Productivity, Inc.

Trademark Trial and Appeal Board

Feb 5, 2014

No. 85549175 (T.T.A.B. Feb. 5, 2014)

Mailed:
February 5, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Productivity, Inc.
________

Serial No. 85549175
_______

Garrett M. Weber of Lindquist & Vennum PLLP for
Productivity, Inc.

Meghan Reinhart, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Bucher, Wellington, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Productivity, Inc., applicant, filed an application to
register the mark REDLINE (in standard characters) on the
Principal Register for “cutting oils for industrial use” in
International Class 4.1
The examining attorney has refused registration of
applicant’s mark pursuant to Section 2(d) of the Trademark

1 Application Serial No. 85372951 is based on an allegation of
first use on August 31, 2008 filed under Section 1(a) of the
Trademark Act.

THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Serial No. 85549175
2
Act, 15 U.S.C. § 1052(d), on the ground that applicant’s
mark is likely to be confused with the following five
previously-registered marks, owned by the same entity:

for “motor oil” in International Class 4;2

RED LINE (RED disclaimed)
for “petroleum-based motor fuel additives” in
International Class 1, and “lubrication grease and oil
for motor vehicles” in International Class 4;3

(SYNTHETIC OIL disclaimed)
for “non-chemical petroleum-based motor fuel additives for
motor vehicles” in International Class 4;4

(SYNTHETIC OIL disclaimed)
for “Chemical additives for motor fuels; chemicals,
namely, combination wetting agent, heat transfer
improver, and corrosion inhibitor sold as a component
of a chemical treatment preparation for automotive and
industrial cooling systems” in International Class 1,
and
and “Lubrication grease and motor oil for motor
vehicles; Non-chemical petroleum-based motor fuel

2 Registration No. 1331577 issued on April 23, 1985, renewed.
3 Registration No. 1621794 issued on November 13, 1990, renewed.
4 Registration No. 1643301 issued on May 7, 1991, renewed. The
mark (shown above) depicts, in part, a tachometer including the
words “RPM X1000” and is lined for the color red.
Serial No. 85549175
3
additives for motor vehicles” in International Class
4;5 and

(SYNTHETIC OIL disclaimed) for

for “Chemical additives for motor fuels; chemicals,
namely, combination wetting agent, heat transfer
improver, and corrosion inhibitor sold as a component
of a chemical treatment preparation for automotive and
industrial cooling systems” in International Class 1,
and
“Lubrication grease and motor oil for motor vehicles;
Non-chemical petroleum-based motor fuel additives for
motor vehicles” in International Class 4.6

Applicant has appealed the refusal and briefs have
been filed.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.

5 Registration No. 3893550 issued on December 21, 2010. The mark
(shown above) depicts, in part, a tachometer that contains the
terms “RPM X1000” on its face.
6 Registration No. 3893587 issued on December 21, 2010. The mark
(shown above) depicts, in part, a tachometer that contains the
words “RED LINE OIL RPM X1000” on its face.
Serial No. 85549175
4
Cir. 2003). In any likelihood of confusion analysis, two
key, although not exclusive, considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We turn first to the marks and, in doing so, examine
the similarities and dissimilarities in their appearance,
sound, meaning, and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
The examining attorney argues that the marks are
similar because “all contain or consist entirely of the
wording REDLINE or a variant spelling thereof (i.e., RED
LINE) and the other matter in registrant’s marks, if any,
is less significant in forming the marks’ overall
commercial impressions.” Office action dated June 11,
2012. Applicant, on the other hand, did not address this
factor in its response to the Office action or in its
brief; however, we do not consider applicant’s lack of
attention to this factor necessarily as a concession of the
examining attorney’s assertions.
In comparing the marks in their entireties, we find
applicant’s mark to be very similar to all five registered
Serial No. 85549175
5
marks. It is nearly identical to the first two registered
marks shown above. Because applicant’s mark is in standard
characters, we must consider that it may be presented in
the same manner as the typed registered mark or in a
similar stylization to that used in the first registered
mark. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1909 (Fed. Cir. 2012). See also Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847-48 (Fed.
Cir. 2000).
As to the registered marks containing additional
designs or wording, we find that REDLINE or RED LINE
remains the dominant element with respect to each one. The
additional wording is significantly less prominent and
generic wording such as SYNTHETIC OIL has nearly no source-
identifying value. In the composite marks containing both
words and designs, it is generally the word portion that is
dominant and more likely to be impressed upon a purchaser’s
memory. In re Dakin's Miniatures, Inc., 59 USPQ2d 1593,
1596 (TTAB 1999). See also Viterra, 101 USPQ2d at 1908
(citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir 1983)). In other words, consumers
are likely to recall the registered marks by simply the
wording REDLINE or RED LINE. Finally, it has not been
argued, let alone shown, that the wording “redline” or “red
Serial No. 85549175
6
line” is diluted or has any significance in connection with
the involved goods such that we would consider this term as
being less distinctive or important for purposes of
determining the similarity of the marks.
In sum, when we consider the marks in their entireties
in terms of appearance, sound, connotation and overall
commercial impression, we find them to be highly similar.
Applicant essentially seeks to register either the sole or
dominant element of each of the five registered marks. The
additional matter found in several of the registrations
does not suffice to distinguish these marks. The du Pont
factor of the similarity of the marks weighs in favor of
finding a likelihood of confusion.
We turn now to the relatedness of the goods, as well
as their trade channels and classes of purchasers. In
comparing the relatedness of the goods, it is not necessary
that the respective goods be identical or even competitive
in order to find that they are related for purposes of our
likelihood of confusion analysis. That is, the issue is
not whether consumers would confuse the applicant’s
“cutting oil for industrial purposes” with any of the
identified goods in the registrations, but rather whether
they would be confused as to the source of these goods.
The goods need only be sufficiently related that consumers
Serial No. 85549175
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would be likely to assume, upon encountering the goods
under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to
the same source. See In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984).
Applicant’s main argument on appeal is that its
“cutting oils7 for industrial use,” by their very
identification, are limited to industrial use whereas “a
simple reading of the registrant’s description of
goods...reveals that they are all consumer products.”
Brief, p. 2. “By limiting its description of goods to
industrial products, the applicant intended to focus its
identification of goods on products used in factories in
connection with tooling and other industrial uses.” Id.
The examining attorney, on the other hand, argues that
applicant’s cutting oils for industrial use are closely
related to goods identified in the registrations. In
support, he has submitted printouts from various websites
demonstrating several third parties as being sources for
cutting oils as well as other lubricants, including oil and

7 “Cutting oil” is defined as “a specially prepared oil used as a
cutting fluid.” Random House Dictionary (Random House, Inc.
2014). The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp.
Co., 213 USPQ 594 (TTAB 1982), aff'd 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Serial No. 85549175
8
synthetic lubricants for motor vehicles, and fuel
additives.8 The examining attorney’s brief contains an
adequate and accurate synopsis of this evidence and we see
no point in repeating this information, except to point out
that one website (Schaeffer’s Specialized Lubricants,
www.schaefferoil.com) not only identifies motor oil but
also touts its “metalworking fluids” being used worldwide
and includes a photograph of an industrial-size,
metalworking machine tool. The examining attorney also
submitted printouts of numerous use-based, third-party
registrations which include both lubricants for industrial
use and/or cutting oils, as well as oils, lubricants or
additives for motor vehicles, in their identifications of
goods.9 These registrations have probative value to the
extent that they suggest that the involved goods are of a
type which could be marketed by a single source under a
single mark. See In re Association of the United States
Army, 85 USPQ2d 1264, 1270 (TTAB 2007); 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).

8 Attached to Office actions dated June 11, 2012, and January 8,
2013.
9 Submitted with Office action dated June 11, 2012.
Serial No. 85549175
9
We further note that the goods identified in the cited
registrations are not necessarily limited to only consumer
products. Indeed, the fourth-listed registration (Reg. No.
3893550) lists “corrosion inhibitor sold as a component of
a chemical treatment preparation for automotive and
industrial cooling systems” (emphasis in italics added).
Furthermore, “motor oils” or other lubricants and additives
for motors may be used for industrial motors and not
necessarily just passenger vehicles. In this regard, we
agree with the examining attorney that applicant improperly
characterizes registrant’s identified goods as not for
industrial use.
In sum, the record shows that applicant’s cutting oils
for industrial use are sufficiently related to registrant’s
goods, in particular motor oil, fuel additives and other
lubricants. Accordingly, the du Pont factor regarding
relatedness of goods favors finding a likelihood of
confusion.
Upon consideration of the entire record and all
relevant likelihood of confusion factors, we find there is
a likelihood of confusion. Consumers already familiar with
the registered marks for motor oil, fuel additives and
other lubricants may, upon encountering REDLINE-branded
cutting oils for industrial use, mistakenly believe that
Serial No. 85549175
10
they emanate from the same source. This likelihood of
confusion prevents registration of applicant’s proposed
mark.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act is affirmed.