Parker-Hannifin Corp.

Trademark Trial and Appeal Board

Mar 11, 2008

No. 76630399 (T.T.A.B. Mar. 11, 2008)

Mailed:
March 11, 2008
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UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Parker-Hannifin Corp.
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Serial No. 76630399
_______

John H. Weber of Baker & Hostetler LLP for Parker-Hannifin
Corp.

Nelson B. Snyder III, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Seeherman, Hairston and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Parker-Hannifin Corp. (applicant) has applied to
register the mark shown below for “land vehicle automatic
transmission parts, namely, heavy duty clutches, passenger
car clutches, medium duty truck clutches, high performance
clutches, disc clutches, clutch covers, clutch pilot
bearings, clutch pilot bushings, clutch master cylinders,
and clutch slave cylinders; brake hardware for land
vehicles, namely, automatic slack adjusters, brake pads,
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76630399
2
brake shoes, brake drums, brakerotors, and brake calipers”
in International Class 12.1

The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with
Registration No. 3071928 for the mark PROSELECT in standard
characters for “air, oil and fuel filters for vehicles” in
International Class 7. The cited registration issued on
March 21, 2006. Applicant has appealed. Applicant and the
Examining Attorney have filed briefs. We affirm.
LIKELIHOOD OF CONFUSION
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476

1 Application Serial No. 76630399, filed February 7, 2005,
claiming first use of the mark anywhere and first use of the mark
in commerce on December 31, 1999.

Serial No. 76630399
3
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will consider each of the factors
as to which applicant or the Examining Attorney presented
arguments or evidence.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
With regard to the marks, applicant argues, “The
Registrant’s mark is PROSELECT without any stylization of
the words, whereas Applicant’s mark emphasizes the prefix
“PRO” such that the Applicant (sic) creates a different
commercial impression despite (sic).” Applicant’s Brief at
unnumbered pages 2-3. With regard to the cited registered
Serial No. 76630399
4
mark applicant also argues, “The Registered mark consists
of a single term PROSELECT, which joins ‘Pro’ meaning
professional, and ‘Select’ suggesting that the goods are
the choice of professionals. Consequently, the mark is
extremely suggestive and therefore weak, entitling the
registration to only a narrow scope of protection.” Id. at
unnumbered page 6.
On the other hand, the Examining Attorney argues,
“Contrary to Applicant’s arguments, its mark, ‘ProSELECT’
(stylized) is identical in sound and commercial impression,
and is virtually identical in appearance to the registered
mark ‘PROSELECT.’ In this case the parties’ marks share
identical wording. There is no other wording or design
elements present with which to distinguish the marks.”
Examining Attorney’s Brief at unnumbered page 4.
We concur with the Examining Attorney. In fact, we
conclude that the marks are legally identical. As the
Examining Attorney correctly points out, the cited
registered mark is presented in standard characters, and
consequently, the registration covers PROSELECT in all
manners of display within reason. 37 C.F.R. § 2.52(a).
See In re Melville Corp., 18 USPQ2d 1386, 1387-88 (TTAB
1991). The presentation of applicant’s mark in this case
is well within that scope. Applicant’s mark is simply the
Serial No. 76630399
5
stylized display of the entire mark in the cited
registration, without any further distinguishing literal or
design elements. There is no meaningful difference between
the marks in appearance, sound, connotation or commercial
impression.
As we noted, applicant also asserts that the cited
registered mark is suggestive, and therefore, weak. We
accept applicant’s explanation that PROSELECT is a
“telescoped” form of “professional” combined with “select.”
We also accept applicant’s characterization of PROSELECT as
a suggestive term, though we note that applicant has not
submitted any evidence to show to what extent, if any,
third parties may have used PROSELECT as a mark. However,
even a highly suggestive mark is entitled to protection.
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439,
42 (TTAB 1976). Here, while we find PROSELECT is
suggestive, we do not find it to be highly suggestive. In
a case such as this where the marks are legally identical
and there is no other element to distinguish the marks, the
registered mark is certainly entitled to protection. Id.
at 1389. Cf. Knight Textile Corp. v. Jones Investment Co.,
75 USPQ2d 1313 (TTAB 2005).
Serial No. 76630399
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Accordingly, we conclude that the marks are legally
identical and that the registered mark, though suggestive,
is entitled to protection.
The Goods and Channels of Trade
We begin our consideration of the goods by noting
that, “… in a situation such as this, where both parties
are using the identical designation … the relationship
between the goods on which the parties use their marks need
not be as great or as close as in the situation where the
marks are not identical or strikingly similar.” Amcor,
Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).
Furthermore, as a general proposition the goods of
applicant and the registrant need not be identical to find
a likelihood of confusion under Trademark Act Section 2(d).
They need only be related in such a way that the
circumstances surrounding their marketing would result in
relevant consumers mistakenly believing that the goods
originate from or are associated with the same source. See
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The goods identified in the application are “land
vehicle automatic transmission parts, namely, heavy duty
clutches, passenger car clutches, medium duty truck
Serial No. 76630399
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clutches, high performance clutches, disc clutches, clutch
covers, clutch pilot bearings, clutch pilot bushings,
clutch master cylinders, and clutch slave cylinders; brake
hardware for land vehicles, namely, automatic slack
adjusters, brake pads, brake shoes, brake drums,
brakerotors, and brake calipers.” The goods identified in
the cited registration are “air, oil and fuel filters for
vehicles.”
Applicant argues that there are technical and
functional differences between its goods and those in the
cited registration. Applicant states, “To hold that the
Applicant’s goods are related to the Registrant’s goods so
as to cause confusion simply because both may be classified
under the extremely broad heading of automotive parts,
would be to grant the owner of the registered mark an
overly broad scope of protection.” Applicant’s Brief at 5.
Applicant has not discussed any of the evidence the
Examining Attorney submitted to establish that the goods
identified in the application and the cited registration
are related.
On the other hand, the Examining Attorney argues that
the goods are related, and the Examining Attorney has
submitted evidence to support his position, including
numerous use-based, third-party registrations for marks for
Serial No. 76630399
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both the types of goods identified in the application and
the types of goods identified in the cited registration, as
well as excerpts from Internet web sites of entities which
offer both types of goods for sale under one mark. See
Attachments to Final Office Action.
The use-based, third-party registrations include the
following: Registration No. 1572864 for goods including
oil filters, air filters, and disc brake pads; No. 1173921
for goods including disk brake pads, oil filters and air
filters; No. 1413975 for goods including clutch bearings,
clutches and structural parts, and fuel oil filters; No.
1564166 for goods including clutches and clutch discs and
parts therefor, air, oil and fuel filters for land vehicle
engines; No. 2045412 for goods including air filters, oil
filters, fuel filters, brake shoes, brake cylinders, brake
linings, brake hardware, brake valves and clutches; No.
2075452 for goods including oil and air filters for
automotive use, brake pads, brake rotors, clutch cables and
clutch discs; No. 2360510 for goods including air, oil and
fuel filters, brake linings, brake shoes, brake cylinders,
brake calipers and pads therefor; and No. 2471866 for goods
including brake linings, brake cylinders, clutches, and air
filters for engines. These examples are but a small but
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representative sample of more than forty third-party
registrations in the record.
These registrations provide some evidence that the
goods in the application and the goods in the cited
registration are the types of goods which may emanate from
the same source. In re TSI Brands Inc., 67 USPQ2d 1657,
1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
The Examining Attorney has also provided excerpts from
Internet web sites showing entities in the vehicle and
engine parts business which offer both types of goods, and
generally under the same mark, including: pepboys.com
offering brake pads, brake shoes and oil filters;
napaonline.com offering clutch discs, brake calipers, oil,
air and fuel filters; and a record from google.com showing
a catalog from American Pony Parts offering clutch and
brake parts, as well as fuel filters.
As we noted, applicant has addressed neither the
third-party registrations nor the Internet evidence in its
arguments. Based on the evidence of record, in particular,
the Internet evidence and the third-party registrations, we
conclude that the goods in the application and the goods in
the cited registration are related and that they move in
the same channels of trade to the same potential
Serial No. 76630399
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purchasers. The evidence contradicts applicant’s claim
that the Examining Attorney has taken unrelated goods and
found them related because they are “… classified under the
extremely broad heading of automotive parts.” The evidence
indicates that, even though the respective goods may be
technically and functionally different, the types of goods
in question are generally placed in the same category for
sale as commercially related products.
Conditions of Sale
Applicant also argues that, “The consumers who will
use and purchase Applicant’s goods are sophisticated
purchasers who will be using the goods to assist their
customers in fixing complicated automatic transmissions and
brakes. Since automatic transmissions and braking systems
are fairly complicated, it is unlikely that the average
consumer will engage in the complex vehicle transmission
and brake repair. In comparison, the average consumer
often change (sic) their own air, oil and fuel filters …”
Applicant’s Brief at 4. Applicant appears to argue that
its customers are professional mechanics who will not be
confused because they are sophisticated purchasers whereas
the purchasers of the goods identified in the cited
registration may include less sophisticated individuals.
We find applicant’s arguments here unpersuasive. While
Serial No. 76630399
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some of the potential purchasers of applicant’s goods may
be sophisticated mechanics, the purchasers for at least
some of applicant’s goods, for example, brake pads, could
include individuals who are not professional mechanics.
More importantly, again in a case such as this where the
marks are legally identical, we conclude that
sophistication of the purchasers would not diminish the
likelihood of confusion, whether the purchasers are
professional mechanics or others. As the Examining
Attorney points out, even sophisticated purchasers are not
immune from trademark confusion. In re Decombe, 9 USPQ2d
1812 (TTAB 1988).
CONCLUSION
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s stylized
ProSELECT mark when used in connection with “land vehicle
automatic transmission parts, namely, heavy duty clutches,
passenger car clutches, medium duty truck clutches, high
performance clutches, disc clutches, clutch covers, clutch
pilot bearings, clutch pilot bushings, clutch master
cylinders, and clutch slave cylinders; brake hardware for
land vehicles, namely, automatic slack adjusters, brake
pads, brake shoes, brake drums, brakerotors, and brake
Serial No. 76630399
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calipers” and the cited PROSELECT mark when used in
connection with “air, oil and fuel filters for vehicles.”
Decision: We affirm the refusal to register the mark
under Trademark Act Section 2(d).