RIIP, Inc.

Trademark Trial and Appeal Board

Dec 28, 2015

No. 85674192 (T.T.A.B. Dec. 28, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re RIIP, INC.
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Serial No. 85674192
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Joseph Agostino of Greenberg Traurig LLP,
for RIIP, Inc.
Aaron Rosenthal, Trademark Examining Attorney,1 Law Office 120,
Michael W. Baird, Managing Attorney.
_____

Before Cataldo, Wolfson and Gorowitz,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
RIIP, Inc. (“Applicant”) seeks registration on the Principal Register of the mark
depicted below

1 In this proceeding, Aaron Rosenthal represented the Office with respect to the application
at briefing. Miah Rosenberg is the Examining Attorney that was responsible for the
application during prosecution.
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(“SECURELOCK and design”) for “electrical connectors; electrical plugs; electrical
outlets; electrical plug device enabling connection and disconnection of power and/or
control cables,” in International Class 9.2
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark, when used in connection with Applicant’s goods, so
resembles the previously registered mark SECURE-LOK (in standard characters)
for “push-on electrical connectors” in International Class 9 as to be likely to cause
confusion.3
After the Examining Attorney made the refusal final, Applicant appealed to this
Board. We affirm the refusal to register.
I. Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative facts 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

2 Application Serial No. 85674192 was filed on July 11, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The application includes the following description of the mark: The mark
consists of the word SecureLock, above which is a rounded rectangle containing a pair of
stylized electrical connectors that form an S-shape.
3 Reg. No. 4471503, issued January 21, 2014.
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USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, 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.”).
II. Analysis
A. The Similarity of the Marks.
We turn first to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports 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 parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citing Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901,
1905 (TTAB 2007); see also San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d
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1353 (Fed. Cir. 1992). We also acknowledge that “when marks would appear on
virtually identical goods or services, the degree of similarity necessary to support a
conclusion of likely confusion declines.” In re Covalinski, 113 USPQ2d 1166, 1169
(TTAB 2014); In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010).
Because a comparison of the marks is determined based on the marks in their
entireties, our analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not
just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). The “touchstone of this factor is consideration of the
marks in total.” Jack Wolfskin Ausrustung Fur Draussen GmbH KGAA v. New
Millenium Sports, S.L.U., 707 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015).
The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. Joel Gott Wines LLC v.
Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013); L’Oreal S.A. v.
Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012).
Applicant’s mark is a combination mark comprised of the term SECURELOCK
and a design incorporating a pair of intertwined electrical connectors resembling a
letter “S.” The cited mark is the term SECURE-LOK. Viewing the marks in their
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entireties, it is readily apparent that the literal portion of both marks is composed
of the two common English words “secure” and “lock” (or its phonetic equivalent,
“lok”). That the registered mark contains a hyphen and misspells “lock” as “lok”
does not sufficiently distinguish the marks, and the slight misspelling in
Registrant’s mark does not affect the mark’s commercial impression in any
significant way. The literal portion of the marks also has the identical meaning of a
secure locking device in relation to the goods. However, Applicant’s mark contains a
design element. Applicant argues that this design element dominates the overall
impression of its mark and serves to distinguish Applicant’s and Registrant’s
marks.
Although marks must be compared in their entireties, the word portion
generally is the dominant and most significant feature of a mark because it is by the
words and not the often unpronounceable design elements that consumers are likely
to request and recommend Applicant’s products. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the literal component of brand
names likely will appear alone when used in text and will be spoken when
requested by consumers”) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593,
1596 (TTAB 1999); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); Joel Gott,
107 USPQ2d at 1431; BVD Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1508-09
(TTAB 2007) (presence of image of hatted man contributes to the connotation of the
mark as a whole lending something to applicant’s mark that is not present in
opposer’s mark; however, letters in applicant’s mark dominate and any contribution
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of the design to the connotation and overall commercial impression of applicant’s
mark would be outweighed by the dominant letters). Here, the design is a depiction
of the goods in a stylized “S,” which emphasizes the first letter of the term
SECURELOCK and reinforces the wording. See In re Continental Graphics Corp.,
52 USPQ2d 1374, 1376 (TTAB 1999) (“Indeed, the dominant role of the word
CONTINENTAL in the overall commercial impression created by the registered
mark is reinforced, rather than negated, by the inclusion in the mark of the globe
design depicting stylized continents and the inclusion of the large letter “C“, which
is the first letter of the word CONTINENTAL.”); In re Elco Corp., 180 USPQ 155
(TTAB 1973) (ELCO CORPORATION and design substantially similar to ELCON).
The two touching rectangles also bring to mind a locking device, further
highlighting the meaning of the wording. The wording, while smaller overall than
the design portion of Applicant’s mark, nonetheless is legible. Compare In re
Covalinski, 113 USPQ2d at 1168 (large double-letter RR configuration dominant
compared with virtually indecipherable literal portion). Moreover, because the
registered mark SECURE-LOK is in standard characters, Registrant is entitled to
all depictions of its mark regardless of the font style, size, or color, including a
stylization that uses the font style employed by Applicant. Trademark Rule 2.52(a),
37 C.F.R. § 2.52(a); Viterra, 101 USPQ2d at 1909-10; Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Davia,
110 USPQ2d at 1813. That is not to say that we consider Registrant’s mark as if it
could be depicted in conjunction with a depiction of interlocking electrical
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connectors in an S-shape, but only that Registrant is entitled to have its mark
considered in various manners with respect to “font style, size, or color” when
involved in the likelihood of confusion analysis. As the Court of Appeals for the
Federal Circuit stated in Viterra,
‘illustrations of the mark as actually used may assist the
T.T.A.B. in visualizing other forms in which the mark
might appear.’ Accordingly, our decision in Citigroup
discarded the Board’s ‘reasonable manners’ standard in
favor of a standard that allows a broader range of marks
to be considered in the DuPont analysis when a standard
character mark is at issue.
Viterra, 101 USPQ2d at 1910 (citing Citigroup, 98 USPQ2d at 1259).

The Examining Attorney argues that Registrant’s mark “could, conceivably, be
placed above a similar pair of mated electrical cords. Applicant’s design portion does
not obviate a finding of confusion; no extrinsic evidence of Registrant’s intent to
present such a design component with its mark is required nor is such evidence
relevant.”4 However, the Viterra court made it clear that in rejecting the
“reasonable manners” test, it was “not suggesting that a standard character mark
encompasses all possible design elements of the mark.” Id. The Court, indicating
that a visualization of other forms of the mark may assist in the likelihood of
confusion analysis, merely intended to clarify that even in cases where a standard
character mark is compared with a word and design mark, we should not first
determine whether certain depictions are “reasonable” and then apply the du Pont
analysis to only a limited subset of variations of a standard character mark.

4 6 TTABVUE 6.
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Instead, our task is to compare the similarity of any two marks “on a case-by-case
basis, and that assessment necessarily takes into account whether one or both
marks is in standard character form or contains a design feature.” Id. Indeed, the
Board’s reliance on the reasonable manners test was harmless error, as the Board
“did not find that the XCEED mark could be considered to have taken on the precise
depiction shown in the cited registration, with full color and design; it only found
that the XCEED mark could be depicted as a capital “X” followed by “ceed” in small
letters, making it similar to the X–Seed Mark.” Likewise, we do not find that the
SECURE-LOK mark could be depicted in conjunction with a depiction of
interlocking electrical connectors in an S-shape, only that the SECURE-LOK mark
could be depicted in the same size italic font as the wording in Applicant’s mark, in
combination with a design, or alone. See Viterra, 101 USPQ2d 1910 (“We leave for
future cases to determine the appropriate method of comparing design marks with
standard character marks”). Given the meaning of the wording in Applicant’s and
Registrant’s marks and the identical pronunciations thereof, the marks engender
similar commercial impressions despite the additional design feature in Applicant’s
mark.
The first du Pont factor weighs in favor of finding a likelihood of consumer
confusion.
B. The Relatedness of the Goods.
It is well settled that the issue of likelihood of confusion between marks must be
determined on the basis of the goods as they are identified in the application and
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the registration at issue. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc.
v. Houston Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). Under this du Pont factor, the Trademark Examining Attorney need not
prove, and we need not find, similarity as to each and every product listed in the
description of goods. It is sufficient for a finding of likelihood of confusion that the
relatedness is established for any item encompassed by the identification of goods
within a particular class in the application. See Tuxedo Monopoly, Inc. v. General
Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of
confusion must be found if there is likely to be confusion with respect to any item
that comes within the identification of goods in the application); Baseball America
Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004).
Applicant is seeking to register its mark for “electrical connectors; electrical
plugs; electrical outlets; electrical plug device enabling connection and
disconnection of power and/or control cables.” The goods in the cited registration are
“push-on electrical connectors.” Applicant’s “electrical connectors” encompass
Registrant’s more narrowly worded “push-on electrical connectors.” The goods are
thus legally identical in part.
Because both Applicant’s and Registrant’s identifications of goods include
electrical connectors, we need not consider the relatedness of the remaining goods
listed in Applicant’s identification. Nonetheless, the record evidence shows that
electrical plugs and outlets are closely related to electrical connectors, including
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push-on electrical connectors. The Examining Attorney submitted evidence from
Internet websites that establishes that the same entity commonly provides
Applicant’s and Registrant’s goods and markets the goods under the same mark.
For example, Lowe’s advertises “electrical plugs & connectors,”5 Electric Generators
Direct sells “generator Plugs & Connectors,”6 and AutomationDirect offers “locking
plugs, connectors & receptacles.”7 The Examining Attorney has also submitted over
30 use-based, third-party registrations for marks covering electrical plugs, outlets
and connectors.8 Third-party registrations which individually cover a number of
different items and which are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may emanate from a single source.
In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864
F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785 (TTAB 1993).
Here, the goods are legally identical in part and otherwise closely related.
Accordingly, the second du Pont factor favors a finding of likelihood of confusion.

5 At http://www.lowes.com; attached to May 21, 2014 Office Action.
6 At http://www.electricgeneratorsdirect.com; attached to May 21, 2014 Office Action.
7 At http://www.automationdirect.com; attached to May 21, 2014 Office Action.
8 For example, BUILDING A CONNECTED WORLD, Reg. No. 3069624, for “home and
industrial electrical connectors,” “electric outlets, electrical receptacles and outlet boxes,”
and “home and industrial electrical plugs” (attached to May 21, 2014 Office Action);
HUBBELL and design, Reg. No. 1019302, for “wiring devices of various types namely,
receptacles, plugs, adapters, connectors, connector bodies, flanged inlets and outlets, [and]
motor bases” (attached to November 24, 2014 Office Action); LEVITON and design, Reg.
No. 3858339, for “electrical connectors,” “electrical wiring devices, namely, switches, electric
sockets, outlet boxes,” and for “electrical plugs.” (attached to November 24, 2014 Office
Action).
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C. The Channels of Trade and Classes of Purchasers.
Our consideration of the trade channels and classes of consumers is bound by the
goods as identified in the application and registration. Cunningham v. Laser Golf
Corp., 222 F3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“[T]he identification of
goods/services statement in the registration, not the goods/services actually used by
the registrant, frames the issue.”); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268
(TTAB 2003). Because neither Applicant nor Registrant has limited the products
identified in its respective identification of goods to any particular channels of trade
or classes of purchasers, we must deem the goods to travel in all appropriate trade
channels to all potential purchasers of such goods, which include residential as well
as commercial buyers of electrical connectors. See Cunningham, 55 USPQ2d at 1847
(Federal Circuit found substantial evidence supported Board determination that
parties’ goods would be offered to same purchasers in same channels of trade, based
on “identical in part” and otherwise closely related goods); In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994) (“Because the goods are legally identical,
they must be presumed to travel in the same channels of trade, and be sold to the
same class of purchasers”). Moreover, the Examining Attorney has submitted
evidence showing that electrical connectors are sold not only for industrial
applications, but to home improvement enthusiasts for residential applications. For
example, Lowe’s sells a Hubbell brand electrical plug for home use;9 Iboats.com

9 At http://www.lowes.com; attached to May 21, 2014 Office Action.
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offers “shore power plugs & connectors” for boating enthusiasts;10 Hubbell
advertises that its Valise Series of plugs and connectors “are especially easy to
wire”;11 and a Home Improvement Blog article discusses purchasing push-in
connectors for home use.12
Applicant has submitted promotional data sheets for each company’s products,
and based on these sheets argues that the goods are sold through specialized trade
channels to sophisticated purchasers, thus obviating any likelihood that buyers
would be confused as to the source of the goods. However, this extrinsic evidence is
unavailing, as none of Applicant’s purported limitations have been included in the
identification of goods of either the application or cited registration. In any event,
Applicant’s data sheet describes Applicant’s product as an “Integrated Locking
System of Power Cords and Rack iPDU Outlets,”13 which includes outlets that are
designed to operate not only with Applicant’s “SECURELOCK and design AC power
cords,” but with “standard AC power cords as normal.”14 Thus, they are not confined
to “modern data centers” as argued by Applicant but could exist in a multiplicity of
environments. The goods described in Registrant’s data sheet are “SMP-L

10 At http://www.iboats.com; attached to May 21, 2014 Office Action.
11 At http://www.iboats.com; attached to May 21, 2014 Office Action.
12 At http://diy.blogoverflow.com, attached to November 24, 2014 Office Action.
13 Applicant attached data sheets to its November 21, 2014 Response and to its appeal brief.
Exhibits attached only to an appeal brief will not ordinarily be considered. See Trademark
Rule 2.142(d) (the record in the application should be complete prior to the filing of an
appeal); TBMP § 1203.02 (2015) and authorities cited in that section.
14 Id.
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connectors and cables”15 that Applicant contends are used in “RF/Microwave
systems”16 and marketed to “specialized military personnel, engineers, and
government agency workers.” We decline to read the text: “The introduction of
push-on blindmateable connectors, such as the SMP, galvanized the RF/Microwave
industry as their use enabled designers to increase package density” as a statement
that Registrant sells only within the RF/Microwave industry. As to Registrant’s
purported target industries, we note that the data sheet suggests Registrant’s
target market includes the military and government agencies, but IT professionals
exist in the military and in government agencies as well as in data centers. For
these reasons, we find that the classes of purchasers of Applicant’s “electrical
connectors, plugs, outlets, and electrical plug device enabling connection and
disconnection of power and/or control cables” and Registrant’s “push-on electrical
connectors” overlap and may include ordinary purchasers. Further, even if the
purchasers are sophisticated, the fact that purchasers are sophisticated or
knowledgeable in a particular field does not necessarily mean that they are
sophisticated or knowledgeable in the field of trademarks or immune from source
confusion. Stone Lion, 110 USPQ2d at 1163-64; Top Tobacco LP v. N. Atl. Operating
Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Moreover, when the relevant consumer
includes both professionals and the general public, the standard of care for
purchasing the goods is that of the least sophisticated potential purchaser. Stone

15 Id. Applicant indicates that SMP stands for “symmetric multiprocessing.”
16 Appeal Brief, p. 5.
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Lion, 110 USPQ2d at 1163; Alfacell Corp. v. Anticancer, Inc., 71 USPQ2d 1301,
1306 (TTAB 2004).
III. Conclusion
The marks are phonetic equivalents and have identical meanings. The design
included in Applicant’s mark does not serve to distinguish the marks; rather, the
design highlights the meaning of the wording, reinforcing the suggestion of the
mark that the purpose of the goods is to securely lock electrical connectors to
compatible outlets. Thus overall, the marks form similar commercial impressions.
The goods are in-part legally identical. Because there are no limitations in the
identification of goods of either the application or the cited registration, the goods
are presumed to travel through the same trade channels and be purchased by the
same classes of consumers, which may include ordinary consumers. Taking into
account all arguments and evidence pertinent to the relevant du Pont factors, we
find that Applicant’s use of its SECURELOCK and design mark would be likely to
cause confusion with Registrant’s cited mark SECURE-LOK for the goods listed
with respect to Applicant’s application and Registrant’s registration.
Decision: The refusal to register Applicant’s mark is affirmed.