Titan Tech-nologies Int’l., Inc.

Trademark Trial and Appeal Board

Sep 8, 2003

No. 76196190 (T.T.A.B. Sep. 8, 2003)

Mailed: 9/8/03

Paper No. 11
ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Titan Technologies International, Inc.
________
Serial No. 76/196,190
_______
Barry L. Kelmachter of Bachman & LaPointe, P.C. for Titan
Technologies International, Inc.
Matthew J. Pappas, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hairston and Bucher, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Titan Technologies International, Inc. has appealed
from the final refusal of the Trademark Examining Attorney
to register TITAN TECHNOLOGIES INTERNATIONAL, INC. as a
trademark for the following goods and services:
power tools, namely, power wrenches
(Class 7);
wholesale distributorships featuring
power tools, namely, power wrenches;
on-line retail store services featuring
power tools, namely, power wrenches
(Class 35); and
technical consultation in the field of
power tools, namely power wrenches
(Class 42).
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/196,190
2
Applicant has disclaimed exclusive rights to the words
TECHNOLOGIES INTERNATIONAL, INC. The application, which
was filed on January 19, 2001, is based on an asserted bona
fide intention to use the mark in commerce.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark TITAN TOOLS and
design, as shown below (TOOLS disclaimed), registered for
“hand tools and instruments, as follows: oil field hand
tools--namely, tongs, wrenches, swivels, flange spreaders,
pipe dollies, and wire line guides” in Class 8,1 that, if is
used on or in connection with applicant’s identified goods
and services, it is likely to cause confusion or mistake or
to deceive.2
1 Registration No. 1,154,616, issued May 19, 1981; Section 8
affidavit accepted; Section 15 affidavit received; renewed.
2 Another registration owned by the same entity, No. 1,150,837
for TITAN for essentially the same goods, was originally cited by
the Examining Attorney, but this registration subsequently
expired.
Ser No. 76/196,190
3
Both applicant and the Examining Attorney have filed
appeal briefs.3 Applicant did not file a reply brief, and
did not request an oral hearing.
We affirm the refusal of registration.
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). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, they are very similar.
Both begin with the identical word TITAN, followed by words
which do not have source-identifying significance. In the
case of registrant’s mark, the word TOOLS is generic for
the goods identified in the cited registration. The mark
also includes a minor design element, but it is a “carrier”
of a relatively common shape, and consumers are not likely
3 Both applicant and the Examining Attorney have included with
their briefs numerous exhibits which are already of record, e.g.,
copies of numerous third-party registrations and copies of
excerpts taken from the NEXIS database. It is unnecessary to
resubmit with briefs all the exhibits which were previously
submitted, and such a practice is discouraged by the Board as it
needlessly clutters the file.
Ser No. 76/196,190
4
to look to it as indicating the source of the goods.
Rather, it is the word TITAN, the only arbitrary portion of
the mark, that is likely to be noted and remembered. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Nor is the slight stylization of the words in the cited
registration sufficient to distinguish the marks. The type
font in which the words are displayed is not unusual; more
importantly, because applicant has applied to register its
mark as a typed drawing, it could depict its mark in a
similar typestyle.
As for applicant’s mark, the words TECHNOLOGIES
INTERNATIONAL, INC. are descriptive, a fact which applicant
has acknowledged by its disclaimer of them. Again, it is
the arbitrary word TITAN that has the strongest source-
identifying significance. We also note that in a quote for
equipment, submitted by applicant as Exhibit B, its torque
wrench is referred to by the word TITAN alone, and its
other products, as well as the company name, are referred
to as TITAN per se, e.g., “TITAN-6 Automatic High Speed Low
Clearance Hydraulic Torque Wrench Head,” “Titan 2” Slim
Line Swing Link that Ratchets Custom Made to specific
standards,” “TITAN PROVIDES YOU WITH UNMATCHED, [sic]
POWER, ACCURACY, RELIABILITY, AND ENGINEERING INNOVATIONS,”
“Titan Unit Price.” Just as applicant itself appears to
Ser No. 76/196,190
5
use TITAN per se as an abbreviation for its trademark and
trade name, consumers are likely to do the same.
Although marks must be compared in their entireties,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). As discussed above,
in applicant’s mark and the cited mark the word TITAN is
the dominant element to which we accord greater weight.
Thus, although applicant’s mark contains more words
and syllables than the cited mark, the similarities in the
initial word TITAN in both marks outweigh the differences
in the generic and descriptive words.
Applicant argues that the marks have different
connotations, and that applicant’s mark suggests a
corporate name while TITAN TOOLS suggests a large tool. We
disagree that consumers would ascribe different
connotations to the mark, such that they would regard them
as indicating different sources for the goods. Rather,
consumers are likely to view tools bearing the mark TITAN
TOOLS as coming from the same source as tools bearing the
mark TITAN TECHNOLOGIES INTERNATIONAL, INC., with TITAN
TOOLS as a variant of the TITAN TECHNOLOGIES INTERNATIONAL,
INC. mark.
Ser No. 76/196,190
6
Applicant has asserted that TITAN is a weak mark which
is entitled to a limited scope of protection. In support
of this position, it has submitted a number of third-party
registrations for goods and services in Classes 7 and 42.
However, an examination of these registrations shows that
none is for goods or services that are particularly similar
to either that in the cited registration or in applicant’s
application. For example, the first four registrations
submitted by applicant as exhibit A are for “indexing
machines and conveyors for use in the precision movement of
parts to be machined along an assembly line” (Registration
No. 2,362,976); “spray guns for coating materials”
(Registration No. 2,301,520); “hoists and winches”
(Registration No. 2,276,419); and “portable airless and
high volume low pressure pumps for spraying paint and
applying coatings” (Registration No. 1,927,149). Perhaps
the closest goods to those in the application and the cited
registration are “gasoline and electric-powered lawn and
garden tools, namely string trimmers, brush cutters, hedge
trimmers, blower/vacuums; and chain saws” (Registration No.
1,540,143), and the differences between these goods and
those of the applicant and registrant are obvious. The
differences in the services in the third-party
registrations is even greater, e.g., “testing and analysis
Ser No. 76/196,190
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of motor oils to detect the presence of contaminants…”
(Registration No. 2,418,585); “designing computer hardware
and software to the order and/or specifications of
others…(Registration No. 1,316,136); “providing temporary
facilities to business and government for disaster
recovery” (Registration No. 2,138,769).
Thus, although third-party registrations can be used
in the manner of dictionary definitions to show that a term
has a significance in a particular field, see Mead Johnson
& Company v. Peter Eckes, 195 USPQ 187 (TTAB 1977), or that
a registered mark is weak, see Conde Nast Publications Inc.
v. Miss Quality, Inc., 180 USPQ 149 (TTAB 1973), in this
case the goods and services in the third-party
registrations are so different that they are not probative
of either point. With respect to tools of the type
identified in applicant’s application and the cited
registration, we find that TITAN is not a weak term, and
the scope of protection to be accorded the cited
registration is not limited.
This brings us to a consideration of the goods and
services. Applicant’s goods are power wrenches; the cited
registration is for, inter alia, oil field hand tools,
namely wrenches. The Examining Attorney has submitted
several third-party registrations which show that parties
Ser No. 76/196,190
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have adopted a single mark for both power wrenches and hand
tool wrenches. See Registration No. 2,540,609, registered
for, inter alia, power-driven wrenches, power tools namely
wrenches, and hand tools namely wrenches; Registration Nos.
2,526,026 and 2,523,451 for, inter alia, power tools namely
air impact wrenches and hand tools namely wrench sets; and
Registration No. 2,438,395 for, inter alia, power tools
namely impact wrenches and air ratchet wrenches and hand
tools namely wrenches. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993).
The Examining Attorney has also submitted numerous
excerpts of articles in “The Oilman,” “Oil and Gas Journal”
and “Offshore” taken from the NEXIS database which indicate
that power wrenches are used in oil fields, the same venue
in which the registrant’s hand tools are used. For
example, a February 26, 2001 article in “Oil and Gas
Journal” about slant rig, shallow-drilling operations
discusses power wrenches, and states that “the derrickman
operates a hydraulic power wrench for tubulars.” Applicant
Ser No. 76/196,190
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has acknowledged that its goods may be sold to oil field
companies and workers.4
In view of this evidence, we find that applicant’s
goods and those of the registrant are related, and that
they may be sold to or encountered by the same classes of
consumers.
Applicant has asserted that its goods are expensive,
and has submitted evidence that a hydraulic torque head can
be $4,000 or more. Applicant has also stated that, as part
of a sale, its dealer or independent representative needs
to demonstrate the tools. In addition, typically special
items will require a price quotation, and will have to be
specially manufactured.
We accept applicant’s position that its goods are
expensive and will be purchased with care. However, as the
Examining Attorney points out, even careful and
sophisticated purchasers are not immune from confusion as
to the source of goods, particular where, as here, the
goods of both applicant and registrant can be sold to the
4 “Applicant’s goods … are sold to a wide variety of companies
and individuals and are not limited to oil field companies and
workers.” Brief, p. 7. The fact that applicant’s goods may also
be sold to customers that are not involved in the oil industry,
or that registrant’s goods include hand tools other than
wrenches, does not obviate the likelihood of confusion. It is a
sufficient basis to find likelihood of confusion if some of the
respective goods are similar and are sold to the same classes of
consumers.
Ser No. 76/196,190
10
same class of purchasers for use in oil field applications.
Thus, although purchasers may well notice the slight
differences in the marks, they are not likely to ascribe
the differences to differences in the sources of the goods,
but will view the marks as variants which both indicate a
single source for the goods. In saying this, we have
considered applicant’s argument that as part of the
purchase of the registrant’s goods the “tools are demoed to
make sure they are capable of meeting the customer’s
oilfield needs.” Brief, p. 7. While we accept applicant’s
view that this is the case in some instances (see the
discussion with respect to applicant’s Class 42 services,
infra), there is nothing inherent in the nature of (hand
tool) wrenches for oil field use that would always require
them to be personally demonstrated by a dealer or
representative of the registrant.
Accordingly, we find that if applicant were to use the
applied-for mark in connection with its goods, confusion
would be likely.
As for applicant’s “technical consultation in the
field of power tools, namely power wrenches,” applicant
itself has stated that, with respect to the registrant’s
identified hand tools, “customers must be trained on the
use of their tools by representatives of the company
Ser No. 76/196,190
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selling the tools.” Therefore, by applicant’s own
acknowledgement, technical consultation is, to some extent,
part of the process of buying and/or using hand tools.
Consumers who purchase the registrant’s wrenches and either
are aware of or avail themselves of this service are likely
to assume, upon seeing the mark TITAN TECHNOLOGIES
INTERNATIONAL, INC. in connection with technical
consultation for power wrenches, that the services emanate
from the same source.
We also find that confusion would be likely if
applicant were to use its mark in connection with “on-line
retail store services featuring power tools, namely power
wrenches” (Class 35). The relatedness between goods and
on-line retail store services featuring those goods is
obvious. Here, of course, registrant’s wrenches are hand
tools rather than power wrenches. However, because of the
relatedness of power wrenches and hand tool wrenches
discussed above, and because virtually all items are now
sold on-line, consumers are likely to assume that there is
a sponsorship or association between hand tool wrenches
sold under the mark TITAN TOOLS and applicant’s identified
on-line retail store services rendered under the mark TITAN
TECHNOLOGIES INTERNATIONAL, INC.
Ser No. 76/196,190
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Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, we follow the well-
established principle that such doubt must be resolved
against the newcomer or in favor of the registrant, who is
the prior user of the mark. See In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.5
5 We note that applicant’s mark is in the form of a corporate
name. Therefore, if applicant successfully appeals from this
decision, and a statement of use is filed after the issuance of a
notice of allowance, the Examining Attorney would be free to
raise a trade name refusal if that is warranted by the specimens
that are filed.