Se-Kure Controls, Inc.

Trademark Trial and Appeal BoardJun 12, 2012

No. 78767343 (T.T.A.B. Jun. 12, 2012)

Mailed: June 12, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Se-Kure Controls, Inc. ________ Serial No. 78767343 _______ John S. Mortimer of Woods, Phillips, Katz, Clark & Mortimer for Se-Kure Controls, Inc. Jeffery S. DeFord, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Zervas, Bergsman and Lykos, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: On December 12, 2005, applicant Se-Kure Controls, Inc. applied to register the mark SK, in standard character form, for goods ultimately identified as set forth below: Mechanical theft prevention equipment for portable articles, namely, metal-cored security cable wire and accessories therefor, namely, metal connectors and fittings to be joined to the wire; metal boxes for anchoring cable ends; formed metal wire locks for garments; metal lock plates for maintaining articles on a rack; metal support stands with tubes, plates and/or housings; portable metal folding gates; metal cash boxes; metal phonograph cartridge needle locks; metal hasps; metal cable end connectors; and metal security components THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78767343 2 for notebook computers, namely, cable housings, cables, computer-receiving housings, and metal tabs sold as a unit, in Class 6; Retracting mechanisms for electrical and mechanical cables, in Class 7; Custom metal hand tools developed for holding and repositioning mechanical and electrical parts to facilitate assembling and disassembling electronic components used for retracting mechanisms for electrical and mechanical cables on security systems used on displays for consumer articles, in Class 8; Electromechanical theft, fire, and accident prevention equipment for portable objects, namely, burglar alarms; electronic sensors for attaching to portable objects to be monitored and accessories therefor, namely, adhesive attachment layers and pads sold as a unit; electronic control modules for arming, disarming, and monitoring the state of sensors; connection cables for communicating between the control modules and sensors and accessories therefor, namely, electrical and mechanical end connectors sold as a unit; audible and visual alarm signal generators that are activated in the event of a security breach; electronic splitter modules for control signals; electronic combined control, signal splitting, and signal generating modules; electrical power supplies; theft, fire, and accident prevention signal LED's/lights; shunt plugs for electrical connections; convex detection and one-way viewing mirrors; simulated closed circuit television scanners; hand-held fire extinguishers, emergency signaling lights and alarms; cameras and accessories therefor, namely, mountable housings for supporting part or all of the camera, power supplies, cable sand connectors sold as a unit; video monitors; video recorders; electronic Serial No. 78767343 3 detectors for sensing the presence of customers and/or counting numbers of passing customers and accessories therefor, namely, transceivers, reflectors, beam generators, mounting brackets, wires, and connectors sold as a unit; cable end connectors, in Class 9; Adhesive attachment layers and pads for attaching electronic sensors to portable objects, in Class 17; and Metal display racks for supporting articles; display cases with metal frames; kiosks for displaying and securing displayed articles, in Class 20. The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark when used in connection with the goods listed in Classes 6, 7, 8 and 9 is likely to cause confusion with the previously- registered mark, SK and design, shown below. The three registrations cited as bars to registration are owned by one entity and they are listed below: 1. Registration No. 3311834 for, inter alia, repair of hand-operated tools, repair of electric cables, burglar alarm Serial No. 78767343 4 repair, and repair of photographic and cinematographic machines and apparatus and film projector repair, in Class 37;1 2. Registration No. 3363664 for, inter alia, money boxes of metal, metal safety cash boxes, and locks of metal other than electric, in Class 6;2 and 3. Registration No. 3365665 for, inter alia, video cameras, camcorders, video screen, projection screens, sound recording apparatus and instruments for use in cinematography, movie projectors, electrical transmitters for emitting distress signals, fire extinguishing apparatus, namely, fire blankets, sprinkler systems for fire protection, fire hydrants, fire extinguishing bombs, gas leak alarms, flame sensors, smoke sensors, heat sensors, sound alarms, namely, personal security alarms, alarm bells, fire alarms, emergency warning lights in the nature of blinking signaling lights, video cameras, video cameras for broadcasting, audio-video receivers, telecommunication transmitters, electric cables and electric wires,” in Class 9. Our determination of likelihood of confusion 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & 1 Issued October 16, 2007. 2 Issued January 8, 2008. Serial No. 78767343 5 Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper 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. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that 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 impression so that confusion as to the source of the goods Serial No. 78767343 6 offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, 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. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “In the case of a composite mark containing both words and a design, “the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012), quoting CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983). See also L.C. Licensing, Inc. v. Cary Berman, 86 USPQ2d 1883, 1887 (TTAB 2008) (“[I]t is well settled that if a mark comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods.”). Serial No. 78767343 7 In this case, we find that the letters SK form the dominant element of registrant’s mark because they will be used by consumers to request the goods and services. Therefore, the letters SK are accorded more weight than the butterfly design in our comparison of the marks. In re National Data Corp., 224 USPQ at 751. The significance of the letters SK is further reinforced in the likelihood of confusion analysis because it is difficult for consumers to distinguish between two series of similar arbitrarily arranged letters. See Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1841 (Fed. Cir. 1990); Edison Brothers Stores v. Brutting E.B. Sport- International, 230 USPQ 530 533 (TTAB 1986). It is especially hard to distinguish applicant’s mark from registrant’s mark when they both comprise the letters SK. In this regard, on the record before us, neither the applicant’s company name, nor the registrant’s company name, has been shown to be sufficiently well known to cause purchasers to relate either of the letter marks to the company name from which it was derived. See Edison Brothers Stores v. Brutting E.B. Sport-International, 230 USPQ at 533; see also B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1509 (TTAB 2007). The letters SK dominate registrant’s mark and any contribution of the butterfly design to the connotation or Serial No. 78767343 8 commercial impression of registrant’s mark is outweighed by the dominant letters. Accordingly, we find that the marks are very similar in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the goods and services described in the application and registration at issue and the similarity or dissimilarity of likely-to- continue trade channels and classes of consumers. 1. Class 6 Applicant is seeking to register its mark for, inter alia, “metal cash boxes.” Registrant has registered its mark for “money boxes of metal” and “metal safety cashboxes.” The goods are in part identical. The fact that there are other goods listed in the application and cited registration does not affect our finding that the goods are in part identical. A refusal under Section 2(d) is proper if there is a likelihood of confusion involving any of the goods set forth in the application and cited registration. See, e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); and Shunk Mfg. Co. v. Tarrant Mfg. Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963). Because the goods are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB Serial No. 78767343 9 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”). See also In re Viterra Inc., 101 USPQ2d at 1908 (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). 2. Class 7 Applicant is seeking to register its mark for “retracting mechanisms for electrical and mechanical cables.” Registrant has registered its mark for, inter alia, the “electric cables,” in Class 9, and the “repair of hand-operated tools [and] electric cables,” in Class 37. It is well settled that applicant’s goods and the registrant’s goods and services do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective products and services are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re International Telephone & Serial No. 78767343 10 Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). We find that consumers are likely to believe that a “retracting mechanism for electrical and mechanical cables” and “electric cables” and “the repair of electric cables” identified by similar marks emanate from the source or are somehow associated. For example, a retracting mechanism for electrical cables could be used for the repairing electrical cables. Applicant argues that the goods are not related because “Applicant’s industry for securing portable articles, as at displays, is a niche industry. Those companies involved in this industry are well recognized as offering a specific, customized product category that it is distinct from residential and industrial security systems.”3 The problem with applicant’s argument is that this proceeding concerns applicant’s right to registration of a trademark, not applicant’s actual trademark use. Because the scope of the registration applicant seeks is defined by its application (and not by its actual use) it is the application (and not actual use) that we must look to in determining applicant’s right to register: 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 3 Applicant’s Brief, p. 7. Serial No. 78767343 11 applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Accordingly, the Board cannot consider applicant’s arguments regarding the differences in the goods. In view of the foregoing, we find that applicant’s “retracting mechanisms for electrical and mechanical cables” are related to registrant’s “electric cables” and the “repair of electric cables.” 3. Class 8 Applicant is seeking to register its mark for “custom metal hand tools developed for holding and repositioning mechanical and electrical parts to facilitate assembling and disassembling electronic components used for retracting mechanisms for electrical and mechanical cables on security systems used on displays for consumer articles.” Registrant has registered its mark for, inter alia, the “repair of hand-operated tools [and] electric cables,” in Class 37. We find that consumers will mistakenly believe that applicant’s “custom metal hand tools” are somehow associated with registrant’s repair of hand-operated tools” if they identified by similar marks because consumers would expect the manufacturer of a hand tool to repair it, if necessary. Serial No. 78767343 12 Despite the fact that applicant’s hand-tools are used for security systems used on displays for consumer articles, registrant’s repair of hand-operated tools and electric cables are not limited to any specific channels of trade and, therefore, may be rendered in connection with security systems used on displays for consumer articles. 4. Class 9 Because the goods listed in Class 9 are extensive, the table set forth below compares the goods and services that the Board finds to be related or similar. Applicant’s goods Registrant’s goods and services electromechanical theft, fire, and accident prevention equipment for portable objects, namely, burglar alarms sound alarms, namely, personal security alarms; burglar alarm repair theft, fire, and accident prevention signals LED’s/lights electrical transmitters for emitting distress signals, gas leak alarms, alarm bells fire alarms, emergency warning lights in the nature of blinking signaling lights hand-held fire extinguishers, emergency signaling lights and alarms fire extinguishing apparatus, namely, fire blankets, sprinkler systems for fire protection, fire hydrants, fire extinguishing bombs, flame sensors, smoke sensors and heat sensors, emergency warning lights in the nature of blinking signaling lights Serial No. 78767343 13 Applicant’s goods Registrant’s goods and services cameras, video monitors and video recorders video cameras, camcorders, video screens, video cameras for broadcasting and audio-video receivers, as well as the repair of photographic and cinematographic machines and apparatus and film projector repair In fact, we find that “burglar alarms” and “personal security alarms,” “theft, fire, and accident prevention signals LED’s/lights,” “emergency signaling lights and alarms,” and “emergency warning lights in the nature of blinking signaling lights,” and “cameras” and “video cameras” are legally identical. As indicated above, because the goods are in part and legally identical, we must presume that the channels of trade and classes of purchasers are the same. C. Balancing the factors. In view of the facts that the marks are very similar, the goods and services are in part, legally identical and otherwise related and, therefore, there is a presumption that the channels of trade and classes of consumers are the same, we find that applicant’s mark SK for the goods recited in the Class 6, 7, 8 and 9 description of goods is likely to cause confusion with the mark SK and design for the goods and services listed in the cited registrations. Serial No. 78767343 14 Decision: The refusal to register is affirmed with respect to the goods in Classes 6, 7, 8 and 9. The application will be forwarded for registration processing in connection with the goods listed in Classes 17 and 20.