Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

EXAMINING ATTORNEY'S APPEAL BRIEF

 

Applicant Wang International, Inc., has appealed the examining attorney’s final refusal to register the trademark “BULLY TRUCK ACCESSORIES” and design for “truck accessories, namely, adjustable step bars for attachment to land vehicles, receiver-mounted tow hooks, receiver-mounted cargo racks, grill inserts, billet gas doors, billet mirrors for vehicles, namely rear view mirrors, interior and exterior logo trim, tailgate nets, side rails, vehicle towing apparatus, namely trailer hitch covers, ball mounts and ball covers,” under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the grounds of a likelihood of confusion with the mark in U.S. Registration No. 1273321.

STATEMENT OF FACTS

 

On March 16, 2006, Wang International, Inc., hereinafter “the Applicant,” applied for registration of the mark BULLY TRUCK ACCESSORIES and design for goods in International Class 12.  By Office action dated September 12, 2006, the examining attorney[1] refused to register the proposed mark pursuant to Trademark Act Section 2(d), because of a likelihood of confusion with the mark BULLY in U.S. Registration No. 1273321 used in connection with “snow course maintenance machines, rollers, leveling boards, mover shovels, clearing blowers, mulching machines, rope and chain winches, cranes, cranes for mounting on tractors, snow course tracking machines, rotary snow plows, and snow conditioning machines,” in International Class 7, and “tractors for road and off-road use,” “amphibious tractors for land and water,” “land vehicle parts-namely, doors, mudguards, traction chains, wheels, panels, seats, engines, hydraulic drive units, clutches, drive belts and blowers,” and “attachments for land vehicles-namely, trash collecting and dumping attachments, snow grooming attachment,” all for wheeled vehicles with a maximum design speed of less than 60 km/h in International Class 12. 

On March 15, 2007, the Applicant responded and argued against a likelihood of confusion. On June 1, 2007, the examining attorney issued a final Office action maintaining the likelihood of confusion refusal.  The Applicant filed this appeal on November 29, 2007, arguing that there is no likelihood of confusion of the marks.  On August 15, 2008, the undersigned examining attorney[2] requested remand of the case to supplement the record made by the original examining attorney under TBMP §1207.02, such request being granted on October 17, 2008.  This appeal follows the examining attorney’s continuation of the refusal on November 5, 2008. 

 

ISSUE ON APPEAL

 

The issue on appeal is whether there is a likelihood of confusion of the proposed mark “BULLY TRUCK ACCESSORIES” and design with the mark in U.S. Registration No. 1273321. 

 

ARGUMENT

 

THE MARKS OF THE APPLICANT AND THE REGISTRANT ARE CONFUSINGLY SIMILAR IN APPEARANCE, SOUND, AND COMMERCIAL IMPRESSION AND THE RESPECTIVE SERVICES ARE CLOSELY RELATED SUCH THAT THERE EXISTS A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION UNDER SECTION 2(d) OF THE TRADEMARK ACT.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods of the Applicant and Registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.  The overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the Registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the Registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

I.       THE MARKS ARE HIGHLY SIMILAR

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 177 USPQ 563, 567 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

In the present case, the Applicant seeks registration of the mark BULLY TRUCK ACCESSORIES and design.  The cited mark is BULLY in stylized format.  As discussed more fully below, the marks are highly similar.

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii). 

 

In the present case, the respective marks each contain the wording “BULLY.”  The additional wording in the proposed mark, “TRUCK ACCESSORIES,” is highly descriptive, and possibly generic, for the goods of both the Applicant and the Registrant.  Indeed, the Applicant identifies the generic name for its goods as “truck accessories, namely…” in its submitted identification of goods and the Applicant has submitted a disclaimer of this wording in the application.  The evidence attached to the outgoing Office action dated November 5, 2008, demonstrates that this wording is commonly used as the generic term for the genre of both the Applicant’s accessories and land vehicle parts similar to those identified in U.S. Registration No. 1273321. 

While the examiner agrees that a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, disclaimed matter is typically less significant or less dominant when comparing marks.  See In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  In the present case, the disclaimed wording in the proposed mark is highly descriptive and/or generic for the goods of the respective parties. The identifications of goods in both the application and the registration encompass truck parts and accessories.  As such, consumers are less likely to remember this wording when recalling the proposed mark, nor is this wording likely to distinguish the proposed mark in commerce.  Because the additional wording is highly descriptive of both the goods identified in the application, as well as those identified in the registration, this wording does not obviate confusion as to the source the respective goods. 

The Applicant argues that the addition of the design element in the proposed mark serves to distinguish the marks by altering the commercial impression of the proposed mark from that of “a person who is habitually cruel” to that of an animal.  This argument is without merit.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).  Consumers aware of the respective marks are more likely to perceive the proposed mark as a stylistic refinement of the registered mark; and not as an indicator of a source wholly distinct and separate from the Registrant. 

While the Applicant argues that other parties have been allowed to register marks containing the wording “BULLY,” third-party registrations, such as those submitted by the applicant in connection with this appeal, for seemingly similar marks featuring goods dissimilar or unrelated to those in the application and the cited registration, or conveying vastly differing commercial impressions, are of little probative value in determining the weakness of a mark or portions of a mark.  Weakness or dilution is generally determined in the context of the number and nature of similar marks in use in the marketplace on similar goods.  See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Group, Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

In the present case, the respective marks share the same dominant wording, “BULLY,” and convey a highly similar commercial impression.  Consumers are likely to believe that the proposed mark is merely a refinement of the registered mark, and are likely to be confused when the respective marks are used in connection with similar goods that move in the same channels of trade.

 

II.   THE GOODS ARE CLOSELY RELATED

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

A determination of whether there is a likelihood of confusion is made solely on the basis of the goods identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii).  If the cited registration describes the goods broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration 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.  In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii).

The examining attorney believes the evidence of record shows the respective goods are closely related.  In the present case, the wording “land vehicle parts” and “attachments for land vehicles” is styled broadly enough to encompass trucks.  Therefore, the goods that follow this broad language, namely, “doors, mudguards, traction chains, wheels, panels, seats, engines, hydraulic drive units, clutches, drive belts and blowers,” as well as “trash collecting and dumping attachments” and “snow grooming attachments” are properly read to include those parts and attachments used in connection with any type of land vehicle, including trucks.  Furthermore, although the registration in International Class 12 has been limited to “wheeled vehicles with a maximum design speed of less than 60 km/h,” the application is styled broadly enough to encompass accessories for any truck or other land vehicle that would fit within this limitation.  Moreover, this limitation is applied only to the goods in International Class 12 and does not apply to the goods identified in International Class 7.  For example, “rope and chain winches” are commonly used in connection with, and sold in the same channels of trade as, truck accessories, as shown in the evidence of record.[3]

The goods identified by the respective parties are commonly sold under the same or similar marks.  Copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case, were attached to the outgoing Office action of November 5, 2008.  These printouts have probative value to the extent that they serve to suggest that the goods listed therein, specifically mudguards and rearview mirrors, are of a kind that may emanate from a single source.  In re Infinity Broad. Corp.,60 USPQ2d 1214, 1217-18 (TTAB 2001); 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); TMEP §1207.01(d)(iii).

These printouts also suggest that it is not uncommon for a producer that markets rear view mirrors and mudguards to also offer other similar goods under the same mark.  For example: Mindtrac.com markets cargo racks, seats, structural parts for cars, and wheels in addition to rear view mirrors and mudguards under its MINDTRAC and design[4] mark, Ton Yang Industry Company and Cervini’s Auto Designs, Inc. sell grills and doors along with mudguards and rear view mirrors under their respective X-KLUSIVE,[5] TKY KAI YIH and design,[6] and STALKER[7] marks, and Concept 1, Inc., offers body trim, emblems and badges, grills, seats, clutches, and wheels and wheel rims in connection with its CONCEPT 1 and design[8] mark.   Therefore, consumers of truck accessories and parts have been conditioned to expect the same producer to provide truck and automobile accessories, as well as land vehicle parts and attachments.

Furthermore, land vehicle parts, such as doors, mudguards, wheels, seats, and clutches, as well as land vehicle attachments, such as snow plows and winches, are commonly carried by the same retail and wholesale establishments as truck accessories.  General auto parts stores, such as NAPA, Advance Auto Parts, Auto Parts Warehouse, and AutoBarn.com, commonly offer truck parts and accessories in the nature of those identified in the application and registration.  For example:

 

·         AutoBarn.com carries gas doors, hitch accessories, rear view mirrors, and cargo racks similar to those identified by the Applicant, as well as mudguards, seats, and winches;[9]

·         Advance Auto Parts offers rear view mirrors and step bars, as well as mudguards, seats, winches, and snowplows;[10]

·         Auto Parts Warehouse provides consumers the opportunity to purchase grills, rear view mirrors and step bars, as well as mudguards, seats, winches, and wheels;[11] and

·         NAPA stocks trailer mounts and rear view mirrors, as well as mudguards and winches in their online retail store.[12]

 

Specialty after-market truck accessory retailers, such as AutoTruckToys.com, RealTruck.com, TruckAddons.com, and Trucks Unique, offer products similar to those of both the respective parts.

 

·         AutoTruckToys.com carries gas doors, grills, rear view mirrors, and step bars, as well as mudguards, seats, snow plows, and winches;[13]

·         RetailTruck.com sells mudguards, seats, snow plows, and winches, in addition to carrying the Applicant’s line of products;[14]

·         TruckAddons.com also stocks the Applicant’s products, as well as mudguards, seats, wheels, snow plows, and winches;[15] and

·         Trucks Unique offers step bars, hitch cover, mudguards, wheels, and winches.[16]

 

Even specialized retailers and manufacturers serving specific needs or industries, such as Curt Manufacturing, General Truck Body Manufacturing Company, Go Industries, and Plow World, commonly stock goods identified by the Applicant and Registrant.

 

·         Curt Manufacturing specializes in trailer hitch accessories and produces both ball mounts and winches;[17]

·         General Truck Body Manufacturing Company manufactures cranes and dump bodies, as well as retailing step bars;[18]

·         Go Industries manufactures grills and receiver hitch cargo racks, as well as offering mudguards;[19] and

·         Plow World retails step bars and grills, as well as snow plows and mudguards.[20]

 

Therefore, it is common for goods of the type identified in the application to move in the same channels of trade and to be viewed by the same consumer as the goods identified in the registration. 

The Applicant argues the examining attorney erred in construing the identification contained in the registration to include truck parts and accessories. Additionally, the Applicant distinguishes the goods of the parties by stating that the application and registration do not identify identical goods.  However, such arguments are inapposite. The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).  Furthermore, the Registrant’s identified goods are reasonably read to include truck parts and attachments.

The Applicant has also submitted evidence from the websites of the Applicant and Registrant in support of its argument. See Applicant’s Brief at 4.  Based on this evidence, the Applicant argues that the registration should be read to only apply to “[a]ll-terrain vehicle parts.”  Id.  However, the registration is issued for all “land vehicle parts,” and not merely all-terrain vehicle parts.  Applicant’s attempt to narrow the scope of the registration amounts to an impermissible collateral attack. The presumption under Trademark Act Section 7(b), 15 U.S.C. §1057(b), is that the Registrant is the owner of the mark and that use of the mark extends to all goods identified in the registration.  The presumption also implies that the Registrant operates in all normal channels of trade and reaches all classes of purchasers of the identified goods.  In re Melville Corp., 18 USPQ2d 1386, 1389 (TTAB 1991); McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1899 (TTAB 1989); RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964-65 (TTAB 1980); see TMEP §1207.01(a)(iii).

Along a similar line of reasoning, the Applicant argues that the respective marks have coexisted in the marketplace for more than 9 years without any evidence of actual confusion.  The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion.  It is unnecessary to show actual confusion in establishing likelihood of confusion.  TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990).  The Trademark Trial and Appeal Board stated as follows:

                                                            

[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).

 

In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).

 

Neither the application nor the registration makes any limitation as to the channels of trade or the intended consumer of the goods.  When one reads the identification of goods in the registration to encompass all goods of the type described, and presumes that they move in all normal channels of trade and that they are available to all potential customers, one must make the conclusion that the goods are highly similar and related, that they move in the same channels of trade, and that they are marketed to the same end consumer. 

 

CONCLUSION

 

Consumers encountering the Applicant’s mark the registered mark in the marketplace are likely to believe mistakenly that the services emanate from a common source, because the marks contain the same dominant wording, “BULLY,” and are used in connection with similar identified goods that are marketed to the same end consumer utilizing the same channels of trade.  Accordingly, the examining attorney requests that the Section 2(d) refusal be affirmed.                                                                                                                     

 

 

                        Respectfully submitted,

 

 

 

/Nicholas A Coleman/

Examining Attorney

Law Office 115

Office: 571-272-4917

Fax: 571-273-9115

 

Tomas V. Vlcek

Managing Attorney

Law Office - 115