Productivity, Inc.Download PDFTrademark Trial and Appeal BoardFeb 5, 2014No. 85549175 (T.T.A.B. Feb. 5, 2014) Copy Citation 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 7 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. Copy with citationCopy as parenthetical citation