Crown Equipment Corp.

Trademark Trial and Appeal Board

Aug 23, 2012

No. 77248621 (T.T.A.B. Aug. 23, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 23, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Crown Equipment Corp.
________

Serial No. 77248621
_______

B. Joseph Schaeff of Dinsmore & Stohl LLP for Crown
Equipment Corp.

Julie A. Watson, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Bucher, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Crown Equipment Corp., filed an application
to register the mark CROWN INSITE in standard characters on
the Principal Register for, inter alia, the following
goods:1
lift truck systems comprised of electronic
devices for attachment to lift trucks, receivers,
and associated hardware and software,
all used in the collection and transmission of
data,

1 The identification of applicant’s Class 9 goods as well as
registrant’s Class 9 goods have been separated into subcategories
solely for ease of analysis thereof.
Ser. No. 77248621
2
and used for locating, routing and tracking lift
trucks and lift truck operators,
for tracking the performance of tasks by lift
trucks and lift truck operators,
for generation of reports regarding lift truck
location and operation,
for use when providing lift truck fleet
management services and
for use when providing consulting services in the
field of lift truck fleet management services

in International Class 9.2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, solely as used in connection with its
Class 9 goods, so resembles the mark INSITE, previously
registered on the Principal Register in standard characters
for:
Radiating line radio frequency identification
system for locating and/or tracking personnel,
equipment, machinery and vehicles comprised of
receivers, beacons and transmitters;
software for use in database management for
locating and/or tracking equipment, vehicles,
machinery and personnel;
computer programs for monitoring, tracking and/or
locating personnel, equipment, machinery and/or
vehicles;
communication equipment, namely, amplifiers,
radiating transmission cable, end units for
terminating a length of radiating transmission
cable, branch units for branching two or more

2 Application Serial No. 77248621 was filed on August 7, 2007,
based upon applicant’s allegation of its bona fide intent to use
the mark in commerce in connection with the goods in Class 9 and
additional goods in Class 12 that are not subject to the instant
refusal to register. Applicant seeks an extension of protection
under Section 66(a) of the Trademark Act of its International
Registration No. 0971960, issued on June 4, 2008.

Ser. No. 77248621
3
radiating transmission cables, power supplies,
beacons, transponders and computer communication
software to allow information regarding location
of personnel, equipment, machinery and vehicles
to be transmitted and received to, from and
within an underground environment;
transmitters;
receivers;
transponders;
beacons;
a radio frequency identification system for
locating and/or tracking personnel, equipment,
machinery and/or vehicles and communicating the
locating and tracking information to a database
via a network comprising a leaky cable radio
system, a radiating transmission cable, a fiber
optic cable and/or a telephone cable

in International Class 9,3 as to be likely to cause
confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney submitted briefs on
the issue under appeal, and applicant submitted a reply
brief.
Materials Submitted With Briefs
With its appeal brief and reply brief, applicant
submitted a number of exhibits consisting of materials
previously made of record by applicant during prosecution
of its involved application. As such, these materials are
at best duplicative and cumulative of evidence timely made
of record, and thus need not and should not have been

3 Registration No. 3769339 issued on March 30, 2010. The
registration also recites services in Class 37.
Ser. No. 77248621
4
resubmitted. See Life Zone, Inc. v. Middleman Group, Inc.,
87 USPQ2d 1953 (TTAB 2008).
In addition, applicant and the examining attorney
submitted with their briefs dictionary definitions from
printed dictionaries and online dictionaries that exist in
printed format. The Board may take judicial notice of such
dictionary definitions, and does so in this case. See In
re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
The examining attorney’s request that we take judicial
notice of an entry from the online encyclopedia
Wikepedia.org is denied. This tribunal generally considers
Wikipedia evidence only when it is cumulative of and is
corroborated by other evidence of record, and when it is
made of record early enough to give applicant the
opportunity to challenge or rebut it. See In re IP Carrier
Consulting Group, 84 USPQ2d 1032 (TTAB 2007).
Applicant also submitted, for the first time with its
reply brief, an exhibit consisting of excerpts from patents
filed by registrant. Applicant filed a motion to introduce
this evidence with its reply brief. As often stated, the
Ser. No. 77248621
5
record in the application should be complete prior to the
filing of an appeal. See Trademark Rule 2.142(d). The
exhibits attached to applicant’s reply brief were not made
of record during examination. Accordingly, their
submission with the reply brief is manifestly untimely.
The proper procedure, not followed by applicant, is to
request a suspension of the appeal and remand for
consideration of the evidence.4 As such, applicant’s motion
to introduce this evidence with its reply brief is denied,
and we have not considered such evidence in reaching our
decision. See In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703
n.2 (TTAB 1998) (third-party registrations submitted with
reply brief not considered); and TBMP §1203.02(e) (3d ed.
rev. 2012).
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth 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

4 Even construing applicant’s motion as a request for remand, we
would deny inasmuch as applicant has not shown good cause
therefor. See TBMP § 1207.02 (3d ed., rev. 2012) and authorities
cited therein.

Ser. No. 77248621
6
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis two key, though not exclusive,
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, 27 (CCPA 1976). See also In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed.
Cir. 1997).
The Marks
We begin our analysis by looking at the similarities
and dissimilarities of the marks in the application and
registration when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005).
In comparing the two marks, we note that applicant’s
mark, CROWN INSITE, incorporates the entirety of
registrant’s INSITE mark. Likelihood of confusion is often
found where the entirety of one mark is incorporated within
another. In re Denisi, 225 USPQ 624, 626 (TTAB 1985)
(PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
Ser. No. 77248621
7
155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM
for hairdressing and conditioner); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)
(LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for
doll clothing). Furthermore, both applicant and registrant
have adopted the same nontraditional spelling of INSITE,
which increases the similarities in appearance and
connotation between the marks.
Applicant argues that the presence in its CROWN INSITE
mark of its “well known house mark [i.e., CROWN]
significantly reduces, if not altogether eliminates, the
likelihood that customers would be confused as to the
source of the parties’ respective goods.”5 We observe,
however, that the question of whether a mark is or is not a
house mark is not conclusive in determining whether there
is a likelihood of confusion. Moreover, whether the term
claimed as a house mark is widely used, and the nature of
the other elements in the mark, play roles in the
likelihood of confusion determination as well. Compare In
re Fiesta Palms LLC, 85 USPQ2d 1360 (TTAB 2007) (CLUB PALMS
MVP confusingly similar to MVP; MVP not shown to be highly
suggestive term) with Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313 (TTAB 2005) (No likelihood
Ser. No. 77248621
8
of confusion between NORTON McNAUGHTON ESSENTIALS and
ESSENTIALS where the evidence demonstrated that
“Essentials” was a highly suggestive term).
In this case, there is no evidence as to whether
applicant uses CROWN as a mark on a large variety of goods,
which would suggest that CROWN is a house mark. Rather,
there are only applicant’s unsupported assertions in that
regard. Furthermore, the addition of a distinctive term,
which is not a house mark, does not necessarily result in
marks that are dissimilar. Squirtco v. Tomy Corp., 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“The marks
SQUIRT and SQUIRT SQUAD are, however, of such similarity
that they are more likely to create confusion than prevent
it”). See also In re Chatam Int’l Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004) (JOSE GASPAR GOLD for tequila
confusingly similar to GASPAR ALE for ale). Here, as noted
above, applicant has taken the entire registered mark and
added a term that it describes as its house mark. Inasmuch
as there is no evidence that the words CROWN and INSITE are
naturally associated, we find that the term INSITE will
retain its identity as a separately identifiable term in
the mark. Squirtco, 216 USPQ at 939 (“[I]n SQUIRT SQUAD,
SQUIRT retains its identity”). Thus, the mere addition of

5 Applicant’s brief, p. 8.
Ser. No. 77248621
9
CROWN to applicant’s mark, regardless of whether that term
is applicant’s house mark, does not serve to distinguish
applicant’s mark from that of registrant for purposes of
our likelihood of confusion determination.
Applicant also argues that “‘Insight’ and ‘insite’ are
weak marks, commonly used and registered by third-parties.
This is not surprising; ‘insight’ is laudatory.”6 In
support of its argument, applicant submitted a dictionary
definition of “insight” offering several meanings of the
term, including “clear and immediate understanding” and
“immediate and clear learning that takes place without
recourse to overt trial-and-error behavior.”7 Based upon
this definition, applicant argues that “when used in
connection with information systems, ‘insight’ suggests
clear and immediate information.”8 However, while we may
find that this definition supports a finding that “insight”
or INSITE suggests a quality or characteristic of
applicant’s and registrant’s goods, it does not support a
finding that the term is weak as applied thereto.
In further support of its position that INSITE is
weak, applicant has made of record numerous third-party

6 Id. at 3.
7 Webster’s Third New International Dictionary, Vol. II H to R
(copyright date not provided).
8 Applicant’s brief, p. 4.

Ser. No. 77248621
10
registrations for various marks incorporating the term
INSITE or INSIGHT for a wide variety of goods and services.
Only a small number of these registrations cover goods that
include transmitters and receivers as well as computer
hardware and/or software used for monitoring equipment,
GPS, and tracking vehicle movement, while the vast majority
include goods and services unrelated to those at issue
herein. Furthermore, the Federal Circuit has made it clear
that:
The probative value of third-party trademarks depends
entirely upon their usage. E.g., Scarves by Vera,
Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 1173 (2d
Cir. 1976) (“The significance of third-party
trademarks depends wholly upon their usage. Defendant
introduced no evidence that these trademarks were
actually used by third parties, that they were well
promoted or that they were recognized by consumers.”)…
As this court has previously recognized where the
“record includes no evidence about the extent of
[third-party] uses … [t]he probative value of this
evidence is thus minimal.” Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir.
2001) (emphasis added).

Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 73 USPQ2d at 1693. Here, applicant has
presented no evidence of the nature or extent of use of
these marks so we must accord this evidence minimal weight.
We add that it is proper to consider these types of
registrations as a form of a dictionary definition. In re
Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006)
Ser. No. 77248621
11
(“[T]hird-party registrations can be used in the manner of
a dictionary definition to illustrate how a term is
perceived in the trade or industry”). See also In re J.M.
Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“[T]hird
party registrations are of use only if they tend to
demonstrate that a mark or a portion thereof is suggestive
or descriptive of certain goods and hence is entitled to a
narrow scope of protection”). Therefore, considering the
third-party registrations and the prior case law, as well
as the dictionary definition discussed above, we find that
the term INSITE is suggestive of a quality of the involved
goods. To the extent INSITE may be considered laudatory
thereof, it is only slightly laudatory, and thus it is
entitled to more than a narrow scope of protection.
In this case, the marks INSITE and CROWN INSITE are
more similar than they are different. Applicant has taken
registrant’s mark and added its asserted house mark to it.
It is not clear on this record why the addition of the word
CROWN would avoid confusion. It is more likely to be
considered another product from the same source of goods as
those under the INSITE mark.
Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Ser. No. 77248621
12
The Goods
We turn now to our consideration of the identified
goods, noting that it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In this case, applicant’s goods include lift truck
systems consisting of receivers, computer hardware and
software, all used to collect and transmit data for
locating, routing and tracking lift trucks and their
operators and performance. Registrant’s goods include
radiating line radio frequency identification systems
consisting of receivers, beacons and transmitters, used for
locating and tracking personnel, equipment, machinery and
vehicles, as well as computer software and programs used
for the same purposes. As identified, applicant’s goods
Ser. No. 77248621
13
are used, inter alia, to locate, route and track lift
trucks. Registrant’s goods are used, inter alia, to locate
and track equipment and vehicles. Evidence made of record
supports a finding that lift trucks are vehicles used to
move and transport objects or groups of objects. Thus, as
identified, both applicant’s goods and those of registrant
are used to perform a number of functions including
tracking and locating vehicles. The mere fact that
registrant’s goods utilize “radiating” and “leaky cable”
systems versus the more broadly identified “electronic”
systems of applicant is not sufficient to distinguish these
goods, particularly when they perform functions that are
highly similar. Accordingly, we find that applicant’s
goods are related in part to those of registrant inasmuch
as they contain items in common such as receivers and
computer software, and are used to perform some of the same
functions.
As a result, applicant’s goods are related to those of
registrant, and this du Pont factor also favors a finding
of likelihood of confusion.
Channels of Trade
We are not persuaded by applicant’s arguments that its
goods travel in channels of trade that are separate and
distinct from those in which registrant’s goods may be
Ser. No. 77248621
14
encountered. It is settled that in making our
determination regarding the relatedness of the parties’
goods, we must look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. 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.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
As identified, applicant’s goods do not contain any
limitations as to trade channels or intended consumers.
Thus, they are presumed to move in all trade channels
customary for such lift truck tracking, locating and
monitoring systems. Registrant’s goods are identified in
part as being used in underground environments.
Specifically, the following goods, namely:
Ser. No. 77248621
15
communication equipment, namely, amplifiers,
radiating transmission cable, end units for
terminating a length of radiating transmission
cable, branch units for branching two or more
radiating transmission cables, power supplies,
beacons, transponders and computer communication
software to allow information regarding location
of personnel, equipment, machinery and vehicles
to be transmitted and received to, from and
within an underground environment,

recite such a limitation. However, such limiting language
appears to apply solely to the goods listed above and not
registrant’s entire identification of goods. Furthermore,
even if we find, as applicant argues, that all of
registrant’s goods are for use in underground environments,
i.e., mines, such use is encompassed by applicant’s
unrestricted identification of goods. In other words,
applicant’s identification of goods does not exclude
underground environments, nor is there anything inherent in
the identification of applicant’s goods that would preclude
their use in such environments. As a result, we find that
applicant’s unrestricted trade channels encompass the more
narrowly-tailored channels of trade in which registrant’s
goods may be encountered. See In re Elbaum, 211 USPQ 639,
640 (TTAB 1981).
Conditions of Sale
The final du Pont factor discussed by applicant is
that of the conditions of sale. Applicant asserts that its
Ser. No. 77248621
16
goods and those of registrant would be purchased only by
careful and sophisticated users. However, even in
instances of sales of the respective goods to highly
sophisticated purchasers, it is still the case that both
applicant’s and registrant’s goods are of a type which may
be used for purposes that are related in part. Prospective
purchasers, therefore, may mistakenly believe that these
goods emanate from the same source. In addition, even if
some degree of care may be exhibited in making the
purchasing decision, the marks CROWN INSITE and INSITE are
sufficiently similar that even careful and discriminating
purchasers are likely to assume that the marks identify
goods emanating from a single source. Finally, it is
settled that even sophisticated purchasers are not
necessarily knowledgeable in the field of trademarks or
immune from source confusion. See In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988).
In summary, weighing all of the evidence of record as
it pertains to the relevant du Pont factors, we find that a
likelihood of confusion exists. Moreover, to the extent
that any of the points raised by applicant raise a doubt
about likelihood of confusion, that doubt is required to be
resolved in favor of the prior registrant. See In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed.
Ser. No. 77248621
17
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 165, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal of registration is affirmed as
to the goods recited in International Class 9. The
application will proceed to publication solely as to the
goods recited in International Class 12.