B&B Specialties, Inc.

Trademark Trial and Appeal BoardJan 24, 2012

No. 77765378 (T.T.A.B. Jan. 24, 2012)

Mailed: January 24, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re B&B Specialties, Inc. ___________ Serial No. 77765378 ___________ James G. O’Neill and Theodore P. Lopez of Klein, O’Neill & Singh, LLP for applicant. Jay C. Besch, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). ____________ Before Quinn, Ritchie, and Shaw, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: B&B Specialties has filed an application to register the mark BB, in standard characters, on the Principal Register for “metal fasteners, namely, screws and bolts,” in International Class 6.1 Registration has been finally refused pursuant to Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground that applicant’s mark so resembles the mark BB, in the stylized form shown below, 1 Application Serial No. 77765378, filed Jun 22, 2009, pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging a date of first use and first use of the mark in commerce of December 10, 1971. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77850772 2 for “metal bolts and screws, both English and metric sizes excluding mine roof bolts,” in International Class 6, as to be likely to cause confusion.2 When the refusal was made final, applicant appealed and filed a request for reconsideration which was denied by the examining attorney. Applicant and the examining attorney both filed briefs. Preliminary Evidentiary Issue A. Applicant’s List of Third-Party Marks Containing the Letters “BB”. Applicant submitted with its initial response to the refusal to register, and later, with its appeal brief, a list of one- hundred third-party registrations and applications containing the letters “BB”. The Examining Attorney objected to the list and advised applicant that merely listing third-party registrations and applications is insufficient to make them of record. The Examining Attorney continued his objection to the material in his appeal brief. The Trademark Trial and Appeal Board does not take judicial notice of registrations, and the submission of a list of registrations does not make these registrations part of the 2 Registration No. 3229218, issued on April 17, 2007 alleging a date of first use in commerce of June 13, 1976. A second mark, Registration No. 2376485, Serial No. 77850772 3 record. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007); In re Duofold Inc., 184 USPQ 638 (TTAB 1974). To make registrations of record during examination, soft copies of the registrations or the complete electronic equivalent (i.e., complete printouts taken from any of the USPTO’s automated systems (X-Search, TESS, TARR, or TRAM)) must be submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998); In re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB 1992). Accordingly, this list has not been considered. We also point out that, even if we were to consider the list, it has no probative value since it does not show the goods or services for which the marks were registered. (It appears from the wording in the marks themselves that many are for goods or services that have no relation to the goods at issue herein, e.g., BB BETTER BASKETBALL, BB JEANS, and BB MARINE INSURANCE.) In addition, fourteen of the listed marks are for applications, rather than registrations. Third-party applications have no evidentiary value other than to show that they were filed. In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB 1992). was cited against applicant’s mark but was cancelled after applicant filed its appeal brief. This mark has been withdrawn as a bar to registration. Serial No. 77850772 4 Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209, 1210 (TTAB 1999) and the cases cited therein. A. The Similarity or Dissimilarity and Nature of the Goods In an ex parte appeal, likelihood of confusion is determined on the basis of the goods as they are identified in the application and the cited registration. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Serial No. 77850772 5 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 sales of goods are directed.”). Applicant’s “metal fasteners, namely, screws and bolts” are legally identical to registrant’s “metal bolts and screws, both English and metric sizes excluding mine roof bolts.” Applicant does not dispute that the goods are identical and could occupy the same trade channels. Because the goods in the application and the cited registrations are legally identical, we must presume that the channels of trade and classes of purchasers at least in part are the same. Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d at 1532 (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). These factors weigh heavily against applicant. B. The Similarity or Dissimilarity of the Marks in Their Entireties Serial No. 77850772 6 Preliminarily, we note that the more similar are the goods at issue, the less similar the marks need to be for the Board to find a likelihood of confusion. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports, 73 USPQ2d at 1692. With respect to the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, 73 USPQ2d at 1691. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). We find these marks are virtually identical. The fact that registrant’s mark appears in stylized lettering with an underline while applicant’s mark is in standard characters does not render these two marks different as to sound, connotation or commercial impression. The underlining is only a slight difference between Serial No. 77850772 7 the marks. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that the literal portion of the mark is most likely to be impressed upon the consumer). Applicant argues that the absence of a design in its mark and the presence of the underlining in registrant’s mark “is enough to distinguish [its] goods from those of the [registrant] in the relevant industry.” Br. at 2. This argument is unpersuasive. As noted, the underlining design has minimal source-indicating significance. It is well-settled that with a composite mark comprising a design and words, the word portion of the mark is usually the one most likely to indicate the origin of the goods to which it is affixed. CBS, Inc. v. Morrow, 218 USPQ at 200. As for the stylized typeface of the registrant’s mark, applicant has applied for its mark in standard character form, and therefore a registration for that mark would give applicant the right to display its mark in various fonts, including typeface resembling the one used by registrant. Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) (“[A] registrant is entitled to depictions of [its] standard character mark regardless of font style, size, or color.”). Applicant’s argument that the cited marks are weak is unsupported by any significant probative evidence. The Serial No. 77850772 8 DEPARTMENT OF DEFENSE HANDBOOK Listing of Fastener Manufacturer’s Identification Symbols (exhibit 1) cited by applicant lists only two manufacturers, besides applicant and registrant, claiming to use “multiple letter B symbols.” Ex. 1 at B-3; Br. at 3. These two listings are insufficient to show that the marks are weak. See In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996) (finding that more than 1000 listings of entities providing restaurant, bar, or related services under a trade name containing the term BROADWAY in the Dun & Bradstreet database, the American Business Directory, and telephone directories was sufficient to show BROADWAY was weak for restaurant services); Lloyd's Food Products Inc. v. Eli's Inc., 987 F.2d 766, 25 USPQ2d 2027 (Fed. Cir. 1993). This factor also weighs in favor of finding a likelihood of confusion. C. Applicant’s Prior Registration The only point raised by applicant that merits further discussion is its prior ownership of a now-canceled registration. Applicant explains that it owned Registration No. 2082698, issued July 29, 1997, for the same mark and the same goods for which it now seeks registration. This prior registration, identical in all respects to the registration sought herein, lapsed due to applicant’s failure to file an affidavit of continued use. Br. at 1. Applicant argues that its prior registration demonstrates there is no likelihood of confusion because there has been no actual confusion with the cited mark (and with the previously Serial No. 77850772 9 cited but now cancelled mark, Registration No. 2376485). Id. at 6. The situation in which applicant finds itself is not unprecedented. We fully recognize that applicant owned a prior registration, now canceled, for BB for the same goods and that the Office allowed other marks, such as the now-cancelled Registration No. 2376485, to issue over applicant’s earlier mark. However, there is longstanding, well-settled precedent holding that the Board is not bound by prior decisions of examining attorneys, and that each case must be decided on its own merits and on the basis of its own record, in accordance with relevant statutory, regulatory and decisional authority. See, e.g., In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“the PTO’s allowance of such prior registrations does not bind the Board or this Court.”). After considering applicant’s arguments and evidence and the relevant du Pont factors, we find that because the goods are identical, the channels of trade and consumers are presumed to overlap, and the marks are highly similar, confusion is likely between applicant’s BB mark and registrant’s BB mark. Decision: The refusal under Section 2(d) of the Trademark Act is affirmed and registration to applicant is refused.