Todson, Inc.

Trademark Trial and Appeal Board

Sep 9, 2004

No. 76451248 (T.T.A.B. Sep. 9, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Todson, Inc.
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Serial No. 76451248
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Myron Amer for Todson, Inc.
Elissa Garber Kon, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
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Before Seeherman, Hanak and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Todson, Inc. (applicant) seeks to register in typed
drawing form BRUTE for “bicycle locks.” The intent-to-use
application was filed on September 3, 2002.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to bicycle locks, is
likely to cause confusion with the mark THE BRUTE,
previously registered in typed drawing form for “locks.”
Registration No. 1,039,107.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB Mailed: 9/9/2004
Ser. No. 76451248
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Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the marks, we find that they are
essentially identical. Words such as “the” and “a” have
little source identifying significance. Applicant has
merely taken the clearly dominant portion of the registered
mark (THE BRUTE) and adopted it as its mark. Moreover,
both applicant’s mark and the registered mark are depicted
in typed drawing form. This means that the registration
for THE BRUTE “is not limited to the mark depicted in any
special form,” and hence we are mandated “to visualize what
other forms the mark might appear in.” Phillips Petroleum
Co. v. C.J. Webb Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). Registrant is entirely free to depict the
subordinate word THE on one line in small lettering and the
dominant word BRUTE in much larger lettering on a second
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3
line. When so depicted, registrant’s mark would be
virtually identical to applicant’s mark.
Thus, the first Dupont “factor weighs heavily against
applicant” because applicant’s mark is virtually identical
to the registered mark. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
Turning to a consideration of applicant’s goods and
the goods of the cited registration, we note that because
the marks are virtually identical, their contemporaneous
use can lead to the assumption that there is a common
source “even when [the] goods or services are not
competitive or intrinsically related.” In re Shell Oil
Co., 922 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
However, in this case we find that applicant’s goods and
registrant’s goods are legally identical. Registrant’s
broad description of goods (locks) covers locks of all
types, including applicant’s bicycle locks.
Hence, given the fact that the marks are virtually
identical and the goods are legally identical, confusion is
not only likely, but it is inevitable.
Two final comments are in order. First, applicant
argues at page 2 of its brief that the identification of
goods in the cited registration (locks) “is not specific,
Ser. No. 76451248
4
definite or clear.” Applicant then points to a brochure
put out by registrant which indicates that registrant makes
“high security locks for home, business, industry and
government,” and that these include “safe locks, vault
locks, time locks, and specialty padlocks.” To begin with,
this is but one of registrant’s brochures. We have no way
of knowing whether registrant has other brochures which may
indicate that it manufactures bicycle locks. However, more
importantly, applicant’s argument constitutes an
impermissible attack in an ex parte proceeding upon the
cited registration by attempting to limit its description
of the goods. In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Second, as a corollary argument, applicant argues at
page 3 of its brief that when there is an “improper
identification” of goods in the cited registration, this
Board is free to consider extrinsic evidence (presumably
registrant’s brochure) to determine the meaning of
registrant’s identification of goods (locks). In this
regard, applicant cites the case of In re Trackmobile Inc.,
15 USPQ2d 1152, 1154 (TTAB 1990). Applicant totally
misreads Trackmobile. That case stands for the proposition
that if the cited registration contains terms of art not
readily understood by members of the Board, applicant is
Ser. No. 76451248
5
free to present extrinsic evidence explaining the meaning
of these terms of art. In this case, we have a situation
that is the exact opposite of that in Trackmobile. Here
the description of registrant’s goods is an extremely
common, easily understood term, namely, “locks.”
Decision: The refusal to register is affirmed.