Faulks & Cox Ltd.

Trademark Trial and Appeal BoardSep 23, 2016

No. 79162715 (T.T.A.B. Sep. 23, 2016)

This Opinion is not a Precedent of the TTAB Mailed: September 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Faulks & Cox Ltd. _____ Serial No. 79162715 _____ Kit M. Stetina of Stetina Brunda Garred & Bruckner, for Faulks & Cox Ltd. Nicholas A. Coleman, Acting Senior Attorney, Law Office 121, Michael W. Baird, Managing Attorney. _____ Before Cataldo, Kuczma and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Faulks & Cox Ltd. (“Applicant”) seeks registration on the Principal Register of the mark GORILLA BROOM (in standard characters) for Brooms and cleaning brushes for the animal care and building construction fields in International Class 21.1 1 Application Serial No. 79162715 was filed on October 8, 2014, based upon a request for extension of protection under Section 66(a) of the Trademark Act, and asserting ownership of International Registration No. 1241183, issued on October 8, 2014. The wording “broom” is disclaimed. Applicant further claims ownership of prior U.S. Registration No. 3619474. Serial No. 79162715 - 2 - The Trademark Examining Attorney refused registration of the application 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, GORILLA (typed) for “cleaning pads for machine or manual use” in International Class 21 as to be likely to cause confusion, mistake or deceive.2 When the refusal was made final, Applicant requested reconsideration. After reconsideration was denied, Applicant appealed. We affirm the refusal to register. I. Likelihood of Confusion 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 likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors now before us, are discussed below. To the extent that any other du Pont factors for which no argument or evidence was presented may nonetheless be applicable, we treat them as neutral. 2 Registration No. 1198790, issued June 22, 1982; Section 8 accepted; Section 15 acknowledged; renewed (second). A mark depicted as a typed drawing is the legal equivalent of a standard character mark. ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1236 n.5 (TTAB 2015) (citing Trademark Manual of Examining Procedure § 807.03(i)). Serial No. 79162715 - 3 - A. The similarity or dissimilarity and nature of the goods Applicant’s goods are “brooms and cleaning brushes for the animal care and building construction fields.” Registrant’s goods are “cleaning pads for machine or manual use.” It is the Examining Attorney’s position that Applicant’s and Registrant’s goods are highly similar and closely related because both Applicant’s and Registrant’s goods are used in connection with “cleaning appliances.” (6 TTABVUE 7). The Examining Attorney submits that consumers of general cleaning products such as brooms and brushes are conditioned to see cleaning pads and similar items offered under the same or similar marks. (6 TTABVUE 8). To support his position that the goods are closely related, the Examining Attorney submitted Internet evidence demonstrating that suppliers of cleaning products offer cleaning cloths and pads and brooms and brushes under the same or similar mark at the residential, industrial and commercial level. (April 7, 2015 Office Action; November 9, 2015 Office Action). The Examining Attorney also included evidence from Registrant’s website showing that it sells both cleaning pads and brushes and brooms. (April 7, 2015 Office Action). Applicant provided similar evidence of Registrant’s website. (October 12, 2015 Response to Office Action). Applicant argues that its brushes and brooms differ from cleaning pads in “both structure and function” and that the uses and purposes of the goods are different. (4 TTABVUE 9). Applicant submits that its goods are for sweeping debris to provide a “coarse level of cleanliness” while Registrant’s goods are used for Serial No. 79162715 - 4 - polishing structures “for more refined cleaning.” (4 TTABVUE 9). However, the asserted differences in the goods urged by Applicant are not reflected in their respective identifications. In making our determination under the second du Pont factor, 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.”). Because Applicant’s goods are not restricted to brooms or brushes providing a coarse level of cleaning, and Registrant’s goods similarly are not restricted to cleaning pads providing more refined cleaning, Applicant’s arguments regarding the asserted differences in the goods’ function are unavailing. It is settled that the goods of Applicant and Registrant need not be identical or directly competitive in order for there to be a likelihood of confusion. Rather, the respective goods need only be related in some manner or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come Serial No. 79162715 - 5 - from a common source. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1010 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984). Notwithstanding Applicant’s arguments, we do not find a significant distinction between brooms and brushes and cleaning pads. Here, we find the Internet evidence provided by the Examining Attorney, including evidence from Registrant’s own website (provided by both the Examining Attorney and Applicant), establishes that Registrant’s cleaning pads are closely related to Applicant’s brooms and brushes as all of these goods are cleaning products or tools that are offered by the same company under the same mark to purchasers seeking cleaning supplies. B. Similarity or dissimilarity of likely-to-continue trade channels Applicant argues that its goods and Registrant’s goods are meant for different end users, specifically, Registrant’s goods are meant for “Professional End Users” while Applicant’s goods are intended for use by those in the animal care and building construction industries. (4 TTABVUE 9). However, Registrant’s goods, as identified in the registration, are not limited or restricted as to trade channels or fields of use or classes of purchaser. We therefore must presume that these goods are marketed in all normal trade channels and to all normal classes of purchasers for such goods, including the trade channels specified in Applicant’s identification of goods, i.e., the fields of animal care and building construction industries. See The Kalart Company, Serial No. 79162715 - 6 - Inc. v. The Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139, 140-41 (CCPA 1958); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). C. The similarities or dissimilarities between the marks in their entireties, in terms of appearance, sound, connotation and commercial impression We consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 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 connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Our analysis cannot be predicated on dissection of the involved marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Rather, we consider the marks in their entireties. Id at 750. Nonetheless, 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 the ultimate conclusion rests on a consideration of the marks in their entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Applicant’s mark is GORILLA BROOM and Registrant’s mark is GORILLA. In terms of appearance, sound and connotation, the marks look and sound similar and Serial No. 79162715 - 7 - have a similar meaning as both contain the term GORILLA. Applicant has appropriated the entirety of Registrant’s mark and merely added the descriptive term BROOM to it. Additionally, although we have considered the marks in their entireties, the term GORILLA is entitled to greater weight in our assessment of likelihood of confusion because the descriptive term BROOM in Applicant’s mark has less source-identifying value. See In re National Data Corp., 224 USPQ at 751. The term GORILLA appears to be arbitrary as applied to the goods at issue, or perhaps slightly suggestive of the goods’ strength. The placement of GORILLA in the initial position of Applicant’s mark further persuades us that GORILLA is the dominant term in the mark GORILLA BROOM. See Palm Bay, 73 USPQ2d at 1692; Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.”). Although Applicant submits the marks are different in sound and appearance and have different overall commercial impressions due to the addition of the term BROOM in its mark, generally, the addition of subordinate or descriptive matter to another’s mark does not obviate a finding of similarity. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Viewed in their entireties with non-dominant features appropriately discounted, the marks [GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila] become nearly identical ....”); Bellbrook Dairies, Inc. v. Hawthorn-Mellody Farms Dairy, Inc., 253 F.2d 431, 117 USPQ 213, 214 (CCPA 1958) (“SLIM” and “VITA-SLIM” confusingly similar where SLIM is the dominant part of the mark, Serial No. 79162715 - 8 - VITA disclaimed). In this case, the addition of the descriptive term BROOM simply is insufficient to distinguish the marks GORILLA and GORILLA BROOM. We find that the marks are more similar than dissimilar in appearance, sound and meaning, and have substantially similar overall commercial impressions. D. Number and Nature of Similar Marks in Use on Similar Goods Applicant argues that there are “numerous” third-party registrations of GORILLA derivative marks for similar goods, which evidences that the “marketplace is crowded” and the “cited mark has ‘weak trademark significance’” in the field.3 (4 TTABVUE 11). On reconsideration, Applicant provided TSDR printouts of six GORILLA and GORILLA-derivative registrations for various goods.4 However, these third-party registrations are not probative to demonstrate weakness, as the registrations recite products which are unrelated to the cleaning products at issue. See e.g., In re Amtel, Inc., 189 USPQ 58 (TTAB 1975) (citations omitted) (third-party registrations pertaining to unrelated goods that move in different trade channels do not demonstrate weakness of “Freeway” in automotive field). 3 In its October 12, 2015 response, Applicant provided a list of third-party GORILLA and GORILLA-composite registrations. The Examining Attorney advised that this submission was insufficient to make the registrations of record. November 9, 2015 Office Action. See In re Eagle Crest Inc., 96 USPQ2d 1227 (TTAB 2010); In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006) (generally, a mere listing is insufficient to make such registrations of record). 4 One of these registrations is for Applicant’s mark GORILLA TUB for non-metal waste buckets for garden, household, catering, domestic and kitchen use and non-metal containers for household use. The remainder include GORILLA TOUGH for pet cages; GORILLA COFFEE for mugs, various items of clothing, coffee and coffee flavored products; GORILLA for disposable latex gloves; GORILLA BOTTLE for refillable travel drink bottles; and GORILLA for clothes dryer hangers. Serial No. 79162715 - 9 - II. Conclusion After considering all of the arguments and evidence properly of record and all relevant du Pont factors, including those not specifically discussed herein, we conclude that because the marks are similar, the goods are related and move in the same channels of trade, confusion is likely between Applicant’s mark and the mark in the cited registration. Decision: The Section 2(d) refusal to register Applicant’s mark GORILLA BROOM is affirmed.