EK-IND. Services & Tooling, Inc.

Trademark Trial and Appeal BoardMar 9, 2017

No. 86536015 (T.T.A.B. Mar. 9, 2017)

This Opinion is not a Precedent of the TTAB Mailed: March 9, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re EK-IND. Services & Tooling, Inc. _____ Serial No. 86536015 _____ Edward W. Rilee of MacCord Mason PLLC, for EK-IND. Services & Tooling, Inc. Matthew J. Cuccias, Trademark Examining Attorney, Law Office 116, Christine Cooper, Managing Attorney. _____ Before Bergsman, Wolfson and Adlin, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: EK-IND. Services & Tooling, Inc. (“Applicant”) seeks registration on the Principal Register of the mark MACH (in standard characters) for: Power-operated metalworking machine tools made of carbide, namely, carbide tools for milling, turning, drilling including face mills, end mills, lathes and drills for machining steels, cast iron, high temperature alloys, and nonferrous materials; carbide inserts for power-operated metalworking machine tools, namely, CNC machine inserts, cutting tool inserts, mining tool inserts, milling Serial No. 86536015 - 2 - cutter inserts, drill inserts, taps, and boring bar inserts, in Class 7.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark MACH Grinding (stylized), shown below, for the goods set forth below as to be likely to cause confusion: Parts of machine tools for grinding, cutting off by grinding, cutting, milling and polishing devices for purposes of manufacturing complicated mechanical components, namely, coated abrasives in the form of belts, sheets rolls and discs for use in grinding machines, grinding tools for grinding machines, abrasive disks and belts for power- operated sanders, abrasive disks and belts for power- operated grinders, gear cutters, thread milling cutters, rotary carrier bodies for grinding machines, and abrasive strips, webs and papers for use in grinding machines and excluding for use in paint preparation; all specifically excluding hand-operated grinding tools, in Class 7.2 Registrant disclaimed the exclusive right to use the word “Grinding.” When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. We affirm the refusal to register. 1 Application Serial No. 86536015 was filed on February 16, 2015, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. 2 Reg. No. 3508898, registered September 30, 2008; Sections 71 and 15 combined declaration accepted and acknowledged. Serial No. 86536015 - 3 - I. Preliminary Issue In its brief, Applicant asserted that it is willing to amend its description of goods to distinguish them from those in the cited registration, if the Examining Attorney or the Board can suggest an acceptable description of goods.3 However, Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides that the record in the application should be complete prior to the filing of an appeal. Moreover, Trademark Rule 2.142(g), 37 C.F.R. § 2.142(g), provides that “[a]n application which has been considered and decided on appeal will not be reopened except for the entry of a disclaimer under section 6 of the Act of 1946 or upon order of the Director.” The Board cannot suggest identifications of goods and services based on the record presented in an appeal. See In re Faucher Industries Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (“the Board cannot re-write the application to reinstate an identification previously discarded by applicant, nor can it re-open the application for amendment of the identification by applicant.”). Accordingly, finalizing Applicant’s description of goods must be completed prior to filing an appeal. The identification of goods as recited remains the operative identification for purposes of this appeal. II. Applicable Law 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 3 Applicant’s Brief, p. 5 (7 TTABVUE 6); see also Applicant’s Reply Brief, p. 5 (10 TTABVUE 5). Serial No. 86536015 - 4 - USPQ 563, 567 (CCPA 1973) (“du Pont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each du Pont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). 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 In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). A. The similarity or dissimilarity of the marks. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a Serial No. 86536015 - 5 - connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). Applicant is seeking to register the mark MACH (standard characters) and the cited registered mark is MACH Grinding (stylized) shown below. The stylization of Registrant’s mark is in the nature of block lettering using upper and lower case letters, which is a common font style. Because Applicant’s mark is presented in standard characters, Applicant is entitled to all depictions of its standard character mark regardless of the font style, size, or color; Applicant’s mark could at any time in the future be displayed in a manner similar to that of Registrant’s mark, that is, the word(s) displayed in the same font style and size. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that for purposes of determining whether two marks are similar, a mark in a typed drawing (equivalent to modern standard character format) is distinct from such mark with a background; “[b]y presenting its mark in a typed drawing, a Serial No. 86536015 - 6 - difference cannot legally be asserted by that party” (emphasis in original)). Suffice it to say, the stylization does not serve to distinguish the marks. The dominant portion of the cited registered mark is the word “Mach” because the word “Grinding” is descriptive of the purpose of “parts of machine tools used for grinding.” It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. Further emphasizing the dominance of the word “Mach” is its position as the first part of Registrant’s mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Serial No. 86536015 - 7 - Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); Presto Prod. Inc. v. Nice-Pak Prod., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). The word “Mach” is defined as “a usually high speed expressed by a Mach number – an airplane flying at Mach 2.”4 Because the cutting speed is an important feature of a machine tool,5 the word “Mach” in both marks means and engenders the same commercial impression, suggesting the rate of motion of the machine tools. In view of the foregoing, we find that the marks are similar in their entireties in terms of appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the goods and established, likely- to-continue channels of trade. Applicant is seeking to register its mark for, inter alia, “carbide inserts for power- operated metalworking machine tools, namely, cutting tool inserts, …, milling cutter inserts.” The description of goods in the cited registration includes “parts of machine tools for … cutting …, namely, … gear cutters, thread milling cutters.” 4 Merriam-Webster.com. The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). 5 “Machine Tool,” Encyclopaedia Britannica (2009). Also, the Board may take judicial notice of information from encyclopedias. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1721 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 n.61 (TTAB 2011); In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511, 1514 n.4 (TTAB 2001) (dictionary entries and other standard reference works). Serial No. 86536015 - 8 - The goods are at the very least quite closely related because the descriptions of goods in both the application and registration include machine tool parts for cutters (i.e., cutting tool inserts, milling cutter inserts, gear cutters, and thread milling cutters). Because there is no restriction or limitation in Applicant’s description of goods, Applicant’s cutting tool inserts could be used in Registrant’s gear cutters and thread milling cutters. We must consider the goods as they are described in the application and registration at issue. Octocom Sys, Inc. v. Houston Computers Servs. 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”). Under this du Pont factor, the Trademark Examining Attorney need not prove, and we need not find, similarity as to each and every product listed in the description of goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any item encompassed by the identification of goods in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). Serial No. 86536015 - 9 - Because there are no meaningful or relevant limitations as to channels of trade or classes of purchasers in the descriptions of goods in the cited registration or the application at issue which affect our channels of trade analysis, it is presumed that Applicant’s and Registrant’s goods move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods, including the channels of trade and class of purchasers for Applicant’s goods. See Octocom Sys, Inc. v. Houston Computers Servs. Inc., 16 USPQ2d at 1787; Paula Payne Products Co. v. Johnson Publishing Co., 177 USPQ at 77; In re i.am.symbolic, llc, 116 USPQ2d at 1412; In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). C. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Applicant contends that purchasing agents and skilled machinists purchase machine tools and machine tool parts, and that they exercise a high degree of care as professionals, rather than ordinary consumers at stores like HOME DEPOT or LOWES.6 Even assuming that the consumers exercise a high degree of purchaser care, this factor does not outweigh the similarity of the marks and the similarity of the goods. D. Balancing the factors. Because the marks are similar, the goods are closely related and there is a presumption that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that Applicant’s mark MACH for, inter alia, 6 Applicant’s Brief, p. 5 (7 TTABVUE 6). Serial No. 86536015 - 10 - “carbide inserts for power-operated metalworking machine tools, namely, cutting tool inserts, …, milling cutter inserts” is likely to cause confusion with the registered mark MACH Grinding for, inter alia, “parts of machine tools …, namely, … gear cutters, thread milling cutters.” Decision: The refusal to register Applicant’s mark MACH is affirmed.