Woodstream Corporation

Trademark Trial and Appeal Board

Jan 25, 2013

No. 77798045 (T.T.A.B. Jan. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
January 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Woodstream Corporation
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Serial No. 77798045
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Marsha G. Gentner of Jacobson Holman PLLC for Woodstream Corporation.

Susan Leslie DuBois, Trademark Examining Attorney, Law Office 111 (Robert
Lorenzo, Managing Attorney).
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Before Zervas, Kuhlke and Wellington, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Woodstream Corporation, seeks registration on the Principal
Register of the standard character mark QUICK KILL based on allegations of first
use and use in commerce since 1998 under Section 1(a) of the Trademark Act, 15
U.S.C.§ 1051, and a claim of acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f), for goods identified as “mouse traps” in
International Class 21.1

1 Applicant originally filed its application under Section 1(a) only. In response to the
examining attorney’s refusal based on mere descriptiveness under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052, applicant amended to seek registration based on a claim
of acquired distinctiveness, which was ultimately accepted by the examining attorney.
Serial No. 77798045

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Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified
goods, so resembles the registered standard character mark AMDRO QUICK KILL
with “QUICK KILL” disclaimed for “insecticides” in International Class 5,2 as to be
likely to cause confusion, mistake or deception.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out 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 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with the du Pont factor of the similarities and dissimilarities
between applicant’s mark QUICK KILL and registrant’s mark AMDRO QUICK
KILL. We analyze “the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567.
Applicant’s mark QUICK KILL comprises the second disclaimed portion of
registrant’s mark. Without question, AMDRO is the dominant portion of
registrant’s mark. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985) (“[T]here is nothing improper in stating that, for rational reasons,

2 Registration No. 3769150, issued on March 30, 2010.
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more or less weight has been given to a particular feature of a mark ... [and] [t]hat a
particular feature is descriptive or generic with respect to the involved goods or
services is one commonly accepted rationale for giving less weight to a portion of a
mark”). See also Palm Bay, 73 USPQ2d at 1692 (first part of mark more
prominent); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897
(TTAB 1998) (“”it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”).
The examining attorney submitted evidence to demonstrate that AMDRO is a
house mark and argued that the addition of a house mark is more likely to add to
the likelihood of confusion. While it is true that the addition of a house mark may
“only serve to aggravate the likelihood of confusion” where a house mark is added to
an arbitrary mark as in the case of In re Christian Dior, S.A., 225 USPQ 533, 535
(TTAB 1985) (LE CACHET DE DIOR confusingly similar to CACHET), that may
not be the case where the house mark is added to matter that is descriptive or
diluted. As stated in the TMEP § 1207.01(b)(iii) “[a]dditions or deletions to marks
may be sufficient to avoid a likelihood of confusion 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 of diluted.”
Applicant argues that the common matter, QUICK KILL, is sufficiently weak
to allow for registration of its mark based on the difference occasioned by the
addition of the house mark to registrant’s mark and the differences in the goods.
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Applicant places great significance on the disclaimer in the registration going so far
as to state that “the owner of the cited registration expressly has disclaimed any
right to exclude Applicant from using its mark as set forth in the present
application.” App. Br. p. 4. The examining attorney responds that “it is
inappropriate to give the presence or absence of a disclaimer any legal significance.”
E. A. Br. p. 9, quoting National Data, 224 USPQ at 751.
In National Data, the court stated:
The technicality of a disclaimer in National’s application to register its
mark has no legal effect on the issue of likelihood of confusion. ... The
power of the PTO to accept or require disclaimers is discretionary
under the statute ... and its practice over the years has been far from
consistent. Thus, it is inappropriate to give the presence or absence of
a disclaimer any legal significance.
Id.
Applicant distinguishes National Data by explaining that in that case it was
the applicant seeking to disclaim matter whereas here it is registrant that has
disclaimed the common matter QUICK KILL. Applicant essentially argues that
registrant has limited its rights to the term QUICK KILL and thus any use of that
term without something that impacts the AMDRO portion of registrant’s mark
cannot be barred from registration. To the extent applicant is arguing that
registrant’s rights in the disclaimed matter are affected by the disclaimer, this
position is in conflict with Section 6 of the Trademark Act, 15 U.S.C. § 1056 which
reads in pertinent part:
(b) No disclaimer, including those made under subsection (e) of section
1057 of this title, shall prejudice or affect the applicant’s or registrant’s
rights then existing or thereafter arising in the disclaimed matter, or
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his right of registration on another application if the disclaimed matter
be or shall have become distinctive of his goods or services.

Nonetheless, as acknowledged by the examining attorney (E.A. Br. p. 4) a
disclaimer is often considered in a likelihood of confusion analysis to the extent that
it indicates the mere descriptiveness of a term or phrase at the time of registration.
Disclaimed matter is often “less significant in creating the mark’s commercial
impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001).
“Regarding descriptive terms, this court has noted that the ‘descriptive component
of a mark may be given little weight in reaching a conclusion on the likelihood of
confusion.’” Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000), quoting, National Data, 224 USPQ at 752. However, while “a
disclaimed term ... may be given little weight ... it may not be ignored.” M2
Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49
(Fed. Cir. 2006). Thus, the disclaimer in the registration does not preclude analysis
of the registered mark in its entirety. If the applied-for mark is confusingly similar
to registrant’s mark in its entirety “as shown,” then it is confusingly similar
regardless of the presence of a disclaimer in the registration. We consider the
strength of the common matter which affects the scope of protection to be given that
element and the disclaimer adds to the evidence of weakness; however, it does not
allow per se for registration of all other marks that contain in whole or in part
QUICK KILL absent the house mark AMDRO.
In this case, the examining attorney has taken the position that the term
QUICK KILL is highly descriptive and she then required significant evidence to
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accept applicant’s claim of acquired distinctiveness. We agree that the phrase
QUICK KILL is merely descriptive of both applicant’s3 and registrant’s goods, and
we further find that “the public [would] easily distinguish slight differences in the
marks under consideration as well as differences in the goods to which they are
applied, even though the goods of the parties may be considered ‘related.’” King
Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974). Inasmuch as the term QUICK KILL is highly descriptive, we find
that the dissimilarities outweigh the similarities, in particular given the differences
in the goods discussed infra.
We next consider the du Pont factor of the relatedness of the goods, keeping
in mind the very narrow scope of protection to be given the phrase QUICK KILL in
relation to insecticides and mouse traps. We base our evaluation on the goods as
they are identified in the registration and application. Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002). As a general proposition, it is settled that it is not
necessary that the respective goods be identical or even competitive in order to find
that they are related for purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the goods. See In re Rexel Inc.,

3 The fact that applicant has now established acquired distinctiveness does not affect our
comparison of the marks or the scope of protection to be given that portion of registrant’s
mark. While this may present the issue of reverse confusion, we have taken that into
consideration in our analysis.
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223 USPQ 830 (TTAB 1984). However, the narrower the scope of protection, the
closer the goods must be to find likely confusion. King Candy, 182 USPQ at 110.
See also In re Hunke & Jocheim, 185 USPQ 188 (TTAB 1975) ([I]t is well
established that the scope of protection afforded a merely descriptive or even a
highly suggestive term is less than that accorded an arbitrary or coined mark. That
is, terms falling within the former category have been generally categorized as
‘weak’ marks, and the scope of protection extended to these marks has been limited
to the substantially identical notation and/or to the subsequent use and registration
thereof for substantially similar goods.”)
The examining attorney argues that the goods are related and has submitted
several third-party use-based registrations that include both insecticides and rodent
traps in support of her position. See Office Actions (November 9, 2009 and July 1,
2011) Reg. No. 2902699 for the mark ZEP COMMERCIAL for, inter alia,
insecticides for the killing of ants, roaches, wasps, hornets etc. and rat and mouse
traps; Reg. No. 3445201 (owned by applicant) for the mark W WOODSTREAM for,
inter alia, insecticides and mouse traps; Reg. Nos. 1945137 and 2289011 for the
mark D-CON for respectively insecticides and rodent traps; and Reg. No. 2809905
(owned by applicant) for the mark VICTOR for, inter alia, insecticides and rodent
traps. In addition, she submitted a few printouts from third-party websites
offering both mouse traps and insecticides for sale. See Office Action (May 28,
2010) www.get-revenge.us; and Office Action (July 1, 2011) www.pestmall.com.
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While the goods are clearly related to the extent that both fall under the
general category of pest control (see Office Action (July 1, 2011) pestworld.org) and
there is some evidence of such goods being offered by a single source (including
applicant), at least, under a house mark, if not the same product mark, the goods
are different, one being a chemical the other being a mechanical trap, and serve
different purposes, one kills insects the other mice. Thus, these goods are not
legally identical.
With regard to the channels of trade, there are no limitations in the
identifications of the application and cited registration, and the examining attorney
has demonstrated that these goods are offered in the same channels of trade to the
same classes of customers.
As we balance the du Pont factors we must consider the scope of protection to
be accorded registrant’s mark. Given the extreme weakness of the phrase QUICK
KILL, that portion of the registrant’s mark, which is disclaimed apart from the
mark, is not entitled to a broad scope of protection and this weighs heavily in our
determination. It is well established that even weak marks are entitled to
protection. King Candy, 182 USPQ 108, 109 (CCPA 1974). However, where the
common element is very weak, even small differences in the marks and/or the goods
may suffice to dispel likely confusion. Id. We find that the addition of the
registrant’s house mark AMDRO coupled with the differences in the goods is
sufficient to permit potential purchasers to distinguish source. Compare King
Candy, 182 USPQ 108 (KING’S for candy not likely to cause confusion with MISS
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KING’S for cakes) and In re Shawnee Milling Co., 225 USPQ 747, 749 (TTAB 1985)
(GOLDEN CRUST for flour not likely to cause confusion with ADOLPH’S GOLD’N
CRUST and design (with GOLD’N CRUST disclaimed) for coating and seasoning for
food items) with In re Dennison Manufacturing Company, 229 USPQ 141, (GLUE
STIC likely to cause confusion with UHU GLU STIC where goods are legally
identical because registrant’s “adhesives for paper and stationery” encompass
applicant’s “general purpose adhesive in stick form”). In view thereof, we determine
that confusion is not likely between applicant’s mark QUICK KILL and the mark
AMDRO QUICK KILL in the cited registration.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is reversed.