Ermanco Inc.

Trademark Trial and Appeal Board

Dec 17, 2002

No. 76104568 (T.T.A.B. Dec. 17, 2002)

Mailed: December 17,2002
Paper No.13
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ermanco Inc.
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Serial No. 76/104,568
_______
David Lesht of Cook, Alex, McFarron, Manzo, Cummings & Mehler,
Ltd. for Ermanco Inc.
Patrick J. Jennings, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Hohein, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Ermanco Inc. has filed an application to register the
mark "PARAGON TECHNOLOGIES" for "electrical control panels for
operating a material handling system which includes conveyors
and/or vehicles."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its goods, so resembles the
mark "PARAGON," which is registered, as illustrated below,
1 Ser. No. 76/104,568, filed on August 7, 2000, which is based on an
allegation of a bona fide intent to use such term in commerce. The
term "TECHNOLOGIES" is disclaimed.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/104,568
2
for "electronic automatic power control apparatus,"2 as to be
likely to cause confusion, or mistake or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our 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.3
Turning first to consideration of the respective goods,
applicant argues that, other than the fact that "both [are]
electronic in nature," such goods "are quite different" in their
uses. Specifically, applicant maintains that:
Power control apparatus of the type
designated in the reference registration is
2 Reg. No. 1,448,181, issued on July 21, 1983, which sets forth the
year 1976 as a date of both first use anywhere and first use in
commerce; combined affidavit §§8 and 15.
3 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. No. 76/104,568
3
typically electronic timers and the like for
turning electrical devices on and off. By
contrast control panels for operating a
material handling system which includes
conveyors and/or vehicles typically function
to regulate the movement of goods along
selected travel paths. Consistent with this,
... a telephone call to the registrant
indicated that it does not manufacture or
offer to sell control panels of any type, let
alone control panels for material handling
systems.
Applicant concludes, in view thereof, that "its goods are not
'related' to those of the cited registration" and that its goods,
which are identified as being for a particular use, thus "are
distinct from" registrant's goods. Applicant also insists that
its goods do not overlap with, nor are they encompassed by, the
identification of registrant's goods. In addition, because its
goods "are not impulse items but rather are sold to sophisticated
customers of material handling systems," applicant maintains that
confusion from contemporaneous use of the respective marks and
goods is unlikely.
We concur with the Examining Attorney, however, that
the goods at issue are so closely related that their marketing
under the same or similar marks would be likely to cause
confusion as to their source or sponsorship. As the Examining
Attorney correctly notes, 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
Ser. No. 76/104,568
4
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same producer 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).
Moreover, it well established that the issue of
likelihood of confusion must be determined on the basis of the
goods as they are set forth in the involved application and the
cited registration, and not in light of what such goods are shown
or asserted to actually be. See, e.g., Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Canadian Imperial Bank of Commerce, N.A.
v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed.
Cir. 1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199
(Fed. Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ
937, 940 (Fed. Cir. 1983); and Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973). Thus, where applicant's and registrant's goods are
broadly described as to their nature and type, it is presumed in
each instance that in scope the application and registration
encompass not only all goods of the nature and type described
therein, but that the identified goods move in all channels of
trade which would be normal for those goods and that they would
be purchased by all potential buyers thereof. See, e.g., In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Here, not only is there no evidence of record to
substantiate applicant's assertions that registrant's goods are
Ser. No. 76/104,568
5
in the nature of and limited to "electronic timers and the like
for turning electrical devices on and off" and that, in fact, "a
telephone call to registrant "indicated that it does not
manufacture or offer to sell control panels of any type, let
alone control panels for material handling systems," but such
would in any event be irrelevant and immaterial to determination
of the issue of likelihood of confusion. Furthermore, as the
Examining Attorney persuasively points out in his brief:
The applicant's goods, "electrical
control panels for operating a material
handling system which includes conveyors
and/or vehicles," are closely related to the
registrant's goods, "electronic automatic
power control apparatus. Though the
applicant says that registrant's "electronic
automatic power control apparatus" generally
describes "electronic timers and the like for
turning electrical devices on and off," ...
nothing in the registrant's identification of
goods would preclude the registrant's "power
control apparatus" from performing some [of]
the same functions as the applicant's goods,
including the operation of [a] "material
handling system which includes conveyors
and/or vehicles. In fact, the registrant's
"power control apparatus" could regulate the
flow of goods along selected travel paths,
just as control panels for "material handling
systems" often do. .... Alternatively, the
registrant's goods could turn the applicant's
goods on or off. Either way, the
[respective] goods ... appear to control
and/or regulate the flow and/or output of
power.
In addition, and contrary to applicant's argument, the
identification of registrant's goods as "electronic automatic
power control apparatus" is arguably broad enough to encompass
such goods as "electrical control panels," including applicant's
"electrical control panels for operating a material handling
system which includes conveyors and/or vehicles."
Ser. No. 76/104,568
6
Applicant's goods, therefore, must be considered as
identical in part or, at a minimum, plainly are closely related
to registrant's goods, such that the marketing of the respective
goods under the same or similar marks would be likely to cause
confusion as to the source or sponsorship thereof, irrespective
of the limitation of applicant's goods to the operation of a
material handling system which includes conveyors and/or
vehicles. While we concur with applicant that its goods, like
those of registrant, are not impulse items and would, instead, be
marketed to and bought by sophisticated purchasers, the fact that
such purchasers would typically be knowledgeable and
discriminating consumers who would exercise care in their
selection of applicant's and registrant's products "does not
necessarily preclude their mistaking one trademark for another"
or demonstrate that they otherwise would be 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).
Turning, therefore, to consideration of the respective
marks, applicant contends that:
When properly considered in their
entirety, applicant's PARAGON TECHNOLOGIES
mark differs in sight, sound and meaning from
the cited PARAGON mark. Numerous
registrations are directed to PARAGON alone
or in combination with another word(s) and
during prosecution, applicant made of record
a search ... showing over twenty (20)
registered marks in International Class 9
alone that include the term "PARAGON." Thus,
PARAGON is a relatively weak term and it has
extremely limited source indicating power.
Ser. No. 76/104,568
7
Specifically, applicant notes that its mark "is coined" and,
notwithstanding the disclaimer of the word "TECHNOLOGIES," argues
that its mark "is readily distinguishable from the cited mark"
because:
The coupling of PARAGON with
TECHNOLOGIES invokes a different commercial
impression than just PARAGON alone. In
addition to PARAGON TECHNOLOGIES being two
words versus PARAGON being one word and the
concomitant difference in sight and sound
resulting therefrom, the marks have totally
different connotations. PARAGON by itself
means something that is a model of
excellence. PARAGON TECHNOLOGIES presents a
unitary expression or at least one where the
emphasis is on TECHNOLOGIES and PARAGON,
while normally thought of as a noun, modifies
TECHNOLOGIES when the two words are coupled.
Thus, applicant's mark evokes the image of a
"high tech" company. Furthermore, PARAGON
has no known significance with respect to
applicant's goods or for that matter with
respect to electrical goods, in general.
Thus, according to applicant, "the mere fact that the two marks
include a common term is not alone enough to create a likelihood
of confusion."
Applicant, as alluded to above, further contends that,
"in testing for likelihood of confusion, the number and nature of
similar marks in use on similar goods must also be considered,"
arguing in particular that it made of record "more than twenty
(20) active registrations in International Class 9 which include
PARAGON as part of the mark." Such evidence, applicant
maintains, demonstrates that "the source identifying power of
PARAGON is extremely limited and narrowly focused to specific
goods."
Ser. No. 76/104,568
8
We agree with the Examining Attorney, however, that
when considered in their entireties, applicant's "PARAGON
TECHNOLOGIES" mark is so similar to registrant's "PARAGON" mark
that their contemporaneous use is likely to cause confusion as to
the origin or affiliation of the respective goods. As our
principal reviewing court has indicated, while marks must be
considered in their entireties, including any descriptive matter,
in articulating reasons for reaching a conclusion on the issue of
likelihood of confusion, "there is nothing improper in stating
that, for rational reasons, more or less weight has been given to
a particular feature of a mark, provided [that] the ultimate
conclusion rests on consideration of the marks in their
entireties." In re National Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985). For instance, according to the court,
"that a particular feature is descriptive ... with respect to the
involved goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark ...." Id.
In the present case, when the respective marks are
considered in their entireties, it is plain that they are highly
similar in appearance and sound and substantially the same in
connotation and commercial impression. In particular, we concur
with the Examining Attorney that the dominant and distinguishing
portion of applicant's "PARAGON TECHNOLOGIES" mark is the term
"PARAGON" due to the descriptiveness, as evidenced by applicant's
disclaimer, of the word "TECHNOLOGIES." The term "PARAGON," as
applicant admits, "has no known significance with respect to
applicant's goods or for that matter with respect to electrical
Ser. No. 76/104,568
9
goods, in general." Although, when used in connection with
applicant's electrical control panels for operating a material
handling system and registrant's electronic automatic power
control apparatus, such term is perhaps suggestive rather than
arbitrary, it is still the case that it conveys substantially the
same connotation of something that is a model of excellence
whether the term is utilized as a mark by itself or in
combination with the descriptive word "TECHNOLOGIES."
Moreover, as the Examining Attorney correctly points
out, the proper test for confusing similarity is not whether the
respective marks are distinguishable on the basis of a side-by-
side comparison inasmuch as such is not ordinarily the way that
customers will be exposed to the marks. Instead, it is the
similarity of the general overall commercial impression
engendered by the marks which must determine, due to the
fallibility of memory and the concomitant lack of perfect recall,
whether confusion as to source or sponsorship is likely. The
proper emphasis is accordingly on the recollection of the average
purchaser, who normally retains a general rather than a specific
impression of marks. See, e.g., Grandpa Pidgeon's of Missouri,
Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973);
Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733 (TTAB 1981);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). Here the descriptive word "TECHNOLOGIES" in applicant's
"PARAGON TECHNOLOGIES" mark, while not present in registrant's
"PARAGON" mark, is insufficient to distinguish such marks due, as
noted above, to the fact that their shared term "PARAGON" imparts
Ser. No. 76/104,568
10
a high degree of visual and phonetic similarity to the marks as
well as a substantial identity in their connotation. Overall,
the respective marks consequently project substantially the same
general commercial impression.
With respect to applicant's remaining contention, it is
pointed out that the third-party registrations upon which it
relies are not evidence that the marks which are the subjects
thereof are in use and that the relevant purchasing public,
having become conditioned to encountering certain products under
marks which consist of or include the term "PARAGON," is familiar
therewith and is therefore able to distinguish the source thereof
based upon differences in such marks. See, e.g., AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973); In re Hub Distributing, Inc., 218 USPQ 284, 285-86
(TTAB 1983); and National Aeronautics & Space Administration v.
Record Chemical Co., Inc., 185 USPQ 563, 567 (TTAB 1975). In
addition, as the Examining Attorney accurately observes, of the
third-party registrations made of record by applicant, only two
cover electrical products which are even arguably related to the
goods at issue in this case4 and those two registrations are
owned by the same third party. Thus, the number and nature of
any similar mark(s) in use on the same or similar goods is not a
relevant du Pont factor in this appeal.
4 Reg. No. 758,044, issued on October 8, 1963 for the mark "PARAGON"
for "electric motors, time delay relays, and electric switches" and
Reg. No. 758,088, likewise issued on the same date for the mark
"PARAGON" for "electric timing devices of the horological instrument
type, geared so as to actually measure time in controlling intervals
in connection with electric circuits including time controls, cycle
repeaters, [and] interval, reset and sequence timers."
Ser. No. 76/104,568
11
Finally, as recognized by the Examining Attorney, to
the extent that applicant may instead mean to utilize the copies
of the third-party registrations in a manner analogous to a
dictionary so as to show that the term "PARAGON" is entitled to a
narrow scope of protection because it is suggestive of certain
kinds of products and, thus, has been adopted by various third
parties as part of their marks for that reason, we again note
that there are but two third-party registrations, owned by the
same entity, which are even arguably in the same general field as
the goods at issue herein. However, even if applicant's "PARAGON
TECHNOLOGIES" mark and the cited registrant's "PARAGON" mark are
regarded as suggestive of the respective goods, it is still the
case that, as discussed previously, such marks are substantially
the same in their overall connotation and general commercial
impression.
We accordingly conclude that consumers and potential
customers, who are familiar or acquainted with registrant's
"PARAGON" mark for "electronic automatic power control
apparatus," would be likely to believe, upon encountering
applicant's "PARAGON TECHNOLOGIES" mark for "electrical control
panels for operating a material handling system which includes
conveyors and/or vehicles," that such closely related, if not in
part legally identical, goods emanate from, or are sponsored by
or associated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.