieces, namely screws, nails, bolts and nuts for convenience of the wearer during work. The limitations of the marks differ with respect to purpose and scope as the Applicant’s mark does not contemplate holding knives, kitchen utensils, or other hand tools with its magnets insomuch as the Registrant’s mark does not contemplate holding small work pieces.5 5 Applicant’s Reply Brief, pp. 10-11. Serial No. 76673145 14 First, we would not describe the identification of goods at issue as containing restrictions or limitations. Generally, we refer to limitations or restrictions in the identification of goods as referring to restrictions in the channels of trade or classes of consumers. In the application, the purported limitation does not address how or to whom the products are sold; it defines the products with specificity. Second, applicant’s argument that the goods are not related is based on the false premise that because the products are different, consumers will not believe that the products emanate from the same source despite the similarity of the marks. As indicated above, the issue is not whether consumers will confuse the products, but whether consumers will confuse the source of the products because of the similarity of the marks. In this case, very similar marks are being used to identify a magnetic tool holder by registrant and a tool belt clip, wrist band, and work gloves with a magnetic feature for holding fasteners or drill bits by applicant that could be used in connection with the tools stored on the magnetic tool holder. We find that there is a sufficient nexus between the goods that when sold under similar marks, consumers will mistakenly believe that they emanate from the same source. Serial No. 76673145 15 In view of the foregoing, we find that the nature of the goods is similar, thus, supporting a likelihood of confusion. C. The similarity or dissimilarity of likely-to-continue trade channels and the buyers to whom sales are made. As state above, there are no restrictions or limitations in the description of goods for the application or the cited registration. Absent such restrictions or limitations, we must assume that the goods travel in “the normal and usual channels of trade and methods of distribution.” CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); see also In re Elbaum, 211 USPQ at 640. Because registrant’s goods are tool holders and applicant’s goods are a tool belt clip, wrist band, and work gloves containing a magnet for holding work pieces, namely screws, nails, bolts and nuts, the goods may be sold to anyone who has hand tools and does work requiring tools, screws, nails, bolts and nuts (e.g., carpenters, mechanics, non-professional do-it-yourselfers). With respect to the channels of trade, the examining attorney submitted excerpts from websites showing that the products of applicant and registrant are sold by the same Serial No. 76673145 16 retailers (e.g., Sears, Home Depot, Lowe’s, ACE Hardware, and Hechinger).6 In view of the foregoing, we find that the same consumers would purchase both registrant’s magnetic tool holders and applicant’s tool belt clips, wrist bands, and work gloves, and that the goods would be sold in the same channels of trade. D. The number and nature of similar marks in use on similar goods. Applicant asserts that its mark is in a “crowded field.” Specifically, applicant argues that there are 15 “Magna” marks registered in Classes 21 and 41, including, but not limited to, MAGNABLOC for knife blocks, MAGNA WONDER KNIFE for magnetic knives and MAGNACOOK for kitchen tools including chopping boards. Clearly, the cited reference “MAGNAGRIP” is hemmed in on all sides by similar marks for similar goods. … In such a market, customer have learned to carefully pick one product from the other. Such third party (sic) usage 6 The excerpts from Amazon.com are not probative that the products at issue move in same channels of trade because it is common knowledge that virtually all products are sold through Amazon.com. With respect to the channels of trade factor, the fact that products are sold through Amazon.com is no more probative than saying that products are sold through the Internet. See Sheller-Globe Corp. v. Scott Paper Co., 204 USPQ 329, 335 (TTAB 1979) (not everything that is sold by large retail establishment selling plethora of otherwise unrelated goods is necessarily connected, within the meaning Section 2(d), to every other product that happens to be displayed or offered under same roof). Serial No. 76673145 17 demonstrates that customers have become so conditioned by so many similar marks that customers have been educated to distinguish between different marks on the basis of minimal distinctions.7 The problem with applicant’s argument is that third- party registrations do not prove that the registered mark MAGNAGRIP is a weak mark. Absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office). See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). [I]t would be sheer speculation to draw any inferences about which, if any of the marks subject of the third party (sic) registrations are still in use. Because of this doubt, third party (sic) registration evidence proves nothing about the impact of the third- party marks on purchasers in terms of dilution of the mark in question or conditioning of the purchasers as their weakness in distinguishing source. In re Hub Distributing, Inc., 218 USPQ at 286. 7 Applicant’s Brief, p. 9. Serial No. 76673145 18 While third-party registrations may be used in the manner of a dictionary to show that a mark or a portion of a mark is descriptive or suggestive of goods and services, the third-party registrations submitted by applicant do not prove that the registered mark MAGNAGRIP is so weak and diluted that applicant’s substitution of the letter “O” in the middle of the term is sufficient to distinguish the marks when they are used in connection with related products. Even if we were to concede that MAGNAGRIP is a weak mark, it is well established that even the owner of a weak mark is entitled to be protected from a likelihood of confusion with another’s use of the same or confusingly similar mark. Giant Foods, Inc. v. Ross and Mastracco, Inc., 218 USPQ 521, 526 (TTAB 1982). Moreover, in this case, applicant’s mark MAGNOGRIP is closer to the registered mark MAGNAGRIP than any of the third-party registrations referenced by applicant. In this regard, the examining attorney introduced the seven live registrations comprising the letter string M-A-G-N preceding the word “Grip.”8 We find that only one of the registrations is arguably relevant: Registration No. 1080186 for the mark 8 June 8, 2008 Office Action. Serial No. 76673145 19 MAGNA-GRIP for “two-part fasteners comprising pins and collars,” in Class 6. Based on the evidence of record, including the registrations applicant referenced but did not submit, we are not persuaded that the cited registration for the mark Serial No. 76673145 20 MAGNAGRIP is so highly suggestive and diluted as to justify the registration of applicant’s mark. E. The conditions under which and buyers to whom sales are made (i.e., impulse vs. careful, sophisticated purchasing). Applicant contends that its products are used by professional users of small hand tools such as carpenters, seamstresses, auto mechanics, electricians, plumbers, construction workers, as well as non-professional do-it- yourselfers and, therefore, “a purchaser is more likely to look at the goods closely to determine the source.”9 There are a number of problems with applicant’s argument. First, applicant does not explain why the wide variety of potential consumers, including non-professional do-it-yourselfers will exercise a high degree of care in their purchasing decisions. Second, “non-professional do- it-yourselfers” include ordinary consumers who will exercise ordinary care in making their purchasing decision. Because there are no restrictions in the channels of trade or classes of consumers in the identification of goods for the application and registration, there is no basis for asserting that that purchasers at issue exercise a high degree of care. See In re Bercut-Vandervoort & Co., 229 9 Applicant’s Brief, p. 9; Applicant’s Reply Brief, p. 12. Serial No. 76673145 21 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration). We must presume that both applicant’s and registrant’s products would be sold to all consumers including those that would exercise only ordinary care. F. Balancing the factors. In view of our determination that the marks and goods are similar and that channels of trade and classes of consumers are identical, we find that applicant’s mark mark MAGNOGRIP, when used in connection with tool belt clips, wrist bands and work gloves “for holding work pieces,” so resembles the mark MAGNAGRIP for “holders for articles of magnetic material such as knives, kitchen utensils, and hand tools” as to be likely to cause confusion Decision: The refusal to register is affirmed. 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