Specialty Tapes, Div. of RSW, Inc.

Trademark Trial and Appeal Board

Mar 26, 2001

No. 75174045 (T.T.A.B. Mar. 26, 2001)

03/26/01
Paper No. 14
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Specialty Tapes, Div. of RSW, Inc.
________
Serial No. 75/174,045
_______
David A. Frey of Jansson, Shupe, Bridge and Munger, Ltd.
for Specialty Tapes, Div. of RSW, Inc.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Quinn, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Specialty Tapes, Div. of RSW, Inc. has filed an
application to register the mark WALLABY WALLET and design,
as shown below, for “photograph albums.”1
1 Serial No. 75/174,045, filed September 30, 1996, claiming first
use dates of July 25, 1996. A disclaimer has been made of the
word WALLET.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/174,045
2
Registration has been finally refused under Section
2(d) on the ground of likelihood of confusion with the
registered marks shown below:
WALLABY for “books”;2
WALLABIES for “paper and cardboard goods,
namely, envelopes, calendars,
writing pads, folders, greeting
cards, index cards, napkins,
postcards, posters, scrapbooks
and related stationery; mounted
and unmounted photographs; plastic
materials for packaging, namely,
plastic wrap, plastic bubble
packs and plastic film and bags
for wrapping and packaging items;
paper flags; decalcomanias;
playing cards; sacks and bags for
wrapping and packaging; stickers;
almanacs, journals and magazines
pertaining to sport, sport
coaching manuals and sporting
event programs; paper coasters;
pens; trading cards.” 3
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. No oral hearing was
requested.
2 Registration No. 1,151,686, issued April 21, 1981, Section 8 &
15 affidavits accepted and acknowledged, respectively.
3 Registration No. 2,181,767, issued August 18, 1998.
Ser No. 75/174,045
3
We make our determination of likelihood of confusion
on the basis of those of the du Pont4 factors which are
relevant in view of the evidence of record. Two key
considerations in any analysis are the similarity or
dissimilarity of the respective marks and the similarity or
dissimilarity of the goods or services with which the marks
are being used. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976); In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999).
Registration No. 1,151,686
Looking first to the respective marks, we are guided
by the well established principle that although the marks
must be considered in their entireties, there is nothing
improper, under appropriate circumstances, in giving more
or less weight to a particular portion of a mark. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed.
Cir. 1985). Moreover, although descriptive or disclaimed
matter cannot be ignored in comparing the marks, it is also
a fact that consumers are more likely to rely on the non-
descriptive portion of a mark as an indication of source.
See Hilson Research Inc. v. Society for Human Resource
4 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Ser No. 75/174,045
4
Management, 27 USPQ2d 1423 (TTAB 1993). In addition, it is
the word portion of a mark, rather than the design
features, unless particularly distinctive, that is more
likely to be remembered and relied upon by purchasers in
referring to the goods and thus it is the word portion that
will be accorded more weight in determining the similarity
of the involved marks. See Ceccato v. Manifattura Lane
Gaetano Marzotto & Figli S.p.A., 32 USPQ2d 1192 (TTAB
1994).
Applying these principles, we are in agreement with
the Examining Attorney that the dominant portion of both
applicant’s mark, WALLABY WALLET and design, and
registrant’s mark, WALLABY and design, is the term WALLABY.
Applicant insists that its mark must be viewed in its
entirety and full weight given to the fact that it consists
of two words rather than one. Applicant argues that the
term WALLET, even though disclaimed, is not descriptive,
but at most suggestive, of its product, and must be
considered in determining the commercial impression created
by its mark.
While a “wallet” may, by dictionary definition, be
designed for carrying money, the term has acquired a much
more general connotation, namely the basic shape for a
carrier for various items. Applicant has acknowledged as
Ser No. 75/174,045
5
much by its frequent reference to its product as a
“photograph wallet.” (For example, see brief p. 8). Thus,
we are convinced that purchasers would look to the term
WALLABY, which is arbitrary in relation to these goods, as
the indication of source and would view WALLET simply as
descriptive of the form of the photograph album. Although
applicant argues that purchasers would request a WALLABY
WALLET and not a WALLABY, it does not follow as a
conclusion therefrom that these purchasers would view the
term WALLET as anything other than a descriptor of the
goods.5
Insofar as the respective “wallaby” designs are
concerned, we concur with the Examining Attorney that these
two designs should not be accorded as much weight as the
word portion of the marks, in that purchasers would use the
word portions to call for the goods. In addition, as she
points out, the main function of the design portions, being
pictures of wallabies, is to reinforce the word portions
and the general commercial impression created by the term
WALLABY. See Ceccato v. Manifatture Lane Gaetano Marzotto
5 Applicant’s reliance on Alpha Industries, Inc. v. Alpha Steel
Tube & Shapes, Inc., 616 F.2d 440, 205 USPQ 981 (9th Cir 1980) is
misplaced. There the additional words in the second mark were
found to be “significant words, indicating a different origin,
not merely descriptive words.” Furthermore, that was an
infringement case, in which different factors are taken under
consideration.
Ser No. 75/174,045
6
& Figli S.p.A., supra (coat of arms design reinforces
meaning of word mark). Both designs, despite the specific
visual differences in the two “wallaby” designs, serve the
same purpose.
Thus, we find the overall commercial impressions
created by the respective marks to be highly similar.
Turning to the goods involved, we note that as a
general principle, the issue of likelihood of confusion
must be determined on the basis of the goods as identified
in the application and in the cited registration(s).
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed.Cir. 1987). It is not
necessary that the goods of the applicant and registrant be
similar or even competitive to support a holding of
likelihood of confusion. It is sufficient if the
respective goods 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 thereon, give rise to the mistaken belief that
they emanate, or are associated with, the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
and the cases cited therein. If there are no restrictions
in the application or registration(s) as to channels of
Ser No. 75/174,045
7
trade, the parties’ goods must be assumed to travel in all
the normal channels of trade for goods of this nature. See
Kangol Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23
USPQ2d 1945 (Fed. Cir. 1992).
Applicant’s major contentions are that the goods of
applicant and registrant are not directly competitive; that
registrant’s books would be sold in book stores and
purchased after careful consideration; and that applicant’s
goods would travel in different channels of trade and be
purchased as low cost, impulse items.
The Examining Attorney has made of record evidence
taken from Internet web sites of both book store chains and
“online bookstores” demonstrating that book stores also
offer photograph albums for purchase. Thus, in the absence
of any limitations in either applicant’s application or the
cited registration as to channels of trade, we find this
evidence fully adequate to show that the goods of both
would travel in the same trade channels. Customers
frequenting a book store would be likely to find photograph
albums for sale as well. It goes without saying that books
are also sold in many retail outlets other than formal
bookstores, at least some of which would undoubtedly also
offer photograph albums.
Ser No. 75/174,045
8
The more significant question is whether a sufficient
relationship exists between these goods that customers
would be likely to believe that applicant’s photograph
albums and registrant’s books originate from a single
source, if similar marks are used thereon. We find the
copies of numerous third-party registrations made of record
by the Examining Attorney showing registration of the same
mark by a single entity for both books and photograph
albums fully adequate to establish such a relationship.
While these registrations are admittedly not evidence of
use of the marks in commerce, they are sufficient to
suggest that these goods are ones which may be produced by
a single entity and marketed under the same mark. See In
re Albert Trostel & Sons Co., supra, In re Mucky Duck
Mustard Co., 6 USPQ2d 1467 (TTAB 1988). Accordingly, if
similar marks are used on both types of goods, it may
reasonably be presumed that purchasers will mistakenly
believe that the goods emanate from the same source.
Although applicant has raised the argument that many of the
books in these registrations are “specialty books,” rather
than books in general, we would simply point out that the
cited registration is unlimited as to the nature of the
books covered thereby and thus would encompass all
varieties of books.
Ser No. 75/174,045
9
We give little weight to applicant’s attempt to
distinguish between the nature of the purchases involved
here. We fail to see any sharp distinction between the
degree of care given to the purchase of many books and to
photograph albums. Nor are we aware of any significant
differences in the costs thereof. Applicant has clearly
failed to present any evidence which might substantiate its
arguments with respect to this factor.
Registration No. 2,181,767
Looking once again to the general principles set forth
above, we agree with the Examining Attorney that the
dominant element of both applicant’s mark WALLABY WALLETS
and design and registrant’s mark WALLABIES is the term
WALLABY, although presented in the plural in registrant’s
mark. Here also the descriptive matter of applicant’s
mark, the word WALLET, would not be likely to be viewed as
the indicator of source. Here also the design element of
applicant’s mark would serve primarily to reinforce the
literal portion of the mark. Furthermore, since
registrant’s mark is registered as a typed drawing,
registrant is free to use its mark in any format, including
one incorporating a “wallaby” design very similar to that
of applicant. The only arguable difference in the marks,
besides the merely descriptive term WALLET in applicant’s
Ser No. 75/174,045
10
mark, is registrant’s use of the plural form, which we find
insignificant in terms of the overall commercial impression
created by the two marks. Both are predominated by the
reference to the kangaroo known as the “wallaby”, an
arbitrary term when used with the goods involved here.
Applicant argues that consumers would associate the
mark WALLABIES with the Australian professional rugby team
and this association would accordingly have an effect on
the commercial impression created by the mark. There is no
basis for such a conclusion, however, in the registration
before us. There is no reference to any team in the mark
nor is there any design element in this registration which
might bring the sport of rugby to mind. We must make our
comparison solely on the basis of the mark as registered, a
typed drawing for the word WALLABIES. As such, we find the
overall commercial impression highly similar to applicant’s
WALLABY WALLET mark.6
Turning to the respective goods, applicant again
raises its argument of different channels of trade. The
Examining Attorney has countered this argument, however,
6 Applicant’s reference to various ANGEL marks and the
accompanying exhibits attached to its brief have been given no
consideration. As pointed out by the Examining Attorney,
evidence of this nature must be made of record prior to the
filing of an appeal. See Trademark Rule 2.142(d). Applicant’s
exhibits are untimely.
Ser No. 75/174,045
11
with copies of newspaper advertisements showing the
offering for sale of photograph albums and many of the
stationery items listed in the registration in the same
retail outlets. In addition, she has made of record third-
party registrations showing the registration of a single
mark for both photograph albums and various items among
registrant’s goods. Here again the evidence is more than
adequate to establish that the goods are sufficiently
related that the same customers would encounter the goods
of both and that these same customers would be likely to
believe that all originate from a single source, if similar
marks are used thereon.
The remaining factors that applicant has raised are
equally applicable to both cited registrations. Thus,
while applicant argues that there has been no known
instances of actual confusion, we would simply note that
little weight can be given to this factor in an ex parte
proceeding. There has been no opportunity for either
registrant to be heard from on this point. See In re
National Novice Hockey League, Inc., 222 USPQ 638 (TTAB
1984).
Applicant also points to the fact that the two cited
registrations have been allowed to coexist on the Register.
The matter before us, however, is the likelihood of
Ser No. 75/174,045
12
confusion of applicant’s mark with each of the two marks
and not between the two marks. The prior decision of an
Examining Attorney on the registrability of the cited marks
over one another is in no way controlling on our present
decision. See In re Nationwide Industries, Inc., 6 USPQ2d
1882 (TTAB 1988).
Accordingly, upon weighing all of the relevant du Pont
factors, we find the likelihood of confusion with respect
to each of the cited registrations. To the extent that
there may be any remaining doubt, we follow the well-
established principle that any doubt regarding likelihood
of confusion must be resolved in favor of the registrant.
See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.