Swenco Products, Inc.

Trademark Trial and Appeal Board

Jun 6, 2003

No. 75799467 (T.T.A.B. Jun. 6, 2003)

Paper No. 26
RFC
Mailed: June 6, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Swenco Products, Inc.
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Serial No. 75/799,467
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Jim Zegeer for Swenco Products, Inc.
James T. Griffin, Trademark Examining Attorney, Law Office
103 (Daniel Vavonese, Managing Attorney).
_______
Before Cissel, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On September 14, 1999, applicant, a corporation
organized and existing under the laws of the state of
Missouri, filed the above-identified application to
register the mark shown below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/799,467
2
on the Principal Register for what were subsequently
identified as “electrical connectors for splicing 8-gauge
and smaller stranded electrical wires, excluding straight-
and right-angle radio frequency coaxial electrical
connectors and excluding electrical panel units for
sequentially connecting and disconnecting electrical
connectors.” The basis for filing the application was
applicant’s assertion that it had first used the mark in
interstate commerce in connection with these products on
June 1, 1999.
In addition to raising several informalities,
including a requirement to disclaim the representation of
the electrical connector shown in the drawing, the
Examining Attorney refused registration under Section 2(d)
of the Lanham Act on the ground that applicant’s “POSI-
LOCK” and design mark, when used in connection with the
electrical connectors set forth in the application, so
resembles the mark “POSI-LOCK,” which is registered1 for
“straight and right angle radio-frequency coaxial
electrical connectors,” that confusion is likely.2
1 Reg. No. 1,224,889, issued on the Principal Register on Jan.
25, 1983 to Sealectro Corporation; affidavits under section 8 and
15 accepted and acknowledged.
2 Registration was also refused under Section 2(d) of the Act
based on another cited registration, but the Examining Attorney
subsequently withdrew that registration as a basis for refusing
registration.
Ser No. 75/799,467
3
Applicant responded to the first Office Action by
amending the identification-of-goods clause to read as
indicated above and to include a statement that the lining
shown in the drawing merely indicates shading. Applicant
also presented arguments with respect to the Examining
Attorney’s requirement for a disclaimer of the
representation of the electrical connector in the mark and
the refusal to register based on likelihood of confusion.
The Examining Attorney, however, maintained both the
requirement for disclaimer and the refusal to register.
Applicant timely filed a Notice of Appeal, and,
following a number of extensions of time, an appeal brief.
The request of the Examining Attorney to supplement the
record after applicant had filed its appeal brief was
denied. The Examining Attorney then filed his appeal
brief,3 but applicant neither filed a reply brief nor
requested an oral hearing before the Board.
Accordingly, we have resolved this appeal based on
consideration of the evidence properly of record, the
arguments presented in the briefs and the relevant legal
precedents. We conclude that both the requirement to
3 Attached to the Examining Attorney’s brief were copies of pages
from two technical dictionaries. Ordinarily, submission of
evidence not already of record with an appeal brief is untimely
under Trademark Rule 2.142(d), but the Board may take judicial
Ser No. 75/799,467
4
disclaim the representation of the connector and the
refusal to register based on Section 2(d) of the Act are
well taken.
We turn first to the disclaimer requirement. As the
Examining Attorney points out, an accurate picture or
representation of descriptive matter such as the
configuration of the product is the equivalent of the
written name of it. As such, it is merely descriptive of
the product under Section 2(e)(1) of the Act and therefore
must be disclaimed under Section 6(a), just as descriptive
terminology must be disclaimed. Thistle Class Association
v. Douglass & McLeod, Inc., 198 USPQ 504 (TTAB 1978). See
also TMEP Section 1213.02(c).
In its response of August 30, 2000, applicant argued
that “[t]he depiction of the electrical connector is unique
to applicant and is applicant’s style of connector…”.
Applicant seems to be arguing that because the mark depicts
applicant’s own product, as opposed to a generic connector
or one resembling the connectors made by a competitor, the
depiction is not merely descriptive of applicant’s
connector and therefore does not need to be disclaimed.
This argument is not well taken. Applicant concedes that
notice of dictionary definitions, so we have considered this
evidence.
Ser No. 75/799,467
5
the design in its mark depicts its product. That is the
end of our inquiry. Because the representation of
applicant’s electrical connector is merely descriptive of
applicant’s goods within the meaning of Section 2(e)(1) of
the Lanham Act, it must be disclaimed under section 6(a) of
the Act. The requirement for such a disclaimer is
affirmed.
We turn next to the refusal based on likelihood of
confusion under Section 2(d) of the Lanham Act. The
factors to be considered in determining whether confusion
is likely were set forth by the predecessor to our primary
reviewing court in the case of In re E.I. duPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Chief
among these factors are the similarity of the marks as to
appearance, pronunciation, meaning and connotation and the
relationship between the goods or services with which the
marks are used.
In the instant case, confusion is likely because the
marks create similar commercial impressions and the goods
specified in the application are closely related to the
goods set forth in the cited registration.
The marks create similar commercial impressions
because the dominant portion of applicant’s mark is
identical to the cited registered mark. It is well settled
Ser No. 75/799,467
6
that when a mark consists of a word portion along with a
design, the word portion is often more likely to be
impressed upon a purchaser’s memory and to be used in
calling for or recommending the goods. In Re Appitito
Provisions Co., 3 USPQ2d 1553 (TTAB 1987). Further, the
design portion of this mark is a merely descriptive
depiction of the goods. For these reasons, it is
appropriate to give greater weight to the literal portion
of applicant’s mark in determining whether confusion with
the cited registered mark is likely. When considered in
its entirety, applicant’s mark is quite similar to the
registered mark in appearance, pronunciation and
connotation. In both marks, the word “POSI-LOCK” is
suggestive of the same characteristic. It is likely to
suggest to the relevant consumers that the connector
bearing it provides a positive lock which ensures a good
electrical connection.
Turning to the goods, then, we note that in order for
confusion to be likely, the goods do not need to be
identical or even directly competitive. It is sufficient
if they are related in some manner, or if the conditions
surrounding their marketing are such that they would be
encountered by the same purchasers under circumstances that
could give rise to the mistaken belief that the goods come
Ser No. 75/799,467
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from a common source. In re Corning Glass Works, 229 USPQ
65 (TTAB 1985); In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
Applicant’s products are electrical connectors for
splicing 8-gauge and smaller stranded electrical wires.
The goods specified in the cited registration are
electrical connectors for coaxial cable. Although not
identical, these products are closely related. Both are
connectors for electrical wires, and they are complementary
in the sense that the same person could purchase both for
use in wiring different electrical components in his or her
home. A consumer familiar with the use of the registered
“POSI-LOCK” mark in connection with coaxial electrical
connectors, upon being presented with applicant’s “POSI-
LOCK” and design mark on connectors for stranded electrical
wires, is likely to assume, mistakenly as it would turn out
to be, that a single source is responsible for both
products.
DECISION: The refusal to register under Section 2(d)
of the Act is affirmed. The requirement for a disclaimer
under Section 6(a) of the design of the electrical
connector is also affirmed.