ND Industries, Inc.

Trademark Trial and Appeal Board

Feb 12, 2008

No. 78667419 (T.T.A.B. Feb. 12, 2008)

Mailed:
February 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ND Industries, Inc.
________

Serial No. 78667419
_______

Daniel H. Bliss of Bliss McGlynn, P.C. for ND Industries,
Inc.

Alicia P. Collins, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Seeherman, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

ND Industries, Inc. filed a use-based application for
the mark LM-1293, in standard character form, for goods
ultimately identified as “coated metal fasteners, namely,
nuts, screws, bolts, and specialty threaded fasteners
having a masking, insulating, and/or lubricating coating
applied thereto” (Serial No. 78667419). In response to an
inquiry from the Examining Attorney, applicant included a
statement in the application explaining that “[t]he letters
and numbers that comprise the mark do not have any
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78667419
2
significance in the relevant trade or as applied to the
goods or does not identify a particular model number.”1
The Examining Attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark LM-1293, when
used in connection with applicant’s “coated metal
fasteners,” so resembles the mark LM for “metal fasteners,
namely, screws, nuts, bolts, washers and thread rods and
studs,” as to be likely to cause confusion.
Our determination of likelihood of confusion 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 issue of 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 the goods.
See Federated Foods, Inc. v. Fort Howard Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of

1 August 10, 2006 Response.
Serial No. 78667419
3
differences in the essential characteristics of the goods
and differences in the marks”).
A. The similarity or dissimilarity and nature of the
goods.

In an ex parte appeal, likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and the cited registration. In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges
& Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”). As the Court of
Customs and Patent Appeals, the predecessor of our primary
reviewing court, explained in Tuxedo Monopoly, Inc. v.
General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
Serial No. 78667419
4
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

In this case, the cited registration is for “metal
fasteners, namely, screws, nuts, bolts, washers and thread
rods and studs.” Because there are no restrictions or
limitations as to the type of metal fasteners described in
the cited registration, we must presume that it includes
all types of metal fasteners, including coated metal
fasteners “having a masking, insulating, and/or lubricating
coating applied thereto.” Squirtco v. Tomy Corp., 697 F.2d
1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no
specific limitation and nothing in the inherent nature of
Squirtco’s mark or goods that restricts the usage of SQUIRT
for balloons to promotion of soft drinks. The Board, thus,
improperly read limitations into the registration”); In re
Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re
Elbaum, supra.
To the extent that the application and the cited
registration both include screws, nuts, and bolts, the
goods in the application and cited registration are, in
part, identical. The fact that there are some differences
in the description of goods for the application and cited
registration does not obviate the fact that both
Serial No. 78667419
5
descriptions of goods are in part identical. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, Inc., 209 USPQ
at 988.
B. The similarity or dissimilarity of likely-to-continue
trade channels.

Because the goods in the application and the cited
registration are in part identical, we must presume that
the channels of trade and classes of purchasers at least in
part are the same. Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers”).
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
Serial No. 78667419
6
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. 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., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree
of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate
100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981);
ECI Division of E-Systems, Inc. v. Environmental
Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, 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),
Serial No. 78667419
7
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).
At the outset of our analysis of the marks, we note
that during the prosecution of its application applicant
stated that the letters “LM” have no significance in the
relevant industry. In fact, in its brief, applicant
emphasized that “the word (sic) ‘LM’ does not connote
anything about ‘fasteners’.”2 Accordingly, the letters “LM”
are fanciful or arbitrary when used in connection with
fasteners. In this regard, it is well settled that it is
more difficult to remember a series of arbitrarily arranged
letters than it is to remember figures, syllables, or
phrases. The difficulty in remembering letter marks makes
confusion between such marks, when similar, more likely.
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990); Edison
Brothers Stores, Inc. v. Brutting E.B. Sport-International

2 Applicant’s Brief, p. 5.
Serial No. 78667419
8
GmbH, 230 USPQ 530, 533 (TTAB 1986); ECI Division of E-
Systems, Inc. v. Environmental Communications, Inc., 207
USPQ 443, 451 (TTAB 1980).
The marks are similar in appearance because the
registered mark is comprised of the letters “LM,” and
applicant’s mark feature the letters “LM.” The
significance of the letters “LM” in applicant’s mark is
highlighted by their location at the beginning of
applicant’s mark. As such, they are the first features
consumers will see when encountering applicant’s mark.
Thus, they are likely to have a greater impact on
purchasers and be remembered by them. Presto Products Inc.
v. Nice-Pak Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be
impressed on the mind of a purchaser and remembered). See
also See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin,
396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)
(“Veuve” is the most prominent part of the mark VEUVE
CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992)(upon encountering the
marks, consumers must first notice the identical lead
word).
Serial No. 78667419
9
Also, in comparing the marks, we note that applicant’s
mark incorporates registrant’s entire mark. Likelihood of
confusion is often found where the entirety of one mark is
incorporated within another. The Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(“When one incorporates the entire arbitrary mark of
another into a composite mark, inclusion in the composite
mark of a significant, nonsuggestive element will not
necessarily preclude a likelihood of confusion”); Coca-Cola
Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d
556, 188 USPQ 105, 106 (CCPA 1975) (BENGAL LANCER and
BENGAL are similar); Johnson Publishing Company, Inc. v.
International Development Ltd., Inc., 221 USPQ 155, 156
(TTAB 1982) (“likelihood of confusion has frequently been
found where contested marks used on related products
involve one mark which consists of a single word and
another which is comprised of that same word followed by a
second term”).
The marks are aurally similar and have a similar
connotation to the extent that they share the letters “LM.”
Because the letters “LM” are arbitrary or fanciful
when used in connection with fasteners, the marks engender
similar, if not identical, commercial impressions. We are
cognizant that we must consider the marks in their
Serial No. 78667419
10
entireties. However, in view of the identity of the
products and the letters “LM” in both marks, consumers
encountering applicant’s mark who are familiar with the
registered mark are likely to believe that applicant’s
coated fasteners are somehow associated or affiliated with
registrant’s fasteners (e.g., LM-1293 fasteners are the
coated version of the LM fasteners with which they are
familiar).
D. Balancing the factors.
In view of the fact that all of the likelihood of
confusion factors favor finding that there is a likelihood
of confusion and because there is no countervailing
evidence that there will be no likelihood of confusion, we
find that applicant’s mark LM-1293, when used in connection
with “coated metal fasteners, namely, nuts, screws, bolts,
and specialty threaded fasteners having a masking,
insulating, and/or lubricating coating applied thereto,” so
resembles the mark LM for “metal fasteners, namely, screws,
nuts, bolts, washers and thread rods and studs,” as to be
likely to cause confusion.
Decision: The refusal to register is affirmed.