Safeguard Self Storage, Inc.

Trademark Trial and Appeal Board

Oct 18, 2002

No. 76066281 (T.T.A.B. Oct. 18, 2002)

Hearing:
September 19, 2002
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Safeguard Self Storage, Inc.
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Serial Nos. 76/004,339; 76/066,280; and 76/066,281
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Bryan Haynes of Locke Liddell & Sapp LLP for Safeguard Self
Storage, Inc.
Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Seeherman, Hanak and Hairston, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Safeguard Self Storage, Inc. (applicant) seeks to
register SAFEGUARD SELF STORAGE (Serial No. 76/004,339),
SAFEGUARD SELF STORAGE and design (Serial No. 76/066,280,
below left) and THE SAFEGUARD GUARANTEE and design (Serial
No. 76/066,281, below right). The first application was
filed on March 20, 2000, and the latter two applications
were filed on June 7, 2000. The first two applications
claimed a first use date of January 1992, and the third
Ser. Nos. 76/004,339; 76/066,280; 76/066,281
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application claimed a first use date of May 1997. In each
of the applications, the services are identified as
“providing secure self-storage facilities for lease to the
public.” At the request of the Examining Attorney,
applicant disclaimed the exclusive rights to the words SELF
STORAGE and the word GUARANTEE.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s marks, as applied to applicant’s services,
are likely to cause confusion with the mark SAFE-GUARD,
previously registered in typed drawing form to United Van
Lines, Inc. for “moving, trucking, hauling, and storing
special shipments, including missile components, electronic
equipment, aircraft, exhibitors and convention exhibits and
fragile and high value equipment.” Registration No.
702,716. When the refusal to register was made final,
Ser. Nos. 76/004,339; 76/066,280; 76/066,281
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applicant appealed to this Board. On February 27, 2002
applicant filed a motion to consolidate the three
applications. This motion was granted by the Board on May
7, 2002. Applicant and the Examining Attorney filed briefs
and were present at a hearing held on September 19, 2002.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods or services and the similarities of the marks.
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
[or services] and differences in the marks.”).
Considering first the marks, they are similar to the
extent that applicant’s three marks and the registered mark
all contain the word “safeguard.” However, as applied to
applicant’s self storage services and registrant’s
specialized moving services, this word is highly
suggestive. Applicant has made of record an excerpt from
Webster’s Ninth New Collegiate Dictionary (1985) wherein
this word is defined as follows: “convoy, escort … to make
safe.” It has been held that the mere presence of a
common, highly suggestive word is often insufficient to
support a finding of likelihood of confusion. Tektronix,
Ser. Nos. 76/004,339; 76/066,280; 76/066,281
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Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694
(CCPA 1976). Nevertheless, despite the highly suggestive
character of the word “safeguard” as applied to applicant’s
and registrant’s services, we would find that there exists
a likelihood of confusion if the services were identical or
closely related.
Turning next to a consideration of applicant’s
services and registrant’s services, while registrant’s
recitation of services contains the word “storing,” this
word must be considered in the context of the overall
recitation of services. As previously noted, that
recitation of services reads as follows: “moving, trucking,
hauling, and storing special shipments, including missile
components, electronic equipment, aircraft, exhibitors and
convention exhibits and fragile and high value equipment.”
(Emphasis added). It is apparent from registrant’s
recitation of services that registrant’s “storing” services
are but a part of registrant’s “moving, trucking and
hauling” services. One does not separately “store”
shipments. In other words, registrant is not offering
storage services by themselves, but rather is simply
offering storage services as part of its moving, trucking
and hauling services. A customer could have registrant
move its special shipment from, for example, New York to
Ser. Nos. 76/004,339; 76/066,280; 76/066,281
5
Chicago, and if the customer was not ready to immediately
receive the shipment, registrant would store the shipment
on a temporary basis in the Chicago area.
Moreover, applicant has properly made of record a
brochure entitled “Safe-Guard Moving Service” put out by
registrant United Van Lines, Inc. This brochure makes
clear that registrant’s storing services are but an
ancillary service to its moving services. In making of
record this brochure, applicant was not improperly
attempting to limit registrant’s recitation of services,
but rather was presenting extrinsic evidence in an effort
to clarify the nature of registrant’s services. In re
Trackmobile, 15 USPQ2d 1152, 1153-54 (TTAB 1990).
In addition, the brochure made of record makes clear
that registrant’s moving, trucking, hauling and storing
services are limited to special shipments, a limitation
contained in the very recitation of services itself. These
special shipments include missile components, electronic
equipment, aircraft, convention exhibits and high value
equipment. In other words, registrant’s own recitation of
services has limited its services in a manner that they
involve only special shipments, that is, the type of
shipments that would involve customers exercising great
care. As our primary reviewing Court has made clear, there
Ser. Nos. 76/004,339; 76/066,280; 76/066,281
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is less likelihood of confusion where the goods “are
purchased after careful consideration.” Electronic Design &
Sales v. Electronic Data Systems, 954 F.2d 713, 21 USPQ2d
1388, 1392 (Fed. Cir. 1992).
In sum, given the highly suggestive nature of the only
component common to applicant’s marks and registrant’s
mark; the fact that applicant’s self-storage services and
registrant’s specialized moving and ancillary storing
services are only tangentially related; and the fact that
registrant’s specialized moving and tangential storing
services are purchased with great care, we find on this
record that there exists no likelihood of confusion
resulting from the use of any of applicant’s marks and
registrant’s mark.
Decision: The refusal to register is reversed.