Ram Board Inc.

Trademark Trial and Appeal Board

Jul 27, 2020

88429018 (T.T.A.B. Jul. 27, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 27, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ram Board Inc.
_____

Serial No. 88429018
_____

Brian E. Turung and Brendan J. Goodwine of Fay Sharpe LLP,
for Ram Board Inc.
Kristina Morris, Trademark Examining Attorney, Law Office 116,
Elizabeth Jackson, Managing Attorney.
_____

Before Wellington, Greenbaum, and Coggins,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Ram Board Inc. (“Applicant”) seeks registration on the Principal Register of the
mark RAM BOARD MULTI-CUTTER, in standard characters, for “hand-operated
tools, namely, cardboard cutters, paperboard cutters, fiberboard cutters, cutters for
cutting cardboard, paperboard, and fiberboard; cardboard knife; paperboard knife;
Serial No. 88429018
- 2 -

fiberboard knife; knives for cutting cardboard, paperboard and fiberboard” in
International Class 8.1 The wording BOARD MULTI CUTTER has been disclaimed.
The Examining Attorney refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following
registered marks owned by the same entity (“Registrant”):
1. RAM-PRO (in standard characters),2 and
2. RAMPRO (in standard characters);3
and each for the same goods:
Hand tools, namely, nut drivers, chalk line reels, hex key
wrenches, pliers, pry bars, rasps, ratchets, namely, ratchet
wrenches, adjustable wrenches, snips, socket wrenches,
socket wrench adaptor sets, wrecking bars, utility knives
and blades for utility knives and pocket knives, clamps,
combination clamps, vices, chisels, planes, screwdrivers,
saws and blades for utility knives and pocket knives, staple
guns, hammers, tacker hammers; multi-function hand tool
comprised of a board bender, a splitting and cutting edge,
a demolition hammer, a nail puller and a pry bar, in
International Class 8.
Applicant appealed to this Board after the refusal was made final. The appeal has
been fully briefed, including a reply brief from Applicant. We affirm the refusal to
register.

1 Application Serial No. 88429018, filed May 14, 2019, based upon Applicant’s claim of a bona
fide intent to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. §
1051(b).
2 Reg. No. 5242121 issued on July 11, 2017.
3 Reg. No. 5464502 issued on May 8, 2018.
Serial No. 88429018
- 3 -

I. Evidentiary Objection
The Examining Attorney objects to Applicant’s inclusion of website addresses
embedded within Applicant’s arguments on pages 7-8 of its main brief on the ground
that the referenced websites “have not previously been introduced as evidence.”4
Applicant responded to this objection in its reply brief by stating that “similar
evidence including screenshots from the Home Depot website were introduced into
the record during prosecution . . . [and a]s such, Applicant requests consideration of
the webpages in the present appeal.”5
The Examining Attorney’s objection is sustained and the website addresses (or
embedded links) within Applicant’s brief are not of record.6 Trademark Rule 2.142(d)
(“The record in the application should be complete prior to the filing of an appeal.
Evidence should not be filed with the Board after the filing of a notice of appeal.”); see
also, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1207.01
(2020). Moreover, merely providing links to content on the Internet does not by itself
suffice to introduce the websites or underlying material into evidence. See In re Olin,
124 USPQ2d 1327, 1331 n.15 (TTAB 2017) (citing In re Powermat Inc., 105 USPQ2d
1789, 1791 (TTAB 2013)).
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts

4 6 TTABVUE 4 (Examining Attorney’s objection); 4 TTABVUE 12-13 (pages of Applicant’s
brief with the objected-to addresses).
5 7 TTABVUE 3.
6 We have, of course, considered what Applicant’s calls “similar evidence” that was timely
submitted with the July 5, 2019 Response to Office Action.
Serial No. 88429018
- 4 -

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) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor for
which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be assigned
to each DuPont factor depending on the evidence presented. See Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011);
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he
various evidentiary factors may play more or less weighty roles in any particular
determination.”).
In any likelihood of confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
Serial No. 88429018
- 5 -

A. Relatedness of the Goods, Trade Channels, Purchasing Conditions
and Classes of Consumers

With regard to the goods, channels of trade, purchasing conditions and classes of
consumers, we must make our determinations under these factors based on the goods
as they are identified in the application and cited registrations. See In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); see also Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). As to the relatedness of the goods,
in particular, “[t]his factor considers whether ‘the consuming public may perceive [the
respective goods of the parties] as related enough to cause confusion about the source
or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d
1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004).
The goods described in the application and cited registrations are in-part legally
identical. In particular, the registrations cover “utility knives” which are defined as
“kni[ves] with a small sharp blade, often retractable, designed to cut wood, cardboard,
and other materials.”7 Registrant’s utility knife goods therefore are essentially the

7 Definition from lexico.com attached to Office Action issued July 30, 2019, TSDR 13.
We also take notice that THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE, Fifth Edition Copyright 2016 by Houghton Mifflin Harcourt Publishing
Company also defines utility knife as: “a knife with a small disposable blade that can retract
into the handle when not in use. Also called box cutter.” 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), including
Serial No. 88429018
- 6 -

same as Applicant’s “cardboard knife; paperboard knife; fiberboard knife; knives for
cutting cardboard, paperboard and fiberboard.” Applicant’s knives, as identified in
the application, simply describe knives with many of the same designed purposes of
utility knives described in the definition of “utility knife.” While a “utility knife” is
also defined as having a “small” and “often retractable” blade, Applicant’s
identification is broad enough to include knives having those same features. Put
simply, Applicant’s identification of goods encompasses, in part, utility knives.
Further corroborating this legal identity of goods, the Examining Attorney submitted
evidence from third-party websites demonstrating that “utility knives” are used for
cutting “fiberboard.”8
Because we find that some of Applicant’s listed goods are legally identical to some
of Registrant’s goods, we need not determine the relatedness of Applicant’s other
goods listed in the application. That is, if there is likelihood of confusion with respect
to any of applicant’s identified goods in the class, the refusal of registration must be
affirmed to all goods in that class. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp.,
648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d
1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).

online dictionaries that exist in printed format or regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
8 See, e.g., printout from “Do It Yourself” website (www.doityourself.com), attached to Office
Action issued July 30, 2019, at TSDR pp. 16-18. See also printouts from ToolGuyd
(www.toolguyd.com) website (discussing author’s “first instinct” to cut cardboard with a
utility knife), id. at TSDR pp. 19-20.
Serial No. 88429018
- 7 -

As to trade channels and classes of purchasers, the identifications of goods in the
Application and the cited registrations are unrestricted in this regard. We must
therefore presume that these goods are offered to all typical classes of consumers
through normal distribution channels and, given the legal in-part identity of the
goods, we presume these will be the same. In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion); see also 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 other words, we must assume that a consumer, whether a homeowner “do
it yourselfer” or a professional workman, seeking to purchase a knife for cutting
cardboard, paperboard, fiberboard, etc., will find Applicant’s and Registrant’s goods
in the same trade channels, including retail outlets, that these goods are normally
offered; and that the consumers are the same.
In addition to the presumption that Applicant’s and Registrant’s legally identical
goods will be found in the same trade channels and encountered by the same classes
of consumers, we also note the evidence showing that these goods are relatively
inexpensive. Applicant submitted evidence showing that its goods may be purchased
Serial No. 88429018
- 8 -

at the Home Depot retail website (www.homedepot.com) for $14.99.9 In addition,
Applicant submitted evidence that both its goods and Registrant’s goods are sold via
online retailer Amazon.com, and also that Registrant’s goods sell for $6.99 (for
package of 6) or $5.80 for a different model (with 6 blades).10 Other brand utility
knives sell for in the same price ranges.11 Applicant argues that its goods are priced
higher than Registrant’s and that this “indicates to consumers that the goods of
Applicant and Registrant are not comparable.”12 The aforementioned evidence
actually cuts the other way. As noted, the involved identifications of goods are not
restricted and we must assume the goods will be offered in the full price point range
-- which the evidence shows can be quite low. In re Bay State Brewing Co., 117
USPQ2d 1958, 1960 and n.4 (TTAB 2016). Indeed, “[w]hen products are relatively
low-priced and subject to impulse buying, the likelihood of confusion is increased
because purchasers of such products are held to a lesser standard of purchasing care.”
Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Given
the possibility of a low price point for the involved goods, we find consumers may be
subject to impulse purchasing.
Accordingly, the DuPont factors involving relatedness of the goods, trade
channels, classes of purchasers and conditions under which sales are made, all clearly
favor a finding of likelihood of confusion.

9 Applicant’s Response filed July 5, 2019, TSDR p. 67-68.
10 Id., at TSDR pp. 71 and 109-110.
11 See, e.g., “Sponsored products related to this item,” id. at 111.
12 Id. at 20.
Serial No. 88429018
- 9 -

B. The Similarity or Dissimilarity of the Marks
Under this factor, we compare Applicant’s mark, RAM BOARD MULTI-CUTTER,
with the cited registered marks, RAMPRO and RAM-PRO, all in standard characters,
“in their entireties as to appearance, sound, connotation and commercial impression.”
In re Viterra, 101 USPQ2d at 1908 (quoting du Pont, 177 USPQ at 567); see also Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The test is not whether the marks can be
distinguished in a side-by-side comparison, but instead whether their overall
commercial impressions are so similar that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation
omitted). Further, marks “‘must be considered … in light of the fallibility of memory
….’” In re St. Helena Hosp., 113 USPQ2d at 1085 (quoting San Fernando Elec. Mfg.
Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The
proper focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. See St. Helena Hosp., 113
USPQ2d at 1085; Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169
USPQ 39, 40 (CCPA 1971).
We also keep in mind that because the goods are in-part legally identical, “the
degree of similarity between the marks necessary to find likelihood of confusion need
not be as great as where there is a recognizable disparity between the goods.” In re
Bay State Brewing Co., 117 USPQ2d at 1960.
Serial No. 88429018
- 10 -

We find the marks in this case are overall very similar because, as discussed more
fully below, the same term RAM appears as the first word and is the most distinctive
element of each mark. With respect to Applicant’s mark, RAM has no demonstrated
meaning in connection with the involved goods and is therefore distinctive. The
wording that follows, BOARD MULTI-CUTTER, is highly descriptive of the goods
has been disclaimed. In such situations, the initial and most distinctive term, RAM
in this case, “is most likely to be impressed upon the mind of a purchaser and
remembered,” Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) and Palm Bay Imps., 73 USPQ2d at 1692, whereas merely descriptive
and disclaimed wording that follows plays a lesser role in forming the mark’s overall
commercial impression. See In re Dixie Rests., Inc., 41 USPQ2d at 1533-34 (in
comparing THE DELTA CAFÉ to DELTA, the term CAFÉ lacks sufficient
distinctiveness to create a different commercial impression).
The term RAM, likewise, appears first and is the more distinctive element of the
registered marks, RAM-PRO and RAMPRO. The latter term PRO in the cited marks
is somewhat laudatory or suggestive of a professional quality of Registrant’s utility
knives. The registered marks may also convey the same or similar commercial
impression as Applicant’s mark, namely, suggestive of the ram animal.
In arguing that the marks are distinguishable, Applicant urges “the term BOARD
should not be ignored” and points to several registrations that it owns for marks that
Serial No. 88429018
- 11 -

begin with the wording RAM BOARD.13 Applicant contends that “the addition of this
word [BOARD] creates a difference in appearance, sound, connotation, and
commercial impression.”14 Applicant further asserts that “the BOARD portion of the
applied-for mark is not to be perceived alone, but in combination with the term RAM
and, together, the RAM BOARD portion is distinctive.”15
Applicant’s reliance on its prior registrations for purposes of demonstrating that
the term BOARD is distinctive and should be viewed as a unitary expression with
RAM is misplaced and not persuasive. We point out that in each of Applicant’s prior
registrations, Applicant has disclaimed the word BOARD. Registrations with
disclaimed terms do not help establish that the disclaimed terms have become
distinctive. See 15 U.S.C. §1052(f); Kellogg Co. v. Gen. Mills, Inc., 82 USPQ2d 1766,
1771 n.5 (TTAB 2007); In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883, 1890 (TTAB
2004); In re Helena Rubinstein, Inc., 131 USPQ 152, 153 (TTAB 1961). Registrations,
by themselves, are not evidence that the registered marks have been used extensively
in commerce. Furthermore, and contrary to the essence of Applicant’s argument,
there is no evidence showing that consumers have come to regard RAM BOARD as a
unitary and distinctive term.
In sum, the fact that the marks begin with the term RAM not only creates aural
and visual similarities, but gives the marks very similar commercial impressions. The

13 4 TTABVUE 9. Copies of Applicant’s prior registrations were submitted with Applicant’s
response filed July 5, 2019, and thus are properly of record.
14 Id.
15 Id. at 10.
Serial No. 88429018
- 12 -

addition of the merely descriptive wording, BOARD MULTI-CUTTER, in Applicant’s
mark and the laudatory term PRO in the registered marks, do not overcome the
strong similarity between them. Accordingly, this DuPont factor supports a finding
of a likelihood of confusion.
C. Alleged Weakness of the Term RAM

Applicant argues that consumers are “highly unlikely” to be confused between the
involved marks “because the Cited Marks already coexist with numerous other RAM
formative marks in both classes 007 and 008.”16 Applicant, however, only identifies
registrations that have been properly made of record -- Registration Nos.: 5668775
(RAMMER JAMMER for “hand tools for removing auto glass; hand operated cutting
tools; hand operated auto glass cutout knives”), 5637579 (RAMPMILL for “cutting
tools”), 4053933 (RAMPAGE for knives), 1400935 (RAMBO for hunting, fishing,
pocket, and pen knives), and 4875652 (RAM TOOL CONSTRUCTION SUPPLY CO.
and design for blades for power cutting tools).17
We are not persuaded by this meager record that the term RAM has any weakness
in connection with any of the involved goods. Four of the third-party registered marks
of record listed by Applicant use the term RAM as part of another word or name, i.e.,
RAMMER, RAMPMILL, RAMPAGE, and RAMBO, and these have very different
meanings than the term RAM by itself. As to the RAM TOOL CONSTRUCTION
SUPPLY CO. and design mark, there is no evidence that this mark has actually been

16 4 TTABVUE 14.
17 Copies of these registrations were submitted with Applicant’s response filed July 5, 2019,
and thus are properly of record.
Serial No. 88429018
- 13 -

used in commerce. In sum, this is far from the type and amount of evidence needed
for us to find weakness based on extensive third-party use and registration of the
same term. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129 (Fed. Cir. 2015) and
Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir.
2015).
D. Conclusion
Having considered all the evidence and arguments bearing on the relevant
DuPont factors, we conclude that the overall similarity of the marks for goods that
are legally identical, at least in part, and move in the same channels of trade to the
same classes of customers at a relatively low price renders confusion likely. Indeed,
there are no factors that weigh in favor of finding confusion not likely.
Decision: The refusal to register Applicant’s mark is affirmed.