South Central Group Inc.

Trademark Trial and Appeal Board

Mar 17, 1998

No. 74645990 (T.T.A.B. Mar. 17, 1998)

Paper No. 14
EWH/CJ
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 17, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re South Central Group Incorporated
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Serial No. 74/645,990
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Carroll F. Palmer for South Central Group Incorporated
Cindy B. Greenbaum, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney)
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Before Sams, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
South Central Group Incorporated (applicant) seeks
registration of MAX for ”boat anchors.” The application was
filed on May 13, 1995 with a claimed first use date of
December 15, 1989.
The Examining Attorney refused registration pursuant to
Section 2(d) of the Lanham Trademark Act on the basis that
applicant’s mark, as applied to applicant’s goods, is likely
Ser No. 74/645,990
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to cause confusion with the identical mark MAX, previously
registered for “sailboats.” This Registration No. 1,034,772
issued on March 2, 1976 with a claimed first use date of
January 23, 1975. The owner of this registration is Barnett
Boat Co., Inc. of Kenosha, Wisconsin.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
Because the marks are identical, the issue of
likelihood of confusion will be decided based upon whether
the Examining Attorney has demonstrated that boat anchors
(applicant’s goods) and sailboats (registrant’s goods) are
related to such a degree that consumers would expect boat
anchors and sailboats sold under the trademark MAX to
emanate from a common source.
The only evidence made of record by the Examining
Attorney are stories from the NEXIS database which prove the
obvious, namely, that some sailboats have anchors. The
Examining Attorney has made of record no evidence showing
that the same companies manufacture both boat anchors and
sailboats, much less that said companies sell both boat
anchors and sailboats under the same trademark. In
response, applicant noted that “there is absolutely no
similarity between a sailboat and an anchor unless one
contends that anything having to do with the marine industry
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is similar.” (Applicant’s response of November 3, 1995 at
page 3).
We find that the evidence submitted by the Examining
Attorney – which merely demonstrates that some sailboats
have anchors – is not sufficient to demonstrate that there
is enough of a relationship between sailboats and anchors
such that the use of the identical mark on both items is
likely to cause confusion. It is common knowledge that
boats, like automobiles, have numerous components. If one
were to accept the reasoning of the Examining Attorney, then
the registration of a particular mark for automobiles would,
without any further proof, preclude the registration of the
same mark for the numerous components of automobiles, such
as batteries, tires, radios, seats and so forth. To cut to
the quick, we find that the evidence of the Examining
Attorney, which merely establishes that some sailboats have
anchors, is simply not sufficient by itself to demonstrate
that there would be a likelihood of confusion resulting from
the use of MAX on boat anchors and MAX on sailboats.
In contrast to the limited evidence made of record by
the Examining Attorney, applicant has made of record a
considerable amount of evidence demonstrating that use of
the identical mark on boat anchors and sailboats is not
likely to result in confusion. Applicant’s evidence
consists of the declaration of its president as well as the
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declarations of the presidents of three distributors of
marine equipment. In their declarations, the presidents of
the three distributors explain that they were informed of
the nature of this proceeding and that their declarations
would be used in this proceeding in an effort to secure for
applicant a registration of the mark MAX for boat anchors.
While the four declarations are somewhat different, they are
in agreement on four points. First, they all agree that
purchasers of boat anchors and sailboats are very
discerning. Second, they agree that purchases of boat
anchors are made with great care because boat anchors are
safety items. Third, they agree that the purchase of a boat
anchor requires time and study because one must make certain
that the specifications of a particular anchor are suitable
for one’s boat. Finally, they all agree that purchasers of
boat anchors and sailboats are not likely to believe that if
both products bore the mark MAX, that hence both products
emanated from a common source.
In addition, applicant’s president stated in his
declaration that he “conferred with an officer of Barnett
Boat Co., Inc., owner of trademark Registration No.
1,034,772 for the mark MAX in the marketing of sailboats and
has been advised that if [applicant’s] subject application
is allowed and published, Barnett Boat Co., Inc. will not
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file an opposition to the grant of the registration of MAX
by the applicant for use with anchors.”1
Based upon these four declarations and the absence of
any evidence to the contrary, we find that the purchasers of
boat anchors and sailboats are both discerning and careful,
and that furthermore they make inquiries when purchasing
anchors to make certain that said anchors are compatible
with their boats. Obviously, when purchasers are discerning
and careful and make inquiries before purchasing, the
chances for likelihood of confusion decline. Electronic
Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21
USPQ2d 1388, 1392 (Fed. Cir. 1992).
Based upon this particular evidentiary record, we find
that the contemporaneous use of MAX on sailboats and MAX on
boat anchors is not likely to result in confusion.
One final comment is in order. The three presidents of
the marine supply companies stated that purchasers of boat
anchors were “very discerning … particularly [for] boats
larger than 20 feet in length for which [applicant’s] MAX

1 While we have considered applicant’s president’s statement in
reaching our decision on this case, his declaration would,
obviously, have had greater evidentiary weight had he offered
more details about the alleged conference, including, at least,
the identity of the “officer” with whom he spoke. Moreover, even
had applicant’s president offered details about his telephone
conference, his declaration would still have lacked the
persuasive power of a written consent agreement between applicant
and the cited registrant.
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6
anchors are designed.” (emphasis added). The Examining
Attorney incorrectly gave little or no weight to these three
declarations “because there is no evidence of record that
applicant’s anchors are made for boats larger than 20 feet
in length, nor that the registrant’s sailboats are less than
20 feet in length.” (Examining Attorney’s final office
action of November 26, 1996 at page 1; see also Examining
Attorney’s brief of February 27, 1997 at page 4).
In response to the foregoing comments made by the
Examining Attorney in her final office action of November
26, 1996, applicant’s counsel submitted a paper dated
December 11, 1996 in which she amended the description of
goods from “boat anchors“ to “boat anchors for boats of a
least 20 feet in length.” In so doing, applicant’s counsel
correctly noted that the use of the word “particularly” in
the three declarations was not limiting in nature, but that
“in order to summarily dispose of this technical basis for
dismissal of the [three] submitted declarations, the
statement of goods has been limited to cover only anchors of
the size that are intended for use with boats at least 20
feet in length.”
Unfortunately, applicant’s paper of December 11, 1996
was not associated with this file until long after the
Examining Attorney filed her brief dated February 27, 1997.
However, because we have found on this particular
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evidentiary record that there is no likelihood of confusion
resulting from the contemporaneous use of MAX on boat
anchors per se and MAX on sailboats, we are electing to
disregard applicant’s amended (and more limited)
identification of goods. In so doing, this eliminates the
need to remand the file to the Examining Attorney for
consideration of whether a likelihood of confusion exists
between MAX for sailboats and MAX for boat anchors for boats
of at least 20 feet in length. In short, applicant’s mark
MAX will be passed to publication with the identification of
goods being simply “boat anchors.”
Decision: The refusal to register is reversed.
J. D. Sams
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board