Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

Serial Number  76/100025

 

IN THE UNITED STATES PATENT AND TRADEMARK OFFICE

                             

Applicant:	Kingsbury, Inc.	:	BEFORE THE
Trademark:	KINGSBURY	:	TRADEMARK TRIAL
Serial No:	76100025	:	AND
Attorney:	John F.A. Earley III	:	APPEAL BOARD
Address:	HARDING, EARLEY, FOLLMER & FRAILEY 86 The Commons At Valley Forge East 1288 Valley Forge Rd. P.O. Box 750 Valley Forge, PA 19482	:	ON APPEAL

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

            This application has been reassigned to the undersigned Examining Attorney.

Applicant appealed the Examining Attorney’s final refusal to register the trademark “KINGSBURY” for “fluid film thrust bearings and journal bearings” on the grounds of a likelihood of confusion with the Registrants’ marks in U.S. Registration Nos. 1,911,100 and 825,271 under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

FACTS

     Applicant applied for registration on the Principal Register of the mark KINGSBURY for “fluid film thrust bearings and journal bearings.”  The Examining Attorney refused registration under Section 2(d) of the Trademark Act based on U.S. Registration No. 1,911,100 for the mark KINGSBURY for “automatic machine tools, namely drilling machines, tapping machines, milling machines, facing machines, contouring machines, boring machines, and turning machines; automatic parts transfer machines; automatic parts fabricating machines; and automatic parts assembly machines; all of the foregoing for use by manufacturers to mass produce metal parts which are fabricated and assembled into finished manufactured goods” and based on U.S. Registration No. 825,271 for the mark KINGSBURY for “drilling and tapping machines.” 

     The Applicant originally identified the goods in the application as “bearings and parts relating thereto” in International Class 12.   The Examining Attorney required the Applicant to amend the wording of the identification of goods, because the identification as written was indefinite.  The Applicant was also required to amend the classification of goods, if necessary.  The Applicant was informed that bearings which are machine parts are classified in Class 7.  In the response of August 3, 2001, the Applicant amended the identification of goods to “fluid film thrust bearings and journal bearings.”  The Applicant did not reclassify the goods.      

This appeal follows the Examining Attorney’s Final Refusal based on the likelihood of confusion under Trademark Act Section 2(d) and Final Refusal of the identification and classification of goods.

ARGUMENT

I.  LIKELIHOOD OF CONFUSION

 

            THE MARKS OF APPLICANT AND REGISTRANTS ARE SIMILAR AND THE GOODS ARE CLOSELY RELATED SUCH THAT THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.

 

            The Court in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973), listed the principal factors to be considered in determining whether there is a likelihood of confusion under Section 2(d) of the Trademark Act.  Any one of the factors listed may be dominant in any given case, depending upon the evidence of record.  In this case, the following factors are the most relevant: similarity of the goods and the similarity of the marks.  The other factors cannot be considered because no relevant evidence concerning those factors is contained in the record.  See In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984).

SIMILARITIES BETWEEN THE MARKS

            When comparing the parties’ marks, the true test of likelihood of confusion is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus in this determination of the overall impression is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Trademark Manual of Examining Procedure section 1207.01(b), (3rd Edition January 2002).  The marks must also be compared for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).  

            Applicant seeks to register the mark “KINGSBURY.” Registration Nos. 825,271 and 1,911,100 are for the identical marks “KINGSBURY.”  The parties’ marks are identical in sound, appearance and meaning and create a similar commercial impression.  When consumers are confronted by Applicant’s and the Registrants’ KINGSBURY marks, they are likely to believe that the goods emanate from the same source because the marks create the same commercial impression. 

THE GOODS ARE CLOSELY RELATED.

 

            Applicant’s goods are identified in the application as “fluid film thrust bearings and journal bearings.”  The goods identified in U.S. Registration No. 1,911,100 are “automatic machine tools, namely drilling machines, tapping machines, milling machines, facing machines, contouring machines, boring machines, and turning machines; automatic parts transfer machines; automatic parts fabricating machines; and automatic parts assembly machines; all of the foregoing for use by manufacturers to mass produce metal parts which are fabricated and assembled into finished manufactured goods.”  The goods identified in U.S. Registration No. 825,271 are “drilling and tapping machines.”

            If the marks of the respective parties are identical, the relationship between the goods or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).  Trademark Manual of Examining Procedure section 1207.01(a), (3rd Edition January 2002).   Here, as discussed above, the parties’ marks are identical.

            Applicant argues that its mark is not likely to cause confusion with the Registrants’ marks because the respective goods and channels of trade are different.  However, the evidence of record demonstrates that consumers encounter the parties’ goods in the same channels of trade. The Registrants’ machinery, and in particular turning and rotating machines, use bearings.  Thus, the same purchaser in need of turning and rotating machinery and parts therefor would encounter the similar marks used in conjunction with the parties’ related goods and would presume the goods emanated from the same source.  According to the Applicant’s own website, the identified goods may be used “for all typed of rotating machinery.”  http://www.kingsbury.com. 

            Representative third party registrations and LEXIS-NEXIS® articles were also made of record to show that consumers encounter the parties’ goods in the same channels of trade.  Third-party registrations that cover a number of different goods or services have some probative value to the extent that they may serve to suggest that goods or services are of a type that may emanate from a single source, if the registrations are based on use in commerce. See In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).  Trademark Manual of Examining Procedure section 1207.01(d)(iii), (3rd Edition January 2002).   Thus, despite Applicant’s arguments to the contrary, the evidence of record shows that Applicant’s goods are sufficiently related under Section 2(d) of the Trademark Act to the Registrants’ goods such that purchasers are likely to be confused the source of these goods. 

            Applicant presented evidence of its actual use of the mark in an effort to show that the Registrant’s goods were unrelated to those of Applicant.  Such evidence is immaterial since it is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods as they are identified in the application and registration, not based upon evidence of the parties’ actual use. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). 

            The Applicant has argued that its goods are distinguishable because the Registrant’s identification limits its goods to those “for use by manufacturers to mass produce metal parts...”   However, if the application describes the goods with no limitations as to their nature, type, channels of trade or classes of purchasers, it is presumed that the application encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  Trademark Manual of Examining Procedure section 1207.01(a)(iii), (3rd Edition January 2002).  Thus, the Applicant’s goods are presumed to be used for any type machine which uses fluid film thrust bearings and journal bearings and are presumed to be available for all potential customers.

            Contrary to Applicant’s implied argument, the goods of the parties need not be identical or directly competitive to find a likelihood of confusion. The goods need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common origin or source.  The issue is not likelihood of confusion between particular goods but likelihood of confusion as to the source of those goods.   See In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988); Trademark Manual of Examining Procedure section 1207.01, (3rd Edition January 2002).  It is clear that Applicant’s goods and the Registrant’s are similar in nature in that the Applicant’s machine parts may be used together with the Registrants’ machinery.  Therefore, it would be reasonable and therefore likely for purchasers to believe that Applicant's goods and the Registrant's goods come from the same source, upholding a finding of likelihood of confusion.

            In support of registration, Applicant argues that the marks have co-existed without actual confusion.  The test under Section 2(d) of the Trademark Act is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion.  See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.  Trademark Manual of Examining Procedure section 1207.01(d)(ii), (3rd Edition January 2002).  

            Finally, Applicant also argues that its consumers are sophisticated.  No evidence was presented in support of this argument.  Nevertheless, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988).

                           In short, the evidence of record shows that Applicant’s goods and the Registrants’ goods are sufficiently related under Section 2(d) of the Trademark Act such that purchasers are likely to be confused the source of these goods. 

            Since it has been established that the goods are related and that the marks are identical, it is likely that purchasers would operate under the mistaken belief that the goods come from a common source. 

II.   IDENTIFICATION AND CLASSIFICATION OF GOODS

The identification of goods set forth in the original application, “bearings and parts relating thereto,” was unacceptable as indefinite.    The Applicant amended the identification in its response.  However, the identification of goods in its present wording, “fluid film thrust bearings and journal bearings,” remains indefinite.  Trademark Manual of Examining Procedure section 1402.01, (3rd Edition January 2002). 

While, it is the applicant's duty to identify the goods and services, the examining attorney may make any requirements necessary to ensure that the identification is clear and accurate and conforms to the requirements of the statute and rules.  In the identification, the applicant must use the common commercial names for the goods, be as complete and specific as possible and avoid the use of indefinite words and phrases.   Trademark Manual of Examining Procedure sections 1402.01 and 1402.03(a), (3rd Edition January 2002).  Applicant argued that the current wording of the goods sets forth the common commercial name of the goods.  However, bearings are classified according to the classification of the goods for which they are used.  For example, bearings for land vehicles are generally classified in Class 12.   Thus, the Examining Attorney suggested that Applicant preface its identification with the wording “machine parts, namely” in order to ensure that the goods are properly identified and classified.  Final Refusal of January 7, 2002, Page 3. 

            Based on the broad wording of the original identification, the classification of the goods may have also been improper depending on the precise nature of the goods.   Applicant was informed that bearing which are machine parts are classified in Class 7 and, if necessary, the applicant should amend the classification of the goods.  However, Applicant did not amend the classification of the goods.  The decision as to the proper classification of goods or services is a purely administrative matter which is within the sole discretion of the Patent and Trademark Office.  In re Tee‑Pak, Inc., 164 USPQ 88 (TTAB 1969).  

CONCLUSION

                           For the foregoing reasons, the refusal to register the mark under Trademark Act Section 2(d) of the Trademark Act and the requirements for an acceptable identification of goods and proper classification of goods should be affirmed.                                                                 

 

                                  Mary Boagni

                                  Examing Attorney, Law Office 114

Telephone: (703) 308-9114 ext. 207

Law Office 114 Fax: (703) 746-8114

ecom114@uspto.gov (for formal responses)

 

K.  Margaret Le

Managing Attorney

Law Office 114