Se-Kure Controls, Inc.

Trademark Trial and Appeal Board

Jun 12, 2012

No. 78767343 (T.T.A.B. Jun. 12, 2012)

Mailed:
June 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Se-Kure Controls, Inc.
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Serial No. 78767343
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John S. Mortimer of Woods, Phillips, Katz, Clark & Mortimer for
Se-Kure Controls, Inc.

Jeffery S. DeFord, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
_______

Before Zervas, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

On December 12, 2005, applicant Se-Kure Controls, Inc.
applied to register the mark SK, in standard character form, for
goods ultimately identified as set forth below:
Mechanical theft prevention equipment for
portable articles, namely, metal-cored
security cable wire and accessories
therefor, namely, metal connectors and
fittings to be joined to the wire; metal
boxes for anchoring cable ends; formed metal
wire locks for garments; metal lock plates
for maintaining articles on a rack; metal
support stands with tubes, plates and/or
housings; portable metal folding gates;
metal cash boxes; metal phonograph cartridge
needle locks; metal hasps; metal cable end
connectors; and metal security components
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78767343
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for notebook computers, namely, cable
housings, cables, computer-receiving
housings, and metal tabs sold as a unit, in
Class 6;

Retracting mechanisms for electrical and
mechanical cables, in Class 7;

Custom metal hand tools developed for
holding and repositioning mechanical and
electrical parts to facilitate assembling
and disassembling electronic components used
for retracting mechanisms for electrical and
mechanical cables on security systems used
on displays for consumer articles, in Class
8;

Electromechanical theft, fire, and accident
prevention equipment for portable objects,
namely, burglar alarms; electronic sensors
for attaching to portable objects to be
monitored and accessories therefor, namely,
adhesive attachment layers and pads sold as
a unit; electronic control modules for
arming, disarming, and monitoring the state
of sensors; connection cables for
communicating between the control modules
and sensors and accessories therefor,
namely, electrical and mechanical end
connectors sold as a unit; audible and
visual alarm signal generators that are
activated in the event of a security breach;
electronic splitter modules for control
signals; electronic combined control, signal
splitting, and signal generating modules;
electrical power supplies; theft, fire, and
accident prevention signal LED's/lights;
shunt plugs for electrical connections;
convex detection and one-way viewing
mirrors; simulated closed circuit television
scanners; hand-held fire extinguishers,
emergency signaling lights and alarms;
cameras and accessories therefor, namely,
mountable housings for supporting part or
all of the camera, power supplies, cable
sand connectors sold as a unit; video
monitors; video recorders; electronic
Serial No. 78767343
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detectors for sensing the presence of
customers and/or counting numbers of passing
customers and accessories therefor, namely,
transceivers, reflectors, beam generators,
mounting brackets, wires, and connectors
sold as a unit; cable end connectors, in
Class 9;

Adhesive attachment layers and pads for
attaching electronic sensors to portable
objects, in Class 17; and

Metal display racks for supporting articles;
display cases with metal frames; kiosks for
displaying and securing displayed articles,
in Class 20.

The Trademark Examining Attorney refused to register
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 the goods listed in Classes 6, 7, 8
and 9 is likely to cause confusion with the previously-
registered mark, SK and design, shown below.

The three registrations cited as bars to registration are owned
by one entity and they are listed below:
1. Registration No. 3311834 for, inter alia, repair of
hand-operated tools, repair of electric cables, burglar alarm
Serial No. 78767343
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repair, and repair of photographic and cinematographic machines
and apparatus and film projector repair, in Class 37;1
2. Registration No. 3363664 for, inter alia, money boxes
of metal, metal safety cash boxes, and locks of metal other than
electric, in Class 6;2 and
3. Registration No. 3365665 for, inter alia, video
cameras, camcorders, video screen, projection screens, sound
recording apparatus and instruments for use in cinematography,
movie projectors, electrical transmitters for emitting distress
signals, fire extinguishing apparatus, namely, fire blankets,
sprinkler systems for fire protection, fire hydrants, fire
extinguishing bombs, gas leak alarms, flame sensors, smoke
sensors, heat sensors, sound alarms, namely, personal security
alarms, alarm bells, fire alarms, emergency warning lights in
the nature of blinking signaling lights, video cameras, video
cameras for broadcasting, audio-video receivers,
telecommunication transmitters, electric cables and electric
wires,” in Class 9.
Our determination of likelihood of confusion 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 &

1 Issued October 16, 2007.
2 Issued January 8, 2008.
Serial No. 78767343
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Co., 476 F.2d 1357, 177 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 services. 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”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

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. In re E. I. du Pont De Nemours & Co.,
177 USPQ at 567. In a particular case, any one of these means
of comparison may be critical in finding the marks to be
similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987).
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
Serial No. 78767343
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offered under the respective marks is likely to result. 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 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
It is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). “In the case of a composite mark containing both
words and a design, “the verbal portion of the mark is the one
most likely to indicate the origin of the goods to which it is
affixed.” In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012), quoting CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 200 (Fed. Cir. 1983). See also L.C.
Licensing, Inc. v. Cary Berman, 86 USPQ2d 1883, 1887 (TTAB 2008)
(“[I]t is well settled that if a mark 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.”).

Serial No. 78767343
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In this case, we find that the letters SK form the dominant
element of registrant’s mark because they will be used by
consumers to request the goods and services. Therefore, the
letters SK are accorded more weight than the butterfly design in
our comparison of the marks. In re National Data Corp., 224
USPQ at 751.
The significance of the letters SK is further reinforced in
the likelihood of confusion analysis because it is difficult for
consumers to distinguish between two series of similar
arbitrarily arranged letters. See Weiss Associates, Inc. v. HRL
Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir.
1990); Edison Brothers Stores v. Brutting E.B. Sport-
International, 230 USPQ 530 533 (TTAB 1986). It is especially
hard to distinguish applicant’s mark from registrant’s mark when
they both comprise the letters SK. In this regard, on the
record before us, neither the applicant’s company name, nor the
registrant’s company name, has been shown to be sufficiently
well known to cause purchasers to relate either of the letter
marks to the company name from which it was derived. See Edison
Brothers Stores v. Brutting E.B. Sport-International, 230 USPQ
at 533; see also B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d
1500, 1509 (TTAB 2007).
The letters SK dominate registrant’s mark and any
contribution of the butterfly design to the connotation or
Serial No. 78767343
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commercial impression of registrant’s mark is outweighed by the
dominant letters. Accordingly, we find that the marks are very
similar in terms of appearance, sound, meaning and commercial
impression.
B. The similarity or dissimilarity and nature of the goods and
services described in the application and registration at
issue and the similarity or dissimilarity of likely-to-
continue trade channels and classes of consumers.

1. Class 6
Applicant is seeking to register its mark for, inter alia,
“metal cash boxes.” Registrant has registered its mark for
“money boxes of metal” and “metal safety cashboxes.” The goods
are in part identical. The fact that there are other goods
listed in the application and cited registration does not affect
our finding that the goods are in part identical. A refusal
under Section 2(d) is proper if there is a likelihood of
confusion involving any of the goods set forth in the
application and cited registration. See, e.g., Tuxedo Monopoly,
Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981); and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318
F.2d 328, 137 USPQ 881, 883 (CCPA 1963).
Because the goods are in part identical, we must presume
that the channels of trade and classes of purchasers are the
same. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB
2009); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
Serial No. 78767343
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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.”). See also In re Viterra Inc.,
101 USPQ2d at 1908 (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).
2. Class 7
Applicant is seeking to register its mark for “retracting
mechanisms for electrical and mechanical cables.” Registrant
has registered its mark for, inter alia, the “electric cables,”
in Class 9, and the “repair of hand-operated tools [and]
electric cables,” in Class 37. It is well settled that
applicant’s goods and the registrant’s goods and services do not
have to be identical or directly competitive to support a
finding that there is a likelihood of confusion. It is
sufficient if the respective products and services are related
in some manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the same
persons under circumstances that could, because of the
similarity of the marks used in connection therewith, give rise
to the mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International Telephone &
Serial No. 78767343
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Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). We find that
consumers are likely to believe that a “retracting mechanism for
electrical and mechanical cables” and “electric cables” and “the
repair of electric cables” identified by similar marks emanate
from the source or are somehow associated. For example, a
retracting mechanism for electrical cables could be used for the
repairing electrical cables.
Applicant argues that the goods are not related because
“Applicant’s industry for securing portable articles, as at
displays, is a niche industry. Those companies involved in this
industry are well recognized as offering a specific, customized
product category that it is distinct from residential and
industrial security systems.”3 The problem with applicant’s
argument is that this proceeding concerns applicant’s right to
registration of a trademark, not applicant’s actual trademark
use. Because the scope of the registration applicant seeks is
defined by its application (and not by its actual use) it is the
application (and not actual use) that we must look to in
determining applicant’s right to register:
The authority is legion that the question of
registrability of an applicant's mark must
be decided on the basis of the
identification of goods set forth in the
application regardless of what the record
may reveal as to the particular nature of an

3 Applicant’s Brief, p. 7.

Serial No. 78767343
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applicant's goods, the particular channels
of trade or the class of purchasers to which
sales of the goods are directed.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Accordingly, the
Board cannot consider applicant’s arguments regarding the
differences in the goods.
In view of the foregoing, we find that applicant’s
“retracting mechanisms for electrical and mechanical cables” are
related to registrant’s “electric cables” and the “repair of
electric cables.”
3. Class 8
Applicant is seeking to register its mark for “custom metal
hand tools developed for holding and repositioning mechanical and
electrical parts to facilitate assembling and disassembling
electronic components used for retracting mechanisms for
electrical and mechanical cables on security systems used on
displays for consumer articles.” Registrant has registered its
mark for, inter alia, the “repair of hand-operated tools [and]
electric cables,” in Class 37. We find that consumers will
mistakenly believe that applicant’s “custom metal hand tools” are
somehow associated with registrant’s repair of hand-operated
tools” if they identified by similar marks because consumers
would expect the manufacturer of a hand tool to repair it, if
necessary.
Serial No. 78767343
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Despite the fact that applicant’s hand-tools are used for
security systems used on displays for consumer articles,
registrant’s repair of hand-operated tools and electric cables
are not limited to any specific channels of trade and, therefore,
may be rendered in connection with security systems used on
displays for consumer articles.
4. Class 9
Because the goods listed in Class 9 are extensive, the table
set forth below compares the goods and services that the Board
finds to be related or similar.

Applicant’s goods Registrant’s goods and services

electromechanical theft, fire,
and accident prevention
equipment for portable objects,
namely, burglar alarms
sound alarms, namely, personal
security alarms; burglar alarm
repair

theft, fire, and accident
prevention signals LED’s/lights
electrical transmitters for
emitting distress signals, gas
leak alarms, alarm bells fire
alarms, emergency warning lights
in the nature of blinking
signaling lights

hand-held fire extinguishers,
emergency signaling lights and
alarms
fire extinguishing apparatus,
namely, fire blankets, sprinkler
systems for fire protection,
fire hydrants, fire
extinguishing bombs, flame
sensors, smoke sensors and heat
sensors, emergency warning
lights in the nature of blinking
signaling lights
Serial No. 78767343
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Applicant’s goods Registrant’s goods and services

cameras, video monitors and
video recorders
video cameras, camcorders, video
screens, video cameras for
broadcasting and audio-video
receivers, as well as the repair
of photographic and
cinematographic machines and
apparatus and film projector
repair

In fact, we find that “burglar alarms” and “personal
security alarms,” “theft, fire, and accident prevention signals
LED’s/lights,” “emergency signaling lights and alarms,” and
“emergency warning lights in the nature of blinking signaling
lights,” and “cameras” and “video cameras” are legally identical.
As indicated above, because the goods are in part and legally
identical, we must presume that the channels of trade and classes
of purchasers are the same.
C. Balancing the factors.

In view of the facts that the marks are very similar, the
goods and services are in part, legally identical and otherwise
related and, therefore, there is a presumption that the channels
of trade and classes of consumers are the same, we find that
applicant’s mark SK for the goods recited in the Class 6, 7, 8
and 9 description of goods is likely to cause confusion with the
mark SK and design for the goods and services listed in the
cited registrations.
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Decision: The refusal to register is affirmed with respect
to the goods in Classes 6, 7, 8 and 9.
The application will be forwarded for registration
processing in connection with the goods listed in Classes 17 and
20.