Burnham Services, Inc.

Trademark Trial and Appeal Board

Aug 17, 2004

No. 74388732 (T.T.A.B. Aug. 17, 2004)

Mailed: August 17, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Burnham Services, Inc., by merger and assignment from
Burnham Properties Corporation1
________
Serial No. 74388732
_______
Stanley B. Kita of Howson and Howson for applicant.
Jill C. Alt, Trademark Examining Attorney, Law Office 114
(Margaret Le, Managing Attorney).
_______
Before Walters, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant has filed, on May 5, 1993, an application to
register the mark shown below for services ultimately
amended to read “metal foundry services, namely preparing
molds and shaping metal in the molds to the order and
specification of others” in International Class 40. The
1 The records of the Assignment Branch of the USPTO indicate that
a merger was recorded at Reel 2202, Frame 0443, and a subsequent
assignment was recorded at Reel 2646, Frame 0683.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 74388732
2
application is based on applicant’s claimed date of first
use and first use in commerce of March 1993.
The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the basis of Registration No. 2517601, issued December 11,
2001, for the mark shown below
for “semi finished steel products, namely, hot rolled coil
steel, cold rolled coil steel, tube steel, pipe steel,
plate steel, structural steel, galvanized and other treated
coil steel, reenforcing bar steel and steel wire.”
When the refusal to register was made final, applicant
appealed. Both applicant and the Examining Attorney have
filed briefs. Applicant did not request an oral hearing.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
Ser. No. 74388732
3
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, 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 and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
The Examining Attorney argues that the marks are
highly similar in sound, appearance, connotation and
commercial impression, both consisting of the letters “BF”
and both in the same style using an inner “F” to define the
two spaces of the surrounding “B”; that the reversal of the
black and white portions of the marks and the use by
registrant of a black background square are insignificant;
that the purchasing public will perceive both marks as the
letters “BF,” even if the registrant referred to its mark
as the letter “B”; that the goods and services are closely
related even though applicant’s services involve custom
made forgings or castings, whereas registrant’s goods are
standard semi finished steel products; and that any doubt
is resolved in favor of registrant.
Ser. No. 74388732
4
The Examining Attorney submitted printouts of several
third-party registrations to show that the goods and
services of registrant and applicant frequently emanate
from a common source under a single mark.
Applicant contends that the Examining Attorney erred
in “mis-characterizing” the cited registrant’s letter “B”
mark as the letters “BF” and then treating the registrant’s
and applicant’s marks as substantially similar; that the
record shows that the Board referred to the cited
registrant’s mark as a “stylized B” in a July 6, 1994 order
denying the summary judgment motions in consolidated
Opposition Nos. 88,237 and 88,238;2 that the Examining
Attorney erred in either not considering or not giving
proper weight to the information in the declaration of
Billie T. Trout, submitted by applicant; that the
purchasers of these goods and services are sophisticated;
that there has been no actual confusion in ten years of
use; and that these du Pont “factors should weigh more
heavily in a determination of registrability.” (Brief, p.
5.)
Applicant submitted the September 23, 2002 declaration
of Billie T. Trout, an employee for many years of Burnham
2 At that time the cited registrant’s then-application was the
subject of Opposition No. 88,238.
Ser. No. 74388732
5
Foundry (“a division of Burnham Corporation which is a
related company to Applicant”), until his retirement as
vice president and general manager in 1995. Mr. Trout
avers, inter alia, that foundries typically make castings
to the specifications of their customers; that from the
specifications patterns or molds are made in the shape of
the article to be cast; that the molded or cast products
are shipped to the customer for finishing by the customer;
that these are often large volume productions and these
runs “typically are not inexpensive to produce”; that the
typical foundry customer seeks to have a part manufactured
to meet technical requirements not available with rolled or
drawn steel sheets, rods or plates; and that during his
tenure at Burnham Foundry he was aware of the cited
registrant and its standard steel products and he would
have been aware of any actual confusion, but there were no
instances of actual confusion involving these marks for
these respective goods and services.
Turning first to a consideration of the marks, we find
that there is a strong similarity between the involved
marks. Because the involved marks are essentially stylized
letter marks, the degree of stylization affects the overall
visual impact of the involved marks. The Court of Appeals
for the Federal Circuit addressed this type of situation in
Ser. No. 74388732
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In re Electrolyte Laboratories Inc., 913 F.2d 930, 16
USPQ2d 1239, 1240 (Fed. Cir. 1990) as follows:
There is no general rule as to whether
letters or design will dominate in
composite marks; nor is the dominance
of letters or design dispositive of the
issue. No element of a mark is ignored
simply because it is less dominant, or
would not have trademark significance
if used alone. ...
...[T]he spoken or vocalizable element
of a design mark, taken without the
design, need not of itself serve to
distinguish the goods. The nature of
stylized letter marks is that they
partake of both visual and oral
indicia, and both must be weighed in
the context in which they occur.
...[E]ven if the letter portion of a
design mark could be vocalized, that
was not dispositive of whether there
would be likelihood of confusion. A
design is viewed, not spoken, and a
stylized letter design can not be
treated simply as a word mark.
In this case, the visual impact of both marks is the
letters “BF.” That is, purchasers would perceive the marks
as the letters “BF” (even if the cited registrant described
its own mark as the letter “B”). Purchasers are not aware
of either the manner in which an applicant describes its
mark in submissions to the USPTO, or descriptions of marks
appearing in decisions of this Board.
The background square appearing in the cited
registrant’s mark is a common geometric shape and is not
Ser. No. 74388732
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accorded trademark significance as it is a “carrier” of the
letter mark. See Seabrook Foods, Inc. v. Bar-Well Foods
Ltd., 568 F.2d 1342, 196 USPQ 289 (CCPA 1977); and Guess?
Inc. v. Nationwide Time Inc., 16 USPQ2d 1804 (TTAB 1990).
The mark “BF” is unpronounceable except as the
separate letters, and would be more difficult to remember,
and thus, more susceptible of confusion or mistake. The
slight differences in the style of lettering and the
inverse black and white colors in the two marks may not be
recalled by purchasers seeing the marks at separate times.
The proper test in determining likelihood of confusion is
not on a side-by-side comparison of the marks, but rather
must be on the recollection of the purchasers, who normally
retain a general rather than specific impression of the
many trademarks encountered; that is, a purchaser’s
fallibility of memory over a period of time must also be
kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrision, Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
We find that the marks are similar in sound,
appearance, connotation and overall commercial impression.
See Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (confusion found
Ser. No. 74388732
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likely in contemporaneous use of TMM and TMS on computer
software).
Insofar as the goods and services are concerned,
confusion in trade can occur from the use of similar (or
the same) marks for products, on the one hand, and for
services involving those products, on the other hand. See
In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); Safety-Klean Corporation v. Dresser
Industries, Inc., 518 F.2d 1399, 186 USPQ 476 (CCPA 1975);
and Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB
1983).
It is not necessary that the goods and services be
identical or even competitive in order to support a finding
of likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods and services originate from or are in some way
associated with the same source. See In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
It has been repeatedly held that, when evaluating the
issue of likelihood of confusion in Board proceedings
Ser. No. 74388732
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regarding the registrability of marks, the Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
In this case, the registered mark is for “semi
finished steel products, namely, hot rolled coil steel,
cold rolled coil steel, tube steel, pipe steel, plate
steel, structural steel, galvanized and other treated coil
steel, reenforcing bar steel and steel wire,” while
applicant offers the service of “metal foundry services,
namely preparing molds and shaping metal in the molds to
the order and specification of others.” The Examining
Attorney has submitted printouts of numerous third-party
registrations, several of which are based on use in
commerce,3 indicating the same entities offer both of these
goods and services under the same mark. See, for example,
Registration No. 1717471 for “steel and stainless steel
castings” and “custom manufacture of metal castings”;
3 We have disregarded all third-party registrations offered by
the Examining Attorney which were not based on use in commerce.
Ser. No. 74388732
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Registration No. 2556397 for “manufactured bar steel
products, namely, …” and “custom manufacturing of bar steel
products”; Registration No. 2492463 for “steel in sheet,
namely, rolled steel plate and rolled steel strip, … coiled
steel plate and strip, and discrete plate, …” and “…
manufacturing custom rolled steel to customer order, …”;
Registration No. 2590394 for “cast steel products, namely
bars, tube and pipe” and “manufacture of steel bars, tube
and pipe to the order and specification of others”;
Registration No. 1523818 for “metal castings” and “metal
casting and foundry services”; and Registration No. 2706681
for “metal castings, rolled bar steel in round, square and
flat shapes, …” and “melting and casting of metals.”
When considering the third-party registrations
submitted by the Examining Attorney, we are aware that such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them. Such
third-party registrations nevertheless have some probative
value to the extent they may serve to suggest that such
goods and services are of a type which emanates from the
same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
Ser. No. 74388732
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Purchasers aware of registrant’s semi finished steel
products, who then encounter applicant’s metal foundry
services, offered under these similar marks, are likely to
believe that applicant’s services emanate from or are
sponsored by or affiliated with registrant.
When the goods and services are compared in light of
the legal principles cited above, we find that applicant’s
metal foundry services and registrant’s semi finished steel
products are related.
Applicant contends that the trade channels are
“sufficiently different” that the Examining Attorney should
have found no likelihood of confusion. However, applicant
does not explain what those specific different trade
channels are for the registrant’s “standard grade steel
goods” and applicant’s foundry services to produce custom-
made metal products. (Applicant’s response filed October
10, 2002, p. 2.) Entities that purchase steel products may
well purchase both standard and custom made steel products
in different situations.
We find that the respective goods and services, as
identified, could be sold through the same or overlapping
channels of trade, to the same or overlapping classes of
purchasers.
Ser. No. 74388732
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Applicant argues that the purchasers of the involved
goods and services are sophisticated purchasers who
interact with the foundry to obtain special-order goods and
they will distinguish between applicant’s and registrant’s
marks. Assuming the sophistication of the purchasers of
these goods and services, “even careful purchasers are not
immune from source confusion.” In re Total Quality Group
Inc., 51 USPQ2d 1474, 1477 (TTAB 1999). See also,
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Decombe, 9 USPQ2d 1812 (TTAB
1988); and In re Hester Industries, Inc., 231 USPQ 881, 883
(TTAB 1986) [“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”]. That is, even relatively sophisticated
purchasers of these goods and services are likely to
believe that the goods and services emanate from the same
source, if offered under the involved substantially similar
marks. See Weiss Associates Inc. v. HRL Associates Inc.,
supra; and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, footnote 17 (TTAB 1992).
Ser. No. 74388732
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With regard to applicant’s argument that there has
been no actual confusion involving these marks for the
respective goods and services over the last ten years, that
argument is not actually supported by the evidence,
specifically Mr. Trout’s declaration. Mr. Trout avers that
during his tenure (ending in 1995 when he retired) at a
division of a related company to applicant, he was not
aware of any instances of actual confusion. Thus, this
declaration covers the time period only up to the year
1995, with no information from applicant (or any related
company or division) regarding whether or not there have
been any instances of actual confusion from 1995 to the
present. Moreover, there is no evidence of applicant’s and
the cited registrant’s geographic areas of sales, or the
amount of the sales of the goods and services under the
respective marks; and there is no information from
registrant. In any event, the test is likelihood of
confusion, not actual confusion. See Weiss Associates Inc.
v. HRL Associates Inc., supra; and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984). This factor is entitled to
little weight. Majestic Distilling Co., supra, 65 USPQ2d
at 1205 (“With regard to the seventh DuPont factor, we
agree with the Board that Majestic’s uncorroborated
Ser. No. 74388732
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statements of no known instances of actual confusion are of
little evidentiary value.”).
Based on the similarities of the marks; the
relatedness of the goods and services; the same or
overlapping trade channels; and the same or overlapping
purchasers; we find that the relevant purchasers would
likely be confused as to the source of applicant’s services
vis-a-vis registrant’s goods, offered under their
respective marks.
Decision: The refusal to register under Section 2(d)
is affirmed.