Toolstream Limited

Trademark Trial and Appeal Board

Jan 6, 2022

88530638 (T.T.A.B. Jan. 6, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: January 6, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Toolstream Limited _____ Serial No. 88530638 _____ Andrew L. Goldstein of Freeborn & Peters LLP, for Toolstream Limited. Marcya N. Betts, Trademark Examining Attorney, Law Office 106, Mary I. Sparrow, Managing Attorney. _____ Before Kuhlke, Heasley and Allard, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Toolstream Limited (“Applicant”) seeks registration on the Principal Register for the mark RHINO in standard characters for goods ultimately identified as: Portable electric heaters for industrial use; room heaters for industrial use, namely, electric radiant heaters, electric ceramic space heaters and electric fan space heaters; industrial dehumidifiers; parts and fittings for industrial heating apparatuses, industrial drying apparatuses, and industrial dehumidifiers, but none of the foregoing for use in connection with the construction, maintenance and repair of bituminous and asphalt wearing courses, thoroughfares, roads, footways, highways, aircraft runways, playgrounds, pavements, car parks, railway Serial No. 88530638 - 2 - station platforms and driveways, in International Class 11.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used in connection with the identified goods, so resembles the registered mark RHINO EVENT EQUIPMENT (in standard characters, with “EVENT EQUIPMENT” disclaimed) for, “Portable electric and gas patio heaters,” in International Class 11,2 as to be likely to cause confusion. When the Section 2(d) refusal was made final, Applicant appealed and requested reconsideration. On June 14, 2021, the Examining Attorney denied the request. The appeal thereafter resumed and briefs have been filed. We affirm the refusal to register.3 I. Likelihood of Confusion When the question is likelihood of confusion, 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, 1 Application Serial No. 88530638, filed on July 23, 2019 under Section 44(e) of the Trademark Act, 15 U.S.C. § 1126(e), based on EUIPO Registration No. 018024266, claiming priority under Section 44(d), 15 U.S.C. § 1026(d), on Application No. 018024266, filed February 19, 2019. 2 Registration No. 5916464 issued on November 19, 2019. The registration includes other goods, “furniture, namely, chairs, tables, portable sports bars, benches, excluding step stools,” in International Class 20; however, for purposes of the refusal, we focus on the goods in International Class 11. 3 Citations to TTABVUE throughout the decision are to the Board’s public online database that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first number represents the docket number in the TTABVUE electronic case file and the second represents the page number(s). Citations to the examination record refer to the USPTO’s online Trademark Status and Document Retrieval system (TSDR). Serial No. 88530638 - 3 - 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all [DuPont] factors for which there is record evidence but ‘may focus . . . on dispositive factors, such as similarity of the marks and relatedness of the goods.”’) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Similarity/Dissimilarity of the Marks We compare the marks in their entireties as to “appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Serial No. 88530638 - 4 - Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). However, “in articulating reasons for reaching a conclusion on the issue 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 consideration of the marks in their entireties.” In re Nat’l Data, 224 USPQ at 751. Serial No. 88530638 - 5 - In comparing the marks RHINO and RHINO EVENT EQUIPMENT the similarities are self-evident. Registrant’s mark incorporates the entirety of Applicant’s mark and begins with the shared word RHINO. Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) BENGAL LANCER and design confusingly similar to BENGAL); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (BARR GROUP confusingly similar to BARR). The additional wording in Registrant’s mark is, at a minimum, merely descriptive and appropriately disclaimed. As such, it has limited source identifying significance. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)). The first word in Registrant’s mark, RHINO, is clearly the more dominant source identifying element in that mark. Applicant does not address the points of similarity, but rather in connection with other factors, third-party use and channels of trade discussed below, asserts that the addition of EVENT EQUIPMENT is sufficient to distinguish the marks. We bear in mind that the “marks ‘must be considered . . . in light of the fallibility of memory.”’ In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ2d 1, 3 (CCPA 1977)). While a side-by-side comparison of the marks reveals the differences between them, such a comparison is not the proper way Serial No. 88530638 - 6 - of determining likelihood of confusion since that is not the way customers will view the marks in the marketplace. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); see also In re Solar Energy Corp., 217 USPQ 743,745 (TTAB 1983) and cases cited therein; see also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Here, despite the additional wording in Registrant’s mark, RHINO EVENT EQUIPMENT, the commercial impression of Applicant’s mark RHINO is very similar. In terms of appearance, sound, connotation, and commercial impression, we find the similarity in the marks - considered in their entireties - outweighs their dissimilarities. In view thereof, the similarity of these marks weighs in favor of a finding of likelihood of confusion. B. Number and Nature of Similar Marks Applicant argues that use of the term RHINO by others “for heaters and related goods demonstrate that the term should be given a narrower scope of protection and that the public will look to the other elements…to distinguish the source of the goods….” 6 TTABVUE 7. In support of this position, Applicant first points to one third-party registration for the mark BLUE RHINO4 for “barbecue grills; patio heaters; fireplaces” and one third-party application for the mark RHINOCERA (and 4 Registration No. 3160502, October 18, 2019 Office Action at 2. The Examining Attorney initially also cited this registration as a bar to registration, but withdrew that refusal in a subsequent Office Action. Serial No. 88530638 - 7 - design)5 for “barbecue grills.” In addition, Applicant submitted a third-party website excerpt showing use of the mark YAMAHA RHINO for a compact cab heater for use with vehicles.6 “Evidence of third-party use of similar marks on similar goods is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). Here, the only evidence of use, i.e., evidence of commercial weakness, is one third-party website. Sabhnani v. Mirage Brands, LLC, 2021 USPQ2d 1241, *24 (TTAB 2021) (a single third-party use is insufficient to show commercial weakness of the mark). The third-party registration is not evidence of what happens in the marketplace or that customers are familiar with it. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). However, as explained in In re Morinaga Nyugyo Kabushiki Kaisha, 120 USPQ2d 1738, 1745-46 (TTAB 2016): third-party registrations are relevant evidence of the inherent or conceptual strength of a mark or term because they are probative of how terms are used in connection with the goods or services identified in the registrations. ‘Third party registrations show the sense in which the word is used in ordinary parlance and may show that a particular term has descriptive significance as applied to certain goods or services.’ E.g., Institut National Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992). See also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674- 5 Application Serial No. 90166353, May 13, 2021 Response at 9. Third-party applications, as opposed to registrations, have no probative value other than as evidence that the applications were filed. In re Team Jesus LLC, 2020 USPQ2d 11489, at *6 n.29 (TTAB 2020) (“an application would be evidence only of the fact that it was filed, and therefore has no probative value”). 6 May 13, 2021 Response at 11. Serial No. 88530638 - 8 - 75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006). Third-party registrations used in this manner are not evidence that customers are accustomed to seeing the use of other, similar, marks in the marketplace, but rather evidence that a term is suggestive or descriptive of the relevant goods or services. While the Federal Circuit has held that “extensive evidence of third-party use and registrations is ‘powerful on its face,’ even where the specific extent and impact of the usage has not been established,” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 116 USPQ2d at 1136, one registration, one application (which has limited probative value) and one third-party website, are insufficient to show conceptual or commercial weakness and nowhere close to the amount of evidence found convincing in Jack Wolfskin and Juice Generation wherein “a considerable number of third parties’ use [of] similar marks was shown.” Juice Generation Inc. v. GS Enters., 115 USPQ2d at 1674. Applicant points to the Trademark Manual of Examining Procedure, which explains that “[i]f the examining attorney finds registrations that appear to be owned by more than one registrant, he or she should consider the extent to which dilution may indicate that there is no likelihood of confusion.”7 TMEP § 1207.01(d)(x) (July 7 Applicant’s reference to an unpublished decision (In re Itec Mfg., Ltd., Serial No. 78621722 (TTAB February 13, 2008)) is not persuasive. In re tapio GmbH, 2020 USPQ2d 11387, at *10 n.34 (TTAB 2020) (Board found unpersuasive non-precedential decisions decided on different records); In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018) (“Board decisions which are not designated as precedent are not binding on the Board, but may be cited and considered for whatever persuasive value they may hold.”) In that proceeding, the Board reversed the refusal under Section 2(d) based on three separate registrations owned by different entities, not only because of the 18 third-party registrations Serial No. 88530638 - 9 - 2021). However, that section also provides that “the examining attorney must cite all the marks that are considered to be a bar to registration of the mark presented in the application, even if they are owned by different parties.” Id. Here, while the Examining Attorney withdrew the citation to the BLUE RHINO mark and it exists on the Principal Register with RHINO EVENT EQUIPMENT, the addition of the word BLUE arguably provides a greater distinction in comparison to Applicant’s mark RHINO, which has no additional wording or features and the cited mark, which has at best merely descriptive additional wording. We further note that each application must be considered on its own merits. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); see also In re Shinnecock Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009). In short, this record does not support narrowing the scope of protection for the term RHINO in connection with heaters or related goods. C. Relatedness of the Goods, Trade Channels, Classes of Consumers and Conditions of Sale When considering the goods, trade channels, classes of consumers and conditions of sale, we must make our determinations based on the goods as they are identified in the application and cited registration. See In re Dixie Rests. Inc., 41 USPQ2d at 1534. See also Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston for similar goods in addition to the three cited registrations, but also due to the differences in the goods and sophistication of the consumers. Serial No. 88530638 - 10 - Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). The issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”). It is sufficient that the goods of the applicant and the registrant are related in some manner or that the conditions surrounding their marketing are such that they are likely to be encountered by the same persons under circumstances that, because of the marks used in connection therewith, would lead to the mistaken belief that they originate from the same source. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1476 (Fed. Cir. 2000). The application and registration themselves may provide evidence of the relationship between the goods. Hewlett- Packard Co. v. Packard Press Inc., 62 USPQ2d at 1005. As stated, Applicant seeks registration for “Portable electric heaters for industrial use; room heaters for industrial use, namely, electric radiant heaters, electric ceramic space heaters and electric fan space heaters; industrial dehumidifiers; parts and fittings for industrial heating apparatuses, industrial drying apparatuses, and industrial dehumidifiers, but none of the foregoing for use in connection with the construction, maintenance and repair of bituminous and asphalt wearing courses, thoroughfares, roads, footways, highways, aircraft runways, playgrounds, pavements, car parks, railway station platforms and Serial No. 88530638 - 11 - driveways,” and Registrant’s most pertinent goods are identified as “Portable electric and gas patio heaters.” Registrant and Applicant both identify portable electric heaters. Applicant, however, limits all of its goods, including the various portable and room heaters, to “industrial use” whereas Registrant’s heaters are for “patio[s].” Although the Examining Attorney relies on the principle that in the absence of limitations the presumption is that the goods move in all trade channels normal for such goods, we read Registrant’s description of goods on its face as not including “industrial uses.” “Patio heaters” do not include heaters for “industrial uses.” Applicant argues that the patio heaters and industrial heaters travel in different channels of trade, but did not submit evidence to support this contention. The Examining Attorney, on the other hand, submitted examples of third-party registrations where a mark is registered for both household-type heaters (patio heaters, portable heaters, space heaters, radiant heaters) and commercial heaters or industrial dehumidifiers. In addition, she submitted excerpts from third-party websites offering both patio heaters and industrial heaters or dehumidifiers to the general public. A few examples are set forth below: Registration No. 4497332 for the mark FIRE SENSE and design for, inter alia, electric heaters for commercial use, electric patio heaters, gas patio heaters, portable electric heaters (November 18, 2020 Office Action at 5-6); Registration No. 4838475 for the mark HAVERHILL for, inter alia, electric heaters for commercial use, electric radiant heaters, electric space heaters, industrial dehumidifiers (Id. at 15-16); Serial No. 88530638 - 12 - Registration No. 5822333 for the mark FORMASTER for, inter alia, portable electric heaters, electric heaters for commercial use, radiant heaters for household use (Id. at 17-18); Registration No. 6088977 for the mark ECOR PRO for, inter alia, electric space heaters, industrial dehumidifiers (Id. at 26-27); Build With Ferguson offering commercial humidifiers and heaters and patio heaters (under various marks but showing overlap in trade channels) (Id. at 28-53); Gas Outdoor Patio Heaters offering patio heaters, portable commercial space heaters, industrial patio heating and propane shop heaters (some under other marks but showing overlap in trade channels) (Id. at 54-59) Global Industrial offering industrial electric heaters, industrial humidifiers, patio heaters (under Global Industrial mark and third party marks) (Id. at 67-76); Heaterstoreonline offering commercial industrial and patio heaters (under various marks but showing overlap in trade channels) (Id. at 78-92); John Plyler Home Center offering industrial heaters and patio heaters (under various marks but showing overlap in trade channels) (Id. at 110-120); Sylvane offering industrial, commercial dehumidifiers and heaters, and patio heaters (under various marks but showing overlap in trade channels) (Id. at 121-138); Bromic offering commercial, industrial heaters and patio heaters (Id. at 142-143); SunSwitch offering patio heaters and industrial heaters (under various marks but showing overlap in trade channels) (Id. at 144-145); Infrasave offering patio heaters and industrial heaters (under various marks but showing overlap in trade channels) (Id. at 147-150); and Serial No. 88530638 - 13 - Grainger offering patio heaters and industrial heaters (under various marks but showing overlap in trade channels) (Id. at 151-152) The third-party registrations are probative to the extent that they serve to suggest that the listed goods are of a type that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d per curiam, 864 F.2d 149 (Fed. Cir. 1988). The examples of third-party use show the market context in which consumers are exposed to the same mark being used for the relevant goods, indicating single source, or, more frequently here, to show how the trade channels overlap. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-73 (TTAB 2009) (website evidence shows same or overlapping channels of trade). While Applicant’s goods are limited to industrial use (and excluding uses with bituminous and asphalt paving), we otherwise presume that Applicant’s and Registrant’s goods are offered in the ordinary channels of trade and offered to all the usual classes of purchasers for these goods. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into the registrant’s description of goods.”). The third-party websites listed above, show the ordinary channels of trade for patio heaters and industrial heaters and dehumidifiers overlap. The goods are inherently related in that they are for the same purpose, to provide portable heat, but differ in the setting for which they are designed, patios versus Serial No. 88530638 - 14 - industrial sites. However, the record shows heaters for different purposes are registered under the same mark and sold on the same website. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). Registrant’s “Portable electric and gas patio heaters,” are related to Applicant’s “Portable electric heaters for industrial use; room heaters for industrial use, namely, electric radiant heaters, electric ceramic space heaters and electric fan space heaters; industrial dehumidifiers.” In terms of the conditions of sale, based on the website evidence, the respective goods are of a sort that may be offered from the same source, often through the same or overlapping channels of trade, to prospective purchasers-industrial, commercial and consumer-who could readily infer from the similar marks that they emanate from the same or affiliated sources. While Applicant’s goods may be directed to a more sophisticated industrial consumer, and that purchasing decision may be subject to more care, it does not rise to a level that outweighs the other factors. We find the relationship between the goods, their channels of trade and classes of consumers favor a finding of likelihood of confusion, and the conditions of sale based on the nature of the goods do not obviate likely confusion. Serial No. 88530638 - 15 - II. Conclusion In sum, we hold that in view of the similar marks, related goods, and overlap in trade channels and classes of consumers, confusion is likely between Applicant’s mark RHINO and Registrant’s mark RHINO EVENT EQUIPMENT. Decision: The refusal to register Applicant’s mark is affirmed under Trademark Act Section 2(d).