Vaughan & Bushnell Mfg. Co.

Trademark Trial and Appeal Board

Apr 23, 2003

No. 76037642 (T.T.A.B. Apr. 23, 2003)

Mailed:
April 23, 2003
Paper No. 12
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Vaughan & Bushnell Manufacturing Company
________
Serial No. 76/037,642
_______
Howard N. Aronson of Lackenbach Seigel for Vaughan &
Bushnell Manufacturing Company.
Karen Elizabeth Bracey, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Hanak and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark BLUEMAX (in typed form) for goods identified in
the application as “hand tools, namely, framing hammers.”1
1 Serial No. 76/037,642, filed May 1, 2000. The application is
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and April 11, 2000 is alleged in the application
as the date of first use of the mark anywhere and the date of
first use of the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/037,642
2
The Trademark Examining Attorney has issued a final
refusal of registration on the ground that applicant’s
mark, as applied to applicant’s goods, so resembles the
mark BLUEMAKS, previously registered (in typed form) for
“sawblades for circular power saws,”2 as to be likely to
cause confusion, to cause mistake, or to deceive. See
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed opening briefs
on appeal, but applicant did not file a reply brief and did
not request an oral hearing. We affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we 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 in the marks.” Federated Foods, Inc. v.
2 Registration No. 2,371,577, issued on July 25, 2000.
Ser. No. 76/037,642
3
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We find that applicant’s mark and the cited registered
mark are similar when compared in their entireties in terms
of appearance, sound, connotation and overall commercial
impression. The marks could be and likely would be
pronounced identically. The marks look the same except for
their different (but phonetically identical) terminal
letters, i.e., “KS” versus “X”; overall, we find that the
marks look more similar than dissimilar. The connotations
of the respective marks are not immediately apparent and
perhaps are not identical, but we cannot conclude that they
are dissimilar.3 Viewed as a whole, we find that the marks
are sufficiently similar in terms of their overall
commercial impressions that confusion is likely to result
if the marks are used on similar or related goods.
Applicant has presented no argument to the contrary in its
brief on appeal.
3 Applicant has submitted copies of several third-party
registrations of other BLUE MAX marks, but we have given this
evidence little weight. The goods identified in these
registrations are far afield from the goods involved in this
case. In any event, third-party registrations are not evidence
that BLUE MAX-type marks are widely used or weak, for purposes of
the sixth du Pont factor (“the number and nature of similar marks
in use on similar goods”). See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). Nor do
these registrations shed any light on the meaning or connotation
of BLUE MAX as applied to the goods at issue.
Ser. No. 76/037,642
4
We turn next to a comparison of the goods, and of the
trade channels and classes of customers for the goods. It
is not necessary that the respective goods be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner, or that the circumstances
surrounding their marketing are such, that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
Applying these principles in this case, we find that
the “hand tools, namely, framing hammers”4 identified in the
application are sufficiently related to the “sawblades for
circular power saws” identified in the cited registration
4 The record shows that a “framing hammer” is a relatively
heavier hammer (vis-à-vis a normal, all-purpose claw hammer),
used for more heavy-duty jobs.
Ser. No. 76/037,642
5
that source confusion is likely to result from use thereon
of the similar marks involved in this case. The Trademark
Examining Attorney has submitted several third-party
registrations which include, in their respective
identifications of goods, both hammers and sawblades for
power saws. Although these registrations are not evidence
that the marks shown therein are in commercial use, or that
the public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
goods identified therein are of a type which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
These third-party registrations weigh in favor of a finding
of likelihood of confusion.
Moreover, although applicant’s and registrant’s
respective goods are not identical or competitive, they
nonetheless are related because they are basic tools (or
components thereof)5 which would be purchased and used by
5 We are not persuaded by applicant’s argument that the goods are
unrelated because applicant’s hammer is a stand-alone tool while
registrant’s sawblade is not a stand-alone tool but rather is a
component of a tool. There is no basis in the record for finding
that consumers would distinguish the source of the respective
goods on that basis. Registrant’s sawblades are used as
components of circular power saws, but they can be sold
separately, i.e., as stand-alone items.
Ser. No. 76/037,642
6
any handy homeowner or do-it-yourselfer. See, e.g., the
Consumer Reports article (attached to the Trademark
Examining Attorney’s denial of applicant’s request for
reconsideration) which identifies the hammer and the
circular power saw as two of the ten essential tools for
any home workbench.6 These tools could and would be used
together for any building or home improvement project
involving wood or lumber. For example, a homeowner
building a wooden fence or a deck would use both a circular
power saw (including, obviously, the sawblade component of
such saw) and a framing hammer to complete the project.
Given the complementary nature of these goods, a consumer
familiar with applicant’s mark as used on framing hammers
is likely to assume, upon encountering a similar mark used
on sawblades for circular power saws, that the goods
emanate from a single or related source.
Additionally, these goods are sold in the same trade
channels and would be encountered there by the same
purchasers, including ordinary consumers. The evidence of
record shows that both hammers (including framing hammers)
and circular power saws (and replacement blades therefor)
are sold in retail hardware and home improvement stores, as
6 The article specifically recommends that the homeowner have a
framing hammer in addition to a more general-purpose hammer.
Ser. No. 76/037,642
7
well as via online tool suppliers. Applicant asserts that
the goods are sold in different aisles of the hardware
store, but even if that is so, it is not dispositive in
view of the related and complementary nature of the goods
themselves. Moreover, we note that the Lowe’s advertising
circular (attached to the Trademark Examining Attorney’s
denial of applicant’s request for reconsideration) depicts
framing hammers and circular saws and other power tools on
the same and adjoining pages. On the tool websites, as
well, the link upon which the shopper clicks to view the
power tools offered by the seller is usually depicted on
the screen adjacent to the link which is clicked to view
the seller’s hand tools. On one such website, the link to
power tools is identified by a picture of a circular saw
and the adjacent link to hand tools is identified by a
picture of a hammer. Based on this evidence, we find that
the types of goods involved here are marketed in the same
trade channels, a fact which supports a finding of
likelihood of confusion. See In re Majestic Distilling Co.
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
Applicant contends that there have been no reported
instances of actual confusion between applicant’s mark and
registrant’s mark, despite over two years’ concurrent use
of the marks. Even assuming that this is true (and, of
Ser. No. 76/037,642
8
course, we have not heard from registrant on this point),
we cannot conclude on this record that the opportunity for
actual confusion has been so great that its absence is
factually surprising or legally significant. See Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). In
any event, absence of actual confusion is but one factor in
our likelihood of confusion analysis, and even if that
factor weighs in applicant’s favor in this case, we find
that it is outweighed by the other likelihood of confusion
factors which support a finding of likelihood of confusion.
In summary, after carefully reviewing the evidence of
record pertaining to the relevant du Pont factors, we
conclude that a likelihood of confusion exists. We have
considered all of applicant’s arguments to the contrary,
including any arguments not specifically discussed in this
opinion, but are not persuaded of a different result. We
resolve any doubts as to the correctness of our decision
against applicant. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.