Hendrickson USA, LLC

Trademark Trial and Appeal BoardJun 16, 2016

No. 86421996 (T.T.A.B. Jun. 16, 2016)

This Opinion is Not a Precedent of the TTAB Mailed: June 16, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Hendrickson USA, LLC _____ Serial No. 86421996 _____ David P. Dureska of Dureska Kennedy & Moore LLC, for Hendrickson USA, LLC David Yontef, Trademark Examining Attorney, Law Office 118, Thomas G. Howell, Managing Attorney. _____ Before Quinn, Greenbaum and Gorowitz, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Hendrickson USA, LLC (“Applicant”) seeks registration on the Principal Register of the mark MONUMAAX (in standard characters) for Suspension systems for heavy-duty land vehicles in International Class 12.1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the ground that Applicant’s 1 Application Serial No. 86421996 was filed on October 13, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 86421996 - 2 - mark, when used on or in connection with Applicant’s goods, is likely to cause confusion with the mark MONOMAX (in standard characters) for “Shock absorbers for light trucks and sport utility vehicles” in International Class 12.2 When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Likelihood of Confusion - Applicable Law Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and 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 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.”). A. Comparison of the Marks. We first address the du Pont likelihood of confusion factor focusing on “‘the similarity or dissimilarity of the marks in their entireties as to appearance, sound, 2 Registration No. 2511090 issued on November 20, 2001. Renewed. Serial No. 86421996 - 3 - connotation and commercial impression.’” Palm Bay Imps. 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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The marks MONUMAAX and MONOMAX are highly similar in appearance and sound. Both are three-syllable terms that begin with the letters “MON,” followed by a single vowel, and end with the phonetically equivalent terms “MAAX” and MAX.” The only differences in appearance between the two marks are the double “A” and the presence of the letter “U” in place of the letter “O” in Applicant’s mark. These differences in appearance are relatively minor, especially since they are embedded in the middle of each mark. Given the overall visual similarity in the terms, as well as the similarity in sound discussed below, it is unlikely that consumers will notice the different letters, or treat them as a distinguishing feature. In terms of sound, we recognize that there is no correct pronunciation of a mark that, like each of the marks before us, is not a recognized word. StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1651 (Fed. Cir. 2014); Viterra, 10 USPQ2d at 1912. Nonetheless, the facts that Applicant’s mark and Registrant’s mark share the same structure and differ by only two letters creates Serial No. 86421996 - 4 - aural similarity. See Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (finding similarity between LEGO and MEGO). Moreover, even if Applicant is correct that “in all examples Applicant has found of words using the prefix ‘Monu,’ the prefix is always pronounced ‘män-ye’”3 whereas “the prefix “Mono” is pronounced as ‘mon-oh’,”4 the difference between the “U” and O” sound is slight, at best, especially when combined with the phonetically equivalent final syllables MAAX and MAX. Thus, consumers are likely to pronounce the marks MONUMAAX and MONOMAX similarly, and to the extent any minor difference in pronunciation exists, consumers who hear the marks spoken by others are not likely to even notice the difference. See Viterra, 101 USPQ2d at 1912 (XCEED and X-SEED similar). Slight differences in the sound of similar marks do not avoid a likelihood of confusion. In re Energy Telecomms. & Elec. Ass’n, 222 USPQ 350, 352 (TTAB 1983). Applicant asserts that the prefix “mono” “has a specific meaning for shock absorbers used with small trucks and SUVs … [which] typically are manufactured with either a twin tube design or a monotube design, as is shown by Registrant’s own website.”5 Applicant posits that the combination of MONO and MAX in Registrant’s mark connotes shock absorbers that feature a monotube design, while the combination of MONU and MAAX in Applicant’s mark creates the commercial impression that Applicant’s shock absorbers are “very important,” “very great,” 3 17 TTABVUE 7. 4 14 TTABVUE 9. 5 14 TTABVUE 10. Serial No. 86421996 - 5 - “highly significant” or “outstanding.”6 However, Applicant’s mark MONUMAAX and Registrant’s mark MONOMAX are coined terms with no known meanings. And because the marks look and sound so similar, consumers who ascribe one of the asserted meanings to one of the marks are equally likely to ascribe the same asserted meaning to the other mark. The commercial impressions of the marks therefore are the same. While there are some specific differences between the two marks, we find that in their entireties, Applicant’s mark MONUMAAX and Registrant’s mark MONOMAX are highly similar in appearance and sound. The similarity in sound and overall appearance is sufficient to find that the first du Pont factor favors a finding of likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (a finding of similarity as to any one factor (sight, sound or meaning) alone may be sufficient to support a holding that the marks are confusingly similar). Additionally, marks both create similar overall commercial impressions. B. Relatedness of the Goods, Channels of Trade and Conditions of Purchase. With regard to the goods, channels of trade and conditions of purchase, we must make our determinations under these factors based on the goods as they are identified in the application and registration. See In re Dixie Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. 6 14 TTABVUE 11, referring to the definition of “monumental” from http://www.merriam- webster.com/dictionary/monumental attached to September 14, 2015 Request for Reconsideration (4 TTABVUE 27). Serial No. 86421996 - 6 - Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may perceive [the respective goods and services of the parties] as related enough to cause confusion about the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62 USPQ2d at 1004). When analyzing the similarity of the goods, “it is not necessary that the products of the parties be similar or even competitive to support a finding of likelihood of confusion.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000) (The goods need not be identical or even competitive to find a likelihood of confusion). Rather, “likelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven, 83 USPQ2d at 1724). The issue is whether there is a likelihood of confusion as to the source of the goods, not whether purchasers would confuse the goods. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984). Serial No. 86421996 - 7 - As noted above, Applicant’s goods are identified as “suspension systems for heavy- duty land vehicles,” and Registrant’s goods are identified as “shock absorbers for light trucks and sport utility vehicles.” The DICTIONARY OF AUTOMOTIVE TERMS defines “suspension system” as “a system that cushions the passenger compartment of the vehicle from the bumps and shocks caused by the wheels moving over irregular road surfaces … includes springs, shock absorbers, steering linkage, upper and lower control arms, torsion bars, stabilizers, etc.,” and it defines “shock absorber” as “an oil filled device used to control spring oscillation in the suspension system. At least one shock absorber is found at each wheel.”7 Thus, the goods are inherently related to the extent that shock absorbers are a component part of vehicular suspension systems. The question is whether the different vehicle types identified in the application and registration sufficiently distinguish the identified goods. As an initial point, we note that Applicant and the Examining Attorney disagree as to the meaning of “heavy duty trucks” and “light trucks/SUVs,” with the former contending that they are classified according to the maximum weight of the vehicle, and the latter contending that they are classified based on the maximum load the vehicle can carry. For purposes of this decision, we adopt Applicant’s definition, as the listing for “Light truck” from the DICTIONARY OF AUTOMOTIVE TERMS, which the Examining Attorney made of record, comports therewith.8 7 http://www.motorea.com/dictionary/sh.htm attached to December 9, 2014 Office Action. 8 6 TTABVUE 11. http://www.motorea.com/dictionary/li.htm. We acknowledge that this source defines “Light-duty” as “Something that is built for light loads or non-severe use. Opposite to Heavy-Duty.” However, the shock absorbers identified in the registration are for “light trucks and sport utility vehicles,” not for “light-duty trucks.” The listing for “Light truck” defines the term as “1. A vehicle weighing less than 14,000 lbs. 2. Typically a vehicle Serial No. 86421996 - 8 - Applicant argues that heavy-duty vehicles are “specialized” and comprise “a distinct class of vehicles with specialized parts, designed to accommodate the significant increase in vehicle weight compared to smaller vehicles such as light trucks and sport utility vehicles.”9 As such, parts for such vehicles, including suspension systems, “are unlikely to be sold and marketed with non-heavy-duty parts, such as those for use in light trucks and sport utility vehicles as described in the ‘090 registration.”10 Rather, Applicant posits that Applicant’s identified goods are sold specifically through authorized distributors which specialize in heavy-duty vehicle parts.11 Applicant acknowledges that some of Applicant’s distributorships, such as Volvo, sell parts for automotive and heavy-duty vehicles, but argues that the trade channels are distinct because separate divisions in the distributorships handle the sales.12 We do not find Applicant’s arguments persuasive. Although the record contains only one third-party registration covering goods of the type identified in the under 3 tons, which includes pickups, passenger vans, and most 4WD vehicles and for which one does not need a special license. Compare HGV. 3. Department of Transportation definition: All single unit two-axle, four-tire trucks, including pickup trucks, sport utility vehicles, vans, motor homes, etc. 4. Energy information definition: all trucks weighing 8,500 pounds or less.” 6 TTABVUE 13. None of the definitions of “Light truck” pertain to the weight of the load. 9 14 TTABVUE 13. 10 Id. 11 Applicant provided a list of its distributorships with its Request for Reconsideration. 4 TTABVUE 60-62. 12 Applicant attached to its Request for Reconsideration printouts from www.volvotrucks.com and www.volvopartswebstore.com. 4 TTABVUE 64-68. Serial No. 86421996 - 9 - application and registration13 (see In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993) (copies of use-based, third-party registrations may serve to suggest that the goods are of a type which may emanate from a single source)), the Examining Attorney also submitted printouts from various third-party websites showing that companies such as Bilstein14, Gabriel15 and Sachs16 manufacture shock absorbers for heavy duty trucks and light trucks/SUVs, and companies such as Link17 and WABCO18 manufacture suspensions for heavy duty trucks and light trucks/SUVs. Moreover, the record establishes that the types of goods in the application and registration move in the same trade channels. For example, Truckcomponentsonline.com offers suspensions for heavy duty trucks and pickups, vans, RVs and cars, plus “suspension vehicle shocks,”19 Beattie Spring “Michigan’s Leading Suspension Specialists” offers “full suspension service and suspension parts sales” for cars, light duty trucks, and heavy duty trucks, and also provides shock and strut installation20, Dendoff Spring supplies original and aftermarket suspension components for automotive and heavy duty trucks as well as shock absorbers, and 13 Reg. No. 2768882 for the mark POWER HEAVY DUTY for “automotive, vehicle and heavy duty truck parts and accessories, namely, … shock absorbers, suspensions …”, attached to March 31, 2015 Final Office Action. 14 11 TTABVUE 13-16. 15 10 TTABVUE 2-9. 16 12 TTABVUE 18-20. 17 7 TTABVUE 6-12. 18 6 TTABVUE 13-16. 19 9 TTABVUE 2-8, 10 TTABVUE 12-13. 20 12 TTABVUE 9. Serial No. 86421996 - 10 - markets itself as “[m]ore than spring makers, we are also resellers of suspension parts for most lines of automobiles and trucks around the world,”21 and NFS Truck Parts Specialists sells, installs and repairs suspensions for light, medium, and heavy- duty trucks, and also sells shock absorbers.22 Even if, as Applicant contends, distributors such as Volvo sell heavy duty and light duty vehicle parts through separate divisions, we agree with the Examining Attorney that consumers who already are familiar with Volvo’s use of its mark with suspension parts for heavy duty vehicles, and who encounter Volvo’s mark on suspension parts for light duty trucks/SUVs, are likely to believe that Volvo is a house mark applied to many types of automotive parts, and that the suspension parts emanate from, are sponsored by, or are affiliated with, the same company. Based upon the evidence of record, we find that consumers would believe that Applicant’s identified “suspension systems for heavy-duty land vehicles” are related to Registrant’s identified “shock absorbers for light trucks and sport utility vehicles,” and the channels of trade are the same or similar. As to purchasing conditions, Applicant argues, without evidentiary support, that purchasers of the goods identified in the application and registration are sophisticated. Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 27 USPQ2d 1846, 1849 (Fed. Cir. 1993) (“mere attorney arguments unsubstantiated by record evidence are suspect at best”). Despite the lack of evidence, we recognize that at 21 12 TTABVUE 10-11. 22 12 TTABVUE 23. Serial No. 86421996 - 11 - minimum, these goods would not be considered impulse purchases. On the other hand, the record does not support a finding that the conditions of sale would outweigh the other du Pont factors. As the Examining Attorney correctly observed, even sophisticated purchasers are not necessarily immune from source confusion. Imagineering Inc. v. Van Klassens Inc., 53 F.3d 1260, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995) (“the record shows that the buyers of Imagineering’s and Van Klassens’ furniture are sophisticated. While a sophisticated purchaser might more easily discern distinctions between Van Klassens’ and Imagineering’s furniture, the record in this case shows that even a trained furniture salesman could not distinguish the two products.”); HRL Assoc., Inc. v. Weiss Assoc., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840, 1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). II. Conclusion We have carefully considered all evidence of record and Applicant’s arguments, even if not specifically discussed herein, as they pertain to the relevant du Pont factors. We treat as neutral any du Pont factors for which there is no evidence. Because the marks are highly similar when viewed in their entireties, and the goods identified in the application and registration are related and move in the same trade channels, we find that confusion is likely between Applicant’s mark MONUMAAX and Registrant’s mark MONOMAX. Decision: The refusal to register Applicant’s mark MONUMAAX is affirmed.