Professional Product Research, Inc.

Trademark Trial and Appeal Board

Aug 12, 1999

No. 75246916 (T.T.A.B. Aug. 12, 1999)

Paper No.11
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 12,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Professional Product Research, Inc.
________
Serial No. 75/246,916
_______
William H. Cox of Janvey, Gordon, Herlands, Randolph,
Rosenberg & Cox, LLP for Professional Product Research,
Inc.
Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Cissel, Hohein and Bottorff, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On February 24, 1997, applicant applied to register
the mark "SPIDER FIGHTER" on the Principal Register for
"insecticide," in International Class 6. The application
was based on applicant’s assertion that it possessed a bona
fide intention to use the mark in commerce on or in
connection with the goods.
Ser No. 75/246,916
2
The Examining Attorney refused registration under
Section 2(d) of the Act, holding that if applicant were to
use the proposed mark on insecticide, the mark would be
likely to cause confusion with two registered trademarks.
The first mark cited as a bar to registration is "FLY
FIGHTER," which is registered1 for "insecticide." The
second mark is "PEST FIGHTER," which is registered2 for
"pesticides for horticultural purposes."
The Examining Attorney also advised applicant that the
identification-of-goods clause in the application was
indefinite, and required that it be amended to be more
specific. Further, the Examining Attorney required
applicant to disclaim the descriptive the word "SPIDER"
apart from the mark as shown.
Responsive to the first Office Action, applicant
amended the identification-of-goods clause to read
"insecticides for domestic use," and provided the requested
disclaimer. Further, applicant argued against the refusal

1 Registration No. 823,224, issued January 31, 1967 to Alco
Chemical Co. based on a claim of use since December 12, 1957.
The word "fly" is disclaimed apart from the mark as shown. The
registration was subsequently assigned to Amvac Chemical Corp.
and was renewed in 1987.
2 Registration No. 1,971,482, issued to Master Nurserymen’s
Association on April 30, 1996, based on a claim of use in
commerce since January 30, 1995. The word "pest" is disclaimed
apart from the mark as shown.
Ser No. 75/246,916
3
to register, contending that confusion with either of the
two cited registered trademarks would not be likely.
With his second Office Action, the Examining Attorney
accepted the amendment to the identification-of-goods
clause, accepted the disclaimer, and withdrew the refusal
based on the registration for "PEST FIGHTER." He did,
however, maintain and make final the refusal to register
under Section 2(d) based on the prior registration of "FLY
FIGHTER" for "insecticide."
Applicant timely filed a Notice of Appeal and an
appeal brief. The Examining Attorney filed in his
responsive brief on appeal, but applicant did not request
an oral hearing before the Board. Accordingly, we have
resolved this appeal based on the written record and
arguments.
The sole issue in this appeal is therefore whether
confusion would be likely if applicant’s proposed mark
"SPIDER FIGHTER" were to be used on insecticides for
domestic use in view of the cited registration of "FLY
FIGHTER" for insecticides. In its brief, applicant also
presented arguments directed to the other registered mark
originally cited by the Examining Attorney as a bar to
registration. Apparently, applicant had not noticed that
Ser No. 75/246,916
4
the Examining Attorney’s second Office Action had withdrawn
that registration as a basis for refusal.
Based on careful consideration of the record in this
application and the arguments presented on both sides of
the issue, we conclude that confusion is likely.
The test for determining whether confusion is likely
is well settled. We must consider the similarity of the
marks, in terms of their appearances, their pronunciations,
their connotations and their overall commercial
impressions. We must also compare the goods set forth in
the cited registration with the goods as identified in the
application in order to determine if they are related in
such a way that the use of the marks in question is likely
to lead to confusion or mistake in the marketplace for such
products. In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973).
In that the goods specified in this application are
encompassed within the goods as they are identified in the
cited registration, the critical question in this case is
whether, as applied to the same products, these two marks
are so similar that they are likely to cause confusion.
Applicant argues that the marks are sufficiently
dissimilar in terms of pronunciation, appearance, meaning
and connotation that they will not give rise to any
Ser No. 75/246,916
5
likelihood of confusion under Section 2(d). In particular,
applicant argues that the word common to both marks at
issue, "FIGHTER," is a suggestive term in connection with
the goods in question, and that when this suggestive term
is combined with the word "FLY" on the one hand, and the
word "SPIDER" on the other, the resulting marks in their
entireties are different in appearance, sound, and
connotation, and create different commercial impressions.
Further, applicant contends that the existence of the
two registered marks originally cited by the Examining
Attorney, as well as in another one for the mark "BUG
FIGHTER,"3 for "electrically-powered insect exterminator
traps," and one for the mark "FLEA FIGHTER,"4 for "proteins,
vitamin and mineral supplement for dogs," substantiate
applicant’s argument that the word "FIGHTER," while the
dominant component of the two marks involved in this
appeal, is weak in source-identifying significance, and
that there is therefore no likelihood of confusion between
applicant’s mark and cited registered mark. In further
support of this contention, applicant notes that until
1995, another third-party registration existed for the same

3 Registration No. 1,367,415 issued on Oct. 29, 1985, to Armatron
International, Inc.
4 Registration No. 1,127,173, issued on Dec. 4, 1979 to Vital
Nutrition Products, Inc.
Ser No. 75/246,916
6
mark applicant is attempting to register now, except that
the goods therein were identified as "natural insect
repellent."5
Applicant’s argument is essentially that while the
word "FIGHTER" is the dominant part of applicant’s mark,
the word is highly suggestive of the purpose, effect and
nature of both applicant’s goods and of the goods in each
of the various registrations. As a result of this,
applicant contends that its mark is visually and aurally
distinguishable from the registered mark cited against it,
that it has a different connotation, and that it therefore
creates a different commercial impression, so that
confusion is not likely.
We agree with the Examining Attorney, however, that if
these two marks were used on the goods specified in the
application and the registration, respectively, they would
create similar commercial impressions. While we do not
dispute that the word "FIGHTER" is suggestive as applied to
these products, the fact is that the suggestion created by
the word is the same in each mark. The registered mark
suggests that the insecticides sold thereunder will fight
flies. The mark applicant seeks to register, if also used

5 Reg. No. 1,559,524, issued to Indiana Botanic Gardens, Inc. on
Oct. 10, 1989.
Ser No. 75/246,916
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on insecticides, would suggest that the products fight
spiders. Although there is obviously a difference between
flies and spiders, it would not be unreasonable for
consumers of insecticides for household use to assume,
incorrectly in this case, that "SPIDER FIGHTER" insecticide
and "FLY FIGHTER" insecticide emanate from the same
manufacturer or supplier.
We are not persuaded to the contrary by applicant’s
argument concerning the third-party registrations. It is
well established that third-party registrations, by
themselves, are entitled to little weight on the question
of likelihood of confusion. In re Hub Distributing, Inc.,
218 USPQ 284 (TTAB 1983). Third-party registrations are
not evidence of what happens in the marketplace, or that
the public is familiar with the use of such marks.
National Aeronautics and Space Administration v. Record
Chemical Co., 185 USPQ 563 (TTAB 1975). Moreover,
distinctions can be made among the various products which
the third-party registrations list. Protein vitamin and
mineral supplements for dogs, electronically-powered insect
exterminators, and natural insect repellents are quite
different from insecticides. This record certainly does
not establish that consumers would have a basis for
assuming that all these products are produced or sold by
Ser No. 75/246,916
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the same businesses, but the record does show that the
goods set forth in the application are identical to those
specified in the cited registration.
Third-party registrations may be used to establish the
meanings of terms, but the suggestive meaning of "FIGHTER"
in the instant case is not disputed. The third-party
registrations of record, therefore, are not persuasive
evidence that confusion is unlikely. As noted above, there
are differences between the goods listed in those
registrations, and, in any event, each case must be decided
on its own merits.
In summary, applicant’s mark "SPIDER FIGHTER" and the
registered mark "FLY FIGHTER" are similar. They create
similar commercial impressions because they each include
the same dominant word, which in both cases is preceded by
the name of a specific insect. As applicant concedes, the
goods specified in the registration encompass the goods set
forth in the application.
Furthermore, any doubt as to whether confusion is
likely must be resolved in favor of the prior registrant
and against the applicant, who has a legal duty to select a
mark which is dissimilar to trademarks which are already in
Ser No. 75/246,916
9
use. Burroughs Wellcome Co. v. Warner-Lambert Company, 203
USPQ 191 (TTAB 1979).
Accordingly, the refusal to register is affirmed.
R. F. Cissel
G. D. Hohein
C. M. Bottorff
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 75/246,916
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