Thunderbolt Products, Inc.Download PDFTrademark Trial and Appeal BoardDec 17, 2009No. 76694257 (T.T.A.B. Dec. 17, 2009) Copy Citation Mailed: 17 December 2009 AD UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Thunderbolt Products, Inc. ________ Serial No. 76694257 _______ Myron Amer of Myron Amer, P.C. for Thunderbolt Products, Inc. Kathleen Lorenzo, Trademark Examining Attorney, Law Office 109 (Dan Vavonese, Managing Attorney). _______ Before Quinn, Drost, and Cataldo, Administrative Trademark Judges. Opinion by Drost, Administrative Trademark Judge: On November 17, 2008, Thunderbolt Products, Inc. (applicant) filed an intent-to-use application to register the mark GREEN THUNDER in standard character form on the Principal Register for goods ultimately identified as floor and carpet care products, namely, cleaners for household use on floors and carpets, and not including use on vehicle engines in Class 3. Serial No. 76694257. In its reply brief, applicant responded to the examining attorney’s THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 76694257 2 requirement for a disclaimer by submitting a disclaimer of the word “Green,” which the examining attorney has now accepted. The examining attorney has refused to register applicant’s mark on the ground that it is confusingly similar under Section 2(d) of the Trademark Act (15 U.S.C. § 1052(d)) with a registration (No. 1855066, issued September 20, 1994 (renewed)) owned by Malco Products, Inc. for the mark RED THUNDER (typed) for biodegradable cleaner and degreaser for use on engines and interior and exterior surfaces of vehicles in Class 3. After the examining attorney made the refusal final, applicant appealed to this board. In a case involving a refusal under Section 2(d), we analyze the facts as they relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the evidence of record on these factors, we must keep in mind that “[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences Ser No. 76694257 3 in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We begin by examining applicant’s and registrant’s goods to determine if they are related. It is a well settled principle of trademark law that it is not necessary that the goods of the parties be similar or competitive, or even that they move in the same channels of trade to support a holding of likelihood of confusion. It is sufficient for purposes herein that the respective goods of the parties are related in some manner, and/or that the conditions and activities surrounding the marketing of the goods are such that they would or could be encountered by the same persons under circumstances that could because of the similarity of the marks used therewith, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. In re Int’l Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). See also Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350, 1356 (Fed. Cir. 2004). Applicant’s goods are floor and carpet care products, namely, cleaners for household use on floors and carpets, and not including use on vehicle engines. Registrant’s goods are biodegradable cleaners and degreasers for use on engines and interior and exterior surfaces of vehicles. We must consider the goods as they are identified in applicant’s and registrant’s identification of goods. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The Ser No. 76694257 4 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 applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed”). See also Paula Payne Products v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must be decided on the basis of the respective descriptions of goods”). While applicant has limited its goods to exclude “use on vehicle engines,”1 the examining attorney points out that “this narrowing of the identification excludes use on vehicle engines but did not address the similarity of the floor and carpet care products with cleaners for use on interior surfaces of vehicles.” Brief at unnumbered p. 7. Applicant’s goods include cleaners for household use on carpets and registrant similarly includes cleaners for use on interior surfaces of vehicles, which would include vehicle carpets. The examining attorney has included an 1 It is not clear what this negative limitation accomplishes inasmuch as there is no evidence that a vehicle engine would have a floor or carpet. Ser No. 76694257 5 article that explains the similarity of cleaners for house and automobile carpets: Auto Carpet Cleaning Is Not Very Different From Traditional Carpet Cleaning… In fact, auto carpets are very similar to your traditional carpets that are usually found covering floors of homes as well as office buildings… The good news is that if it can be considered good news that most carpet cleaning solutions that work for home carpets are also effective when used for auto carpet cleaning. www.linkroll.com Both applicant and registrant include cleaners in their identification of goods. Applicant’s goods are limited to cleaners for carpets and floors, while registrant’s cleaners are for use, inter alia, on interior surfaces of vehicles. These cleaners must be read to include cleaners for vehicle carpets. Interestingly, an advertisement for “Malco Red Thunder Biodegradable Cleaner” describes it as “a highly concentrated, non-caustic and aluminum-safe all purpose cleaner… Great as an engine degreaser/cleaner, whit[ewall] cleaner, and carpet and upholstery cleaner.” www.chadssupplylic.coom (emphasis added). Clearly, registrant intends its goods to be used on carpets. Furthermore, while registrant’s goods are limited to biodegradable cleaners, inasmuch as applicant’s goods are simply identified as “cleaners,” they would Ser No. 76694257 6 include “biodegradable” cleaners.2 See also www.scotlabs.com (Hurricane Citrus All-Purpose Cleaner – “Environmentally safe, contains biodegradable surfactants”). Indeed, applicant’s witness has indicated that “the product is considered to be environmentally safe because of the non-use of phosphates and nonylpherol ethoxylate surfactants.” Kroll dec., ¶ 2. Other evidence shows cleaners for carpets are the same cleaners used on vehicles. See www.greenprofs.com (“MEAN GREEN is gentle enough for cleaning clothes, upholstery, and carpet but strong enough for heavy duty projects like cleaning engines and construction equipment.” Directions for use on/for “Carpeting Cleaning and Stains,” “Automotive Chrome Wire Wheels,” and “Vinyl Tops and Upholstery”); www.4uproducts.com (4U Household Cleaner - “4U truly is the wonder cleaner for household use. 4U replaces many of your ‘around the house’ cleaners all in one product… Common uses: … Engines, Carpets … Whether you’re on the road or at home, 4U always works”); www.envirosafe2000.com (“ESS All Purpose Cleaner/Degreaser is Great for: Carpet & 2 “To biodegrade” is defined as “to decay and become absorbed by the environment.” The Random House Dictionary of the English Language (unabridged) (2d ed. 1987). We take judicial notice of this and the other subsequently referenced definitions. Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 76694257 7 Upholstery … Cars & Trucks”). See also Liberty Technologies Ad (“Quick’N Kleen is a cleaner, degreaser, lubricant, laundry pre-spot, carpet stain-remover and much more… Removes: … Grease … From: Clothes, Walls, Boats, Grout … Carpets, Stucco, Floors, Engines”). This evidence shows that household cleaners for carpets can be used on vehicles and that vehicle carpets can be cleaned by the same products that clean household carpets. To the extent that these products would not be the same, there is additional evidence that cleaners for carpets and cleaners for vehicles come from the same source. See, e.g., Registration3 No. 3224612 (carpet cleaners and cleaning preparations for automobiles); No. 3313015 (cleaning preparations for use on marine vehicles and carpet cleaners);4 No. 3547979 (“cleaning, polishing, scouring and abrasive preparations for households, kitchens, baths and vehicles, in particular carpet, oven, window, car and toilet cleaning preparations”); and 3 Third-party registrations “may serve to suggest that such goods or services are of a type which may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). 4 Applicant attempts to distinguish some of the examining attorney’s evidence such as this one by arguing that a “marine vehicle, i.e., a boat has an engine but it is not a vehicle in the context used by the registrant.” Brief at unnumbered p. 3. However, to the extent that registrant’s goods refer to vehicles without limitation, we would have to consider “marine vehicles” within the scope of the identification of goods. Ser No. 76694257 8 www.cleaning-usa.com (“With our unique powerful formulas, we present you with quality cleaning products… Household Cleaning Products… Carpet Spot Formula … Automotive Cleaning Products … Works Great on Auto’s – Vinyl, door panels, upholstery, head liners, carpets”). Therefore, these products are interchangeable or at least closely related. Furthermore, based on the evidence that shows that cleaners for vehicles and carpets can be the same product and that these cleaners are advertised as having numerous uses, we conclude that the purchasers and channels of trade for these products would be in part identical. See, e.g., Liberty Technologies ad (“We spray Quick’N Kleen™ on anything that [it] can be sprayed on! It removes paint and graffiti and is a wonderful overall cleaning product”). See also Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”). We now move on to the du Pont factor that “requires examination of ‘the similarity or dissimilarity of the Ser No. 76694257 9 marks in their entireties as to appearance, sound, connotation and commercial impression.’” Palm Bay Imports 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 marks in this case are GREEN THUNDER and RED THUNDER. Both marks are in typed or standard character form so we must assume that the marks can be displayed in the same or very similar style. In re Cox Enterprises Inc., 82 USPQ2d 1040, 1044 (TTAB 2007)(“We must also consider that applicant’s mark, presented in typed or standard character form, is not limited to any special form or style as displayed on its goods”). Thus, the marks are similar because they both contain the identical second word “Thunder” and the first word is a color. They differ inasmuch as the identified color is different, “Green” and “Red.” Regarding the term “green,” applicant has now disclaimed this term. Its declarant has stated that its “product is considered to be environmentally safe.” The examining attorney has included a definition of “green” as “Beneficial to the environment.” www.bartleby.com. Therefore, the term “green” would describe the fact that applicant’s products are environmentally safe. Disclaimed matter is often “less significant in creating the mark’s Ser No. 76694257 10 commercial impression.” In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). See also M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When comparing the similarity of marks, a disclaimed term, here ‘COMMUNICATIONS,’ may be given little weight, but it may not be ignored”); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion’”). Regarding the term “Red,” the examining attorney has included an advertisement for these goods and points out that the “the goods are red.” Brief at 5, n.1.5 While the examining attorney argues that the term “red” is “descriptive of a feature of the goods” (Brief at 5), we do not need to reach this conclusion. Instead the evidence shows that the term “red” is at least very suggestive of a 5 We also note that registrant describes its goods as having a “[s]uper cinnamon scent.” www.chadssupplyllc.com. The color “red” may also suggest a cinnamon scent. Random House Dictionary of the English Language (Cinnamon – “1. the aromatic inner bark of any of several Indian trees… 8. reddish brown or yellowish brown yellow”). Ser No. 76694257 11 feature of registrant’s goods and, therefore, it would have less trademark significance than the term “Thunder.” Regarding the common term “Thunder,” we find that it would be the dominant term in the marks. Applicant argues that “[a]s a variation of THUNDER, use is commonly made of the word THUNDERBOLT, which in RANDOMHOUSE WEBSTER’S College Dictionary at page 1392 is defined as ‘3. a … thing that acts with destructiveness … suddenness,’ an attribute of applicant’s product as chemically constituted.” Brief at 7. We point out that applicant has not submitted evidence regarding any common use of the term “thunderbolt” and, more importantly, applicant is seeking to register the term “thunder”6 not “thunderbolt.” We find that the term “thunder” is more likely to be the dominant term in the marks because it is arbitrary or perhaps slightly suggestive of a feature of the goods. The Federal Circuit has held that: “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 consideration of the marks in their entireties. Indeed, 6 Thunder is defined, inter alia, as “a loud, resounding, explosive noise produced by the explosive expansion of air heated by a lightning discharge.” Random House Dictionary of the English Language. Ser No. 76694257 12 this type of analysis appears to be unavoidable.” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). While we have considered the individual elements of the marks, we must ultimately view the marks in their entireties to determine if they are similar. We conclude that the marks RED THUNDER and GREEN THUNDER are similar in sound and appearance. They are dominated by the identical term “thunder” and the difference created by the use of a different color as the first word in the marks would not result in marks that are dissimilar because consumers will focus on the term “Thunder” and not distinguish the sources of the products by the different color as the first term. “Human memories even of discriminating purchasers … are not infallible.” In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting, Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). Regarding their meanings and commercial impressions, we find that their meanings at least would be somewhat different inasmuch as “red” may be associated with the color of the product while “green” would describe a product that is environmentally safe or beneficial for the environment. However, this slight difference in meaning may help customers distinguish the version of the products Ser No. 76694257 13 but not the sources of the products because many consumers are likely to view GREEN THUNDER cleaner as an environmentally friendlier or safer version of the RED THUNDER cleaner and assume that the products come from the same source. Thus, we find that the marks in their entireties are similar in sound, appearance, meaning, and commercial impression. Ultimately, we conclude that the marks GREEN THUNDER and RED THUNDER are similar and the goods, channels of trade, and purchasers are overlapping or at least closely related or similar. As a result, we hold that there is a likelihood of confusion in this case. Registration No. 2779076 While we have affirmed the examining attorney’s refusal to register on the ground of likelihood of confusion because of Registration No. 1855066, we note that the examining attorney has also cited a second registration (No. 2779076) as a bar to registration. This registration is for the mark BLUE THUNDER (typed) for all-purpose degreasing cleaning preparations, not for use in or on vehicles or vehicle engines in Class 3. The registration, owned by Stearns Packaging Corporation, issued November 4, 2003 and it contains a disclaimer of the term “Blue.” However, the registration is more than six years ago and Ser No. 76694257 14 USPTO records do not indicate that any Affidavit under Section 8 has been filed. 15 U.S.C. § 1058. Therefore, unless an affidavit is properly filed, this registration will be cancelled at the end of the six-month grace period. Under such circumstances, if this were the only cited registration, the board would normally suspend action on the appeal. TBMP § 1213 (2d ed. rev. 2004). However, since we have another registration (the ‘066 registration) that has been cited against applicant’s mark, in order to avoid unnecessarily delaying this case, we have decided the likelihood of confusion issue regarding the ‘066 registration and, for the sake of completeness, we will also consider the ‘076 registration. We conclude that, for much the same reasons that we held that there was a likelihood of confusion with the RED THUNDER mark, we similarly hold that applicant’s mark is likely to cause confusion as a result of the BLUE THUNDER mark.7 Here too, the term “Thunder” would dominate the marks. The term “Blue” is disclaimed and the examining attorney points out that it is the color of the goods. 7 The examining attorney points out that the “Registrants co- exist on the Principal Register because the junior registrant limited its identification of goods to ‘All-purpose degreasing preparations not for use in or on vehicles or vehicle engines,’ specifically excluding all of the senior registrant’s goods.” Brief at 6 n.3 (parentheticals omitted). Ser No. 76694257 15 Brief at 5; www.hansonchemical.com. Again, purchasers are likely to believe that applicant’s goods are an environmentally friendly version of registrant’s goods. Therefore, when the marks GREEN THUNDER and BLUE THUNDER are compared in their entireties, we find that they are similar in sound, appearance, meaning, and commercial impression. Furthermore, applicant’s cleaners for household use on floors and carpets are related, if not overlapping, with the ‘076 registrant’s all-purpose degreasers. See, e.g., www.meangreenprofs.com (“Mean Green is a unique blend of non-toxic, biodegradable detergents that form a powerful, extra heavy-duty cleaner and degreaser… for cleaning clothes, upholstery, and carpet); www.4uproducts.com (“4U is the wonder cleaner and degreaser for household use… Common Uses… Carpets, Floors, Fixtures, Ovens”); and www.envirosafe2000.com (“ESS All Purpose Cleaner/Degreaser is Great for: Carpet & Upholstery, Leather & Silk…”). Therefore, we find that these goods are closely related if not overlapping. Similarly, purchasers of all-purpose cleaners and cleaners for carpet and floors would overlap because they would include ordinary purchaser who are interested in cleaning their homes. Ser No. 76694257 16 If this registration remains active, we similarly conclude that there would be a likelihood of confusion. We add that in the event that a Section 8 affidavit is not filed and the ‘076 registration is cancelled, this refusal would obviously no longer be viable. Conclusion Decision: To the extent that the BLUE THUNDER registration (No. 2779076) remains an active registration, the examining attorney’s refusal to register applicant’s mark because of this registration is affirmed. Similarly, the refusal to register applicant’s mark GREEN THUNDER under Section 2(d) of the Trademark Act in view of Registration No. 1855066 for the mark RED THUNDER is also affirmed. Copy with citationCopy as parenthetical citation