Brasstech, Inc.

Trademark Trial and Appeal Board

Jan 24, 2012

No. 77810266 (T.T.A.B. Jan. 24, 2012)

Mailed: January 24, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Brasstech, Inc.
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Serial No. 77810266
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Edgar A. Zarins of Masco Corporation for Brasstech, Inc.

Priscilla Milton, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
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Before Grendel, Cataldo, and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

Brasstech, Inc. (“applicant”) filed an application to
register the mark READYSHIP, in standard character format, for
the services, as amended, of “expedited product shipment
services, namely shipment of plumbing products and bathroom
accessories” in International Class 39.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so

1 Application Serial No. 77810266, filed August 21, 2009, pursuant to
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging a
bona fide intent to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77810266
2
resembles the registered mark SHIPREADY, also in standard
character format, for “transportation services, namely,
transportation of documents, goods and parcels by land, sea, and
air; packaging of goods for transportation and storage; storage
and delivery of goods; courier services; shipping and freight
forwarding; freight brokerage and forwarding of cargo” in
International Class 39,2 that when used on or in connection with
applicant’s identified services, it is likely to cause confusion
or mistake or to deceive.
Upon final refusal of registration, applicant filed a
timely appeal and request for reconsideration. Upon the
examining attorney’s denial of the request for reconsideration,
proceedings herein were resumed. The examining attorney and
applicant filed briefs. For the reasons discussed below, the
Board affirms the refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion

2 Registration No. 3545158, issued December 9, 2008 on the Principal
Register.

Serial No. 77810266
3
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, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in
the marks”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
First, we consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. In re E. I. du Pont De Nemours & Co., 177 USPQ at
567. The question 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 their entireties that
confusion as to the source of the goods or 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. In
re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp.
v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark consists of a transposition of the
identical terms comprising registrant’s mark – the words “ready”
and “ship.” It is well established that confusion is likely
Serial No. 77810266
4
between two marks consisting of reverse combinations of the same
elements if they convey the same meaning or create substantially
similar commercial impressions. See, e.g., In re Wine Soc’y of
Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE
SOCIETY OF AMERICA and design, for “wine club membership
services including the supplying of printed materials, sale of
wines to members, conducting wine tasting sessions and
recommending specific restaurants offering wines sold by
applicant,” likely to be confused with AMERICAN WINE SOCIETY
1967 and design, for a newsletter, bulletin and journal of
interest to members of the registrant); In re Nationwide Indus.
Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER, with
"RUST" disclaimed, for a rust-penetrating spray lubricant likely
to be confused with BUST RUST for a penetrating oil). In this
instance, the transposed marks engender the same commercial
impression. The examining attorney made of record the following
dictionary definitions from the online version of Merriam-
Webster:
Ready “immediately available ;”
Ship “to be sent for delivery .”
When combined, in either order, the terms convey the same
meaning of immediate shipping or delivery services. Therefore,
we find that the similarities of applicant’s and registrant’s
marks outweigh the differences as to their sight, sound,
Serial No. 77810266
5
connotation, and commercial impression. Thus, this du Pont
factor weighs in favor of finding a likelihood of consumer
confusion.
Next, we consider the services and channels of trade.
Applicant contends that it is a “home products company
specializing in the manufacture and sale of plumbing products
and bathroom accessories;” that expedited shipping services are
offered as a convenience to its customers; and that applicant
itself “does not make the actual delivery.” While this may be
true, we are constrained to decide this case based on the
recitation of services provided by applicant and recited in the
registration. See, e.g., Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re
Shell Oil Co., 992 F.2d 1204, 1208 n.4, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993).
Because “transportation services, namely, transportation of
documents, goods and parcels by land, sea, and air; packaging of
goods for transportation and storage; storage and delivery of
goods; courier services; shipping and freight forwarding;
freight brokerage and forwarding of cargo”” is recited broadly
in registrant’s recitation without any limitation as to the type
of products shipped, it necessarily encompasses applicant’s
“expedited product shipment services” more specifically
restricted to “shipment of plumbing products and bathroom
Serial No. 77810266
6
accessories.” As such, registrant’s services necessarily
encompass applicant’s services and are therefore legally
identical. Moreover, because the services are legally identical
and unrestricted, they are presumed to move in the same channels
of trade and to be sold to the same classes of consumers. See
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). See also In re Linkvest S.A., 24 USPQ2d 1716,
1716 (TTAB 1992) (because there are no limitations as to
channels of trade or classes of purchasers in either the
application or the cited registration, it is presumed that the
services in the registration and the application move in all
channels of trade normal for those services, and that the
services are available to all classes of purchasers for the
listed services).
In addition to the above, the examining attorney has made
of record of a number of third-party marks registered for use in
connection with both shipment and delivery services. This
evidence is probative to the extent that it shows that the
services listed therein are of a kind that may emanate from a
single source under a single mark. See In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Serial No. 77810266
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U.S Registration No. 288603, B&G DELIVERY SYSTEM and
Design for “transportation and delivery services,
namely, same day shipment services, courier services,
freight transportation by truck, or air, express
delivery of goods by truck, or air, less-than-truck
load (LTL) delivery services, truck load delivery
services, contract carriage services by truck, or air,
common carriage services by truck, or air, messenger
services, scheduled pick-up and delivery services, on-
demand pick-up and delivery services, contract
delivery services by truck, or air, warehousing
services, storage, transportation and delivery of
documents, packages, raw materials, and other freight
for others by air, or truck;”
U.S Registration No. 3237019, SPACE ACCESS for “…
supply chain, logistics and reverse logistics
services, namely, storage, transportation and delivery
of documents, packages, raw materials, and other
freight for others by air, rail, ship or truck; tanker
transport; taxi transport; taxi transport for people
in wheelchairs; Tram transport; Transport by surface
transportation, aircraft, suborbital rockets,
aerospacecraft, launch vehicles, orbital transfer
craft, craft for operation beyond earth orbit;
Transport of goods; Transport of passengers;
Transportation and delivery services, namely, same day
shipment services…”
U.S Registration No. 3654805, GOIN' POSTAL for
“transportation services, namely, arranging and
managing shipping and delivery of goods and parcels
for others by air and motor vehicle; packing of goods
for others for transport by air and motor vehicle;
arranging and managing postal services, namely,
arranging and managing mail and parcel delivery;
arranging delivery of documents, packages, and other
freight for others by air or motor vehicle;
transportation and delivery services, namely,
arranging and managing same day shipment services;
private mailbox rental.”
Thus, these du Pont factors of the similarity of the
services and channels of trade weighs in favor of finding a
likelihood of confusion.
Serial No. 77810266
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Lastly, to the extent that there are any other relevant du
Pont factors, we treat them as neutral.
After considering all of the evidence of record and
argument pertaining to the du Pont likelihood of confusion
factors, we conclude that there is a likelihood of confusion
between applicant’s READYSHIP mark and the registered mark
SHIPREADY when used in connection with their identified
services.
Decision: The Section 2(d) refusal is affirmed.