Trumpf GmbH + Co. KG

Trademark Trial and Appeal Board

Aug 18, 2008

No. 79021358 (T.T.A.B. Aug. 18, 2008)

Hearing: August 12, 2008 Mailed: August 18, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trumpf GmbH + Co. KG
________

Serial No. 79021358
_______

Peter L. Costas of Pepe & Hazard LLP for Trumpf GmbH + Co.
KG.

Daniel S. Brody, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Hohein, Cataldo and Ritchie de Larena,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Trumpf GmbH + Co. KG
to register the mark TRUWELD in standard character form on
the Principal Register for the following goods, as amended:
“industrial machine tools for welding workpieces using a
laser beam” in International Class 7 and “lasers, not for
medical purposes, in particular for the welding and
treatment of workpieces” in International Class 9.1

1 Application Serial No. 79021358 was filed on October 25, 2005,
based upon applicant’s request for extension of protection under
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 79021358
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used in connection with
its goods, so resembles the mark TRU-WELD, previously
registered on the Principal Register in typed or standard
character form for “fastening devices including welding
studs and shear connectors” in International Class 6,2 as to
be likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted briefs in
the issue under appeal.
Applicant argues that, based upon a comparison of its
goods and those of registrant, “there is no overlap and no
competition” between them (brief, p. 8). Applicant further
argues that the “purchasers of the goods of the prior
registrant and of those of Applicant are discerning and
discriminating buyers who would recognize that the
respective goods come from different sources” (brief, p.
9). Applicant argues that, as a result, purchasers of its

Section 66(a) of the Act. Services in International Classes 37,
40 and 42, originally recited in this application but not subject
to the refusal to register at issue in this appeal, were divided
into a “child” application that subsequently matured into
Registration No. 3265403.

2 Registration No. 0734796 issued on July 24, 1962. Section 8
and 15 affidavits accepted and acknowledged. Second renewal.

Ser No. 79021358
3
goods will not be confused by “the prior registrant’s usage
for fastening devices including welding studs and shear
connectors” (brief, p. 5). In support of its position,
applicant has made of record photographs of its goods;
copies of informational literature concerning the goods of
registrant; and information regarding registrant and its
goods taken from Internet web sites.
The examining attorney argues that applicant’s mark is
nearly identical to the mark in the cited registration.
The examining attorney further argues that applicant’s
goods are related to those of registrant and move in
related trade channels. In support of the refusal to
register, the examining attorney has made of record
information concerning applicant’s and registrant’s types
of goods taken from Internet web sites.
Procedural History
On March 25, 2008, the Board issued a final decision
on this matter, affirming the examining attorney’s refusal
to register under Trademark Act Section 2(d). On March 26,
2008, applicant filed a motion requesting reconsideration
of that decision on the ground that on November 26, 2007,
it timely filed a request for oral hearing in this matter.
While the Trademark Trial and Appeal Board apparently did
not receive applicant’s request for an oral hearing,
Ser No. 79021358
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evidence submitted with applicant’s motion for
reconsideration supported a finding that such a request was
in fact timely filed. Accordingly, on April 15, 2008, the
Board issued an order vacating our March 25, 2008 decision
in this proceeding. Subsequently, on August 12, 2008,
applicant and the examining attorney presented arguments at
an oral hearing on the issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).

Ser No. 79021358
5
The Marks
We first consider the similarity of the marks. In
this case, applicant’s mark, TRUWELD, is nearly identical
to the cited mark, TRU-WELD, in appearance. The only
difference between the marks is the presence of a hyphen
between the terms “TRU” and “WELD” in registrant’s mark.
The mere presence of this hyphen between the syllables
comprising registrant’s mark creates a minimal difference
in the appearance of the marks which are otherwise
identical. Furthermore, the hyphen in registrant’s mark
does not create any difference between it and applicant’s
mark as to sound. It is well settled that there “is no
correct pronunciation of a trademark, and it obviously is
not possible for a trademark owner to control how
purchasers will vocalize its mark.” Centraz Industries
Inc. v. Spartan Chemical Co., 77 USPQ2d 1698, 1701 (TTAB
2006). However, there is no logical reason, and certainly
no evidence, that consumers would vocalize the hyphen in
registrant’s mark. Thus, applicant’s mark is identical in
sound to that of registrant. In addition, both marks
connote the same meaning that the goods identified thereby
will provide a “true weld.” As a result of the foregoing,
the marks convey nearly identical commercial impressions.
Ser No. 79021358
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Finally, we note that applicant “concedes that the marks
are nearly identical” (brief, p. 8).
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
The Goods
We turn now to our consideration of the identified
goods, noting that it is not necessary that the goods at
issue 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 instead that the
respective goods 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. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s goods are industrial machine
tools and lasers used for welding workpieces. Applicant
explains that its goods “are utilized in factories and may
be used for processing large sheet metal workpieces”
(brief, p. 6). Registrant’s goods are “fastening devices
including welding studs and shear connectors.” Applicant
Ser No. 79021358
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has made of record the following information from
registrant’s Internet web site:
Since 1959 TRU-WELD has been an industry leader
of weld stud sales and manufacturing. TRU-WELD
manufactures weld stud fasteners for a vast
variety of applications. From the small everyday
handheld tool or yard machinery to automobiles,
aircrafts, bridges, ocean liners & steel
structure buildings to military vehicles, weld
studs are all around us in our everyday lives.
(www.truweldstudwelding.com)

In addition, the examining attorney has submitted evidence
from informational and commercial Internet web sites
suggesting that both applicant’s and registrant’s types of
goods may be used for the same applications. The following
samples are illustrative (emphasis added):
Noble International Ltd. is North America’s
largest laser welder. We provide laser-welded
flat blanks (LWFB) and laser-welded tubular
products (LWT) to the North American automotive
industry. We provide automakers with higher-
technology, high-value products that offer
numerous advantages over traditional methods of
automotive body construction….
(www.nobleintl.com/business.asp);

At present, the automotive sector contributes to
over half of the total demand for laser welding
equipment in Europe. In an industry requiring an
extensive amount of metal joining for the average
unit of output, laser welding offers ease of
automation, high welding speeds and better
quality of welds – all of which help in reducing
the average cost of production….
Apart from the automotive industry, heavy and
light industrial manufacturing industries also
currently generate sizeable demand and, in
Ser No. 79021358
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combination, account for just under one-third of
the total demand….
(www.automotive.com/features/90/auto-
news/20885/index);

The General Motors Worldwide (GMW) standards
contains more than 65 documents and provides
information that dealers, repair shops, and
suppliers will find useful when repairing GM
vehicles or supplying products and service to GM
locations. The Engineering Fasteners collection
of GMW standards covers such topics as:
mechanical properties and material requirements,
weld nuts, hexagon nuts, speed nuts, tie straps,
weld studs, hexalobuler screw, prevailing torque,
gaging, hexalobuler bolts, hexagon screws and
washer assemblies.
(http://auto.his.com/collections/gmw/egm90.htm);

Virtually all automotive manufacturers worldwide
use fasteners and automatic feed or high-speed
robotic stud welding systems. Nelson offers a
broad range of stud fasteners and both digital
and analog based stud welding equipment to OEMs
around the globe….Some of the more common uses
include: Studs used for vehicle accessory
components….
(www.nelsonstud.com);

Arc Stud Welding Applications
Because a weld produced by the Arc stud welding
process offers such benefits as high structural
integrity, excellent productivity, leak
resistance, corrosion resistance, minimized noise
and vibration, and many other benefits, it has
found extensive use in a wide range of
applications, including:
Composite construction – Shear connectors can be
welded through metal decking or directly to the
beam or girder in commercial building or highway
bridges. The shear connector transfers the
horizontal shear from the slab to the beam
allowing a reduction in steel.
Ser No. 79021358
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Power Generators – Boiler tubes may be studded
when new or restudded when generators are down
for general repair. The weld studs, normally 3/8
x 3/4” long are used for heat exchange, secure
refractory material, and for increasing tube
life.
Ship building – Arc stud welding is used to
secure wire bundles or hydraulic lines to the
overhead or bulkhead. Also, used for the
strongback application of lining up exterior
steel plates.
(www.weldstud.com/ws.arc.apps);

Welding Machines
Welding machines and joining machines encompass
those devices that are used for numerous joining
processes. These processes include:
Arc welding (MIG, TIG, tick, submerged arc)
Resistance welding
Laser welding
Electron beam welding
Stud welding….
(www.RodOvens.com); and

Laser welding is a new technology which uses a
laser beam to melt and join the work-piece.
Although the feasibility of laser welding has
been proven, cost has prevented its commercial
application to date. The potential for
efficient, high-quality welding may make laser
welding an important technique for shipbuilding
in the future.
Stud welding is a form of electric arc welding in
which the stud itself is the electrode…Stud
welding is a semi-automatic process commonly used
in shipbuilding to facilitate installation of
non-metallic materials, such as insulation, to
steel surfaces….
(www.ilo.org/encyclopedia).

The foregoing evidence suggests that applicant’s
machine tools using a laser beam for welding and its lasers
Ser No. 79021358
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for welding may be used in the same industries, e.g., the
automotive, industrial manufacturing, and shipbuilding
industries, as registrant’s weld studs. In other words,
registrant’s goods may be found as components of welded
vehicles and equipment that are manufactured in part using
applicant’s goods. As a result, applicant’s goods clearly
are related to those of registrant, and this du Pont factor
also favors a finding of likelihood of confusion.
Channels of Trade
We are not persuaded by applicant’s arguments that its
goods travel in channels of trade that are separate and
distinct from those in which registrant’s goods may be
encountered. It is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
Ser No. 79021358
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sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) As identified, neither
applicant’s nor registrant’s goods contain any limitations
as to trade channels or intended consumers. Accordingly,
both applicant’s and registrant’s goods are presumed to
move in all normal channels of trade and be available to
all classes of potential consumers, including consumers of
each other’s goods. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981).
Conditions of Sale
The final du Pont factor discussed by applicant is
that of the conditions of sale. Applicant asserts that its
goods would be purchased only by careful and sophisticated
users. In that regard, the evidence of record excerpted
above suggests that at least applicant’s goods are
expensive and of the sort that are likely to be purchased
after careful consideration by sophisticated consumers.
However, even in instances of sales of the respective goods
to highly sophisticated purchasers, it is still the case
that the above evidence suggests that both applicant’s and
registrant’s goods are of a type which may be used in the
Ser No. 79021358
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manufacture of the same goods. Prospective purchasers,
therefore, may mistakenly believe that these goods could
emanate from the same source. In addition, even if some
degree of care may be exhibited in making the purchasing
decision, the marks TRUWELD and TRU-WELD are so similar
that even careful and discriminating purchasers are likely
to assume that the marks identify goods emanating from a
single source. Finally, it is settled that even
sophisticated purchasers are not necessarily knowledgeable
in the field of trademarks or immune from source confusion.
See In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. Moreover, to the extent
that any of the points raised by applicant raise a doubt
about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed.