Fabwel, Inc.

Trademark Trial and Appeal Board

Sep 2, 1999

No. 75132467 (T.T.A.B. Sep. 2, 1999)

Paper No. 16
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT, 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Fabwel, Inc.
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Serial No. 75/132,467
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Terence J. Linn of Van Dyke, Gardner, Linn & Burkhart for
applicant.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
____________
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Fabwel, Inc. has filed a trademark application to
register the mark FABWEL for “plastic molding services;
namely, molding plastic parts.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
Serial No. 75/132,467
2
“metal fabrication services to the order and/or
specifications of others,”2 that, when used on or in
connection with applicant’s services, it is likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
In the analysis of likelihood of confusion in this
case, two key considerations are the similarities between
the marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976).
Turning, first, to the marks, it is well established
that the proper test for determining likelihood of
confusion is whether the overall commercial impression

1 Serial No. 75/132,467, in International Class 40, filed July 11, 1996,
based on an allegation of use in commerce, alleging dates of first use
and first use in commerce as of November 1, 1994.
2 Registration No. 1,102,331 issued September 12, 1978, to Fabwel
Corporation, in International Class 37. [Sections 8 and 15 affidavits
Serial No. 75/132,467
3
engendered by the marks is the same or similar. Due to the
consuming public’s fallibility of memory, the emphasis is
on the likely recollection of the average customer, who
normally retains a general rather than a specific
impression of trademarks or service marks. Spoons
Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992); and In
re Steury Corporation, 189 USPQ 353 (TTAB 1975). Further,
although the marks must be compared in their entireties,
there is nothing improper in giving more weight to a
particular portion of a mark if it would be remembered and
relied upon to identify the goods and/or services. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). If both words and a design comprise the mark, then
the words are normally accorded greater weight because the
words are likely to make an impression upon purchasers that
would be remembered by them and would be used by them to
request the goods and/or services. In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461,
462 (TTAB 1985). See also: Giant Food, Inc. v. Nation’s
Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).

accepted and acknowledged, respectively. Registration renewed for a
Serial No. 75/132,467
4
There is no question that applicant’s and registrant’s
marks consist of the identical word FABWEL. In
registrant’s mark, the word FABWEL appears in a circle in
different-sized letters that conform to the inside of the
circle. However, this design element is minimal – the
letters appear in an ordinary script and the circle merely
frames the word FABWEL. Clearly, FABWEL is the dominant
portion of registrant’s mark; and applicant’s mark is
identical thereto. We conclude that the marks herein are
substantially similar. There is no evidence that the word
FABWEL is a weak mark, either because it is highly
suggestive or because there is significant third-party use
or registration of the same word for the same, similar or
related goods or services.
Turning to the services, it is well established that,
as we stated in In re Concordia International Forwarding
Corp., 222 USPQ 352, 356 (TTAB 1983), “. . . the greater
the degree of similarity in the marks, the lesser the
degree of similarity that is required of the products or
services on which they are being used in order to support a
holding of likelihood of confusion.”
The Examining Attorney submitted nine third-party
registrations, owned by six different parties, that contain

period of ten years from September 30, 1998.]
Serial No. 75/132,467
5
in their identifications of services the fabrication or
molding of both plastic and metal; and excerpts from The
Thomas Register of American Manufacturers showing three
entries for different companies that offer both metal and
plastic fabricating services. She contends that this
evidence establishes that applicant’s and registrant’s
services are sufficiently related that, when nearly
identical marks are used in connection with them, confusion
is likely.
Applicant contends, on the other hand, that although
both services are directed to the industrial market, there
is no meaningful relationship between applicant’s and
registrant’s services; that, at most, an insubstantial
minority of companies offer both services; and that the
services are technically different, requiring different
equipment and different technical training for the workers
who render each type of service.3
As evidence supporting its position, applicant points
to its prior registration for the mark FABWEL for
fiberglass4, which coexists on the register with the cited
registration. Additionally, applicant submitted over 100

3 Applicant has presented no evidence in this regard.
4 Registration No. 1,625,980, issued December 4, 1990, in International
Class 17. [Affidavits under Sections 8 and 15 accepted and
acknowledged, respectively.]
Serial No. 75/132,467
6
third-party registrations for marks identifying either
metal fabrication services or plastic molding services, but
not both services. Applicant contends that further
evidence of the differences between the services is the
fact that plastic molders and metal fabricators are
separately classified in the Thomas Register; and that the
services are in a different International Class in the
application than the services in the registration.
Finally, applicant argues that the purchasers of both
services are primarily businesses, whose agents are
knowledgeable and sophisticated with regard to such
services.
It is quite true that applicant’s plastic molding
services and registrant’s metal fabrication services are
different. However, it is well-settled that the services
of an applicant and registrant need not be similar or even
competitive in order to support a holding of likelihood of
confusion, it being sufficient for the purpose if such
services are related in some manner and/or if the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under conditions that would give rise, because of the marks
used thereon, to the mistaken belief that they emanate from
or are in some way associated with the same source. See,
Serial No. 75/132,467
7
In re International Telephone and Telegraph Corp., 197 USPQ
910 (TTAB 1978); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re Kangeroos U.S.A., 223 USPQ 1025, 1026-1027
(TTAB 1984), and cases cited therein.
While the number of third-party registrations and
Thomas Register entries including both plastic molding and
metal fabricating services is relatively small, it is
sufficient to establish that these services sometimes
originate from the same source. We are not convinced
otherwise by applicant’s arguments to the contrary. We
have no evidence regarding the significance of different
headings in the Thomas Register. Regarding the fact that
the services are in different International classes, we
note that the classification of goods and services in
trademark applications and registrations is for the
administrative ease of the PTO and is neither relevant to,
nor determinative of, likelihood of confusion. In re
Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992).
Applicant does not contend that the purchasers of
applicant’s and registrant’s services are different, rather
that they are knowledgeable commercial entities. However,
we note that knowledgeable business purchasers are not
immune from confusion when the marks are as similar as
these marks and there is evidence that the services with
Serial No. 75/132,467
8
which these marks are used do sometimes emanate from the
same source. See, In re General Electric Company, 180 USPQ
542 (TTAB 1973).
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, FABWEL, and registrant’s mark, FABWEL enclosed in a
circle, their contemporaneous use in connection with the
services involved in this case is likely to cause confusion
as to the source or sponsorship of such services.
We draw this conclusion notwithstanding applicant’s
existing registration for the mark FABWEL for fiberglass.
We note that a determination of likelihood of confusion
requires application of the law to the particular facts
involved in each case. In re E.I. duPont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Not only do the
services in this case differ from the goods identified in
applicant’s registration, but we do not know what the
record was in that case.
Further, to the extent that we have any doubt
concerning our conclusion that confusion is likely, we are
obligated to resolve such doubt in favor of the registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d
1025 (Fed Cir. 1988).
Serial No. 75/132,467
9
Decision: The refusal under Section 2(d) of the Act
is affirmed.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board