Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE NATIONWIDE INDUSTRIES, INC.
Serial No. 492,987
April 6, 1988
Hearing: January 14, 1988
Weinstein and Kimmelman for applicant
Helen Wendel
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Rice, Rooney and Hanak
Members
Member
An application has been filed by Nationwide Industries, Inc. to register the mark 'RUST BUSTER' (with 'RUST' disclaimed) for rust-penetrating spray lubricant, use since May 25, 1976 being asserted. [FN1]
Registration has been refused under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. 1052(d), on the ground that applicant's mark as applied to its goods so resembles the mark 'BUST RUST', registered to another for penetrating oil, [FN2] as to be likely to cause confusion, mistake or deception.
Turning first to the goods, we note that the specimens submitted with applicant's application refer to the product sold under the mark sought to be registered as a 'Super Penetrating Oil.' In view thereof, and since we must presume that registrant's goods include penetrating oils of all of the usual types, we can draw no distinctions between the goods of applicant and registrant for purposes herein. Applicant does not, in fact, contend otherwise, but rather asserts that the marks here involved differ in sound, meaning, and significance, and that these differences are sufficient to preclude likelihood of confusion.
Specifically, applicant contends that the words in its mark, 'RUST BUSTER', are not only in reverse order as compared with registrant's mark, 'BUST RUST', but also that one of the words ('BUSTER') in applicant's mark is different from one of the words ('BUST') in registrant's mark. For this reason, applicant argues that registrant's mark orders the listener or reader to bust, or break up, rust, [FN3] whereas applicant's mark creates a double entendre since it means both one who (or that which) breaks rust, and also an idle person who is full of life or an idle person who breaks horses. In this regard, it is applicant's position that the commercial impression created by a mark 'must be arrived at from the words themselves absent the product.'
Contrary to applicant's belief, when registration has been refused under Section 2(d) of the Act, the commercial impression created by the mark sought to be registered must be determined by considering the mark in relation to the goods for which registration is sought. Section 2(d) specifically prohibits the registration of a mark 'which so resembles a mark registered in the Patent and Trademark Office or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when applied to the goods of the applicant, to cause confusion, or to cause mistake, or to deceive' (emphasis added). Thus, it is settled that evidence of the context in which a mark is used on labels, packaging, advertising, etc., is probative of the significance which the mark is likely to project to purchasers. See: Northwestern Golf Co. v. Acushnet Co., 226 USPQ 240 (TTAB 1985), and cases cited therein.
*2 In the present case, where applicant's mark 'RUST BUSTER' is used on a rust-penetrating spray lubricant, and the specimens submitted with the application show prominent use, beneath the mark, of the phrases 'frees nuts bolts & fittings!' and 'SUPER RUST PENETRANT', it is clear that the significance likely to be projected by applicant's mark is that applicant's product breaks up rust.
Further, the reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions. See: Bank of America National Trust and Savings Assn. v. American National Bank of St. Joseph, 201 USPQ 842 (TTAB 1978), and cases cited therein. Here, where the goods are legally identical, and where both marks, when applied to the goods in question, are likely to be perceived by purchasers as signifying that the product sold thereunder busts through, or breaks up, rust, [FN4] we agree with the Examining Attorney that the marks create substantially similar commercial impressions, and that there is a likelihood of confusion. Cf. In re Inco, 154 USPQ 629 (TTAB 1967) ['GUARDIAN OF POSTURE' for mattresses versus 'POSTURGUARD' for mattresses--registration refused], and McNamee Coach Corp. v. Kamp-A-While Industries, Inc., 148 USPQ 765 (TTAB 1965) ['KING KAMPER' for camping trailers versus 'KAMP KING KOACHES' for campers--registration refused].
Applicant's argument that we should find no likelihood of confusion here because the cited registration was allowed over a then-subsisting third-party registration [FN5] (Registration No. 816,731) for the mark 'RUST-BUSTER' for 'aqueous acidic gel type of rust removing compositions,' is not persuasive of a different result. Aside from the fact that there was a difference in the goods in that situation, whereas the goods are legally identical here, the propriety of the issuance of the cited registration is not before us, and the Board is not in any way bound by the action of the Examining Attorney in allowing one registration over the other. As we stated in In re Standard Memories, Inc., 196 USPQ 376 (TTAB 1977), at page 378:
The question of likelihood of confusion is not determined by syllogistic reasoning, and the correctness of the registration of the cited mark is not even before us. The Examiner's action in issuing the cited registration is not controlling on the Trademark Trial and Appeal Board when we are persuaded on the record that confusion is likely.
Applicant also argues that there is no likelihood of confusion because the mark 'RUST BUSTER' is used in close association with applicant's mark 'SNAP'. This argument is also unconvincing since the mark now sought to be registered by applicant is 'RUST BUSTER', not 'SNAP RUST BUSTER'. See: Fort Howard Paper Co. v. Marcal Paper Mills, Inc., 189 USPQ 305 (TTAB 1975).
*3 We note, in this regard, that during the pendency of applicant's appeal herein, applicant filed a request that 'the present application be amended so that the trademark for which applicant seeks registration is the combination SNAP RUST BUSTER.' Applicant indicated therein that if the Examining Attorney consented to the proposed amendment, applicant would submit a new drawing as a substitute for the original drawing. Applicant also stated that it owned two registrations of the mark 'SNAP'. The Examining Attorney, while conceding that the proposed amendment would serve 'to lessen the likelihood of confusion between applicant's product mark RUST BUSTER and the registered mark BUST RUST', and that such amendment 'might obviate the 2(d) refusal,' nevertheless refused the request for amendment. As reasons for refusing the request, the Examining Attorney asserted essentially that neither of applicant's registrations of the mark 'SNAP' covers the goods for which registration is sought herein, and that the addition of the house mark 'SNAP' to the mark 'RUST BUSTER' would result in a material alteration of applicant's mark. Applicant, on the other hand, contends that the goods of the present application clearly fall into the category of goods recited in one of its 'SNAP' registrations.
Trademark Rule 2.72 provides that amendments to the drawing of an applicant's mark may not be made if the character of the mark is materially altered. In the case of Visa International Service Assn. v. Life-Code Systems, 220 USPQ 740 (TTAB 1983), the Board, at pages 743-744, set forth the following general test for determining whether a change in a mark is material:
The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark. The general test of whether an alteration is material is whether the mark would have to be republished after the alteration in order to fairly present the mark for purposes of opposition. If one mark is sufficiently different from another mark as to require republication, it would be tantamount to a new mark appropriate for a new application.
That is, the new and old forms of the mark must create essentially the same commercial impression. See also: In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986). Cf. Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976).
There can be no doubt that 'RUST BUSTER' and 'SNAP RUST BUSTER' create distinctly different commercial impressions, and hence that the addition of the term 'SNAP' to the mark 'RUST BUSTER' would normally constitute a material alteration of the character of the mark. See: In re Pierce Foods Corp., supra [addition of 'PIERCE' to 'CHIK'N-BAKE' held a material alteration since it 'creates a mark so sufficiently different from the original mark that it would not only require republication, if the mark had already been published, but also would require a new search by the Examining Attorney for possible references.'], and Ex parte E. Daltroff & Cie, 78 USPQ 379 (Comr 1948) [Assistant Commissioner refused to allow amendment of registered mark 'BAIN DE CHAMPAGNE' to add the word 'ROYAL', noting, 'That the addition of a new word such as that here involved is a material alteration of the character of the mark can hardly be questioned.'].
*4 However, an amendment adding matter to an applicant's mark sought to be registered has been permitted where the applicant owned a registration of the matter sought to be added for the same goods as those listed in the application, notwithstanding the fact that the amendment constituted what normally would be considered a material alteration of the mark in the application. See: Florasynth Laboratories, Inc. v. Mulhens, 122 USPQ 284 (Comr 1959) [applicant allowed to amend its mark sought to be registered, 'ELAN', to add thereto its registered mark '4711', for the asserted reason that 'The addition of applicant's well-known registered mark to the mark sought to be registered . . . is not a material change which would require republication of the mark.'] [FN6] When an applicant owns a registration of matter sought to be added to a pending mark, and the registration covers the same goods or services as those listed in the pending application, the alteration resulting from the amendment of the pending mark to add the registered mark does not materially affect the applicant's right to registration, nor does it require a new search or republication, and the amendment is therefore allowable. Further, allowance of such an amendment is desirable because it saves both the applicant and the Patent and Trademark Office the time and expense involved in the filing and examination of a new, substitute application.
Turning then to the present case, the record contains copies of two registrations, of the marks 'SNAP' and 'SNAP' and design, which are owned by applicant. One of them, Registration No. 871,620, is for the mark 'SNAP' in the design form shown below:
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
Although this is also the form in which the term 'SNAP' is used on the specimens of record, as shown below,
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
the goods in this registration are distinctly different from those for which registration is now sought, and applicant does not, in fact, contend otherwise. What applicant does contend is that the product for which it now seeks registration, namely, rust-penetrating spray lubricant, 'falls into the category' of one of the products listed in applicant's other registration of record, namely, Registration No. 1,392,806 for the mark 'SNAP' in block letter form for a variety of goods, including 'rust removing preparation.' Applicant maintains that the 'rust removing preparation' is broad enough to encompass its 'rust-penetrating spray lubricant.' Aside from the fact that this registration is for the mark 'SNAP' in block letters rather than for the design form in which the mark is used on applicant's specimens, we agree with the Examining Attorney that applicant's rust-penetrating spray lubricant, in the nature of a penetrating oil, is not the same thing as the type of product referred to as a 'rust removing preparation,' although it may be very closely related thereto. [FN7]
For the foregoing reasons, we conclude that applicant's mark 'RUST BUSTER' so resembles the registered mark 'BUST RUST' as to be likely, when applied to applicant's rust-penetrating spray lubricant, to cause confusion, mistake, or deception; and also that the Examining Attorney did not err in refusing to allow applicant to amend the drawing of its mark to add thereto the term 'SNAP'. [FN8]
*5 Decision: The refusal to register is affirmed.
J. E. Rice
L. E. Rooney
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Serial No. 492,987, filed August 2, 1984.
FN2. Registration No. 938,488, issued July 25, 1972, affidavit Sec. 8 accepted, affidavit Sec. 15 received.
FN3. Applicant asserts, based on certain definitions from Webster's Third New International Dictionary (1981), that the word 'bust' in the registered mark means 'to break up'; the term 'rust' means 'a coating formed on iron or other metals', 'an accretion', and 'an ill effect usually caused by idleness, inaction or neglect'; and the term 'buster' means 'a person who is extraordinary in size, energy or ability', 'one who is healthy and full of life', and 'one who breaks, such as one who breaks horses.'
FN4. Applicant itself acknowledged, on page 3 of its 'Combined Request for Reconsideration and for Additional Time . . .' filed April 29, 1987, that 'both products are penetrating oils which are intended for use to (bust through rust).'
FN5. Applicant submitted with its appeal brief a copy of that third-party registration, as well as a copy of a paper from the file of the cited registration and copies of a number of other third-party registrations. Inasmuch as these materials were submitted after rather than prior to appeal, and were not the subject of a properly supported request for remand pursuant to Trademark Rule 2.142(d), the Examining Attorney's objection to the materials on the ground that they were untimely filed is well taken, and they have not been considered in our determination of this case. We also add that even if they had not been excluded, they would not have altered our decision herein. Indeed, since applicant made its argument with respect to the allowance of the cited registration over the third-party registration (including a quote from the pertinent paper filed in the cited registration) prior to appeal, and the Examining Attorney acknowledged that the cited registration was allowed over the third-party registration in question, we have considered applicant's said argument in determining this case.
FN6. We note that although it was not expressly so stated in the above-cited case, the applicant's registrations of the mark '4711' did, in fact, cover 'perfumery' and various cosmetic products, while the goods for which applicant sought to register the mark 'ELAN' were described, at least in the Commissioner's opinion, as 'perfumes and cosmetics.'
FN7. We note that the essential differences between these two types of products are reflected in the fact that they fall into different classes in the 'International Classification of Goods and Services for the Purposes of the Registration of Marks under Nice Agreement.' That is, rust removing preparations are classified in International Class 3, which class includes, inter alia, cleaning, polishing, scouring and abrasive preparations, whereas a rust-penetrating spray lubricant in the nature of a penetrating oil is classified in International Class 4, which class includes, inter alia, industrial oils and greases, and lubricants.
FN8. Indeed, the refusal to allow the proposed amendment must be affirmed for the additional reason that applicant has never submitted a new drawing of its mark as sought to be amended. Cf. In Big Daddy's Lounges, Inc., 200 USPQ 371 (TTAB 1978). Applicant is, of course, free to file a new application for registration of a composite mark including both 'RUST BUSTER' and 'SNAP' or 'SNAP' and design (depending on the specimens submitted with the new application) for rust-penetrating spray lubricant.