Motomco Ltd.

Trademark Trial and Appeal Board

Dec 2, 2003

No. 76294290 (T.T.A.B. Dec. 2, 2003)

Mailed:
December 2, 2003
Paper No. 11
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Motomco Ltd.
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Serial No. 76294290
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Lydie Arthos Hudson of Lathrop & Clark LLP for Motomco Ltd.
Jean H. Im, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Motomco Ltd. seeks registration on the Principal
Register for the mark TOMCAT QUICKSTRIKE for
“rodenticides” in International Class 5.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark Examining
Attorney has held that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
1 Application Serial No. 76294290 was filed on August 2, 2001
based upon applicant’s allegations of use in commerce at least as
early as June 1, 2001.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
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QUIKSTRIKE which is registered for “insecticides for
agricultural, domestic and commercial use,”2 also in
International Class 5, as to be likely to cause confusion,
to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed this appeal but applicant did not request an
oral hearing.
We affirm the refusal to register.
Applicant contends that rodenticides and insecticides
are not related goods; and furthermore, that the marks,
when considered in their entireties, are not confusingly
similar. In turn, the Trademark Examining Attorney argues
that the marks are highly similar as to overall commercial
impression; and that the record demonstrates that these
goods are indeed related.
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
2 Registration No. 2034468 issued on January 28, 1997;
Section 8 affidavit accepted and Section 15 affidavit
acknowledged.
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similarities between the marks and the relationship of the
goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factor focusing on the
relationship of the goods as described in the application
and the cited registration. It is well settled that goods
need not be identical or even competitive in nature in order
to support a finding of likelihood of confusion. Instead,
it is sufficient that the goods are related in some manner
and/or that the circumstances surrounding their marketing
are such that they would be likely to be encountered by the
same persons under situations that would give rise, because
of the marks employed in connection therewith, to the
mistaken belief that they originate from or are in some way
associated with the same entity or provider. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978)
and In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
In support of applicant’s position that these two
chemical pesticides are not related, applicant’s Marketing
Manager, Todd Butzow, signed a declaration emphasizing the
differing functions, applications and active ingredients of
applicant’s and registrant’s respective products:
The definition of rodenticide is a chemical
substance used to kill rodents. The definition of
insecticide is a chemical substance used to kill
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insects. Practically, the two kinds of products are
different in several ways:
1. First the products have two distinct
targets. Customers buy rodenticides to kill
mice or rats. Customers buy insecticides to
either repel or kill insects. The need for
a rodenticide is separate and unrelated to
the need for an insecticide. For example,
the need to eliminate mice from a barn is
unrelated to the need to repel insects
during a family picnic.
2. Second, the two kinds of products have
different methods of application. A
rodenticide must be ingested by the animal.
An insecticide typically is effective on
contact by the insect.
3. Third, the active ingredients of the two
kinds of products are different.
Rodenticides generally use anti-coagulants,
and insecticides generally use a nerve
toxin.
For all these reasons, rodenticides and insecticides
serve unrelated purposes and are not used together.
On the other hand, the Trademark Examining Attorney
attached to her initial Office action copies of a number of
valid and subsisting third-party registrations where the
same marks are registered for both insecticides and
rodenticides.3 Although federal registrations are not
evidence of what happens in the marketplace, third-party
registrations which individually cover a number of
different items and which are based on use in commerce
3 See Reg. No. 0615591 for THIMET, Reg. No. 1117546 for
BOLERO, and Reg. No. 1499179 for MOORMAN’S.
Serial No. 76294290
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serve to suggest that the listed goods and/or services are
of a type that may emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Among these registrations, she noted that one of
applicant’s own now-expired registrations belies Mr.
Butzow’s statement.4
Under our legal precedent, in order to find that these
goods are related, it does not matter that the goods target
distinctly different pests with dissimilar active
ingredients applied by disparate methods. Rather, the
focus of our inquiry must be on whether the goods are of a
type which can come from the same source (viz. third-party
registrations) and might well be encountered by the same
members of the general public wanting to control a variety
of pests in their homes (e.g., cockroaches and mice).
Applying this standard, we concur with the position of the
Trademark Examining Attorney on this question, and find
that insecticides and rodenticides are related goods.
Turning then to the similarity or dissimilarity of the
marks in their entireties, we find a strong similarity in
4 In a registration assigned to Motomco, the mark PIVALYN is
registered for both “insecticides and rodenticides in liquid and
solid form and plastic pellets having water soluble insecticide
and rodenticide material deposited on the surface thereof.”
(Reg. No. 1172811 issued on October 13, 1981)
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the two marks. The Trademark Examining Attorney argues
that applicant has essentially appropriated registrant’s
distinctive product mark QUIKSTRIKE / QUICKSTRIKE (the
slight difference in spelling is unlikely even to be
noticed by the average consumer), and simply added its
house mark, TOMCAT. As noted by the Trademark Examining
Attorney, the general rule is that the presence of a house
mark in one of two otherwise confusingly similar marks will
not serve to avoid a likelihood of confusion.5
Exceptions to this general rule are made (1) in cases
where the two “product” marks have recognizable
differences, such that the degree of similarity between
them is sufficiently slight that the addition of the trade
name or house mark is enough to render the marks as a whole
5 See In re Apparel Ventures, Inc., 229 USPQ 225 (TTAB 1986)
(SPARKS for shoes, boots and slippers confusingly similar to
SPARKS BY SASSAFRAS for women’s clothing items); In re Riddle,
225 USPQ 630 (TTAB 1985) (RICHARD PETTY’S ACCUTUNE for automotive
service centers confusingly similar to ACCUTUNE for automotive
testing equipment); In re Champion International Corporation, 196
USPQ 48 (TTAB 1977) (HAMMERMILL MICR CHECK-MATE for paper for
writing, printing, duplicating and office use confusingly similar
to CHECK MATE for envelopes); In re C. F. Hathaway Company, 190
USPQ 343 (TTAB 1976) (HATHAWAY GOLF CLASSIC for men’s knitted
sport shirts confusingly similar to GOLF CLASSIC for men’s hats);
In re Christian Dior, S.A., 225 USPQ 533 (TTAB 1985) (LE CACHET
DE DIOR for men’s dress shirts likely to cause confusion with
CACHET for dresses, cologne, etc.); In re Cosvetic Laboratories,
Inc., 202 USPQ 842 (TTAB 1979) (HEAD START COSVETIC likely to
cause confusion with HEAD START); In re The United States Shoe
Corporation, 229 USPQ 707 (TTAB 1985) (CREST CAREER IMAGES v.
CAREER IMAGES).
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distinguishable;6 and (2) in cases where the product mark is
merely descriptive of the goods or services and therefore
would not be regarded by purchasers as a source-indicator.7
Neither of these exceptions to the general rule applies in
this case. Accordingly, we find that these marks are
confusingly similar.
In conclusion, given that the goods are related and
the marks are confusingly similar, we find that TOMCAT
QUICKSTRIKE for rodenticides is likely to cause confusion
with QUIKSTRIKE for insecticides.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is hereby affirmed.
6 See The Morrison Milling Co. v. General Mills, Inc., 168
USPQ 591 (CCPA 1971) (MORRISON’S CORN-KITS for prepared corn
bread mix not confusingly similar to KIX or CORN KIX for
breakfast cereal); Rockwood Chocolate Co., Inc. v. Hoffman Candy
Co., 152 USPQ 599 (CCPA 1967) (ROCKWOOD BAG-O-GOLD for candy not
confusingly similar to CUP-O-GOLD for candy); and S.M. Flickinger
Co., Inc. v. Beatrice Foods Co., 174 USPQ 51 (TTAB 1972) (MEADOW
GOLD ZOOPER DOOPER for ice cream, ice milk, etc. is not
confusingly similar to SUPER DUPER for ice cream).
7 See In re Application of Merchandising Motivation, Inc.,
184 USPQ 364 (TTAB 1974) (MMI MENS WEAR for fashion consulting
services not confusingly similar to MENSWEAR for a semimonthly
magazine; and Food Specialty Co., Inc. v. Kal Kan Foods, Inc.,
180 USPQ 136 (CCPA 1973) (KAL KAN KITTY STEW is not confusingly
similar to KITTY for cat food).