RUAG Ammotec GmbH

Trademark Trial and Appeal Board

Aug 12, 2009

No. 77273963 (T.T.A.B. Aug. 12, 2009)

Mailed:
August 12, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re RUAG Ammotec GmbH
________

Serial No. 77273963
_______

Alan E. Schiavelli of Antonelli, Terry, Stout & Kraus LLP
for RUAG Ammotec GmbH.

Dominic Fathy, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Grendel, Drost and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

RUAG Ammotec GmbH has applied to register the mark
shown below on the Principal Register for goods now
identified as “firearms; ammunition and projectiles;
propellants, namely, gunpowder and propelling pyrotechnic
mixtures for propelling projectiles from firearms;
fireworks” in International Class 13.1

1 Application Serial No. 77273963, filed September 7, 2007, based
on Registration No. 30719638 in the Federal Republic of Germany
under Trademark Act Section 44(e), 15 U.S.C. § 1126(e).
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77273963
2

The application includes the following statement: “Color
is not claimed as a feature of the mark.”
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 between
applicant’s mark and Registration No. 2447292 for the mark
SUPER CLEAN NT in typed form on the Principal Register for
goods identified as “Ammunition And Reloading Parts Of
Ammunition” in International Class 13. The registration,
which issued on January 5, 2001, is active. The
registration claims first use of the mark anywhere and
first use of the mark in commerce since March 2, 1998.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
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).
Serial No. 77273963
3
The opinion in In re E. I. du Pont de Nemours & Co., 476
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
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.”).
First, we consider the goods. In general, the goods
in the application and the cited registration 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).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and cited
Serial No. 77273963
4
registration. See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”).
The Examining Attorney argues that the goods are
identical and otherwise related. Applicant makes no
contrary argument. In fact, the goods, as identified in
the application and the cited registration, are, at least
in part, identical and otherwise related. Both the
application and the cited registration identify
“ammunition.” Accordingly, we conclude that the goods are
identical and otherwise related.
Next, we consider the marks. As a starting point, we
observe that, “the degree of similarity [between the marks]
necessary to support the conclusion of likely confusion
declines” when the goods or services are identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992).
More generally, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Serial No. 77273963
5
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant argues:
In the context of ammunition, “clean” is
sometimes used to refer to the burning of the
primer/or propellant without the release of toxic
substances. … Hence, in connection with
ammunition, the word “clean” in the cited
registration is “weak” and not the dominant part
of the mark.

Laudatory terns, i.e., those that attribute
quality or excellence to goods or services, are
sometimes considered descriptive. (citations
omitted.) Therefore, the word “super” in the
cited registration is weak and not the dominant
part of the mark.

Since the words “super” and “clean” in the
cited registration are “weak” and not the
Serial No. 77273963
6
dominant parts of the cited mark, the dominant
part of the cited mark must be “NT.”

Applicant’s Brief at 3.

As to its own mark, applicant argues:
In the present situation, it is submitted
the design portion of applicant’s mark is (sic)
must be considered when comparing applicant’s
mark to the mark in the cited registration.
Applicant’s mark contains a non-trivial,
pictorial design component, i.e., a prominent
leaf design, the leaf design having a height
larger than the total height of the lettering and
covers a portion of the lettering. Nothing
similar appears in the mark in the cited
registration.

Id. at 5.

In concluding, applicant reiterates its argument that
“super” and “clean” are weak and states:
Since the dominant part of the cited mark is
“NT,” since applicant’s mark does not contain
“NT,” and, considering the design portion of
applicant’s mark, not found in the cited mark, it
is submitted that the respective marks are
dissimilar in their entireties as to at least
appearance, connotation and commercial
impression. Therefore, it is submitted there is
no likelihood of confusion.

Id. at 6.
The Examining Attorney argues that SUPER CLEAN is the
dominant element in both marks and that NT and the leaf
design fail to distinguish the marks, noting that neither
applicant nor the registrant has disclaimed SUPER or CLEAN.
Also, the Examining Attorney argues that, when the marks
are viewed in their entireties, they are confusingly
Serial No. 77273963
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similar. Finally, the Examining Attorney argues that a
registered mark which is weak is nonetheless entitled to
protection against the registration of a confusingly
similar mark.
Before we provide our analysis, we note the Board’s
action of July 8, 2009, in response to applicant’s request
for a remand to submit evidence of the descriptive meaning
of “clean” in the field of ammunition. During prosecution,
applicant stated, “In the context of ammunition, ‘clean’ is
sometimes used to refer to the burning of primer and/or
propellant without the release of toxic substances.”
Applicant’s Response of June 19, 2008 at 1. In the Board
action on the remand, the Board stated, “It is clear from
the record that during examination the examining attorney
never disputed applicant’s statement of the meaning of
‘clean,’ and treated it as factual. In these
circumstances, the examining attorney is bound by his
acceptance of applicant’s statement of fact.” Board Action
of July 8, 2009 at 2. Thus, the Board concluded that a
remand was not necessary. Accordingly, for purpose of our
consideration here we regard applicant’s statement as to
the meaning of “clean” in the context of ammunition as a
fact.
Serial No. 77273963
8
To begin our analysis, we fully concur with
applicant’s statement that we must view the marks in their
entireties in evaluating their similarity. When we view
the marks in their entireties in terms of appearance,
sound, connotation and commercial impression, we find that
SUPER CLEAN is the dominant element in both marks and that
the marks are confusingly similar.
Applicant argues that each component of SUPER CLEAN is
weak. However, we conclude that SUPER CLEAN would be
viewed as a unitary whole, not as two separate words.
SUPER obviously modifies CLEAN. The terms are joined not
only grammatically but logically.
Furthermore, as the Examining Attorney points out,
SUPER CLEAN is not disclaimed in applicant’s mark, and more
importantly, it is not disclaimed in the cited, registered
mark. While SUPER and CLEAN may be weak, we must and do
accord the mark in the registration the full scope of
protection Trademark Act Section 7(b), 15 U.S.C. § 1057(b),
affords. Among other things, Section 7(b) requires that we
recognize the registration as prima facie evidence of the
“… validity of the registered mark, of the registrant’s
ownership of the mark, and of the registrant’s exclusive
right to use the registered mark in commerce on or in
connection with the goods or services specified in the
Serial No. 77273963
9
certificate, subject to any conditions or limitations
stated in the certificate.” In applying Section 7(b) in
this case, we cannot and do not focus exclusively on NT as
the only protected element in the mark. Accordingly, we
decline to adopt applicant’s arguments and discount the
importance of SUPER CLEAN in the registered mark.
In addition, as the Examining Attorney correctly
points out, registered marks, even those which incorporate
weak elements, are protected against the registration of
confusingly similar marks. In re Southern Belle Frozen
Foods Inc., 48 USPQ2d 1849, 1851 (TTAB 1998) (SEAFOOD
ROYALE for frozen seafood held likely to be confused with
SHRIMP ROYALE for packaged cooked meal featuring fried
shrimp).
Also, SUPER CLEAN is the first element in the cited
mark and the only word element in applicant’s mark. Presto
Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) (“… [it is] a matter of some importance
since it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered.”). We conclude that NT, the following element
in the cited mark, is insufficient to distinguish the
marks. NT not only follows SUPER CLEAN, but as a two
letter ending following SUPER CLEAN, it is likely to be
Serial No. 77273963
10
perceived as subordinate, and perhaps as identifying a
feature, or a particular version of a product in a line or
series of related products.
As to applicant’s leaf design, we also find this
element insufficient to distinguish the marks. We have
considered applicant’s arguments to the contrary, but
nonetheless conclude that the word element SUPER CLEAN
dominate over the leaf design element in applicant’s mark.
The relative size of the elements is not controlling.
Rather, as is often the case, SUPER CLEAN dominates because
the wording serves as the more practical and more powerful
identifier in applicant’s mark; SUPER CLEAN is the only
element which is likely to be verbalized in calling for
applicant’s goods. In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987) (“… if one of the marks
comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services.”).
Finally, SUPER CLEAN dominates both the connotation
and commercial impression of both marks. In applicant’s
mark, the leaf design does not alter but reinforces the
connotation and commercial impression which SUPER CLEAN
engenders. In the registered mark, NT does not convey any
apparent meaning, and thus, it does nothing to alter the
Serial No. 77273963
11
connotation or commercial impression which SUPER CLEAN
engenders in the registered mark.
In conclusion, applicant’s skillfully presented
arguments notwithstanding, we find those arguments
unpersuasive.2 We find, when we view applicant’s mark and
the cited registered mark in their entireties, that the
marks are similar in appearance, sound, connotation and
commercial impression. Furthermore, we find that there is
a likelihood of confusion between applicant’s SUPER CLEAN
and Design mark and the registered SUPER CLEAN NT mark when
the respective marks are used or intended to be used in
connection with goods which are identical and otherwise
related.
Decision: We affirm the refusal under Trademark Act
Section 2(d).

2 For the record, we have fully considered the cases applicant cites and
discusses but find the arguments bases on those cases unpersuasive.