Daedong Industrial Co., Ltd.

Trademark Trial and Appeal Board

Apr 8, 2003

No. 78081597 (T.T.A.B. Apr. 8, 2003)

Mailed: April 8,2003
Paper No.9
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Daedong Industrial Co., Ltd.
________
Serial No. 78/081,597
Serial No. 78/081,704
_______
Jennifer Bowman of Ward & Smith, P.A. for Daedong Industrial Co.
Ltd.
John T. Lincoski, Jr., Trademark Examining Attorney, Law Office
104 (Sidney I. Moskowitz, Managing Attorney).
_______
Before Quinn, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Daedong Industrial Co., Ltd. has filed applications to
register the marks "KIOTI"1 and "KIOTI" and design,2 as reproduced
below,
1 Ser. No. 78/081,597, filed on August 29, 2001, which alleges a date
of first anywhere and first use in commerce of December 8, 1993.
2 Ser. No. 78/081,704, filed on August 29, 2001, which alleges a date
of first anywhere and first use in commerce of June 1, 1995.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 78/081,597 and 78/081,704
2
for "agricultural and landscaping tractor attachments and
tractor-towed agricultural implements, namely, front-end loaders,
backhoes, finish mowers, and tillers and replacement parts
therefor." As stated in the latter application: "The mark
consists, in part, of a stylized depiction of a coyote."
Registration has been finally refused in each case
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's marks, when applied to its goods, so
resemble the mark "COYOTE" and design, as illustrated below,
which is registered for "construction equipment, namely, front
end loaders and dozers,"3 as to be likely to cause confusion,
mistake or deception. As stated in the registration: "The mark
3 Reg. No. 1,447,133, issued on July 14, 1987, which sets forth a date
of first use anywhere and first use in commerce of October 1, 1984;
combined affidavit §§8 and 15.
Ser. Nos. 78/081,597 and 78/081,704
3
consists of the word 'COYOTE' and the depiction of a coyote
within the letter 'C'."
Applicant, in each case, has appealed. Briefs have
been filed, but an oral hearing was not requested. Because the
issue of likelihood of confusion is substantially the same in
each instance, the appeals are being treated in a single opinion.
We affirm the refusal to register in each case.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity of the goods
and the similarity of the marks.4
Turning first to consideration of the respective marks,
we note the admission in each of applicant's briefs that it "is
not disputed by the Applicant" that, as stated in each of the
final refusals, "the marks could be pronounced the same."
Applicant maintains, nonetheless, that when considered in their
entireties, the marks at issue are distinguishable due to
differences in spelling and stylization. Specifically, according
to applicant:
4 The court, in particular, pointed out that: "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."
Ser. Nos. 78/081,597 and 78/081,704
4
Applicant concurs with the Examining
Attorney's observation that the marks could
be pronounced in a way that they have a
similar sound. However, the marks have
distinctively different appearances. First,
the words contain a different number of
letters, 5 vs. 6. In addition, only two of
the letters, "ot", are common. The other
letters, e.g., "K" vs. "C" provide a
different visual impression. As a result, a
different appearance, connotation and
commercial impression is created.
Such distinction, applicant particularly notes with respect to
its "KIOTI" mark and registrant's mark, "is further delineated by
the fact that the cited mark is a highly stylized mark in which
the 'C' is substantially larger than the remaining letters,
encompassing a drawing of a coyote on a hilltop, as well as part
of the "o" in the mark. The same is likewise the case, applicant
contends, with respect to its "KIOTI" and design mark and
registrant's mark. Moreover, because both of those marks are
highly stylized, applicant further asserts that:
Applicant's design mark also includes the
profile of an animal that is similar to the
coyote depicted in the cited mark. However,
in applicant's mark, all of the letters are
of the same size and are of a font that is
entirely different from that used in the
cited mark, with the animal in a different
location and the word underlined.
Applicant insists that such "design differences" in its "KIOTI"
and design mark, along with the "differences in spelling" of both
of its "KIOTI" marks and "the unique stylization" of registrant's
mark, "would certainly" be taken into account by customers and
prospective purchasers of the respective goods and would preclude
any likelihood of confusion.
Ser. Nos. 78/081,597 and 78/081,704
5
We agree with the Examining Attorney, however, that
applicant's marks and registrant's mark overall are highly
similar and create substantially the same commercial impression.
As the Examining Attorney points out, despite their differences
in spelling, the respective marks are phonetic equivalents and,
as such, have the same meaning.5 Visually, both registrant's
mark and applicant's "KIOTI" and design mark not only share a
prominent design of a howling coyote, but such animal in each
case is shown in a profile standing on an edge and facing to the
right. Such a design feature, moreover, is particularly
significant in applicant's "KIOTI" and design mark since, as
noted by the Examining Attorney, it "strongly suggests to
consumers that the mark is intended to be the equivalent of the
term 'COYOTE' in both pronunciation and connotation."
Consequently, while there are some differences in appearance
between the respective marks, with the most noticeable being the
difference in spelling and, in the case of applicant's "KIOTI"
mark, the absence of the visual pronunciation clue provided by
the coyote design in applicant's "KIOTI" and design mark, the
marks in their entireties are identical in sound and connotation;
5 In this regard we judicially notice, as requested by the Examining
Attorney, that The American Heritage Dictionary of the English
Language (3rd ed. 1992) defines "coy·o·te (ki-o•te, ki•ot•)" in
relevant part as "1. A small, wolflike carnivorous animal ... native
to western North America and found in many other regions of the
continent. Also called prairie wolf." It is settled that the Board
may properly take judicial notice of dictionary definitions. See,
e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d
737, 97 USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper
Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Ser. Nos. 78/081,597 and 78/081,704
6
they share, in the case of applicant's "KIOTI" and design mark
and registrant's "COYOTE" and design mark, virtually the same
coyote design element; and the marks at issue engender
substantially the same commercial impression. As a result, the
contemporaneous use thereof in connection with the same or
closely related goods would be likely to cause confusion as to
the source or sponsorship of such products.
Turning, then, to consideration of the respective
goods, applicant argues that its "agricultural and landscaping
tractor attachments and tractor-towed agricultural implements,
namely, front-end loaders, backhoes, finish mowers, and tillers
and replacement parts therefor" are not related to registrant's
"construction equipment, namely, front end loaders and dozers."
In particular, while conceding that its goods, as identified, and
registrant's goods, as set forth in the cited registration, both
include front end loaders, applicant contends that there are
"differences between a 'front end loader' as the term is used in
connection with construction equipment, and a 'front end loader'
as the term is used in connection with attachments that are used
on agricultural tractors."
Specifically, applicant asserts that (underlining in
original):
.... As shown by the web pages provided
to the Examining Attorney in the Request for
Reconsideration, the term "front end loader,"
as the term is used when referring to
construction equipment, means a self-
contained vehicle that is mounted on rubber
tires or on tracks. Such units are used on a
regular basis under the strenuous conditions
encountered in the construction industry, in
the same way as dozers that are also listed
Ser. Nos. 78/081,597 and 78/081,704
7
in the [identification of goods for the]
cited mark ..., and other heavy construction
equipment.
The goods sold under applicant's mark
are various kinds of attachments that can be
mounted onto an agricultural tractor so that
various chores can be performed as needed in
agriculture and landscaping. Thus, the
"front end loader" attachment of applicant is
a relatively low-priced unit that is mounted
onto, and removed from, the tractor as
needed, and does not have its own chassis or
engine. As shown in the materials provided
to the Examining Attorney, applicant's "front
end loader", as well as other attachments
sold under applicant's mark[,] are priced at
about $3,000 to $4,000, while "front end
loaders" sold in the construction industry,
even when sold used, have a far greater
price.
Applicant accordingly concludes that, "contrary to the Examining
Attorney's unsupported statement that 'the goods of the parties
are highly related and would be marketed in the same channels of
trade,' the goods are in fact highly unrelated, and are sold to
different purchasers, i.e., construction businesses, vs. farmers
and landscapers."
In addition, applicant maintains that confusion is not
likely because:
The buyers of applicant's goods, whether
farmers, landscapers or others who use
agricultural tractors with various
attachments in their business are not going
to purchase an attachment for their tractor
on "impulse." Instead the buyers are
familiar with the function of the attachment,
and the suitability for use with the
agricultural tractor on which it is to be
used. The cost of the attachment, and the
impact of an unwise purchase on the buyer's
business, dictates this caution, resulting in
sophisticated purchases that will take into
account even minor differences in trademarks,
and certainly the major differences noted
above. This sophistication will likewise be
Ser. Nos. 78/081,597 and 78/081,704
8
exercised, perhaps to an even greater extent,
by purchasers of the significantly more
expensive construction equipment [listed in
the identification of goods in the
registration for] ... the cited mark.
The Examining Attorney, on the other hand, correctly
points out that it is well settled that goods need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
would be likely to be encountered by the same persons under
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same entity or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978); and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Here, besides
noting that the record contains, inter alia, several use-based
third-party registrations for marks which are registered for both
"equipment intended for agricultural and landscaping use and ...
equipment intended for construction use," including a
registration for "power-operated agricultural equipment, namely,
... tillers, ... mowers, ... loaders, ... and replacement parts
thereof," on the one hand, and "equipment for use in construction
..., namely, ... bulldozers, ... [and] loaders," on the other
hand,6 the Examining Attorney properly observes that applicant's
6 While such registrations admittedly are not evidence that the marks
shown therein are in use or that the public is familiar with them, it
is well established that they nevertheless have some probative value
Ser. Nos. 78/081,597 and 78/081,704
9
advertising literature and the Internet website excerpts which it
submitted with its request for reconsideration of the final
refusal show that the goods at issue are indeed closely related
in a commercial sense.
Specifically, as the Examining Attorney persuasively
argues in his brief, while "applicant has gone to great lengths
to discuss differences between the goods and places much emphasis
on the different users for whom the goods are intended," the
evidence of record demonstrates that "the goods are far more
similar and the communities of users are far more intertwined
than applicant contends." Among other things, the Examining
Attorney accurately points out in this regard that:
First, it must be noted that while the
applicant's goods are of a lighter grade than
those of the registrant, the goods are
intended to perform the same functions,
namely, front-end loading and earth-moving.
Second, while applicant's ... goods are
attachments for use with tractors, the
advertising material made of record shows
that the goods are likely to be encountered
in the marketplace as a unit. The photos of
record show that applicant uses its mark on
both the tractors and the attachments. As
such, consumers are likely to encounter both
of these complementary goods together in the
marketplace. Thus, while the goods in this
case are attachments, consumers are likely to
see the mark used on the integrated tractor-
and-loader combination.
Moreover, the line between agricultural
use and construction use may not be as stark
as applicant contends. The applicant's
to the extent that they serve to suggest that the goods listed therein
are of the kinds which may emanate from a single source. See, e.g.,
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993)
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988)
at n. 6.
Ser. Nos. 78/081,597 and 78/081,704
10
advertising information demonstrates that it
provides a variety of tractors and
attachments intended for light to heavier
duty. ....
With respect to the latter, the Examining Attorney
notes that, for example, that as stated on page 5 of the brochure
for applicant's "Kioti DK Series Tractors":
Kioti manufactures five models of
compact tractor because we know that no two
jobs are like. So whether you need a basic
tractor with just enough power to mow a few
acres, or you want a fully-loaded model with
a cab and the power to tackle any job - Kioti
has the answer. ....
....
.... And there's a choice of three tire
styles - standard agricultural, turf and
industrial - to get you through any
conditions.
As the Examining Attorney also correctly observes, while "the
smaller of the applicant's tractors appear to be intended for
homeowners, the upper end of its product range clearly
contemplates more rugged uses" by its more heavy duty units. In
particular, "[t]he examiner notes that the advertising material
made of record by applicant ... suggests a blurring of the lines
between 'agricultural and landscaping' front-end loaders and
[those for use in] 'construction.'" The same is likewise true
with respect to applicant's backhoe attachments, some of which,
as indicated in applicant's literature, are capable of digging
trenches up to 7½ feet deep.7
Thus, as the Examining Attorney properly maintains,
"[f]armers, homeowners and landscapers aren't the only intended
7 For instance, applicant's "KB Series Backhoes let you trench up to
90" deep with a bucket dig force of up to 2,875-lbs."
Ser. Nos. 78/081,597 and 78/081,704
11
users of the goods"; rather, such users also include construction
contractors. In fact, as indicated in the printout submitted by
applicant from the www.farmequipmentunlimited.com/kioti website,
its "LB1914 20.5 horsepower 4WD tractor," as "[p]ackaged with a
front loader and backhoe, ... is the favorite tool of building
contractors all around the nation" in addition to being a tractor
which is "great for tilling a garden, brush cutting, and post-
hole digging." Furthermore, as shown by applicant's submission
of an excerpt from the www.constructionequipment.net website,
the "Atlantic Equipment Company," which advertises itself as "The
Earth Moving Equipment Specialists," carries as its product lines
"Heavy Construction Equipment," "Light Construction Equipment"
and "Farming Equipment." Specifically, as stated in the website:
Atlantic Equipment distinguishes itself
from other companies by carrying a diverse
array of construction equipment, which
includes new and used backhoes, dozers,
excavators, forestry equipment, cranes,
material handlers, lifts, boring machines,
skidsteers, farm tractors, accessories and
more.
In view of the above, there can be little doubt that,
in a commercial sense, applicant's "agricultural and landscaping
tractor attachments and tractor-towed agricultural implements,
namely, front-end loaders, backhoes, finish mowers, and tillers
and replacement parts therefor" are so closely related to
registrant's "construction equipment, namely, front end loaders
and dozers" that their respective marketing under applicant's
"KIOTI" and "KIOTI" and design marks and registrant's "COYOTE"
and design mark would be likely to cause confusion as to the
Ser. Nos. 78/081,597 and 78/081,704
12
origin or affiliation of such goods. While, as applicant further
argues, applicant's and registrant's goods would generally be
purchased by knowledgeable and sophisticated buyers only after
careful consideration, it is well settled that the fact that
customers exercise deliberation in choosing the goods at issue
"does not necessarily preclude their mistaking one trademark for
another" or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962). See
also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983). Because
the respective marks are so highly similar and engender
essentially the same overall commercial impression, conditions
are such that purchasers, despite the care exercised in the
selection of applicant's and registrant's goods, could reasonably
assume, that the goods at issue emanate from, or are sponsored by
or affiliated with, the same entity.8 See, e.g., In re Energy
Telecommunications & Electrical Association, 222 USPQ 350, 352
(TTAB 1983) [mark "ENTELEC" and design for "association services,
namely, promoting the interests of persons and businesses
concerned with telecommunications and other electrical control
systems for use in the energy related industries" is likely to
8 To the extent, nonetheless, that the differences argued by applicant
may serve to raise any doubt as to our conclusion that the respective
marks in their entireties are substantially similar and that the goods
at issue are closely related, we resolve such doubt, as we must, in
favor of the registrant. See, e.g., In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988); and In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Columbes,
487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Ser. Nos. 78/081,597 and 78/081,704
13
cause confusion with mark "INTELECT" for "promotion of, planning
for and conducting of a series of expositions and exhibitions for
the electric industry"; while "the relevant public to which both
marks are directed is highly discriminating and would doubtless
exercise a high degree of care with respect to the identified
services," "in view of the substantial phonetic identity of the
marks and the very closely related services, it does not seem ...
that this factor excludes a likelihood of confusion resulting
from the marks' contemporaneous use."]
Decision: The refusal under Section 2(d) is affirmed
as to each application.