Neidhart S.A.

Trademark Trial and Appeal Board

Aug 10, 2018

No. 79196158 (T.T.A.B. Aug. 10, 2018)

Mailed: August 10, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
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In re Neidhart S.A.
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Serial No. 79196158
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Mark Harrison and Catherine Mitros of Venable LLP,
for Neidhart S.A.
Matthew G. Galan, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
————
Before Shaw, Goodman and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Neidhart S.A. (“Applicant”) seeks registration on the Principal Register of the
stylized mark HB, as displayed below, for “Electronic speed controllers,
servomechanisms for controlling automobile speed, radio transmitters and receivers,
all incorporating and employing radio-frequency signaling technology; batteries;
rechargeable batteries; apparatus and instruments for charging batteries and their
parts and accessories” in International Class 9, and “Battery-operated radio-
controlled scale model vehicles, their parts and accessories, hobby kits for building
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 79196158
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battery-operated scale model vehicles, and their parts and accessories, excepting
miniature internal combustion engines and parts thereof” in International Class 28.1

The Trademark Examining Attorney refused registration of Applicant’s mark
solely as to the goods identified in International Class 28 under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the
registered mark HB (in standard characters) for “parts and accessories for use with
model toy airplanes, boats, and cars, namely miniature internal combustion engines
and parts thereof” in International Class 28.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.3
I. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of

1 Application Serial No. 79196158, filed on July 26, 2016, seeking an extension of protection
of International Registration No. 1318894 under Trademark Act Section 66(a), 15 U.S.C.
§ 1141f(a). The description of the mark reads as follows: “The mark consists of the highly
stylized letters “HB”, where the letters appear outlined by an electrical charge and pulse.”
Color is not claimed as a feature of the mark.
2 Registration No. 3044319, issued on January 17, 2006; renewed.
3 The TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations
reference the docket and electronic file database for Application Serial No. 79196158. All
citations to the TSDR database are to the downloadable .PDF version of the documents.
Serial No. 79196158
3
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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods. 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. Similarities of the Marks
We initially address the first du Pont factor, “the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177
USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but
instead whether the marks are sufficiently similar in terms of their commercial
impression such that persons who encounter the marks would be likely to assume a
connection between the [owners].” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Applicant’s mark is . The cited mark is HB in standard characters. The
literal portion of both marks is identical. The only difference between the marks is
the stylization of the letters HB in Applicant’s mark. However, the cited mark is a
standard character mark, and marks appearing in standard character form may be
Serial No. 79196158
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displayed in any stylization, font, color and size, including the identical stylization of
Applicant’s HB mark, because the rights reside in the wording and not in any
particular display or rendition. See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 939 (Fed. Cir. 1983) ((“[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no particular display. By presenting its
mark merely in a typed drawing, a difference cannot legally be asserted by that
party.”) Thus, because the cited mark may be displayed in the identical manner as
Applicant’s mark, the stylization of Applicant’s mark is insufficient to distinguish the
parties’ respective marks.
Because the literal portion of Applicant’s mark and the cited mark are identical,
the marks at issue are clearly substantially similar, if not identical, in sound,
appearance, connotation and commercial impression.
The first du Pont factor therefore strongly supports a conclusion that confusion is
likely.
B. Similarities of the Goods
We next turn to the comparison of the goods, the second du Pont factor, keeping
in mind the greater the degree of similarity between the marks, the lesser the degree
of similarity between the goods necessary to support a finding of likelihood of
confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). In making our
comparison, we consider the goods as identified in Applicant’s application vis-à-vis
the goods identified in the cited registration. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom
Sys., Inc. v. Hous. Comps. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
Serial No. 79196158
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1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.2d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002). At the outset, we note that the goods in question are not
identical. However, it is not necessary that the goods be identical or even competitive
in nature in order to support a finding of likelihood of confusion, it being sufficient
that the goods are related in some manner and/or that the circumstances surrounding
their marketing be such that they would be likely to be encountered by the same
persons under circumstances that would give rise, because of the marks employed
thereon, to the mistaken belief that they emanate from the same source. Coach Servs.,
101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)); see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991). Evidence of relatedness may include news articles and/or evidence from
computer databases showing that the relevant goods are used together or used by the
same purchasers; advertisements showing that the relevant goods are advertised
together or offered by the same manufacturer or dealer; and/or copies of prior use-
based registrations of the same mark for both Applicant’s goods and the goods listed
in the cited registration. In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the products
at the same time and in the same stores). The issue is not whether purchasers would
confuse the goods, but rather whether there is a likelihood of confusion as to the
Serial No. 79196158
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source of these goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012);
In re Rexel Inc., 223 USPQ 830, 832 (TTAB 1984).
The Examining Attorney made of record third-party, use-based registrations, each
identifying, under a single mark, both scale model or toy vehicles on the one hand
and the parts therefor on the other.4 Although such registrations are not evidence
that the marks shown therein are in use or that the public is familiar with them, they
nonetheless have probative value to the extent that they serve to suggest that the
goods listed therein are of a kind which may emanate from a single source under a
single mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The third-party registrations are as follows:5
• CENTURI (Reg. No. 4339076) for “Scale model kits; Scale model
rocket kits primarily composed of model parts for building scale
model rockets, namely, nose cones, racks, display stands, engines,
motors, ignitors, launch stands and parachutes”;
• (HOBBY disclaimed) (Reg. No. 4712986) for,
among other things, “hobby grade engines for remote controlled air
and surface vehicles; model cars; play motor cars; radio controlled
model vehicles; radio controlled toy vehicles; remote control toys,
namely, cars, race cars, airplanes and boats; scale model airplanes;
scale model vehicles; toy airplanes; toy boats; toy cars; toy model
cars; toy model kit cars”;

• TELECOOL (Reg. No. 5212118) for, among other things, “Radio-

4 June 28, 2017 Final Office Action, TSDR pp. 44-58.
5 The Examining Attorney also submitted a copy of Registration No. 3990908 for the mark
NEW YORK TOY EXCHANGE for various toy models and vehicles and parts therefor. This
registration, however, has been cancelled and, therefore, has no probative value in our
analysis. See Black & Decker Corp. v. Emerson Elec. Co., 84 USPQ2d 1482, 1487 n.9 (TTAB
2007) (canceled registrations have no probative value).
Serial No. 79196158
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controlled toy vehicles; Radio controlled toy cars, race cars, airplanes,
boats; Remote control toy glider, airplane and sailplane equipment,
namely, launchers, engines, propellers; Scale model vehicles; toy
models”; and
• (Reg. No. 5231458) for, among other things,
“Controllers for toy cars, planes; Electronic toy vehicles; Hobby grade
engines for remote controlled air and surface vehicles; Model cars;
Model toy vehicles; Radio controlled model vehicles; Radio controlled
toy cars, race cars, airplanes, boats; Radio transmitters for use with
radio-controlled toys; Remote control toy glider, airplane and
sailplane equipment, namely, launchers, engines, propellers; Remote
control toys, namely, cars, race cars, airplanes, boats; Scale-model
vehicles; Scale model aircraft; Scale model airplanes; Toy model
vehicles and related accessories sold as units; Toy model cars; Toy
model kit cars; Toy models.”

The Examining Attorney also submitted internet evidence demonstrating that
third parties offer scale model and/or toy vehicles and their associated parts under
the same mark. The evidence comprises screenshots of the websites of the following
companies:6 Best Model Car Parts, Mega Hobby, Hobbylinc, Teds Modeling
Marketplace, Rocketfin, The Model Car Garage, Revel, Mega Hobby, Joann, Hobby
Masters, and California Car Cover Co. The Examining Attorney argues that the
foregoing evidence establishes that the goods described in Applicant’s involved
application and the cited registration are related because these are often made,
advertised and sold by the same company to the same consumers under the same
mark.7
In traversing the refusal, Applicant argues that the evidence submitted by the

6 June 28, 2017 Final Office Action; TSDR, pp. 7-43; January 17, 2018 Denial of Request for
Reconsideration, TSDR, pp. 3-31.
7 Trademark Examining Attorney’s Appeal Brief, p. 7, 11 TTABVUE 7.
Serial No. 79196158
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Examining Attorney does not establish that the goods at issue are related.8
Specifically, Applicant notes while the evidence submitted by the Examining
Attorney shows that parties that sell model vehicles and model vehicle kits also sell
the discrete parts for such model vehicles, the internet evidence and the third-party
registrations do not specifically establish that the same parties sell internal
combustion engines for model toy airplanes, boats and cars and battery-operated
radio-controlled model vehicles and model vehicle kits.9 In particular, Applicant
argues that the third-party registrations submitted by the Examining Attorney, i.e.,
Reg. Nos. 4712986, 5212118 and 5231458, all cover remote controlled engines or
engines for use with remote-controlled vehicles and since these engines are remote-
controlled, they are not operated by way of internal combustion engines.10 With
regard to Reg. No. 4339076, Applicant maintains that this particular registration
covers scale model kits with no power source i.e., it does not specify that the goods
are battery-operated or that they run on fuel using internal combustion engines.11
Finally, Applicant argues that none of the marketplace internet evidence shows that
third-parties provide both internal combustion engines and parts thereof for model
toy vehicles and Applicant’s goods under the same mark.12
We find Applicant’s arguments unpersuasive. As already noted, it is not necessary

8 Applicant’s Appeal Brief, p. 6, 8 TTABVUE 9.
9 Id.
10 Id. at pp. 9-10, 8 TTABVUE 12-13.
11 Id. at p. 10, 8 TTABVUE 13.
12 Id. at pp. 6-9, 8 TTABVUE 9-12.
Serial No. 79196158
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that the goods be identical or even competitive in nature in order to support a finding
of likelihood of confusion. The evidence of record must only demonstrate that there is
a commercial relationship between the goods. See On-line Careline Inc., v. Am.
Online, Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Coach Servs.,
Inc., 668 F.3d at 1369. We further note that, contrary to Applicant’s argument that
Registrant’s goods are solely operated through the use of fuel,13 Registrant’s “internal
combustion engines” are not limited in any way and can be used with battery-
operated radio-controlled scale model vehicles, such as Applicant’s. With regard to
the third-party registrations, each identifies toy or scale model vehicles, as well as
engines for these vehicles. As such, the third-party registrations serve to suggest that
the goods listed therein are of a kind which may emanate from a single source under
a single mark.
Likewise, the internet evidence demonstrates that a single entity provides toy or
scale model vehicles, as well as engines for such vehicles. As example, Revel,
Rocketfin and Hobby Linc provide engines for toy vehicles, as well as radio-controlled
drones, planes, helicopters, airplanes, and vehicles that are battery powered.14
In view of the foregoing and based on the third-party evidence of record, we find
that Applicant’s goods and Registrant’s goods are commercially related and are the
types of goods that have been offered under a single mark by a single entity such that,
when identified by substantially identical marks, as is the case here, confusion as to

13 Id. at p. 4, 8 TTABVUE 7.
14 January 17, 2018 Denial of Request for Reconsideration, TSDR, pp. 3-5; 15.
Serial No. 79196158
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source is likely. In re Shell Oil Co., 922 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993) (“[E]ven when goods or services are not competitive or intrinsically related, the
use of identical marks can lead to the assumption that there is a common source.”).
Thus, the second du Pont factor favors a finding of likelihood of confusion.
C. Similarities in Trade Channels and Classes of Purchasers
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because there are no limitations as to channels of trade or classes of
purchasers in either the application or cited registration and the identified goods are
related, we must presume that the goods identified in Applicant’s application and the
cited registration travel through all normal and usual trade channels for such goods,
and that they are sold to all classes of prospective purchasers for those goods, i.e., toy
model hobbyists and toy model makers and builders. Stone Lion Capital, 110 USPQ2d
at 1161; see also Coach Servs., 101 USPQ2d at 1723 (absent limitation “goods are
presumed to travel in all normal channels ... for the relevant goods”). The only
probative evidence relating to the trade channels through which the goods at issue
travel is the third-party website evidence submitted by the Examining Attorney
discussed above. This evidence shows that Applicant’s goods and Registrants’ goods
are the type of goods that may be provided in the same online marketplace to similar
or overlapping purchasers. Therefore, the third du Pont factor also weighs in favor of
finding a likelihood of confusion.
II. Conclusion
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. Because we have
Serial No. 79196158
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found that the marks at issue are substantially identical; that Applicant’s identified
goods are commercially related to Registrants’ goods and move in similar or
overlapping trade channels; and that they would be offered to the same or similar
classes of purchasers, we conclude that Applicant’s mark, as used in
connection with the goods identified in International Class 28, so resembles the cited
mark HB in standard characters as to be likely to cause confusion or mistake, or to
deceive under Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s mark for the goods
identified in International Class 28 under Section 2(d) of the Trademark Act is
affirmed. Applicant’s application No. 79196158 will proceed to issuance of a
registration solely with regard to the goods identified in International Class 9.