Atico Int’l. USA Inc.

Trademark Trial and Appeal Board

Oct 15, 2003

No. 76251522re (T.T.A.B. Oct. 15, 2003)

Mailed: October 15, 2003
Paper No. 11
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Atico International USA Inc.
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Serial No. 76251522
RECONSIDERATION
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Peter T. Cobrin, Oren J. Warshavsky and Clyde A. Shuman of
Cobrin & Gittes for Atico International USA Inc.
Won T. Oh, Trademark Examining Attorney, Law Office 104
(Sidney Moskowitz, Managing Attorney).
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Before Quinn, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Atico International USA Inc. filed an application to
register the mark ALCO on the Principal Register for a
variety of goods in multiple classes.1

1 Serial No. 76251522, filed May 4, 2001, based on an allegation of a
bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76251522 Reconsideration
2
The Trademark Examining Attorney issued a final refusal
to register under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark ALCO, previously registered for “retail
services in connection with variety and discount stores,”
that, if used on or in connection with applicant’s goods, it
would be likely to cause confusion or mistake or to
deceive.2 Additionally, the Examining Attorney issued a
final requirement for amendment to the identification of
goods.
Applicant appealed and, on October 29, 2002, the Board
issued its decision on the appeal. The Board dismissed as
moot the requirement to amend the identification of goods
because applicant, in its reply brief, complied with the
requirement.3 The Board affirmed the refusal under Section
2(d) of the Act.

2 Registration No. 865,520 issued February 25, 1969, to Duckwall-Alco
Stores, Inc., in International Class 35. This registration was renewed
for a period of twenty years from February 25, 1989.
3 Applicant’s goods are identified as follows:
Scissors and utility knives, in International Class 8;
Pocket calculators and protractors, graduated rulers, in
International Class 9;
Photograph albums, appointment pads, stationery boxes,
crayons, desk caddies, desk organizers, drawing compasses,
erasers, memo pads, pens, rubber stamps, score pads, paper
staplers, telephone number and address books, art sets
comprised of color pens, color pencils, crayons, oil
pastels, watercolors pencils, palette, erasers, sharpeners,
rulers, cutter, stapler, tacks, sponge, carrying case with
handle, white water color, markers, brushes, scissors, glue
and paper notepad, binders, book covers, chalk, clip boards,
colored pencils, composition books, copy paper, correcting
fluid for type, correcting tape for type, day planners, dry
Serial No. 76251522 Reconsideration
3
On November 27, 2002, applicant submitted a request for
reconsideration of the Board’s affirmance of the Section
2(d) refusal. In its request for reconsideration, applicant
contends that the Board “made two errors of law: (1) by
failing to review the registrations cited by [applicant];
and (2) by relying on the registrations cited by the
[Examining Attorney].” [Reconsideration Brief p. 5.]
Regarding, first, the registrations cited by applicant,
applicant states the following [Reconsideration Brief p.6]:
The undisputed record evidence demonstrates that
there were third party registrations covering
goods identical to [applicant’s] proposed goods
when the cited registration issued. Though the
fact that the prior registrations are now
abandoned admittedly deprives them of full weight,

erase markers, envelopes, paper expandable files, filler
paper, glue and glue sticks for stationery or household use,
highlighter markers, hole punches, index cards, laser paper,
markers, math sets consisting primarily of pencil
sharpeners, eraser, six-inch ruler, protractor, triangles,
pencil, compass, divider, and mechanical pencil, mechanical
pencils, multipurpose paper, notebooks, paint brushes,
painting sets, vinyl and metal paper clips, paper shredders,
pencil cases, pencil grips, pencil pouches, pencil
sharpeners, pencils, permanent markers, portfolio folders,
push pins, rubber bands, drawing rulers, social stationery,
staple removers, stencils, stick-on notes, stickers,
adhesive tape for stationery for household use, writing
pads, finger paints, in International Class 16;
Tote bags and backpacks, in International Class 18;
Locker accessories, namely, personal organizers, non-metal
locks, picture frames, mirrors, in International Class 20;
Locker accessories, namely, lunch boxes, in International
Class 21;
Artist aprons, in International Class 25; and
Children’s play mats for use in connection with playing,
exercise and sleeping, in International Class 28.

Serial No. 76251522 Reconsideration
4
they nevertheless are relevant when evaluating
likelihood of confusion.
It is simply inexplicable that the prior
registrations were insufficient to preclude the
issuance of the cited registration, while the
cited registration is sufficient to preclude
[applicant’s] application for goods identical to
those claimed in the prior registrations.
The record shows that in its response of January 22,
2002, applicant listed four registrations that applicant
stated had been “expressly abandoned,” and submitted copies
of the letters seeking to “expressly abandon” the
registrations. Applicant alleged that these four
registrations were all owned by the same third party; that
the registrations were all for the mark ALCO for a variety
of goods that are the same as or similar to those listed in
this application; and that these registrations did not block
the issuance of the cited registration.
In the Board’s decision on appeal, we stated [in
footnote no. 7, p. 6], the following with respect to these
four third-party expired registrations:
Each case must be decided on its facts.
Therefore, we can draw no conclusions from
applicant’s allegations regarding the state of the
register or examination in another case.
We find no legal error in this statement or in our
consideration of the four third-party expired registrations.
To the extent that our statement was unclear to applicant,
we note several additional points. First, applicant did not
properly make of record these registrations. In order to
Serial No. 76251522 Reconsideration
5
make these registrations properly of record, soft copies of
the registrations themselves, or the electronic equivalent
thereof, i.e., printouts of the registrations taken from the
electronic records of the Patent and Trademark Office’s
(PTO) own database, should have been submitted. See,
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
However, even if these expired registrations had been
properly of record, they are of little persuasive value. We
have absolutely no information in the record before us about
the circumstances that led to both the expired registrations
and the cited registration coexisting for a time on the
register. We obviously are not privy to the record in the
files of the third-party registrations, for example, we do
not know what other registrations were also on the register,
what evidence and arguments were in the application file of
the cited registration, or whether the Examining Attorney
made an error in allowing the cited registration to issue
while the now-expired registrations were alive. Thus, we
can draw no conclusions from this evidence that would affect
our decision in this case. In any event, the Board is not
bound by decisions of Examining Attorneys in other ex parte
cases. See, In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB
1994).
We turn now to applicant’s allegation of error with
respect to the Board’s consideration of the third-party
Serial No. 76251522 Reconsideration
6
registrations made of record by the Examining Attorney. In
the Board’s decision, we stated [p. 8] the following:
In this regard, applicant does not seem to dispute
that its products may be sold at retail variety
and discount stores; and the Examining Attorney’s
evidence of third-party registrations with goods
and services encompassing those in this case
suggests that consumers are accustomed to seeing
such goods and services emanate from the same
source or related sources.
We find no error in our consideration of this evidence or
the weight given to it. With regard to the third-party
registrations submitted by the Examining Attorney, we note
that although third-party registrations which cover a number
of differing goods and/or services, and which are based on
use in commerce, are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, such registrations nevertheless have
some probative value to the extent that they may serve to
suggest that such goods or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
We find that the basis for the Board’s decision is
clearly articulated and we do not find any error in reaching
that decision. Therefore, applicant’s request for
reconsideration is denied and the decision of October 29,
2002 stands.
Serial No. 76251522 Reconsideration
7
Decision: The request for reconsideration is denied
and the decision affirming the refusal under Section 2(d) of
the Act remains as issued.