Toyo Tire & Rubber Co., Ltd.

Trademark Trial and Appeal Board

Jul 28, 2003

No. 76313168 (T.T.A.B. Jul. 28, 2003)

Mailed: July 28,2003
Paper No.10
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Toyo Tire & Rubber Co., Ltd.
________
Serial No. 76/313,168
_______
Leigh Ann Lindquist and Gary D. Krugman of Sughrue Mion, PLLC for
Toyo Tire & Rubber Co., Ltd.
John T. Lincoski, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______
Before Simms, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Toyo Tire & Rubber Co., Ltd. has filed an application
to register the mark "NITTO TERRA GRAPPLER" for "tires and inner
tubes for vehicles."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
1 Ser. No. 76/313,168, filed on September 17, 2001, which is based on
an allegation of a bona fide intention to use the mark in commerce.
Among other things, applicant claims ownership of Reg. No. 855,563,
issued on August 27, 1988 and renewed, for the mark "NITTO" for
"vehicle tires and tubes".
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/313,168
2
mark "GRAPPLER," which is registered for "vehicle tires,"2 as to
be likely to cause confusion, or to cause mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
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
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.3 Here, inasmuch as it is
obvious and applicant admits that the respective goods (vehicle
tires) are legally identical products, the focus of our inquiry
is on whether the marks at issue are so similar that their
contemporaneous use would be likely to cause confusion as to the
source or sponsorship of the respective goods.
Applicant argues that, when considered in its entirety,
its mark "is dominated by the NITTO TERRA portion of the mark"
because such portion, being "the first portion of the mark a
purchaser would encounter[,] ... is likely the portion a consumer
2 Reg. No. 966,488, issued on August 21, 1973, which sets forth a date
of first use anywhere and in commerce of February 7, 1972; renewed.
3 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. No. 76/313,168
3
would remember." Applicant further asserts that the word
"GRAPPLER," which is the sole term that its mark has in common
with registrant's mark, "is a relatively weak and highly
suggestive term" because, "[a]s applied to vehicle tires,
GRAPPLER suggests the tire's ability to grip the road and have
good traction." In consequence thereof, applicant insists that
registrant's "GRAPPLER" mark "is a weak mark entitled to a narrow
scope of trademark protection" which does not extend to include
applicant's "NITTO TERRA GRAPPLER" mark. Specifically, applicant
maintains that "the addition of other matter to the term
'GRAPPLER,' such as NITTO TERRA as in applicant's mark, will
distinguish the marks from one another in the minds of the
consuming public."
Applicant also contends that the different numbers of
words and syllables contained in the respective marks "further
distinguishes Applicant's mark from the mark in the cited
registration." Applicant accordingly concludes that, "when
compared side-by-side,"4 such marks "should not be viewed as
confusingly similar" because they "appear different, are
4 It is pointed out, however, that a side-by-side comparison 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 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 to keep in mind 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).
Ser. No. 76/313,168
4
pronounced differently and create separate commercial
impressions."
The Examining Attorney, on the other hand, takes the
position that the marks at issue "are highly similar and create
the same commercial impression." In particular, the Examining
Attorney notes that applicant's mark incorporates registrant's
mark in its entirety and argues that the additional matter in
applicant's mark is not sufficient to preclude a likelihood of
confusion inasmuch as such mark is dominated by the term
"GRAPPLER." The reason therefor, according to the Examining
Attorney, is in part that consumers, as applicant concedes in its
reply brief, would regard the term "NITTO" as a house mark5 and
would view the phrase "TERRA GRAPPLER" in applicant's mark as
identifying "one product under the 'NITTO' umbrella."6 In view
thereof, and citing dictionary definitions of the terms "terra"
and "grappler,"7 the Examining Attorney further contends that
(footnote omitted):
5 Specifically, applicant admits that its mark "includes its well-known
house mark NITTO" and that "NITTO is a well-known registered mark that
consumers recognize."
6 Stated a bit differently, the Examining Attorney urges that "those
viewing the [applicant's] mark are likely to insert a mental pause
between 'NITTO' and 'TERRA GRAPPLER,' in essence reading the mark as
'TERRA GRAPPLER' by 'NITTO.'"
7 Although a definition of the word "grappler" as meaning "grapple" was
made of record with the final refusal, in his brief the Examining
Attorney has requested that the Board take judicial notice of various
definitions of the term "terra." While applicant, in its reply brief,
has objected thereto on the ground that such evidence is technically
untimely under Trademark Rule 2.142(d), the definitions have been
considered inasmuch as 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
Ser. No. 76/313,168
5
While "TERRA GRAPPLER may be meant to be
read together, the term "TERRA" is weak with
regard to the goods. As shown in the
attached definitions, "terra" is the Latin
word for "earth," and it remains in common
usage today either alone or in such phrases
as "terra firma" and "terra incognito." As
such, consumers will readily translate the
term as being equivalent to "earth" when
viewing the mark. "Terra" or "earth" is
weakly suggestive when used with regard to
vehicle tires because [those] goods are meant
to come into contact with [the] earth and
traverse it. The addition of "terra" to the
mark therefore adds little additional
meaning.
"GRAPPLER," on the other hand, is a much
more distinctive term. As a noun, it is
synonymous with a wrestler, a combatant or
one who struggles. Given these meanings, the
term is clearly fanciful with regard to tires
and inner tubes. As such, it carries a much
greater punch than "terra" and dominates the
phrase "TERRA GRAPPLER."
The Examining Attorney also asserts that "applicant's
argument that the term 'GRAPPLER' is weak with regard to the
goods [at issue] is belied by the registrations provided in the
final action," noting that of the seven registrations made of
record which consist of or contain such term, only the cited
registration is for goods in the same field as those of
applicant. Thus, according to the Examining Attorney, "the term
'GRAPPLER' is clearly not diluted with regard to vehicle tires"
and "is highly distinctive and fanciful with regard to the
goods." In consequence thereof, the Examining Attorney maintains
that "the registrant's mark is entitled to a greater degree of
protection than it would be if "GRAPPLER' was a weak mark."
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. No. 76/313,168
6
Based on such considerations, the Examining Attorney
concludes that:
[W]hile the applicant's mark contains
elements not found in the registered mark,
the differences are not sufficient to
preclude a likelihood of confusion. Those
who encounter both the applicant's "NITTO
TERRA GRAPPLER" tires and inner tubes and the
registrant's "GRAPPLER" tires would likely
believe that the "GRAPPLER" tire is part of
the NITTO product line or that the registrant
produced the applicant's goods. While the
marks may share some visual dissimilarities,
they share the same term -- "GRAPPLER -- and
[substantially] the same connotation. In
total, the differences between the marks at
issue, when considered in their entireties,
are not sufficient to preclude the likelihood
that the contemporaneous use of those marks
will result in confusion or mistake or
deception.
We agree with the Examining Attorney's conclusion that
confusion is likely. As set forth in TMEP Section 1207(b)(iii):
It is a general rule that likelihood of
confusion is not avoided between otherwise
confusingly similar marks merely by adding
... a house mark or matter that is
descriptive or suggestive of the named goods
or services. .... See, e.g., ... In re
Apparel Ventures, Inc., 229 USPQ 225 (TTAB
1986) (SPARKS BY SASSAFRAS (stylized) for
clothing held likely to be confused with
SPARKS (stylized) for footwear); ... [and] In
re Riddle, 225 USPQ 630 (TTAB 1985) (RICHARD
PETTY’S ACCU TUNE and design for automotive
service stations held likely to be confused
with ACCUTUNE for automotive testing
equipment).
Exceptions to the above stated general
rule regarding additions ... to marks may
arise if: (1) the marks in their entireties
convey significantly different commercial
impressions, or (2) the matter common to the
marks is not likely to be perceived by
purchasers as distinguishing source because
it is merely descriptive or diluted. ....
Ser. No. 76/313,168
7
In this case, applicant has in essence simply added its
house mark "NITTO" and the suggestive term "TERRA" to
registrant's "GRAPPLER" mark. The mark "NITTO TERRA GRAPPLER,"
however, when considered in its entirety, does not convey such a
significantly different commercial impression from that projected
by registrant's "GRAPPLER" mark that, when used in connection
with vehicle tires, confusion as to the origin or affiliation of
such goods would not be likely. In particular, irrespective of
whether the term "GRAPPLER" is the dominant part of applicant's
mark, it clearly is a significant component thereof which is
neither descriptive of tires for vehicles nor shown to be so
extensively used by others in connection therewith as to be
diluted in terms of its source-indicative capacity.
Moreover, while the relevant definitions of record from
The American Heritage Dictionary of the English Language (3rd ed.
1992) show that the word "grappler" possesses some suggestiveness
when used in connection with vehicle tires inasmuch as it is
defined as noun meaning "1. a. An iron shaft with claws at one
end, usually thrown by a rope and used for grasping and holding
.... 2. The act of grappling," with the term "grappling" in
turn listed as a verb connoting "1. To seize and hold, as with a
grapple. 2. To seize firmly, as with the hands,"8 it is not so
weak that customers for applicant's goods would be unlikely to
perceive the word "GRAPPLER" as a significant source-
8 As mentioned by the Examining Attorney, the word "grappler" also has
a wrestling connotation in that the same dictionary indicates that, as
a noun, such word signifies "3. Sports. a. A contest in which the
participants attempt to clutch or grip each other. b. A grasp or grip
Ser. No. 76/313,168
8
distinguishing element of applicant's "NITTO TERRA GRAPPLER"
mark. Furthermore, the presence of the terms "NITTO" and "TERRA"
does not serve to change or otherwise appreciably alter the
connotation of the word "GRAPPLER" in applicant's mark because,
as the Examining Attorney has pointed out, the term "TERRA" would
be perceived as meaning "earth," which is something that tires
may "grip" or "grasp" to provide traction," while the term
"NITTO" would be regarded, as applicant concedes, as a house mark
for its goods. Consequently, the word "GRAPPLER" in applicant's
mark has essentially the same connotation as does such word when
used as registrant's mark.
We therefore conclude that, due to the shared term
"GRAPPLER," it is the case that the respective marks, when
considered in their entireties, are so substantially similar in
sound, appearance, connotation and general commercial impression
that, when used on legally identical goods, confusion as to
source or sponsorship thereof would be likely. In particular,
customers for vehicle tires who are familiar or acquainted with
registrant's "GRAPPLER" mark are likely to believe, upon
encountering tires for vehicles under applicant's substantially
similar "NITTO TERRA GRAPPLER" mark, that the latter are part of
the same product line as those of the former.
Decision: The refusal under Section 2(d) is affirmed.
in such a contest," while as a verb it denotes "3. To struggle, in or
if in wrestling ...."