The Butcher Co. Inc.

Trademark Trial and Appeal Board

Nov 13, 2002

No. 76127919 (T.T.A.B. Nov. 13, 2002)

Mailed: November 13, 2002
Paper No. 10
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Butcher Company, Inc.
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Serial No. 76/127,919
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Renee J. Rymarz for The Butcher Company, Inc.
Michael E. Hall, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hanak and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
The Butcher Company, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
GREAT WHITE as a trademark for a “mold and mildew removing
and tile and grout cleaning compound.”1 Registration has
1 Application Serial No. 76/127,919, filed September 15, 2000,
asserting first use and first use in commerce on December 7,
1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/127,919
2
been refused pursuant to Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles two marks, registered by different entities,
that, when used on applicant’s goods, it is likely to cause
confusion, mistake or to deceive. The cited registrations
are for GREAT WHITE for “marine cleaning preparations,
namely, wash and wax, bug and tar removers, and streak
removers”2 and for GREAT WHITE FINISH MOP and design, as
shown below, with the words FINISH MOP disclaimed, for
“mops for cleaning or applying finish or other products to
walls or floors.”3
The appeal has been fully briefed, but an oral hearing
was not requested.
We turn first to a procedural matter. With its reply
brief applicant has submitted as exhibits material taken
from the website “www.dictionary.com” which purports to
show that there is no listing for “great white” per se, but
2 Registration No. 2,111,362, issued November 4, 1997.
3 Registration No. 2,086,084, issued August 5, 1997.
Ser No. 76/127,919
3
which does give definitions for “great white heron,” “great
white shark” and “Great White Way” which have been taken
from a source identified as “WordNet 1.6”, copyright 1997
Princeton University. Although the Board will take
judicial notice of dictionary definitions, see University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), we cannot ascertain whether this
“WordNet 1.6” Internet source would qualify as a
dictionary. The Board will not take judicial notice of
definitions found only in on-line dictionaries and not
available in a printed format; however, it will consider
them if made of record during the prosecution of the
application. In re Total Quality Group Inc., 51 USPQ2d
1474 (TTAB 1999); See also, In re Styleclick.com Inc., 57
USPQ2d 1445 (TTAB 2000). Therefore, we decline to consider
the submissions in Exhibit A.
Exhibit B consists of excerpts taken from various
websites purporting to show third-party uses of “great
white” in trademarks and also in non-trademark formats.
This evidence is manifestly untimely and has not been
considered. See Trademark Rule 2.142(d). Applicant
asserts in its reply brief that because the Examining
Attorney has argued in his brief that the meaning of “Great
Ser No. 76/127,919
4
White” is that of a shark, applicant should be able to show
that the term has other meanings. However, the connotation
of the marks has been at issue throughout examination, with
applicant itself contending that the commercial impression
of the cited marks is that of the shark, and the Examining
Attorney disputing applicant’s assertion that “great white”
would indicate the result of using the cleaning product.
In any event, if applicant believed that it was entitled to
submit evidence as to other meanings or usages of “great
white,” the proper procedure was to have requested that the
application be remanded so that the Examining Attorney
could consider such evidence.4 Clearly it was not proper
for applicant to simply submit the evidence at a point that
the Examining Attorney could not respond to it.
The substantive issue before us is whether applicant’s
mark, used on its identified goods, is likely to cause
confusion with one or both of the cited registered marks.
Our determination of this issue is based on an analysis of
all of the probative facts in evidence that are relevant to
the factors set forth in In re E.I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). We consider
4 We do not suggest by this statement that such a request for
remand would have been granted. Certainly the statements made by
applicant in its reply brief would not have constituted good
cause.
Ser No. 76/127,919
5
these factors with respect to each of the cited
registrations, keeping in mind that in any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the question of likelihood of
confusion with respect to Registration No. 2,111,362, we
note that the marks are identical, both being GREAT WHITE
shown in typed form. Thus, the marks are legally identical
in appearance and pronunciation. Applicant asserts that
the marks differ in connotation because the image applicant
wishes to suggest by “great white” is of something that is
“sparkling clean,” while the registered mark, because it is
used for marine products, suggests a great white shark.
We do not agree with applicant that consumers, upon
seeing GREAT WHITE for a “mold and mildew removing and tile
and grout cleaning compound,” would view the mark as
meaning only that the product results in sparkling clean
tile and grout. Whether or not applicant’s mark may
describe or suggest a product which produces a sparkling
clean result, the term GREAT WHITE, particularly for any of
the millions of people who saw the popular movie “Jaws,”
Ser No. 76/127,919
6
also has the connotation of a shark.5 This “double
entendre” connotation of GREAT WHITE for applicant’s goods
is the same connotation that the mark GREAT WHITE is likely
to have for the registrant’s goods; after all, the
registrant’s goods are for cleaning preparations, and GREAT
WHITE can as easily suggest that the use of registrant’s
products will produce a sparkling clean result as the mark
can suggest applicant’s products will produce that result.
Thus, we find that the marks create the same commercial
impression.
The goods, too, are related. Although the cited
registration is specifically limited to “marine cleaning
preparations,” applicant’s goods can also be used to clean
boats. Applicant argues that the registrant’s goods “are
intended for outside surface use on a boat,” and that
applicant’s tile and grout cleaner would not be used on the
outside surface of a boat because tile and grout is not
used on the outside of a boat. Reply brief, p. 4. The
problem with this argument is that the registrant’s goods,
as identified, (and particularly its “wash and wax” and
5 As the Examining Attorney points out in his brief, were it not
for this double entendre the Examining Attorney would have
refused registration on the ground of mere descriptiveness, based
on applicant’s admission that “the goal in using [applicant’s]
products is to whiten or make a surface appear cleaner” (response
filed August 6, 2001) and the laudatory nature of the word GREAT.
Ser No. 76/127,919
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“streak removers”) are not limited to use on the outside
surface of a boat, but could be used to clean interior
areas where applicant’s mildew removing and grout and tile
cleaning compound might also be used.
Applicant also argues that the goods travel in
different channels of trade, with registrant’s goods being
sold to the marine recreation industry. Although marine
cleaning preparations would be sold in stores which are
frequented by sailors and boat owners, applicant’s cleaning
compound might also be sold in such stores. More
importantly, the same people who frequent marine supply
stores are also likely to shop in consumer stores where
general cleaning preparations are sold, and thus could
encounter both applicant’s and the registrant’s goods.
Finally, although this point has not been raised by
either applicant or the Examining Attorney, the goods
themselves are inexpensive items which are likely to be
purchased on impulse, rather than after careful
deliberation. In view of this, consumers are likely to
assume that the same mark used for different cleaning
preparations indicates goods emanating from the same
source. Accordingly, we affirm the refusal of registration
based on Registration No. 2,111,362.
Ser No. 76/127,919
8
The second basis for refusal of registration is that
applicant’s use of its mark is likely to cause confusion
with Registration No. 2,086,084 for GREAT WHITE FINISH MOP
and design for “mops for cleaning or applying finish or
other products to walls or floors.” In considering the
marks, we note that FINISH MOP appears in much smaller
letters than the words GREAT WHITE, and that this term has
been disclaimed, presumably because it is generic for a mop
used to apply finish. (The material from the registrant’s
website, which applicant has made of record, shows that the
registrant uses “finish mop” as a generic term.) Thus, it
is the term GREAT WHITE which is the source-identifying
portion of the mark. The design element, in which part of
the letter “W” is elongated and, with the wave design forms
a fin, merely emphasizes the shark connotation of the words
GREAT WHITE. It is well-established that in determining
the issue of likelihood of confusion there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985). In this case, for the foregoing
reasons, the words GREAT WHITE must be considered to be the
dominant element of the registrant’s mark.
Ser No. 76/127,919
9
Thus, although the cited mark contains additional
words and a design element, they do not serve to
distinguish the marks. The marks are extremely similar in
appearance, and except for the presence of the generic
terms in the registrant’s mark, they are phonetically
identical. Consumers who are familiar with the mark GREAT
WHITE FINISH MOP used for a mop, and seeing GREAT WHITE on
a cleaning compound, will assume that the generic term
FINISH MOP has been omitted from the mark because it does
not apply to a cleaning compound, rather than viewing the
presence or absence of this term as indicating different
sources for the goods. As for the connotation of the
marks, as discussed previously with respect to the cited
mark GREAT WHITE, while the registered mark has the
connotation of the great white shark, applicant’s mark is
likely to have this connotation as well. Given the
inexpensive nature of a mold and mildew removing and tile
and grout cleaning compound, consumers are not likely to
analyze the meaning of GREAT WHITE to determine whether the
source of the goods is the same as or different from the
source of registrant’s mops.
Turning to the goods, applicant argues that its
cleaning compound and the registrant’s mop are not related
goods because they are “not subject to complementary use.”
Ser No. 76/127,919
10
Applicant points to its label, which shows that after its
product is applied the user should “use a hand pad or brush
to scrub away heavy soap scum buildup.” The difficulty
with this argument is that there is no restriction in the
identification of goods which would mandate that the
cleaning compound may only be used with a hand pad or
brush. Certainly such cleaning compounds can be applied
with a mop. It should also be noted that the mops
identified in the cited registration are not limited to
applying finish, but include use in cleaning walls or
floors, and to applying products other than finish to walls
or floors. And, as the Examining Attorney points out,
applicant’s identified tile and grout cleaning compound
could be used on tiled walls and floors.
It is not necessary that the goods of the parties be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods of
the parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods are such that they would or could be encountered by
the same persons under circumstances that could, because of
the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. In re
Ser No. 76/127,919
11
International Telephone & Telegraph Corp., 197 USPQ 910.
911 (TTAB 1978). Because of the complementary nature of
the products as identified, consumers are likely to assume
there is a connection or sponsorship between mold and
mildew removing and tile and grout cleaning compound sold
under the mark GREAT WHITE and mops for cleaning or
applying finish or other products to walls or floors sold
under the mark GREAT WHITE FINISH MOP and design.
Applicant also argues that the two cited marks are
more similar to each other than is applicant’s mark to
either of them. We cannot ascertain from the file
histories what the Examining Attorney for the later-filed
application was thinking. The application for GREAT WHITE
FINISH MOP was filed on October 4, 1996 and the application
for GREAT WHITE was filed on April 14, 1996. The Examining
Attorney for GREAT WHITE FINISH MOP never raised a concern
about a potential conflict with GREAT WHITE, and it is
possible that because the applications were filed so close
in time the Examining Attorney was not aware of the
earlier-filed application. In any event, we are not bound
by the decisions of Examining Attorneys. As for
applicant’s assertion that the two cited marks have
coexisted for almost five years and “there are no
indications in the record that there have been any
Ser No. 76/127,919
12
conflicts between the owners of the registered marks,”
brief, p. 11, any such conflict would not appear in this
record. More importantly, the question before us is not
whether there is a likelihood of confusion between the two
cited marks, but whether applicant’s mark is likely to
cause confusion with these marks. For the reasons given
above, we find that such confusion is likely.
Decision: The refusal of registration on the grounds
of likelihood of confusion with Registrations Nos.
2,111,362 and 2,086,084 is affirmed.