Tri Tool Inc.

Trademark Trial and Appeal Board

May 14, 2003

No. 76069635 (T.T.A.B. May. 14, 2003)

Hearing: Mailed: May 14, 2003
March 20, 2003 Paper No. 18
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Tri Tool Inc.
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Serial No. 76/069,635
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Thomas J. Moore of Bacon & Thomas, PLLC for Tri Tool Inc.
Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Tri Tool Inc. (“applicant”), a Nevada corporation, has
appealed from the final refusal of the Trademark Examining
Attorney to register the mark TUBE MASTER (“TUBE”
disclaimed) for portable pipe and tube end shaping machines
that are sold to commercial customers, and that are used to
prepare the ends of pipes and tubes for welding, and that
cannot be used to bend pipes and tubes, and structural
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76/069,635
2
parts therefor.1 The Examining Attorney has refused
registration under Section 2(d) of the Act, 15 USC
§1052(d), on the basis of Registration No. 1,796,773,
issued October 5, 1993 (Sections 8 and 15 filed) for the
mark TUBEMASTER for tube bending machines. Applicant and
the Examining Attorney have submitted briefs and an oral
hearing was held.
We affirm.
The Examining Attorney argues that the respective
marks are nearly identical, and that this fact weighs
heavily against applicant. With respect to the goods, the
Examining Attorney states that registrant’s identification
of goods does not specify whether its tube bending machines
are portable or not, or if they are used in a plant or on a
job site. The Examining Attorney contends, therefore, that
we must presume that registrant’s identification of goods
encompasses all types of tube bending machines, including
portable ones.
The Examining Attorney has made of record evidence
that companies offer both tube bending and welding services
which would involve, according to the Examining Attorney,
1Application Serial No. 76/069,635, filed June 15, 2000, based upon
an allegation of applicant’s bona fide intention to use the mark
in commerce.
Serial No. 76/069,635
3
tube end shaping and the preparation of pipes and tubes for
welding. Another company offers tube bending, flaring,
welding, rolling, stamping and cutting services. Other
evidence shows tube bending machines, tube end finishing
machines and welding equipment being offered for sale by
the same company. It is the Examining Attorney’s
contention, therefore, that a company using applicant’s
goods to prepare tubes for welding could also use
registrant’s goods to bend those tubes. In other words,
the commercial purchasers of registrant’s tube bending
machines may likely be purchasers of tube end shaping
machines. Also, according to the Examining Attorney, even
though the prospective purchasers may be sophisticated in
nature, this does not mean that they may not be confused in
view of the near identity of the marks. Finally, the
Examining Attorney asks us to resolve any doubt in favor of
the registrant.
Applicant, on the other hand, argues that there is no
likelihood of confusion because the goods are different and
would be sold through different channels of trade to
different sophisticated customers, who would be sensitive
to the importance of selecting the proper machinery. More
particularly, applicant maintains that the purchasers of
registrant’s goods would be manufacturers of non-linear
Serial No. 76/069,635
4
tubes who would not be likely to buy applicant’s portable
tube end shaping machines used to prepare those goods for
welding. That is to say, registrant’s and applicant’s
goods have different purposes and would be sold to
different purchasers. Applicant’s portable machines would
not be used to bend pipes and tubes but rather would be
used to shape pipes and tubes already at a work site.
Applicant’s purchasers would be, according to applicant’s
attorney, companies engaged in welding tubes and would not
be engaged in bending tubes or be interested in purchasing
tube bending machines. Applicant also contends that the
words “TUBE” and “MASTER” are nondistinctive and weak, with
the latter word appearing in over 10,000 registered marks
for many different goods.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I.
du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
Serial No. 76/069,635
5
inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
First, the respective marks are identical in sound and
nearly identical in appearance and commercial impression.
As the Examining Attorney has pointed out, where the marks
are identical or nearly so, the goods need not be as
closely related in order to support a finding of likelihood
of confusion. Also, while the “TUBE” portion of the
registered mark is descriptive and the word “MASTER” may be
widely registered, even weak marks are entitled to
protection against identical or very similar marks for
commercially related goods. In this regard, we note that
the record contains no third-party registrations of marks
containing both of these components, except for the cited
registration.
The respective products may also travel in the same or
similar channels of trade and be sold to the same class of
potential purchasers. Of course, it is not necessary that
the respective goods be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some
Serial No. 76/069,635
6
manner, or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source, or that there is an
association or connection between the sources of the
respective goods. See, for example, In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ2d 910 (TTAB 1978).
Here, the evidence submitted by the Examining Attorney
shows that the goods are related and that they may travel
in the same channels of trade. The evidence shows that
goods similar to registrant’s (tube bending machines) and
applicant’s (tube end finishing machines) may be offered
for sale by the same company. The evidence also shows that
a number of companies offer both tube bending and welding
services. This evidence tends to show that a purchaser in
need of machines for bending tubes may also need machines
for shaping tubes for welding purposes. A purchaser of
applicant’s portable pipe and tube end shaping machines
which uses those machines to prepare pipes and tubes for
Serial No. 76/069,635
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welding who then encounters the nearly identical mark on a
machine which bends tubes is likely to believe that the
same company which made the tube end shaping machine is the
source of the tube bending machine. Conversely, a
purchaser of registrant’s TUBEMASTER tube bending machines
who then encounters applicant’s TUBE MASTER portable tube
shaping machine may well believe that registrant is now
selling such portable machines. Because of the nearly
identical marks, we agree with the Examining Attorney that
even a relatively sophisticated purchaser would be confused
when such similar marks are applied to such closely related
goods.
Decision: The refusal of registration is affirmed.