The Group Design, Inc.

Trademark Trial and Appeal Board

May 12, 2006

No. 76586403 (T.T.A.B. May. 12, 2006)

Mailed: May 12, 2006
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Group Design, Inc.
________

Serial No. 76586402
Serial No. 76586403
Serial No. 76586404
Serial No. 76586405
_______

Ray R. Regan of Law Office of Ray R. Regan, P.A.. for The Group
Design, Inc.

Sean W. Dwyer, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______

Before Quinn, Hohein and Zervas, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

The Group Design, Inc. has filed applications to
register in standard character form on the Principal Register the
marks "MERLIN I,"1 "MERLIN SPORT & WORK,"2 "MERLIN II"3 and

1 Ser. No. 76586402, filed on March 24, 2004, which is based on an
allegation of a bona fide intention to use the mark in commerce.

2 Ser. No. 76586403, filed on March 24, 2004, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
phrase "SPORT & WORK" is disclaimed.

3 Ser. No. 76586404, filed on March 24, 2004, which is based on a
allegation of a bona fide intention to use the mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
2
"MERLIN PROFESSIONAL"4 for, in each instance, "knife sheaths" in
International Class 8.
Registration has been finally refused in each case
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's marks, when applied to its goods, so
resemble the mark "MERLIN TOOL," which is registered in standard
character form on the Principal Register for "hand tools, namely
screwdrivers, spanners, pliers, and hammers" in International
Class 8,5 as to be likely to cause confusion, mistake or
deception.
Applicant, in each case, has appealed. Briefs have
been filed, but an oral hearing was not requested. Because the
issue of likelihood of confusion is substantially the same in
each instance, the appeals are being treated in a single opinion.
We affirm the refusal to register in each case.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion

4 Ser. No. 76585405, filed on March 24, 2004, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
word "PROFESSIONAL" is disclaimed.

5 Reg. No. 1,929,250, issued on October 24, 1995, which sets forth a
date of first use anywhere of July 26, 1993 and a date of first use in
commerce of December 16, 1993; renewed. The word "TOOL" is
disclaimed.

Ser. Nos. 76586402, 76586403, 76586404 and 76586405
3
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.6
Turning first to consideration of the respective goods,
applicant argues in each of its initial briefs that (underlining
in original):
The goods are wholly unrelated. The
goods are not related or marketed in a way
that the respective goods would be
encountered by the same persons in situations
that would create the incorrect assumption
that they originate from the same source, so
even if the marks were identical, confusion
is not likely. ....

Knife sheaths are not even "tools."
They are, at best, holders for tools.

The knife sheaths of Applicant are
arbitrarily associated with "hand tools" only
to accommodate an inordinately broad category
of goods included within International Class
008 ("Hand Tools"), probably having an
historical antecedent in the absence of any
other readily apparent alternative
classification under which to include an item
such as a knife sheath.

Knife sheaths are no more "hand tools"
than some other items capriciously, if not
whimsically[,] forced into Classification
008, including, for example, aprons, belts,
electrolysis apparatus, forks, leather
strops, and similar goods arbitrarily
aggregated under Classification 008.

The use of Classification 008 is merely
for the convenience of placing the knife
sheath somewhere; but the evident
inflexibility of the International
Classification system for goods ought not to
be the basis for rejecting the instant
Application.

6 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the marks."

Ser. Nos. 76586402, 76586403, 76586404 and 76586405
4
Thus, Applicant submits that the goods
associated with the Registered Mark, and the
goods of the Applicant, are unrelated. ....

We agree with the Examining Attorney, however, that the
goods at issue are related to the extent that, if marketed under
the same or similar marks, confusion would be likely to occur as
to their source or sponsorship. As the Examining Attorney
correctly points out in each of his briefs, it is well settled
that goods need not be identical or even competitive in nature in
order to support a finding of likelihood of confusion. Instead,
it is sufficient that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same entity or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Thus, as the
Examining Attorney also properly notes:
The fact that the goods of the parties
differ is not controlling in determining
likelihood of confusion. The issue is not
likelihood of confusion between particular
goods, but likelihood of confusion as to the
source of those goods. In re Shell Oil Co.,
992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690
(Fed. Cir. 1993), and cases cited therein.

Here, the Examining Attorney asserts that "the evidence
submitted with the final refusal shows that both the goods of the
applicant and the goods of the registrant ... are often made by
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
5
the same manufacturers and sold under the same mark."7
Specifically, the Examining Attorney refers to "copies of
printouts from the USPTO X-Search database, which show third-
party registrations of marks used in connection with the same or
similar goods ... as those of applicant and registrant ...."
According to the Examining Attorney, "[t]hese printouts have
probative value to the extent that they serve to suggest that the
goods ... listed therein, namely knife sheaths and hand tools,
are of a kind that may emanate from a single source." The
Examining Attorney contends, furthermore, that such "evidence
shows [that] manufacturers often make knifes, knife sheaths,

7 Applicant, in its reply brief, characterizes the Examining Attorney's
evidentiary submission as a showing which "seeks to expand his
argument that the goods are 'related' by reference to a large number
of indiscriminately assembled computer printouts from a data base
search (collectively, 'Printouts')." In particular, applicant states
that it "rejects the implication either that any inductive leap
germane to the issues before the Board may be presumed from the
Printouts, or that the Printouts either individually or collectively
may be considered as evidence in this proceeding" for the reasons,
among other things, that "[t]he Printouts ... do not comply with the
Trademark Manual of Examining Procedure ('TMEP'), §710.01 et seq.," in
that they "do not indicate the specific search conducted; do not
indicate all libraries or files searched; do not indicate in narrative
form the results of the search; do not indicate if the Examining
Attorney reviewed all search results; and give no indication if all
results of the search are included for the Board's review."
Applicant's criticisms, however, which are obviously taken from the
requirements for presenting "Evidence From Research Database[s]" as
set forth in TMEP §710.01(a), are without merit inasmuch as the
Examining Attorney, with the exception of copies of definitions of
"sheath" from two electronic dictionaries, has not otherwise relied
upon evidence from a research database and the information made of
record from the two dictionary sources sufficiently complies with the
provisions of TMEP §710.01(a). The Examining Attorney, instead,
primarily relies upon copies of third-party registrations, taken from
Office records, and various Internet excerpts, all of which
respectively comply with the guidelines set forth in TMEP §710.01(b)
("Internet Evidence") and TMEP §710.03 ("Evidence of Third-Party
Registrations"). In addition, it should be noted that it is simply
not the case that the Examining Attorney has burdened the record with
"an undifferentiated mass of accumulated Printouts," as charged by
applicant in its reply brief.

Ser. Nos. 76586402, 76586403, 76586404 and 76586405
6
sheaths for tools and hand tools such as pliers, screwdrivers and
hammers and market them using the same trademark." In view
thereof, the Examining Attorney maintains that "a consumer buying
a knife and/or a knife sheath ... could reasonably presume [that]
the same manufacturer also made screwdrivers, pliers and sheaths
for said products."
Moreover, the Examining Attorney observes that "the MSN
Encarta dictionary definition of sheath, attached to the final
refusal, defines the term as a 'close fitting covering; a
covering or case that fits closely around something in the way
that a sheath covers a blade'." Similarly, we note, that while
not mentioned by the Examining Attorney, the record also contains
a definition from the Wordsmyth dictionary which lists such term
in relevant part as meaning "1. a tight[-]fitting case for the
blade of a sword, knife or the like" and "2. any of various
similar coverings." In consequence thereof, the Examining
Attorney argues that "sheaths are not merely made for knives,
[but that] they are also made for other goods such as hand tools,
[like] the registrant's goods." Additionally, with respect to
"the Internet evidence included in the ... final refusal," the
Examining Attorney urges that such evidence "clearly shows that
knife sheaths are often sold for and in combination with the
registrant's goods." In particular, the Examining Attorney
points to an "advertisement from 'The Tool Peddler'" in arguing
that:
[T]his piece of evidence, as well as the
related evidence [noted below], is important
to show that the applicant's goods, "knife
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
7
sheaths," are often sold in combination with
and made for the registrant['s] goods. For
example, the combination "TOOL/UTILITY KNIFE
SHEATH #449" is specifically made for knives
and pliers, [the latter being] one of the
registrant's goods. .... Further evidence
such as the search of "THE OLD HOUSE WEB" and
"SEARS" websites show[s] that sheaths are not
only made for knives, they are also made for
and sold in combination with hand tools, such
as screwdrivers, spanners and pliers. ....
The evidence taken as a whole clearly shows
sheaths, both knife sheaths and tool sheaths,
are closely related to the registrant's hand
tools.

Although applicant, in reply, insists that "the
Examining Attorney directs our attention to not a single example
among the voluminous Printouts in which a manufacturer who makes
knives also uses the same trademark for sheaths--more than likely
because the world at large would consider sheaths not to be
'tools' under International classification 008" (underlining in
original), the evidence submitted by the Examining Attorney is
sufficient to demonstrate that applicant's knife sheaths are
indeed closely related to registrant's screwdrivers, spanners,
pliers and hammers. Specifically, it is settled that while use-
based third-party registrations are not proof that the different
marks shown therein are in use or that the public is familiar
with them, it nevertheless is the case that such registrations
have some probative value to the extent that they serve to
suggest that the various goods listed therein are of the kinds
which may emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In
re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
8
1988), aff’d as not citable precedent, No. 88-1444 (Fed. Cir.
Nov. 14, 1988).
In this regard, the Examining Attorney has made of
record copies of at least eight use-based third-party
registrations in which, in each instance, a mark is registered in
International Class 8 for products which include, like
applicant's goods on the one hand and registrant's goods on the
other, such pairs of items as: (i) "knives and sheaths" and
"screwdrivers, ... wrenches, ... pliers, ... [and] hammers";8
(ii) "knife sheaths" and "hammers, ... pliers ..., ratchet
wrenches ..., [and] screwdrivers"; (iii) "knife sheaths" and
"screwdriver[s]"; (iv) "knife sheaths" and "hammers ... [and]
screwdrivers"; (v) "knife sheaths" and "screwdrivers" ... [and]
pliers"; (vi) "sheaths for knives" and "pliers ... [and]
screwdrivers"; (vii) "rigging knife and leather sheath[s]" and
"wrenches, ... pliers, ... [and] hammer[s]"; and (viii) "[knife]
sheaths" and "pliers." Here, the registrations introduced by the
Examining Attorney serve to confirm the obvious, namely, that
knives and accessories therefor, including utility knives and
their sheaths for use in construction, remodeling and/or hobbyist

8 We judicially notice, in this regard, that a "wrench" is also known
as a "spanner." See, e.g., The American Heritage Dictionary of the
English Language (4th ed. 2000), which at 1666 defines "spanner" in
relevant part as a noun meaning "1. A wrench having a hook, hole, or
pin at the end for meshing with a related device or another object.
2. Chiefly British A wrench." It is settled that the Board may
properly take judicial notice of dictionary definitions. See, e.g.,
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97
USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills,
Inc. v. American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).

Ser. Nos. 76586402, 76586403, 76586404 and 76586405
9
activities, are often available from the same source that makes
or provides such hand tools as screwdrivers, pliers, hammers, and
wrenches or spanners.
Moreover, as the Internet evidence introduced by the
Examining Attorney makes clear, some knife sheaths can in fact
also be used to hold narrow tools other than a utility knife,
such as a pair of pliers or even a screwdriver, wrench or hammer.
For instance, the "Tool/Utility Knife Sheath #449" mentioned by
the Examining Attorney and available from "The Tool Peddler" at
http://www.toolpeddler.com, is touted for such features as:
"Holds knives and narrow tools." Applicant, in this regard, even
admits that its knife sheaths, while not hand tools, are
nevertheless "holders for tools." Furthermore, the Internet
excerpts make plain that knife sheaths, like the knives which
they are designed to fit, are often sold through the same
channels of trade as such hand tools as screwdrivers, wrenches
(or spanners), pliers and/or hammers, namely, hardware stores
(e.g., "Aubuchon Hardware" and "Ace Hardware") and other tool
retailers (e.g., "Northern Tool & Equipment Catalog Co."),
including department stores (e.g., "Sears"). Accordingly, while
applicant's knife sheaths are not themselves hand tools like
knives are, because such sheaths are nonetheless a commonly
available accessory for knives, they are closely related in a
commercial sense to other everyday hand tools like registrant's
screwdrivers, spanners, pliers and hammers and would be purchased
by the same classes of consumers through identical channels of
trade. If, therefore, applicant's and registrant's goods were to
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
10
be sold under the same or similar marks, confusion as to the
origin or affiliation thereof would be likely to occur.
Turning to consideration of the marks at issue,
applicant argues that when considered in their entireties, each
of its marks is so dissimilar from registrant's mark in
appearance, sound, connotation and commercial impression as to
preclude any likelihood of confusion. Applicant contends, in
particular, that unlike registrant's "MERLIN TOOL" mark, none of
its marks contains the word "TOOL." Moreover, while not offering
any specific discussion in its main briefs as to the additional
differences in either its "MERLIN I" mark or its "MERLIN II" mark
when compared to registrant's mark, applicant notes in its reply
briefs that such marks, unlike registrant's mark, feature Roman
numerals. As to its other marks, applicant asserts in its main
briefs that, in light of the phrase "SPORT & WORK" in its "MERLIN
SPORT & WORK" mark and the word "PROFESSIONAL" in its "MERLIN
PROFESSIONAL" mark, "[i]t seems evident that the meaning and
connotation of the word components of the two marks are
different" in each instance from registrant's mark.
We concur with the Examining Attorney, however, that
despite the differences pointed out by applicant, the marks at
issue are sufficiently similar, especially in terms of overall
commercial impression, as to be likely to cause confusion. In
particular, as he properly notes in his briefs, a side-by-side
comparison of the respective marks is not the proper test to be
used in determining the issue of likelihood of confusion inasmuch
as it is not the ordinary way that customers will be exposed to
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
11
the marks. Instead, it is the similarity of the general overall
commercial impression engendered by the marks which must
determine, due to the fallibility of memory and the concomitant
lack of perfect recall, whether confusion as to source or
sponsorship is likely. The proper emphasis is accordingly on the
recollection of the average purchaser, who normally retains a
general rather than a specific impression of marks. See, e.g.,
Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477 F.2d 586,
177 USPQ 573, 574 (CCPA 1973); Envirotech Corp. v. Solaron Corp.,
211 USPQ 724, 733 (TTAB 1981); and Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Moreover, the Examining Attorney is also correct that
while the marks at issue must be considered in their entireties,
including any generic or descriptive matter therein, our
principal reviewing court has indicated that, in articulating
reasons for reaching a conclusion on 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, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"that a particular feature is descriptive or generic with respect
to the involved goods ... is one commonly accepted rationale for
giving less weight to a portion of a mark ...." Id.
With the above principles in mind, we agree with the
Examining Attorney that, when considered in their entireties, the
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
12
dominant and distinguishing portion of the marks at issue is the
term "MERLIN." Clearly, as the Examining Attorney observes, the
word "TOOL" in registrant's "MERLIN TOOL" mark is generic for its
hand tools, as confirmed by the disclaimer of such word, and thus
has essentially no source-indicative significance. Similarly, as
the Examining Attorney also notes, the phrase "SPORT & WORK" in
applicant's "MERLIN SPORT & WORK" mark as well as the word
"PROFESSIONAL" in its "MERLIN PROFESSIONAL" mark are descriptive
with respect to applicant's knife sheaths, as evidenced by the
disclaimers thereof, and consequently have little source-
distinguishing significance. In a similar vein, consumers are
likely to regard the Roman numerals in applicant's "MERLIN I"
mark and its "MERLIN II" mark merely as model or grade
designations for its knife sheaths, much like they would view the
descriptive terms "SPORT & WORK" and "PROFESSIONAL" in its other
"MERLIN"-based marks as designating the uses and/or applications
for its goods, and thus would not attribute much in the way of
source-distinguishing significance to the presence of either the
Roman numeral "I" or "II."
Accordingly, notwithstanding the differences between
applicant's marks and registrant's mark in overall appearance,
sound and connotation, the Examining Attorney convincingly notes
in each of his briefs that: "The term MERLIN, the dominant term
in each of the marks, is what is impressed upon the consumer as
the source identifier," with the differences therein, in each
instance, serving to "add little if anything to the overall
commercial impression of a mark." Because, in each case, the
Ser. Nos. 76586402, 76586403, 76586404 and 76586405
13
"dominant portion of the applicant's mark ... is identical to the
dominant portion of the registrant's mark[,] ... confusion [is]
likely."
We therefore conclude that consumers and prospective
customers who are familiar or acquainted with registrant's
"MERLIN TOOL" mark for "hand tools, namely screwdrivers,
spanners, pliers, and hammers," would be likely to believe, upon
encountering applicant's similar "MERLIN I," "MERLIN SPORT &
WORK," "MERLIN II" and "MERLIN PROFESSIONAL" marks for, in each
instance, "knife sheaths," that such closely related goods
emanate from, or are sponsored by or associated with, the same
source.
Decision: The refusals under Section 2(d) are affirmed
as to each application.