Tuesday, September 29, 2015

Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools

In a real yawner, the Board affirmed a Section 2(d) refusal to register the mark C.J. HANSON for "Hand tools, namely, chalk line reels; Hand tools, namely, squares; Hand-operated sharpening tools and instruments; Hand-operated tin snips; Pliers; Snips," in Class 8, finding the mark likely to cause confusion with the mark HANSON registered for "Die taps and die sets, taps and tap sets, all the foregoing for use with machine tools," in Class 7, and for "hand tools, namely, wrenches, and accessories for wrenches, namely, die taps and die sets, taps, and tap sets," in Class 8. The Board rejected Applicant's puzzling interpretation of Registrant's class 8 identification of goods, which interpretation would limit the goods to specialized tools used to create thread in a piece of metal, and would exclude ordinary wrenches. In re C. H. Hanson Company, 116 USPQ2d 1351 (TTAB 2015) [precedential].

The Marks: The Board observed that the mere addition of "C.H." to registrant's mark "does not obviate the similarity between the marks because consumers would be likely to believe that the marks HANSON and C.H. HANSON refer to the same person." It concluded that the marks are similar in appearance, sound, and meaning, and highly similar in commercial impression.

The Goods: Applicant chose to ignore the phrase "Hand tools, namely" in the class 8 identification of goods in the cited registration. It contended that, absent a semicolon after "wrenches," the phrase "Hand tools, namely, wrenches" merely modifies the remaining class 8 goods. [Huh? - ed.]. According to applicant, the term "wrenches" by itself is indefinite, and therefore "the punctuation should be interpreted as limiting Registrant's wrenches to the drives and stocks related to its taps and dies."

Applicant pointed to a brochure of registrant's to illustrate the specialized nature of registrant's wrenches, but of course the Board pointed out that its determination of the issue of likelihood of confusion must be based on the goods as identified in the cited registration, not on extrinsic evidence of actual use.

It is true that when an identification is technical or vague, it may require clarification via extrinsic evidence, but here there was nothing vague or technical about the phrase "hand tools, namely, wrenches." That very phrase appears in the USPTO's Trademark Acceptable Identification of Goods and Services (Trademark ID Manual). The Board also took judicial notice of several dictionary definitions of the word "wrench."

The Board concluded that registrant's Class 8 identification of goods includes ordinary wrenches, including wrenches that are "hand tools," and is not limited to specialized tools known as "drives" and "stocks" used solely with taps and dies.

Although a semicolon would have been better than a comma, the comma nonetheless separates "wrenches" from the phrase "die taps and die sets, taps and tap sets" that modifies "accessories for wrenches." To the extent that use of the comma creates any ambiguity [I don't see it - ed.], any doubt must be resolved in favor of the prior registrant, given the presumptions accorded a registration.

Examining Attorney Meghan Reinhart submitted website evidence showing that wrenches and tap and die sets, on the one hand, and applicant's goods, on the other, may emanate from the same source as hand tools, under the same mark. Third-party registration evidence also demonstrated the relatedness of the goods. The Board concluded that the registration evidence, considered in conjunction with the Internet evidence, supported the conclusion that the goods are related.

The Board therefore affirmed the Section 2(d) refusal to register.

Read comments and post your comment here.

TTABlog comment: Zzzzzzzzzzzzzzzzzzz! Was this decision worthy of the "precedential" tag?

Text Copyright John L. Welch 2015.


At 9:41 AM, Anonymous Anonymous said...

Only reason that I can come up with is to let people know that if you appeal such obvious refusals and then have the bad judgment to ask for an oral hearing, that you just might get your name up in lights and with a precedential decision. Of course, some people think any publicity is good publicity.

At 2:13 PM, Anonymous Anne Gilson LaLonde said...

Maybe this was published to emphasize the fact that the Board concentrates on the application & registration and not extrinsic evidence, to limit the impact of B&B Hardware.


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