Univar USA Inc.

Trademark Trial and Appeal Board

Dec 17, 2004

No. 76159040 (T.T.A.B. Dec. 17, 2004)

Mailed:
December 17, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Univar USA Inc.1
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Serial No. 76159040
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KiSong Kim Lang-Caditz of Christensen O'Connor Johnson
Kindness PLLC for Univar USA Inc.
Jeffrey S. DeFord, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).2
_______
Before Hairston, Holtzman and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Univar USA Inc. has applied to register KONTROL as a
mark on the Principal Register for goods identified as
pesticides, for domestic, industrial and agricultural use.
The application is based on applicant's allegation of its
1 After filing the application, applicant twice recorded changes
of its name in the USPTO assignment branch. By the first, its
name was changed from Van Waters & Rogers Inc. to Vopak USA Inc.;
by the second, its name was changed from Vopak USA Inc. to Univar
USA Inc.
2 Jennifer K. Elsea issued the first office action.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76159040
2
intention to use the mark in commerce on or in connection
with the identified goods.
The examining attorney refused registration, under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in
view of the prior registration of the mark CONTROL and
design (set forth below) for "insecticides for domestic
use"3 and the prior registration of PRO-CONTROL (in typed
form) for "insecticide for domestic, commercial,
agricultural and industrial use."4 Each of these cited
marks is registered on the Principal Register.
When the refusal of registration under Section 2(d)
was made final, applicant appealed. Applicant and the
examining attorney have filed briefs, but applicant did not
request an opportunity to present oral arguments.
We analyze the issue of likelihood of confusion using
the factors that were articulated by one of our primary
reviewing court’s predecessors, the Court of Customs and
3 Registration No. 2042589 issued March 11, 1997 and lists
January 3, 1994 as the date of first use of the mark and first
use of the mark in commerce.
4 Registration No. 1693958 issued June 16, 1992 and lists April
22, 1991 as the date of first use of the mark and first use of
the mark in commerce.
Ser No. 76159040
3
Patent Appeals, in the case of In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA
1973). See also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods and
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 services] and differences in the marks”).
With the initial office action refusing registration,
the examining attorney included reprints of information on
six registrations, retrieved from the USPTO trademark
search system. Each shows a single mark registered for
both pesticides (applicant's goods) and insecticides (the
goods in the two cited registrations). Third-party
registrations which individually cover a number of
different items and which are based on use in commerce
serve to suggest that the listed goods are of a type that
may emanate from a single source. See In re Albert Trostel
& Sons Co., 29 USPQ2d 1783 (TTAB 1993), and In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Ser No. 76159040
4
Moreover, applicant has not, in either its main brief or
its reply brief, argued that the involved goods, classes of
consumers, or channels of trade are significantly
different. Accordingly, we view applicant as having
conceded the similarity of goods, classes of consumers and
channels of trade.
The examining attorney also views applicant as having
conceded these likelihood of confusion factors and his
arguments in support of the refusal focus on the similarity
of applicant's mark and those of the cited registrations.
Applicant argues that the examining attorney erred by
focusing exclusively on the involved marks and by failing
to accord significant weight to evidence applicant offered
about other registered marks, for the same or related goods
or services, that also include the word "control."
Applicant argues that this du Pont factor, the number and
nature of similar marks in use on similar goods, is
particularly significant in this case.
Our consideration of the similarity of applicant's
mark and those in the cited registrations will be provided
added context by first reviewing the other marks which
applicant asserts must be considered. These are marks
registered for insecticides or pesticides, equipment for
applying such products, or various pest control services;
Ser No. 76159040
5
one is registered for a magazine focusing on the pest
control industry; and another is for "chemicals, namely
stickers and drift control agents for pesticides."5 The
marks are:
CAMICIDE HOME PEST CONTROL and design (HOME PEST
CONTROL is disclaimed);
BIRTH CONTROL FOR ROACHES;
GLOBAL SOLUTIONS FOR MOSQUITO CONTROL (MOSQUITO
CONTROL is disclaimed);
PCT PEST CONTROL TECHNOLOGY (claim of acquired
distinctiveness under Section 2(f) of the Trademark
Act, as to PEST CONTROL TECHNOLOGY);6
ACTION PEST CONTROL and design (PEST CONTROL is
disclaimed);
VIKING TERMITE AND PEST CONTROL and design (TERMITE
AND PEST CONTROL is disclaimed);
HOME SAVING TERMITE CONTROL, INC. and design (TERMITE
CONTROL, INC. is disclaimed);
EARTH TOUCH ORGANIC PEST CONTROL and design (ORGANIC
PEST CONTROL is disclaimed); and
POLY CONTROL (CONTROL is disclaimed).7
It appears clear that in six of the seven
registrations that include a disclaimer, and in the one
5 The record does not reveal whether these chemicals are "for
[manufacture of] pesticides," or "for [use during application of]
pesticides," or related to pesticides in some other manner.
6 This is the mark registered for a magazine focusing on the pest
control industry.
7 This is the mark registered for "chemicals… for pesticides."
Ser No. 76159040
6
registration that includes a claim of acquired
distinctiveness, the particular phrase covered by the
disclaimer or the claim of acquired distinctiveness is a
descriptive, or generic, indicator of the type of business
in which the goods are used, or the services provided. In
essence, these seven marks all contain within their words
an unmistakable reference to the pest control industry (or
a business focused on controlling a particular pest, e.g.,
mosquitoes or termites). The two exceptions to this
pattern, among the nine registrations, are the marks BIRTH
CONTROL FOR ROACHES and POLY CONTROL. The former mark,
although registered for "insecticide" and clearly then a
mark for a product used for pest control, does not utilize
the word "control" to reference that field but, rather, to
reference contraception; and the latter mark, is registered
for chemicals, one of which is a "drift control agent" and
so "control" describes an attribute of the product and is
not a reference to the pest control industry.
The examining attorney essentially contends that while
phrases such as "pest control" or "termite control" or
"mosquito control" are clearly descriptive or generic and
weak, these registered marks cannot be considered as
evidence that the word "control," when used without "pest"
or "termite" or "mosquito," as in the cited marks CONTROL
Ser No. 76159040
7
and design and PRO-CONTROL, is weak and entitled to only a
limited scope of protection. Instead, the examining
attorney asserts, when "control" is used in the manner that
it is used in the two cited marks (or, for that matter, in
the way that applicant has), it must be considered an
element of a strong, distinctive mark. Brief, pp. 6 & 7.
Thus, the examining attorney draws a bright line between,
on the one hand, applicant's mark and the two cited marks
("extremely strong") and, on the other hand, the marks in
the nine third-party registrations on which applicant
places great reliance (term "control" used in descriptive
manner).
Applicant appears to agree with the examining attorney
in that applicant considers the use of "control" in the
nine discussed registrations descriptive, but applicant
essentially disagrees with the examining attorney's
conclusion that applicant's mark and the two cited marks
are clearly different and very strong. In short, applicant
does not see the bright line perceived by the examining
attorney and argues that its mark KONTROL, and the cited
marks CONTROL and design and PRO-CONTROL, while not
descriptive, are nonetheless very weak and each is entitled
to a very circumscribed scope of protection.
Ser No. 76159040
8
We find applicant's view somewhat more plausible than
that of the examining attorney. The cited marks, while not
utilizing "control" as part of a phrase such as "pest
control," "termite control" or "mosquito control," are not
arbitrary or fanciful and at best can be considered very
suggestive of products that allow one to control pest
problems.
While we agree with applicant that the cited marks are
a good deal weaker than the examining attorney believes, it
does not follow as a matter of course that each of the
refusals must be reversed. We consider each of the cited
marks separately.
In comparing applicant's mark KONTROL and the cited
mark PRO-CONTROL, we note that these are both typed marks
and, because we must consider that a mark registered in
typed form can be displayed in any reasonable form, we must
consider that they could be displayed in the same or
similar font. Even so, the two marks begin with different
letters and would be pronounced somewhat differently,
because of the presence of PRO- in the cited mark. In
addition, the cited mark has the connotation of a
professional strength product, while applicant's mark does
not. On balance, we find these weak marks limited in their
scope of protection and dissimilar enough that we reverse
Ser No. 76159040
9
the refusal of registration based on the prior registration
of PRO-CONTROL.
On the other hand, we affirm the refusal of
registration insofar as it is based on the prior
registration of the CONTROL and design mark. The font
employed in this mark is not particularly unusual, and
would be a reasonable form of display for applicant's mark.
Applicant's mark and this cited mark would be pronounced
exactly the same, and would have the same suggestive
connotation, i.e., both designate products that allow one
to "control" a pest problem. While the target or bull's
eye design element used in the cited mark is somewhat
distinctive, we do not find it so distinctive that it
dominates the mark; rather the word CONTROL dominates. On
balance, we find applicant's mark and the cited CONTROL and
design mark more similar than dissimilar. Notwithstanding
that the cited mark may be highly suggestive and entitled
to a narrower scope of protection than a more arbitrary or
fanciful mark, it is still entitled to protection against
registration of mark so similar that it would be likely to
cause confusion among consumers. In re Colonial Stores,
216 USPQ 793, 795 (TTAB 1982). See also In re The Clorox
Co., 578 F.2d 305, 198 USPQ 337, 341 (CCPA 1978) (ERASE for
a laundry soil and stain remover held confusingly similar
Ser No. 76159040
10
to STAIN ERASER, registered on the Supplemental Register,
for a stain remover).
Finally, we note that applicant places great reliance
on the co-existence on the register of the CONTROL and
design mark and PRO-CONTROL marks. The question whether
these two marks properly share space on the Principal
Register is a question not before us. We must decide only
whether the presence of either mark precludes adding
applicant's mark to the register, because of a likelihood
of confusion among consumers. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Decision: The refusal of registration under Section
2(d) is reversed as to the cited mark PRO-CONTROL but is
affirmed as to the cited mark CONTROL and design.