Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

STATEMENT OF THE CASE

 

Applicant has appealed the Trademark Examining Attorney’s final refusal to register the mark RAM BOARD MULTI-CUTTER on the ground of likelihood of confusion with the marks in Registration Nos. 5464502 and 5242121, RAMPRO and RAM-PRO, under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).

 

FACTS

 

Applicant filed this application on May 14, 2019, applying to register the mark RAM BOARD MULTI-CUTTER on the Principal Register for “Hand-Operated tools, namely, cardboard cutters, paperboard cutters, fiberboard cutters, cutters for cutting cardboard, paperboard, and fiberboard; cardboard knife; paperboard knife; fiberboard knife; knives for cutting cardboard, paperboard and fiberboard.”[1]

In the first Office action dated June 19, 2019, registration was refused under Section 2(d) on the ground that the mark RAM BOARD MULTI-CUTTER, when used in connection with the identified goods, so resembles the marks in Registration Nos. 5464502, 5242121, and 4875652, RAMPRO, RAM-PRO, and RAM TOOL CONSTRUCTION SUPPLY CO. and design, as to be likely to cause confusion under Section 2(d). A requirement for clarification of the identification of goods, multiple class application requirements, and disclaimer requirement were also issued.

 

On July 5, 2019, applicant amended the identification of goods, submitted a disclaimer of BOARD MULTI-CUTTER, and traversed the Section 2(d) refusal.

 

On July 30, 2019, the Section 2(d) refusal based on a likelihood of confusion with the mark in Registration No. 4875652 was withdrawn.  The Section 2(d) refusal based on a likelihood of confusion with the marks in Registration Nos. 5464502 and 5242121 was made final and this appeal ensued.

 

OBJECTION

Applicant has submitted new evidence with its appeal brief. Specifically, the webpages referenced on pages 7-8 of applicant’s brief have not previously been introduced as evidence.

 

The record in an application should be complete prior to the filing of an appeal.  37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).  Because applicant’s new evidence was untimely submitted during an appeal, the trademark examining attorney objects to this evidence and requests that the Board disregard it.  See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).

 

ISSUE ON APPEAL

 

The issue on appeal is whether the mark RAM BOARD MULTI-CUTTER, when used in connection with the identified goods, so resembles marks in Registration Nos. 5464502 and 5242121, RAMPRO and RAM-PRO, as to be likely to cause confusion under Trademark Act Section 2(d).[2]

 

ARGUMENT

 

BECAUSE THE MARKS CREATE A HIGHLY SIMILAR COMMERCIAL IMPRESSION AND WILL BE APPLIED TO CLOSELY RELATED GOODS, CONSUMER CONFUSION AS TO SOURCE IS LIKELY

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01.

 

(A) SIMILARITY OF THE MARKS: THE MARKS CREATE A HIGHLY SIMILAR COMMERCIAL IMPRESSION

 

(1)   THE DOMINANT PORTIONS OF THE MARKS ARE IDENTICAL

 

Applicant has applied to register RAM BOARD MULTI-CUTTER in standard characters. The registered marks are RAMPRO and RAM-PRO in standard characters.

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018). 

 

Disclaimed matter that is descriptive of a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). The evidence of record shows that the wording BOARD MULTI-CUTTER merely describes applicant’s goods as a type of cutting tool used to cut boards. See evidence at pages 15-35 of Office action dated June 19, 2019. Applicant has disclaimed this merely descriptive wording, rendering RAM the dominant wording in applicant’s mark.

 

Consumers are also generally more inclined to focus on the first word, prefix, or syllable in any trademark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). RAM is the first word in applicant’s and registrant’s marks.

 

The dominant portion of applicant’s mark, RAM, is identical to the dominant portion of registrant’s mark, RAM.

 

(2)   OVERALL COMMERCIAL IMPRESSION OF THE MARKS IS HIGHLY SIMILAR

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Because the dominant portions of the marks are identical, consumers are likely to believe that the marks identify different lines of goods emanating from the same source. Because the wording BOARD MULTI-CUTTER added to RAM in applicant’s mark merely describes the use or purpose of the goods, consumers are likely to interpret the mark as identifying a line of RAM goods used for board cutting. The addition of the wording PRO to RAM in registrant’s marks creates the impression that registrant’s mark identifies a line of professional-grade goods offered by the same source as applicant’s RAM board cutting tools because “pro” is a common abbreviation for “professional.” See definition from www.collinsdictionary.com at page 6 of Office action dated July 30, 2019.

 

Furthermore, a mark in standard characters may be displayed in any lettering style because the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Because applicant’s and registrant’s marks are all in standard characters, they could be presented in the same manner of display.

 

(3)   APPLICANT’S FAMILY OF MARKS NOT RELEVANT

 

 

Applicant argues that the applied-for mark is part of a family of marks and that the purchasing public’s familiarity with these marks obviates any likelihood of confusion. (Applicant’s brief at pages 5-7.)  However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.”  In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).  Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered.  In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi).  Furthermore, because applicant’s prior registrations are for different goods than those at issue in the present case, the likelihood of confusion analysis in the present case is significantly different from that in applicant’s previous applications.

 

(4)   PRESENCE OF OTHER MARKS CONTAINING THE TERM RAM ON THE REGISTER IS NOT RELEVANT

 

Applicant argues that RAM is weak, diluted, or widely used based on the existence of third-party registrations for marks containing the letters RAM and that it should not be afforded a broad scope of protection. (Applicant’s brief at pages 9-12.) The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with 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). 

 

Applicant relies on seven registrations to support its argument that the wording RAM is weak for the relevant goods. Two of these registrations are the cited registrations. Two of the remaining registrations are for power tools, rather than hand-operated tools, and thus concern different goods. Additionally, one of the marks for power tools shows that letters RAM used only in the first portion of a larger word, RAMPMILL. In each of the three remaining third-party registrations for hand-operated tools, the marks merely show the use of the letters RAM as part of larger words, namely, RAMBO, RAMPAGE, and RAMMER. The letters RAM forming a portion of a larger word have a different meaning from RAM alone. See definitions from www.macmillandictionary.com and www.collinsdictionary.com at pages 64-81 of Office action dated July 30, 2019.

 

Furthermore, evidence of weakness or dilution consisting solely of third-party registrations, such as those submitted by applicant in this case, is generally entitled to little weight in determining the strength of a mark, because such registrations do not establish that the registered marks identified therein are in actual use in the marketplace or that consumers are accustomed to seeing them.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973);). 

 

Even if applicant had shown that the marks at issue are “weak,” the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods.  In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982); TMEP §1207.01(b)(ix). 

 

Applicant’s mark, RAM BOARD MULTI-CUTTER, creates a highly similar impression to registrant’s marks, RAMPRO and RAM-PRO.

 

(B)  RELATEDNESS OF THE GOODS: APPLICANT’S IDENTIFIED GOODS ARE IDENTICAL IN PART TO AND CAN BE EXPECTED TO EMANATE FROM THE SAME SOURCE AS REGISTRANT’S GOODS

 

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

Applicant’s identified goods are “Hand-operated tools, namely, cardboard cutters, paperboard cutters, fiberboard cutters, cutters for cutting cardboard, paperboard, and fiberboard; cardboard knife; paperboard knife; fiberboard knife; knives for cutting cardboard, paperboard and fiberboard.”

 

Registrant’s identified goods are “Hand tools, namely, nut drivers, chalk line reels, hex key wrenches, pliers, pry bars, rasps, ratchets, namely, ratchet wrenches, adjustable wrenches, snips, socket wrenches, socket wrench adaptor sets, wrecking bars, utility knives and blades for utility knives and pocket knives, clamps, combination clamps, vices, chisels, planes, screwdrivers, saws and blades for utility knives and pocket knives, staple guns, hammers, tacker hammers; multi-function hand tool comprised of a board bender, a splitting and cutting edge, a demolition hammer, a nail puller and a pry bar.”

 

(1)   THE GOODS ARE IDENTICAL IN PART

 

Registrant’s goods include utility knives. A utility knife is “a knife with a small sharp blade, often retractable, designed to cut wood, cardboard, and other materials.” See definition from www.lexico.com at page 13 of Office action dated July 30, 2019; see also evidence from www.sliceproducts.com at pages 21-26 of Office action dated July 30, 2019.

 

The evidence of record consists of excerpts from third-party websites showing that utility knives, such as those offered by registrant, are used to cut the same types of materials as applicant’s knives and cutters, namely, cardboard, paperboard and fiberboard:

 

Utility knives are advertised as suitable for cutting a variety of materials, such as cartons, cardboard and boxes. See evidence from www.amazon.com at pages 39-44 of Office action dated June 19, 2019.

 

Utility knives are a recommended tool used in the process of cutting fiberboard. See evidence from  www.doityourself.com at pages 16-18 of Office action dated July 30, 2019.

 

Utility knives are a recommended tool for cutting cardboard. See evidence from  toolguyd.com at pages 19-20 of Office action dated July 30, 2019.

 

Furthermore, the evidence from www.amazon.com submitted by applicant as Exhibit F at pages 109-116 in Applicant’s response filed July 5, 2019 describes registrant’s goods as “for commercial or industrial applications like thicker paper, tape, plastic, cardboard, balsa, bass wood, photos, coupons, card stock, mat board, foam board, delicate fabrics, crafts, amazon, ups or post office packages.” Registrant’s goods are promoted as providing the same cutting functions as applicant’s goods.

 

Because applicant’s goods include knives used to cut the same materials as utility knives, namely, cardboard, paperboard and fiberboard, they encompass utility knives. Thus, the goods are identical in part.

 

(2)   THE GOODS ARE SIMILAR IN TERMS OF PURPOSE OR FUNCTION

 

 

Furthermore, the compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

To the extent that the goods are not identical, they are closely related because they serve the same purpose or perform the same function. Applicant’s cutters are used to cut cardboard, paperboard, and fiberboard. The evidence of record shows that utility knives are used to cut these same types of materials.

 

 

(3)   THE GOODS TRAVEL THROUGH THE SAME TRADE CHANNELS

 

The evidence of record consisting of third party websites offering utility knives and other types of cutters establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. See evidence from safecutters.com at pages 28-32 of Office action dated July 30, 2019, www.mscdirect.com at pages 33-40 of Office action dated July 30, 2019, www.uline.com at pages 41-42 of Office action dated July 30, 2019, www.doitbest.com at pages 43-47 of Office action dated July 30, 2019, www.bulkofficesupply.com at pages 48-54 of Office action dated July 30, 2019, and www.safetyknivesandcutters.com at pages 55-63 of Office action dated July 30, 2019. The evidence shows that utility knives and cutters are sold through the same specialty stores and in the same specialty sections of stores that offer a wider variety of goods. Because the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).

 

Applicant’s argument that the cost difference in the goods creates different buying conditions for applicant’s and registrant’s goods is not persuasive. (Applicant’s brief at 12-13.) The evidence submitted by applicant shows that its goods are sold for $14.99 through hardware stores and www.amazon.com and registrant’s goods are priced between $5.80 for one knife and $6.99 for six knives at www.amazon.com. See Exhibit C at pages 67-73 and Exhibit F at pages 109-119 of Applicant’s Exhibits attached to the response filed July 5, 2019. Because the products are relatively low-priced, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care.  See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)).  

 

Furthermore, applicant’s and registrant’s goods are both offered at the same online retailer, www.amazon.com. Consumers who are looking for tools to cut different types of board materials, such as cardboard, paperboard, and fiberboard would find applicant’s and registrant’s cutting tools sold through the same store.

 

Because applicant’s and registrant’s goods are used to perform the same functions and consumers are accustomed to encountering the types of goods offered by applicant and registrant sold through the same trade channels, they are likely to believe that these goods, marketed under highly similar marks, emanate from single source.

 

CONCLUSION

Applicant’s mark, RAM BOARD MULTI-CUTTER, is likely to be confused with registrant’s marks, RAMPRO and RAM-PRO, where applicant’s mark creates a highly similar commercial impression and the marks are used on goods that are identical and otherwise closely related. For the foregoing reasons, it is respectfully submitted that the refusal of registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), be affirmed.

 

 

                                                                       Respectfully submitted,

 

 

/Kristina Morris/

Kristina Morris

Examining Attorney

Law Office 116

571-272-5895

kristina.morris@uspto.gov (informal queries only) 

             

 

 

Elizabeth Jackson

Acting Managing Attorney

Law Office 116

571-272-6396

elizabeth.jackson@uspto.gov