Rockler Companies, Inc.

Trademark Trial and Appeal Board

Aug 26, 2004

No. 76098361 (T.T.A.B. Aug. 26, 2004)

Mailed: August 26, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Rockler Companies, Inc.
___________
Serial No. 76098361
___________
James A. Wahl of Mackall, Crounse & Moore for Rockler
Companies, Inc.
Barbara A. Gaynor, Trademark Examining Attorney, Law Office
115 (Tomas Vlcek, Managing Attorney).
____________
Before Seeherman, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Rockler Companies, Inc. has filed an application to
register the mark SURE-LOC on the Principal Register for, as
amended, “accessories for table saws, namely, mitre gauges”
in International Class 9.1
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,

1 Serial No. 76098361, filed July 27, 2000, based on an allegation of a
bona fide intention to use the mark in commerce. On July 31, 2001,
applicant filed, and the Examining Attorney accepted, its amendment to
allege use, alleging first use and use in commerce as of August 1, 2000,
and its specimen of use.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 76098361
2
15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the mark shown below, previously registered for
hammers,2 that, if used on or in connection with applicant’s
goods, it would be 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.
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 the likelihood of
confusion issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”

2 Registration No. 899,173 issued September 22, 1970, to Vaughan &
Bushnell Manufacturing Company Corporation, in International Class 8.
[Renewed for a period of ten years from September 22, 2000; Sections 8
and 15 affidavits accepted and acknowledged, respectively.]
Serial No. 76098361
3
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
The Examining Attorney contends that confusion is
likely because the marks are phonetically equivalent and
create the same overall commercial impression; and the goods
are related. In support of her position, the Examining
Attorney submitted copies of third-party registrations that
include among the identified goods both mitre saws and/or
mitre boxes and hammers3; excerpts from Internet retail web
sites which offer both mitre gauges and hammers, although
such items are identified by different trademarks; and an
excerpt from applicant’s retail web site wherein both mitre
gauges and hammers are offered, although, again, such items
are identified by different trademarks.
Applicant contends that, despite their phonetic
equivalence, the marks, viewed in their entireties, are
visually different because of the quotation marks in the

3 The original Examining Attorney also submitted third-party
registrations for marks that identify goods including hammers and table
saws and copies of the results of an Internet search at Yahoo.com that
include short excerpted sentences with little or no context. We agree
with the present Examining Attorney’s acknowledgment that this evidence
is of limited value herein. The third-party registrations are of little
value because applicant’s goods are mitre gauges, not table saws; and
the Internet excerpts are too brief to be of any significant value.
Serial No. 76098361
4
registered mark and applicant’s intentional misspelling of
the word “lock” as LOC. Applicant also argues that the
connotations and commercial impressions of the marks differ
in view of the different products identified by the
respective marks. Applicant states that both marks are
suggestive; and that the mark “SURE-LOCK” used in connection
with hammers “convey[s] to the purchaser … that the hammer
and handle are securely locked together such that the head
will not come off the hammer while in use” (Brief, p. 8),
whereas, applicant’s mark SURE-LOC used in connection with
its identified goods “refers to the user’s ability to set
and lock an angle at which wood will be cut when using the
Applicant’s mitre gauge product with a table saw” (id.).
Applicant also contends that its identified goods are
not related to those identified in the registration.
Applicant states that the respective products are for
different purposes and are not used together; that “a hammer
is not a machine tool, but a hand tool, and a mitre gauge is
merely an accessory for a machine tool” (Brief, p. 10); that
the web site excerpts submitted by the Examining Attorney do
not “support the conclusion that the two goods are …
produced by the same manufacturer” (id.); and that the mere
fact that the products may be sold in the same store does
not mean that the products are related. In support of its
position, applicant submitted information from applicant’s,
Serial No. 76098361
5
registrant’s and third-parties’ websites showing various
hammers and mitre tools under numerous trademarks; a list of
registrations purportedly owned by the cited registrant and
a list of purported third-party registrations for various
marks4; a copy of a registration apparently owned by the
cited registrant for the mark BEAR SAW for “manually powered
saws; and saw blades for manually powered saws5; and copies
of third-party registrations and applications for various
marks that are phonetically equivalent to registrant’s mark
SURE-LOCK for a wide variety of goods.6
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods or
services offered under the respective marks is likely to

4 These lists of registrations are of little probative value as the
information about the listed registrations is minimal. Further, a list
of registrations is not the proper method for making such registrations
of record in a Board proceeding. In order to make these registrations
properly of record, soft copies of the registrations themselves, or the
electronic equivalent thereof, i.e., printouts of the registrations
taken from the electronic records of the United States Patent and
Trademark Office’s (PTO) own database, should have been submitted. See,
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
5 Registration No. 2,196,618.
Serial No. 76098361
6
result. 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 (TTAB 1975).
In this case, while the marks are spelled differently,
they are phonetically identical and visually similar. The
term SURE-LOC would immediately be recognized as the
equivalent of the term SURE-LOCK. The minimal spelling
difference and the quotation marks and minimal font design
in registrant’s mark are insufficient to distinguish these
marks visually. It is clear from the evidence of record
that “SURE-LOCK” and its phonetic equivalents are suggestive
of a characteristic of the various goods identified thereby.
Because applicant’s and registrant’s goods differ, the term
refers to different characteristics due to the differences
in the goods. However, the term is, essentially, a somewhat
laudatory term suggesting that the locking mechanism or fit
of the respective products is “sure” to hold firm. Thus,
even if the suggestive laudatory connotation is different
for applicant’s and registrant’s specific identified goods
we find that the overall commercial impressions of the
subject marks are substantially similar.

6 The pending applications are of limited value because they are
evidence only of their filing.
Serial No. 76098361
7
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
The record before us includes numerous third-party
registrations, based on use in commerce, wherein the
Serial No. 76098361
8
registered mark identifies a wide range of tools, including
mitre tools, saws and hammers. Although third-party
registrations which cover a number of differing goods and/or
services, and which are based on use in commerce, are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
such registrations nevertheless have some probative value to
the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d
1467 (TTAB 1988).
It is also clear from the Internet evidence that retail
online sites offer both mitre gauges and hammers for sale.
The evidence shows these products identified either by no
trademark or by different trademarks. And we agree with
applicant that the mere fact that such products are sold in
the same store or on the same Internet site does not per se
warrant a conclusion that the goods are related. However,
we must also look at the nature of the products involved and
while mitre gauges for table saws and hammers will not be
used together in the sense suggested by applicant, it is not
unlikely that such tools could be used together on the same
project/job. We find this fact and the third-party
registrations listing both mitre tools and hammers warrant
Serial No. 76098361
9
the conclusion that the goods are sufficiently related that,
if identified by confusingly similar marks, confusion as to
source is likely.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, SURE-LOC, and registrant’s stylized mark, “SURE-LOCK,”
their contemporaneous use on the related goods involved in
this case is likely to cause confusion as to the source or
sponsorship of such goods.
We acknowledge that our decision is not free from
doubt; however, any doubt as to likelihood of confusion must
be resolved against the newcomer and in favor of the prior
registrant. See J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed
Cir. 1988); and W.R. Grace & Co. v. Herbert J. Meyer
Industries, Inc., 190 USPQ 308 (TTAB 1976).
Decision: The refusal under Section 2(d) of the Act is
affirmed.