Stamperia Carcano Giuseppe S.P.A.

Trademark Trial and Appeal Board

Feb 5, 2008

No. 79009571 (T.T.A.B. Feb. 5, 2008)

Mailed:
Feb. 5, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Stamperia Carcano Giuseppe S.P.A.
________

Serial No. 79009571
_______

Julie B. Seyler of Abelman, Frayne & Schwab for Stamperia
Carcano Giuseppe S.P.A.

Charisma Hampton, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney)
_______

Before Seeherman, Grendel and Drost, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Stamperia Carcano Giuseppe S.P.A., applicant herein,
seeks registration on the Principal Register of the mark
CARTEC (in standard character form) for goods identified in
the application as “metal parts for cables and chains,
namely cable clips, wires and thimbles; metal rigging
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79009571
2
chains, turnbuckles, shackles, eye nuts, bolts, hooks,” in
Class 6.1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the goods identified in the
application, so resembles the mark CARTECH, previously
registered (in standard character form) for goods
identified in the registration as “steel and other alloys
and metals in the form of wire, strips, bars, billets,
tubing blanks and shapes,” in Class 6, as to be likely to
cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.

1 Serial No. 79009571, filed on June 16, 2004. The application
is a §66(a) application, based on International Registration
0845469. 15 U.S.C. §1141(a).

Ser. No. 79009571
3
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin with the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods as they are identified in the application and in
the cited registration. It is settled that it is not
necessary that the goods be identical or even competitive
in order to find that the goods are related for purposes of
our likelihood of confusion analysis. That is, the issue
is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the goods be
related in some manner, or that the circumstances
surrounding their use be such, that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Ser. No. 79009571
4
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Applicant’s goods are identified as “metal parts for
cables and chains, namely cable clips, wires and thimbles;
metal rigging chains, turnbuckles, shackles, eye nuts,
bolts, hooks.” The goods in the cited registration are
identified as “steel and other alloys and metals in the
form of wire, strips, bars, billets, tubing blanks and
shapes.”
First, looking at the respective identifications of
goods on their face, we find that registrant’s broadly
identified “…metals in the form of wire…” encompass and
thus are legally identical to applicant’s “metal parts for
cables and chains, namely …wires.” Next, we find that the
evidence of record further establishes that applicant’s
“eye nuts, bolts and hooks” are related to registrant’s
products in the marketplace. In this regard, there are
seven third-party registrations which include in their
identifications of goods both “bolts” and the types of
products identified in the cited registration. There are
five third-party registrations which include in their
identification of goods both “nuts” and the types of
Ser. No. 79009571
5
products identified in the cited registration. There are
three third-party registrations which include in their
identification of goods both “hooks” and the types of
products identified in the cited registration. Although
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them, they nonetheless have probative value to the extent
that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source under
a single mark. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
For these reasons, we find that applicant’s goods as
identified in the application are identical as to “wire”
and related as to “bolts,” “nuts” and “hooks.” The second
du Pont factor weighs in favor of a finding of likelihood
of confusion.
The third du Pont factor requires us to compare the
trade channels in which the goods are marketed. To the
extent that applicant’s metal wire is legally identical to
the metal wire identified in the cited registration, we
find that the trade channels for such goods likewise are
legally identical. Additionally, the record includes
printouts from four third-party websites which show that
Ser. No. 79009571
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wire is marketed together with the products identified in
the cited registration. There also are four third-party
websites which market “bolts” along with registrant’s types
of products, and three third-party websites which market
“nuts” along with registrant’s types of products. For
these reasons, we find that the trade channels are
identical in part and otherwise similar. The third du Pont
factor weighs in favor of a finding of likelihood of
confusion.
The fourth du Pont factor requires us to consider
evidence pertaining to the conditions of purchase. We find
that there is no evidence in the record to support
applicant’s contention that the goods at issue always would
be purchased by sophisticated and careful purchasers. We
find on this record that the fourth du Pont factor is at
best neutral in this case.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, 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
Ser. No. 79009571
7
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). In cases such as this, where the applicant’s goods
are identical in part to the goods identified in the cited
registration, the degree of similarity between the marks
which is required to support a finding of likelihood of
confusion is less than it would be if the goods were not
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
Applicant’s mark CARTEC and the cited registered mark
CARTECH obviously are identical in terms of appearance but
for the presence of the letter “h” at the end of the cited
registered mark. On balance, the marks look similar,
sharing six out of seven letters. The marks are identical
in terms of sound. In terms of meaning, it appears on this
record that both CARTECH and CARTEC are arbitrary or coined
terms as applied to the goods at issue. The letters “tech”
in the registered mark might be seen as being short for
“technology” or “technician,” but we find that the letters
“tec” at the end of applicant’s mark might reasonably be
Ser. No. 79009571
8
understood by purchasers to connote the same thing. On
balance, we find that whatever meaning might be ascribed to
the cited registered mark, applicant’s mark is so similar
that it would be likely to connote the same thing.
Finally, we find that the marks are similar in terms of
commercial impression. Again, the marks are identical
except for the “h” at the end of the cited registered mark.
That point of dissimilarity does not suffice to distinguish
the marks in their entireties.
Comparing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that the marks are similar. Moreover, as noted
above, where the applicant’s goods are identical (even in
part) to the goods identified in the cited registration, as
they are in this case, the degree of similarity between the
marks which is required to support a finding of likelihood
of confusion diminishes. We find that the first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
Considering all of the evidence of record as it
pertains to the du Pont factors, and for the reasons
discussed above, we conclude that a likelihood of confusion
exists. To the extent that any doubts might exist as to
the correctness of this conclusion, we resolve such doubts
Ser. No. 79009571
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against applicant. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc. supra.

Decision: The refusal to register is affirmed.