United Technologies Corp.

Trademark Trial and Appeal Board

Aug 4, 1999

No. 91101322 (T.T.A.B. Aug. 4, 1999)

Hearing: Paper No. 44
November 18, 1998 HRW
THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB AUG 4, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
United Technologies Corporation
v.
P&W International Tech Co., Inc.
_____
Opposition No. 101,322
to application Serial No. 74/573,108
filed on September 13, 1994
_____
Ronald G. Cummings for United Technologies Corporation.
Jack Peng for P&W International Tech Co., Inc.
______
Before Simms, Walters and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
P&W International Tech Co., Inc. has filed an
application to register the mark P&W and design, as shown
below, for “synthetic diamond for abrasive use” in Class 3
and “hand-powered steel drills and chucks therefor” in Class
Opposition No. 101,322
2
8.1
United Technologies Corporation has filed an opposition
to registration of the mark, on the grounds of priority and
likelihood of confusion under Section 2(d) and of misuse by
applicant of the statutory notice of registration.
Opposer, in its notice of opposition, alleges prior use
of the designation P&W in connection of the sale of a
variety of tools, including drills, drill chucks and tools
for abrasive use; ownership of registrations for the marks
PRATT & WHITNEY, P&W, and PW for engines for powering
aircraft and replacement parts therefor; prior use by both
opposer and its customers of the designation P&W as an
indication of source of opposer’s products; and the
likelihood of confusion of applicant’s mark with opposer’s
trade name, trademarks and previously used designation. In
its amended notice, opposer added the allegation that
applicant had misused the registration symbol with the
intent to deceive the public.

1 Serial No. 74/573,108, filed September 13, 1994, claiming first
use dates for the Class 3 goods of October 18, 1993 and first use
dates for the Class 8 goods of February 2, 1994. The mark is
described in the application as consisting “in part of the design
of a sailboat and waves, with the sailboat representing the
letter P and the waves representing the letter W.”
Opposition No. 101,322
3
Applicant, in its answer, admitted opposer’s ownership
of its pleaded registrations and that opposer is well known
for the manufacture and sale of engines for powering
aircraft, but denied the remainder of the salient
allegations. In its answer to the amended notice, applicant
denied the allegations of misuse.
The Record
The record consists of the file of the involved
application; the trial testimony taken by opposer of James
F. Guiliano, General Manager of Tool Support Services for
Pratt & Whitney (a division of opposer), H. Christian
Conover, Manager Advertising and Communications for Pratt &
Whitney, and Mary Krywonis, legal assistant for Pratt &
Whitney; the exhibits accompanying each of these
depositions; opposer’s first notice of reliance introducing
status and title copies of its three pleaded registrations
and its second notice of reliance introducing numerous
publications in which reference is made to Pratt & Whitney
as P&W. Applicant took no testimony and made no other
evidence of record. Opposer filed a brief and both parties
participated in an oral hearing.
Mr. Conover, in his deposition, introduced several
advertising brochures for the Pratt & Whitney engine product
line showing use of the PRATT & WHITNEY mark and reference
Opposition No. 101,322
4
to the company as P&W. No mention was made in these
brochures of any tools being marketed by opposer.
Ms. Krywonis testified that Pratt & Whitney had been
using this company name since 1926; that it has been
referred to both internally and by the public as P&W since
that time; and that the company started using PRATT &
WHITNEY alone, as opposed to PRATT & WHITNEY AIRCRAFT, as
its trademark in 1983. Ms. Krywonis introduced the results
of a Lexis/Nexis search showing over 3,000 hits for the
period since 1986 in which the company was referred to, in
the same article, as both Pratt & Whitney and P&W; printouts
of screens from the company’s Internet site in which both
designations were used; and copies of various company
agreement forms in which the company refers to itself as
P&W. In addition, Ms. Krywonis made of record an envelope
in which a paper was received from applicant during the
course of this proceeding, the mailing label of which shows
use by applicant of the ® symbol next to its mark (Exhibit
21).
Mr. Guiliano, testifying as the person responsible for
all tool sales at Pratt & Whitney, stated that the company
has been selling tools since it went into business in
approximately 1925;2 that opposer offers over 14,000 stock

2 While opposer designated its sales figures for the tool
business, as testified to by Mr. Guiliano, “confidential,”
opposer, in its brief, has stated that these sales in 1996
Opposition No. 101,322
5
tools including drill bits3 and chucks similar to those sold
by applicant; and that opposer has sold tools with a
synthetic diamond coating on the surface, such as polishing
and grinding balls and wheels, for at least 20 years. Mr.
Guiliano identified a shipping label bearing the trademarks
P&W and PW (Exhibit 10) and a container to which one of
these labels had been applied (Exhibit 11) as being
exemplary of the type used to ship tools to customers since
1984. He testified that these customers are typically
commercial customers, such as airlines, overhaul shops and
maintenance providers, and that in correspondence these
customers frequently refer to the company as P&W or P&W Tool
Support Services, as exemplified by Exhibits 12 A-J. He
further testified that the tools sold by the company are
manufactured by 50 to 60 different outside manufacturers and
that the part numbers imprinted on the tools are typically
in the format of PWA (Pratt & Whitney Aircraft) numbers.
The Opposition
Opposer is relying upon three separate bases in
connection with its claim under Section 2(d), namely,

exceeded $9 million. Although this number is small in comparison
to the gross revenues of Pratt & Whitney which, according to
opposer’s brief, range near $6 billion, opposer’s tool business
is clearly not insubstantial.
3 Although applicant identifies its products as “drills” rather
than “drill bits,” it appears that the goods shown in the
specimens are more aptly described as “drill bits.”
Opposition No. 101,322
6
(1) its common law use of the trademark P&W on tools, (2)
its trademark registrations for the marks P&W and PW for
engines for powering aircraft and replacement parts
therefor, and (3) its trade name use and use analogous to
trademark use of the designation P&W.
We can summarily discount any reliance by opposer on
its pleaded registrations. Regardless of the similarity of
the registered marks and applicant’s mark, we consider
airplane engines and drills or synthetic diamond abrasive
material much too dissimilar to seriously contemplate any
likelihood of confusion. Although opposer argues that
engine manufacturers would be expected to sell tools,
opposer has offered no evidence of companies other than
opposer which follow this practice. Moreover, while
applicant has admitted that opposer is well-known for its
manufacture of aircraft engines, opposer has provided no
basis for so extending this fame to encompass the totally
different field of tools and abrasive materials for use in
making and/or repairing abrasive tools.
Turning to opposer’s common law use of the mark P&W, we
find that, by the testimony of Mr. Guiliano, opposer has
established that opposer, through the Pratt & Whitney
division, has been selling tools since approximately 1925
and that labels with the marks P&W (and PW) have been used
on containers used for shipping these tools since 1984. In
Opposition No. 101,322
7
looking at the shipping labels used by opposer, we note
that, although the Pratt & Whitney trademarks are the
predominant marks, the P&W and PW marks are also present,
albeit in much smaller print on the side of the label.
Despite the size of these marks, we believe that they would
be viewed by purchasers as a separate indication of the
source of the goods. See Franklin Mint Corp. v. Master
Manufacturing Co., 677 F.2d 1005, 212 USPQ 233 (CCPA 1981),
citing In re Singer Manufacturing Co., 255 F.2d 939, 118
USPQ 310 (CCPA 1958) for the statement that “[t]he important
question is not how readily the mark will be noticed, but
whether, when it is noticed, it will be understood as
indicating origin of the goods.” Accordingly, opposer has
clearly shown priority of use of its P&W trademark in
connection with the sale of its tools. The fact that the
tools are ordered by PWA number, not P&W number, or that the
P&W mark is not found on the tools per se, but rather is
found on the packaging for the tools, is inconsequential.
As a result, we need not consider the evidence
introduced by opposer with respect to the use by both the
company and by others of the acronym P&W in reference to
Pratt & Whitney, or whether this claimed recognition of P&W
as a trade name would extend to its subsidiary tool
business.
Opposition No. 101,322
8
We go forward to the issue of likelihood of confusion
and to a review of those of the du Pont factors which are
relevant under the present circumstances. See In re Du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
Considering first the respective marks, we find
opposer’s mark P&W very similar in appearance, sound, and
connotation to applicant’s P&W and design mark. Although it
is true that in determining likelihood of confusion, the
marks must be considered in their entireties, there is
nothing improper in giving more or less weight to a
particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). If the word
portion of a mark rather than the design feature is more
likely to be remembered and relied upon by purchasers in
referring to the good, it is the word portion which will be
accorded more weight. See In re Appetito Provisions Co., 3
USPQ2d 1553 (TTAB 1987). Here we believe the word portion,
or to be more exact, the letters P&W, would be the dominant
portion of applicant’s mark. The design, if anything,
serves to reinforce the letters rather than to create a
separate commercial impression, since applicant has itself
described the design as a depiction of the letters P and W
in the form of a sailboat and waves. See Ceccato v.
Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32 USPQ2d
Opposition No. 101,322
9
1192 (TTAB 1994)[coat of arms design simply reinforces
meaning of word mark].
Insofar as the goods are concerned, Mr. Guiliano
testified that opposer sells drills (or drill bits) and
chucks very similar to those shown in the specimens of
applicant. While acknowledging that opposer does not sell
the synthetic diamond material of applicant per se, Mr.
Guiliano testified that opposer does sell abrasive tools
which are coated with this material. He also testified to
the possibility that opposer might sell the material itself
in the future, to revitalize or repair its abrasive tools.
From opposer’s evidence, and since applicant has
offered nothing to the contrary, we find the tools sold by
opposer to be highly similar, if not identical, to the hand-
powered steel drills and chucks identified in applicant’s
application. There is no evidence warranting making any
distinction on the basis that applicant’s tools are “hand-
powered.”
Although there are obvious differences between the
loose synthetic diamond abrasive material of applicant and
the abrasive tools of opposer which incorporate this
material, we find that there is a sufficient relationship
between the abrasive material and tools which incorporate
the material that purchasers might assume they originate
from a common source. It is not necessary that the goods be
Opposition No. 101,322
10
identical, or even competitive, in order to support a
finding of likelihood of confusion; it is sufficient that
the goods are related in some manner and/or that the
circumstances surrounding their marketing are such that they
are likely to be encountered by the same persons who,
because of the similarity of the marks used thereon, might
assume that they originate from, or are in some way
associated with, the same producer. See Devries v. NCC
Corp., 227 USPQ 705 (TTAB 1985); and Mobay Chemical Co. v.
Standard Oil Co., 163 USPQ 230 (TTAB 1969). Since abrasive
material similar to applicant’s is used in opposer’s
polishing tools, and since we know from the testimony of Mr.
Guiliano that abrasive material could be used to revitalize
worn tools, we are led to the conclusion that there might
well be common purchasers for the tools and the loose
abrasive material. The assumption of a common source for
the goods by these purchasers, if highly similarly marks are
used thereon, is highly likely.
The only other relevant factor is the similarity or
dissimilarity of the channels of trade for the respective
goods. From the testimony of Mr. Guiliano, it is clear that
opposer’s tool customers are restricted almost exclusively
to the aerospace industry. Applicant’s goods, on the other
hand, as identified in the application are unrestricted as
to channels of trade or potential customers. Thus, we must
Opposition No. 101,322
11
presume that the goods travel in all the normal channels of
trade for these goods. See Kangol Ltd. v. KangaROOS U.S.A.
Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Since
opposer has introduced testimony that it sells drills and
chucks very similar to those of applicant, we assume that
applicant’s drills and chucks could also be sold to persons
in the aerospace industry. No distinctions can be drawn on
the basis of channels of trade.4
Accordingly, on the record before us, we find that, as
a result of the high degree of similarity of applicant’s P&W
and design mark and opposer’s previously used P&W mark, and
of the fact that the goods upon which the respective marks
are used are very similar or closely related, there is
likelihood of confusion on the part of the purchasing public
as to the source of the respective goods.
In view of this determination of likelihood of
confusion, we find no need to entertain opposer’s second
ground for opposition, namely, the misuse by applicant of
the registration symbol. Suffice it to say, the single
instance of use by applicant of the symbol on an address
label used in correspondence with opposer is far from

4 There is no evidence that opposer’s tools are ever sold to the
general public, whereas applicant stated at the oral hearing that
its tools are only sold for home use. Not only is this fact not
properly before us by way of timely introduced evidence, but we
must consider the goods as identified and they are not so
limited.
Opposition No. 101,322
12
conclusive evidence of fraudulent misuse by applicant of the
symbol with an intent to deceive the purchasing public.
Opposition No. 101,322
13
Decision: The opposition is sustained and registration
is refused to applicant.
R. L. Simms
C. E. Walters
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board