Moore U.S.A., Inc.

Trademark Trial and Appeal Board

Aug 10, 1999

No. 75331521 (T.T.A.B. Aug. 10, 1999)

Paper No. 9
SIMMS/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 10 ,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Moore U.S.A., Inc.
________
Serial No. 75/331,521
_______
Robert A. Vanderhye of Nixon & Vanderhye P.C. for Moore
U.S.A., Inc.
Susan J. Kastriner, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney)
_______
Before Simms, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Moore U.S.A., Inc. (applicant) has appealed from the
final refusal of the Trademark Examining Attorney to
register the mark shown below
Ser No. 75/331,521
2
for blank and preprinted repositional and removable labels.1
The Examining Attorney has refused registration under
Section 2(d) the Act, 15 USC §1052(d), on the basis of
Registration No. 1,787,491, issued August 10, 1993, for the
mark LIFT-OFF for adhesive application tape used for
transferring vinyl letters and logos. Applicant and the
Examining Attorney have submitted briefs but no oral
hearing was requested.
We affirm.
In this case, the Examining Attorney argues that the
respective marks are similar in sound, appearance and
connotation, with both marks bringing to mind the concept
of “lifting off.” The Examining Attorney argues that more
weight should be given to the literal portion of
applicant’s mark, which is nearly identical to the
registered mark. According to the Examining Attorney, the
word portion is more likely to be impressed upon a
purchaser’s memory and be used in calling for applicant’s
goods. The Examining Attorney also argues that we must
view the issue of likelihood of confusion in terms of the
recollection of the average purchaser, who retains a

1 Application Serial No. 75/331,521, filed July 28, 1997, based
upon application’s allegations of use and use in commerce since
July 1995.
Ser No. 75/331,521
3
general rather than a specific impression of a trademark.
The Examining Attorney does not believe that the design
element in applicant’s mark is sufficient to avoid
likelihood of confusion.
With respect to the goods, the Examining Attorney
notes that applicant’s specimens show that applicant’s
goods may be used to label books, boxes, cassettes and
diskettes. The Examining Attorney argues that registrant’s
adhesive application tape may be used for a similar
purpose. Accordingly, the Examining Attorney argues that
the respective goods are highly related and likely to be
sold in the same types of stores to the same class of
purchasers. Although applicant’s goods may be placed on
objects and removed while registrant’s goods may be used to
remove and reposition other labels, the Examining Attorney
contends that these goods are nevertheless highly related.
The Examining Attorney has made of record electronic copies
of third-party registrations showing that the same mark has
been registered to a particular entity both for labels and
for adhesive tape. With respect to applicant’s evidence
concerning the lack of instances of actual confusion
(discussed below), the Examining Attorney argues that
applicant’s mark has only been used for about three years
and that this factor is entitled to relatively little
Ser No. 75/331,521
4
weight in this case. The Examining Attorney also argues
that doubt must be resolved in favor of the prior user and
registrant.
Applicant, on the other hand, argues variously that
the rocket ship design element of applicant’s mark
“dominates” or “pervades” applicant’s mark or is at least
“co-equal with” the literal portion of its mark. Applicant
argues that this design is highly distinctive and
recognizable. Also, applicant contends that the registered
mark is suggestive and weak and that no one has the
exclusive right to use the words “LIFT OFF” for Class 18
goods. Response, filed April 13, 1998, 6. Applicant’s
attorney points to third-party registrations containing the
term “LIFTOFF” for bakery pan liners and computer programs.
Applicant also argues that the connotation of the
respective marks as applied to the respective goods is
different, with applicant’s mark suggesting that
applicant’s goods lift off from a surface whereas
registrant’s mark suggests that registrant’s goods are used
to lift off other products.
Further, applicant contends that its goods are ordered
by someone inspecting an office catalog or a brochure and
are not ordered by word-of-mouth. Thus, applicant argues
Ser No. 75/331,521
5
that the design of its mark is more significant than the
Examining Attorney would have it.
It is also applicant’s position that the goods of
applicant and registrant travel in different channels of
trade. Counsel states that, as far as he is aware, the
specialty adhesive tape listed in the registration is not
shown in the same office product catalogs as applicant’s
removable labels. In this regard, applicant’s attorney
argues that, while conventional adhesive tape is sold in
the same channels of trade as applicant’s goods,
registrant’s specialty tape, used as a tool to transfer
letters or logos, is not.
Applicant also has submitted the declaration of the
director of sales and marketing of a division who attests
to the fact that there have been no instances of actual
confusion despite nearly three years of use of applicant’s
mark.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely. Here, the respective
marks are identical in pronunciation and are otherwise very
similar. While we have considered applicant’s arguments
concerning the different connotations of the marks, we do
not believe that these differences would be apparent to the
Ser No. 75/331,521
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average purchaser of these relatively inexpensive goods.
Even if they were, we do not believe that those subtle
distinctions would avoid the likelihood of confusion. Nor
would the design element. Furthermore, in view of the lack
of restrictions in the respective identifications, we
believe that registrant’s adhesive tape used for
transferring letters and logos and applicant’s removable
labels are likely to be sold in the same types of stores
(for example, office supply stores) to the same class of
ordinary purchasers. These goods are highly related. And,
of course, in order for confusion to be likely, the
respective goods need not be identical. They need only be
related in such a manner or conditions surrounding their
marketing be such that they could be encountered by the
same purchasers under circumstances that could give rise to
the mistaken belief that the goods come from the same
source. A purchaser aware of registrant’s LIFT-OFF
adhesive tape used for transferring letters and logos who
then encounters applicant’s LIFT OFF and design removable
labels is likely to believe that these goods, albeit
slightly different, emanate from the same source.
Ser No. 75/331,521
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Decision: The refusal of registration is affirmed.
R. L. Simms
D. E. Bucher
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial and
Appeal Board