Wagner Spray Tech Corp.

Trademark Trial and Appeal Board

Dec 17, 1999

No. 75237611 (T.T.A.B. Dec. 17, 1999)

Paper No. 14
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 17, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Wagner Spray Tech Corporation
________
Serial No. 75/237,611
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Stephen C. Lee of Faegre & Benson for applicant.
Andrew P. Baxley, Trademark Examining Attorney, Law Office
114 (Mary Frances Bruce, Managing Attorney).
_______
Before Cissel, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Wagner Spray Tech
Corporation to register the mark shown below
Ser No. 75/237,611
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for “electric powered chain saws, electric powered limb
trimmers, electric powered sharpeners for chain saws, and
parts thereof.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles the following previously registered
marks that confusion is likely. All are concurrent use
registrations, with each registrant claiming the other two
as exceptions to its right to exclusive use. The cited
registered marks are: LUMBER JACK for “retail hardware
store services and retail lumber yard and construction
material outlet services;”2 LUMBERJACK for “lumberyard,
construction material outlet, and hardware store services;”3
and LUMBERJACK’S for “lumberyard, construction material
outlet and hardware store services.”4

1 Application Serial No. 75/237,611, filed February 6, 1997,
alleging first use on June 27, 1994.
2 Registration No. 1,147,898, issued February 24, 1981; combined
Sections 8 and 15 affidavit filed.
3 Registration No. 1,593,521, issued April 24, 1990; combined
Sections 8 and 15 affidavit filed.
4 Registration No. 1,594,635, issued May 1, 1990; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/237,611
3
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant contends, in urging that the refusals be
reversed, that retail store services involve the sale of a
wide variety of products, and that consumers would not
believe that registrants’ services and the specific lawn
and garden products of applicant had a common source.
Further, applicant asserts that applicant’s goods are used
for landscaping, not logging or construction, and that,
therefore, applicant’s goods are distinct from the lumber
yard and construction material outlet services of
registrants. Applicant also argues that the Examining
Attorney’s position, taken to its extreme, essentially
grants to registrants “protection for almost all classes of
goods and services.”
The Examining Attorney maintains that the marks at
issue are essentially identical and that they are applied
to closely related goods and services. The Examining
Attorney has relied upon a dictionary definition of the
term “lumberjack,”5 one third-party registration and

5 The dictionary listing, of which we take judicial notice,
defines the term as “one who fells trees and transports the
timber to a mill; a logger.”
Ser No. 75/237,611
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excerpts retrieved from the NEXIS database which show,
according to the Examining Attorney, that “applicant’s
goods are of a type that are sold through the registrants’
services.”
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. 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 Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the involved marks, applicant does not
dispute, with good reason, that they are essentially
identical. Indeed, the marks are virtually identical in
sound, appearance and meaning. Although the marks are
somewhat suggestive, the marks convey the same suggestion.
Notwithstanding this suggestiveness, however, applicant has
not introduced evidence showing any third-party uses of the
same and/or similar marks for the types of services
rendered by registrants. This virtual identity among the
marks makes it likely that, if the marks were used in
connection with related goods and/or services, purchasers
Ser No. 75/237,611
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would be confused. In this connection, the Board has
stated that “[i]f the marks are the same or almost so, it
is only necessary that there be a viable relationship
between the goods or services in order to support a holding
of likelihood of confusion.” In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
We thus turn to focus our attention, as have applicant
and the Examining Attorney, on the similarity/dissimilarity
between applicant’s goods and registrants’ services.
With respect to the goods/services, it is clear that
the Board must compare applicant's goods as set forth in
its application with the services as set forth in the cited
registrations. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); and In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981) It is not
necessary that the goods and/or services 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 that the respective goods and/or services are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered
by the same person under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
Ser No. 75/237,611
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belief that they originate from the same source. In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In the present case, we find that applicant’s electric
power tools are sufficiently related to each of the
registrants’ hardware store services that, when these goods
and services are marketed under virtually identical marks,
consumers in the marketplace are likely to be confused.
The NEXIS articles show that goods of applicant’s type are
sold in hardware stores. Indeed, applicant acknowledges
that “some hardware stores sell chain saws and pruners.”
(brief, p. 4) Applicant’s identification of goods is not
restricted in any way, so we must assume that applicant’s
power tools move in all normal channels of trade, which in
this case would include hardware stores. In addition, the
goods and services would be offered to the same classes of
consumers. In sum, we find that consumers familiar with
any of the registrants’ LUMBERJACK store services would be
likely to believe, upon encountering applicant’s LUMBERJACK
power tools, that the goods and services originated with or
are somehow associated with or sponsored by the same
source.
Ser No. 75/237,611
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Applicant’s other arguments which go to the equities
of the refusal are not persuasive principally for the
reasons set forth by the Examining Attorney in his brief.
To the extent that any of the points raised by
applicant may cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusals to register are affirmed.
R. F. Cissel
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 75/237,611
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