Sirius Products, Inc.

Trademark Trial and Appeal Board

Dec 19, 2002

No. 76293668 (T.T.A.B. Dec. 19, 2002)

Mailed: December 19,2002
Paper No.9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Sirius Products, Inc.
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Serial No. 76/293,668
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Mark B. Harrison and Jacqueline Levasseur Patt of Venable,
Baetjer, Howard & Civiletti, LLP for Sirius Products, Inc.
Anthony J. Tambourino, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Sirius Products, Inc. has filed an application to
register the mark "WHAM!" for a "stain remover for porcelain,
fiberglass, tile, grout, metal surfaces, synthetic surfaces,
vinyl, wood, marble, linoleum, plastic surfaces, glass, painted
surfaces, brick, stone and concrete."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
1 Ser. No. 76/293,668, filed on August 1, 2001, which is based on an
allegation of a bona fide intent to use such mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/293,668
2
mark "WHAM," which is registered for a "drain pipe cleaner,"2 as
to be likely to cause confusion, or mistake or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.3 Here, inasmuch as the
respective marks, contrary to the assertions in applicant's reply
brief, are essentially identical in all respects and, on account
of their arbitrary nature, plainly engender the same commercial
impression, the focus of our inquiry is on whether applicant's
goods are so related to registrant's goods that, if such products
were to be offered under the marks at issue, confusion as to the
source or sponsorship of the respective goods would be likely to
occur. In this regard we note that, as a general proposition,
where the marks at issue are identical or essentially the same,
2 Reg. No. 805,748, issued on March 15, 1966, which sets forth July 15,
1939 as a date of both first use anywhere and first use in commerce;
renewed.
3 The court, in particular, pointed out that: "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."
Ser. No. 76/293,668
3
there need be only a viable relationship between the respective
goods in order to support a holding of likelihood of confusion.
See, e.g., In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687
(Fed. Cir. 1983) and In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
Turning, therefore, to consideration of the respective
goods, both applicant and the Examining Attorney correctly
acknowledge in their main briefs that it is well settled that the
issue of likelihood of confusion must be determined on the basis
of the goods as they are set forth in the involved application
and the cited registration, and not--we further observe--in light
of what such goods are shown or asserted to actually be. See,
e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir. 1987); CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983);
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983); and Paula Payne Products Co. v. Johnson Publishing
Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Thus,
where applicant's and registrant's goods are broadly described as
to their nature and type, it is presumed in each instance that in
scope the application and registration encompass not only all
goods of the nature and type described therein, but that the
identified goods move in all channels of trade which would be
normal for those goods and that they would be purchased by all
Ser. No. 76/293,668
4
potential buyers thereof. See, e.g., In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
Moreover, applicant and the Examining Attorney properly
agree that it is well established that goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant argues that, in this case, there are
"substantial differences" between stain removers and drain pipe
cleaners "such that confusion is clearly not likely." Referring
to printouts of several pages which it made of record from
registrant's website, applicant maintains in particular that:
Drain pipe cleaners and stain removal
products are two distinctly different goods.
Registrant's good is a "concentrated chemical
emulsifier which liquefies and disperses
grease, soap, detergents and other organic
waste responsible to [sic, should be "for"]
system failures." Registrant's good are
[sic, should be "is"] poured into drain
lines, septic tanks, cesspools, and
malfunctioning waste disposal systems and is
available for purchase in 50 gallon vats.
.... In contrast, applicant's goods remove
stains from common surfaces found in the home
including porcelain, tile, and linoleum.
Ser. No. 76/293,668
5
Therefore, the nature and purpose of
Applicant's goods and registrant's goods are
different.
Registrant's primary customers are
professional plumbers. .... Neither
professional plumbers nor ordinary customers
would encounter Applicant's goods in the same
home centers or hardware stores and
Applicant's customers would not encounter
registrant's goods in the same stores.
Furthermore, customers would not believe
that the same company produced drain cleaners
and stain removers. The Examining Attorney
provided no evidence to support any
conclusion that customers would believe the
same companies produced drain cleaners and
stain removers under the same mark.
Therefore, Applicant's goods and registrant's
goods are used for different purposes, are
directed to different customers and travel in
different channels of trade.
We concur with the Examining Attorney, however, that as
identified in the application and cited registration, there is
clearly a viable relationship between the goods at issue such
that their marketing under the arbitrary and essentially
identical marks "WHAM!" and "WHAM" would be likely to cause
confusion as to the origin or affiliation thereof. Among other
things, we observe that with respect to the availability of
registrant's "HERCULES" plumbing chemicals, including its "WHAM"
drain pipe cleaner, the evidence furnished by applicant states
under the heading "Homeowner & Industrial Info" that:
While you may find a selection of our
products in a home center or hardware store
near you, please consider the added value of
using a licensed plumber. Specialty products
often require special care for safe and
effective use. That's why Hercules products
are sold to plumbers through plumbing
wholesalers across America.
Ser. No. 76/293,668
6
As the Examining Attorney, in light thereof, accurately
points out in his brief:
The applicant argues that the registrant
markets its products to the professional
plumber while the applicant instead markets
its products to the general consumer. In
support of this argument, the applicant
directs the TTAB ... to evidence consisting
of Internet advertising from registrant's
website. .... The applicant then concludes
[that] "neither professional plumbers nor
ordinary customers would encounter
Applicant's goods in the same home centers or
hardware stores and Applicant's customers
would not encounter registrant's goods in the
same store." .... As it did during
examination, the applicant has neglected to
refer to relevant portions of its own
evidence that belie this conclusion. The
registrant's advertisement clearly indicates
that the registrant's products are available
at home centers and hardware stores where the
general consumer shops. While the registrant
sells the product in large 55-gallon drums,
it also sells the goods in smaller consumer-
sized gallon and quart bottles. The fact
that the registrant recommends that the
general consumer hire a professional plumber
to administer its products is irrelevant.
The general consumer can still purchase and
use the goods on his or her own. ....
Therefore, the applicant's own evidence
demonstrates that the same type of consumer
has access to and uses both products.
In addition, we note that the evidence made of record by
applicant shows that registrant, besides its various "DRAIN &
WASTE SYSTEM CLEANERS," also markets under its "HERCULES" house
mark "MAINTENANCE & CLEANING COMPOUNDS," a category which could
encompass goods such as a stain remover.
More importantly, as the Examining Attorney also
persuasively argues in his brief, neither applicant's nor
registrant's goods, as respectively identified, are restricted to
a particular channel of trade or class of purchaser:
Ser. No. 76/293,668
7
Neither party has limited their own channels
of trade solely to the retail, wholesale or
professional market. The applicant's
identification [of goods] specifically
indicates that any consumer may use the
[stain remover] product on "tile" and
"grout." The registrant's identification of
goods is "drain pipe cleaner" without
limitation of the channels of trade. Any
consumer, whether a professional plumber or a
homeowner, may see these products in a
hardware store [or home center] and
mistakenly believe that the same source
offers products for cleaning bathroom,
kitchen and washroom drains and also products
for cleaning bathroom, kitchen and washroom
tile and grout. Therefore, the
identifications not only indicate that
neither party has limited the trade channels,
but, in the applicant's case, the
identification also shows a relationship
between the areas of the household in which
the consumer uses and stores these products.
Applicant's attempts to restrict registrant's "drain pipe
cleaner" to a concentrated chemical emulsifier, which liquefies
and disperses grease, soap, detergents and other organic waste
responsible for waste treatment system and which is sold
exclusively in commercial-sized quantities through plumbing
wholesalers primarily to professional plumbers, while limiting
its stain remover to a household cleaning preparation sold only
in hardware and home center stores to ordinary consumers, are
consequently without merit given the broad manner in which both
applicant's and registrant's goods are respectively identified.
Such goods, instead, must be viewed as suitable for sale to both
ordinary consumers and professional plumbers, and must be
regarded as available for purchase in all usual channels of trade
for goods of their kinds, including hardware stores and home
center outlets.
Ser. No. 76/293,668
8
Finally, as emphasized by applicant in its reply brief,
the Examining Attorney has conceded in his brief that "it is true
that the consumer uses drain cleaners and stain removers for
different purpose[s] in the house." While the Examining Attorney
insists with respect to the goods at issue that "it is also true
that they are still both household 'cleaners,' found in the same
aisle of the hardware [or home center] store, used in the same
areas of the consumer's home and stored next to one another in
the consumer's storage closet," applicant contends that, even if
such specifically different products were to be sold in the same
retail outlets:
[I]t does not follow that the products are
related or that customers would think the
products are related or that customers would
think the products come from the same source.
In the age of the superstore where one-stop
shopping is the norm, a consumer could
encounter many products in the same store. A
large retail store like Home Depot® carries
numerous products from step ladders to light
bulbs, and so on. It does not follow that
two different goods are related simply
because they are sold in the same large
retail store. If this were the case, any two
different products found in one large retail
store could be related.
Even if Applicant's goods and
Registrant's goods are sold in the same store
as the Examining Attorney contends, it is not
likely that these goods would be stocked on
the same shelf. It is more likely that
applicant's goods would be stocked with other
cleaning products and registrant's goods
would be stocked with the plumbing supplies,
thus, decreasing any likelihood that these
goods are related.
To the extent, however, that the differences argued by applicant
may serve to raise doubt as to our conclusion that there exists a
viable relationship between applicant's stain remover and
Ser. No. 76/293,668
9
registrant's drain pipe cleaner such that their contemporaneous
sale under the arbitrary and essentially identical marks "WHAM!"
and "WHAM" would be likely to cause confusion, we resolve such
doubt, as we must, in favor of the registrant. See, e.g., In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988) and In re Pneumatiques, Caoutchouc Manufacture
et Plastiques Kleber-Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA
1973).
We accordingly conclude that, whether they are ordinary
consumers or professional plumbers, customers who are familiar or
acquainted with registrant's mark "WHAM" for a "drain pipe
cleaner" would be likely to believe, upon encountering the
essentially identical mark "WHAM!" use by applicant for a "stain
remover for porcelain, fiberglass, tile, grout, metal surfaces,
synthetic surfaces, vinyl, wood, marble, linoleum, plastic
surfaces, glass, painted surfaces, brick, stone and concrete,"
that such closely related goods emanate from, or are sponsored by
or associated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.