Hagemeyer North America, Inc.

Trademark Trial and Appeal Board

Aug 30, 2007

No. 78582377 (T.T.A.B. Aug. 30, 2007)

Mailed:
Aug. 30, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hagemeyer North America, Inc.
________

Serial No. 78582377
_______

Sidney R. Brown of Jones, Day for Hagemeyer North America,
Inc.

Emily Chuo,1 Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Walters, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark VERSAPRO, in standard character form, for Class
16 goods identified in the application, as amended, as:
Paint brushes; wands, attached to cans of spray
marking paint and not attached to machinery, for
marking ground with paint for use in
construction, excavation, underground utilities,

1 A different Trademark Examining Attorney handled this case
prior to appeal.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78582377
2
and traffic safety; trash can liners; and
packaging, namely, boxes of paper or cardboard,
and plastic bubble packs for wrapping or
packaging.2

At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the goods
identified in the application, so resembles the mark
VERSAPRO, previously registered3 on the Principal Register
(in standard character form) for

Air compressors, tool bits for machines, bits for
power drills, drill chucks for power drills,
electric handle-held drilling machines and parts
therefor, pile drivers, pneumatic hammers, impact
wrenches, hydraulic jacks, electric knives, air
brushes for applying paint, power-driven
wrenches, extension bars for power tools, power
tools, namely drills, routers, saws,
screwdrivers, shears, wrenches and ratchet
wrenches

in Class 7, and

Bits for hand drills, blades for hand saws,
manual jacks, pocket knives, garden tools, namely
trowels, weeding forks, spades, hoes, hand tools,
namely pliers, shovels, wrenches, screwdrivers,
hammers, saws, scrapers, ratchet wrenches, socket

2 Serial No. 78582377, filed March 8, 2005. The application is
based on applicant’s asserted bona fide intention to use the mark
in commerce. Trademark Act Section 1051(b), 15 U.S.C. §1051(b).

3 Reg. No. 2540609, issued on February 19, 2002. Affidavits
under Sections 8 and 15 accepted and acknowledged.

Ser. No. 78582377
3
sets, clamps, drills, planners [sic – planers?],
tweezers, knives, scissors

in Class 8, as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant and the Trademark Examining Attorney have
filed appeal briefs. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the Section 2(d) refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
We begin with the first du Pont factor, which requires
us to determine the similarity or dissimilarity of the
marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
Ser. No. 78582377
4
impression. Palm Bay Imports, Inc., supra. We find that
applicant’s VERSAPRO mark is identical in every respect to
the cited registered VERSAPRO mark. The first du Pont
factor weighs in favor of a finding of likelihood of
confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as recited in the
application and in the cited registration. It is settled
that it is not necessary that the goods be identical or
even competitive in order to support a finding of
likelihood of confusion. That is, the issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It
is sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
Ser. No. 78582377
5
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). Finally, in cases such as this where
the applicant’s mark is identical to the cited registered
mark, there need be only a viable relationship between the
respective goods in order to find that a likelihood of
confusion exists. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Opus One Inc., 60
USPQ2d 1812 (TTAB 2001); and In re Concordia International
Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Applying these principles in the present case, we find
that certain of the goods identified in applicant’s
application and certain of the goods identified in the
cited registration are similar and related, for purposes of
the second du Pont factor.4 In particular, we find that
applicant’s “paint brushes” are related to the goods
identified in the cited registration as “air brushes for
applying paint” and “hand tools, namely ... scrapers.”
Applicant’s “paint brushes” are broadly identified in
the application, and thus must be presumed to encompass all

4 If confusion is likely as to any of the goods or services
identified in a particular class in an application, Section 2(d)
bars registration as to all of the identified goods or services
in that class in the application. See Shunk Mfg. Co. v. Tarrant
Mfg. Co., 381 F.2d 328, 137 USPQ 881 (CCPA 1963); Baseball
America Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1848 n.9
(TTAB 2004); In re Alfred Dunhill Ltd., 224 USPQ 501, 504 (TTAB
1984); and In re Multivox Corp. of America, 209 USPQ 627, 632
(TTAB 1981).
Ser. No. 78582377
6
types of paint brushes for use in all types of painting by
all types of painters. These would include amateur and
professional artists, commercial painters and ordinary
homeowners undertaking do-it-yourself painting projects.
Applicant’s “paint brushes” and registrant’s “air
brushes for applying paint” are similar and related in that
they both are types of brushes used by artists, commercial
painters and homeowners as means of applying paint.
Applicant’s “paint brushes” are complementary and related
to registrant’s broadly-identified “scrapers,” which must
be presumed to include paint scrapers. Paint scrapers and
paint brushes would be purchased and used together as part
of any painting project requiring the removal of old paint
and the application of new paint.
For these reasons, we find that the “paint brushes”
identified in applicant’s application are similar and
related to the “air brushes for applying paint” and the
“scrapers” identified in the cited registration. As noted
above, because applicant’s mark is identical to the cited
registered mark, there need be only a viable relationship
between the respective goods in order to support a finding
of likelihood of confusion. We find that the requisite
viable relationship between the goods exists in this case.
Ser. No. 78582377
7
The second du Pont factor weighs in favor of a finding of
likelihood of confusion.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels for the
respective goods. Applicant’s identification of goods
includes no trade channel restrictions or limitations as to
its “paint brushes.” Likewise, registrant’s identification
of goods includes no trade channel restrictions or
limitations as to its “air brushes for applying paint” and
its “scrapers.” We therefore must presume that these
respective goods are marketed in all normal trade channels
for such goods and to all normal classes of purchasers for
such goods. In re Elbaum, 211 USPQ 639 (TTAB 1981). The
evidence of record includes printouts from the websites of
four art supply retailers that sell both paint brushes and
air brushes for use by artists.5 The normal trade channels
for paint brushes and paint scrapers also would be the
same, including hardware, home improvement, and painting
supply stores. Because the trade channels for the
respective goods are similar, the third du Pont factor
weighs in favor of a finding of likelihood of confusion.

5 These retailers are Discount Art Supplies
(www.discountart.com), In2Art (www.in2art.com), Blick Art
Materials (www.dickblick.com), and Madison Art Shop
(www.madisonartshop.com).

Ser. No. 78582377
8
The fourth du Pont factor requires us to consider the
conditions of purchase. We find that although the
purchasers of applicant’s paint brushes and registrant’s
scrapers would include professional artists and commercial
painters who might be expected to be knowledgeable about
the tools that they use, the normal purchasers of these
goods also must be deemed to include ordinary consumers
such as amateur artists and homeowners undertaking do-it-
yourself painting projects. These purchasers would
exercise only a normal degree of care in purchasing these
products. Even as to the professionals, their knowledge of
the products themselves does not necessarily eliminate the
confusion that is likely to result from the use of the
identical VERSAPRO mark on these related goods. See, e.g.,
In re Decombe, 9 USPQ2d 1812. These products are not
particularly expensive, and certainly not so expensive that
the degree of care taken in purchasing them necessarily
would immunize their purchasers from source confusion. For
these reasons, and contrary to applicant’s argument, we
find that the fourth du Pont factor does not weigh
significantly, or even at all, in applicant’s favor in our
likelihood of confusion analysis. To the extent that it
does, it clearly is outweighed by the evidence of record on
Ser. No. 78582377
9
the other du Pont factors which supports a finding of
likelihood of confusion.
Balancing all of the evidence of record as it pertains
to the relevant du Pont factors, we find that a likelihood
of confusion exists. We have considered all of applicant’s
arguments to the contrary, but we find them to be
unpersuasive. To the extent that any doubts might exist as
to the correctness of our conclusion that confusion is
likely, we resolve such doubts against applicant. See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir.
1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.
Decision: The refusal to register is affirmed.