Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE LAMSON OIL COMPANY
Serial No. 600,158
August 31, 1987
Michael C. Payden and Leydig, Voit & Mayer, Ltd. for applicant
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Rooney, Simms and Hanak
Opinion by Hanak
Applicant applied to register the mark TRUCOOL in block letters for "synthetic coolant for use in the metal working industry for machining operations." [FN1] Registration was refused under Section 2(d) of the Lanham Act on the grounds that applicant's mark, as applied to applicant's goods, so resembles the mark TURCOOL--previously registered for "cutting oil" [FN2]--that confusion is likely. When this refusal was made final, applicant filed this appeal.
Applicant and the Examining Attorney have filed briefs. No oral hearing was requested.
Applicant acknowledges "that there is a close relationship between the goods" of its application and the goods of the cited registration. (Applicant's brief p. 1). "The only issue, therefore, is whether the two marks themselves are sufficiently similar as to be likely to cause confusion among purchasers of the goods." (Applicant's brief p. 1). Applicant's argument that confusion is not likely is based on its contentions (1) that TRUCOOL and TURCOOL are dissimilar in appearance, sound and meaning, and (2) that applicant's goods and registrant's goods "are sold to and used by purchasers likely to have knowledge of the source with whom they are dealing." (Applicant's brief p. 2). We disagree, and affirm the refusal to register.
"It is necessary to note at the outset that, where as here, the goods of the parties are similar in kind and/or closely related ... the degree of similarity of the marks under which these products are sold need not be as great as in the case of diverse or different goods." ECI Division of E-Systems v. Environmental Communications, 207 USPQ 443, 449 (TTAB 1980). "It is not necessary to constitute an infringement that every word of a trademark would be appropriated." Saxlehner v. Eisner & Mendelson Co., 179 U.S. 19, 33 (1900).
Here, every letter in the previously registered mark TURCOOL has been incorporated into applicant's mark TRUCOOL. Moreover, the letters have been incorporated in their exact order save only that the "U" and "R" have been reversed. Even assuming arguendo that applicant is correct that TURCOOL and TRUCOOL are different in meaning or connotation, and further assuming arguendo that there is some dissimilarity in sound when the two marks are properly pronounced, [FN3] the marks TURCOOL and TRUCOOL are so similar in appearance that, under the facts of this case, this alone would cause a likelihood of confusion. When the goods are identical or closely related as they are here, it has been held that: "Concerning the question of the similarity of the marks, it is well established that similarity in any one of the elements of sound, appearance, or meaning is sufficient to indicate likelihood of confusion." General Foods Corp. v. Wisconsin Bottling, Inc., 190 USPQ 43, 45 (TTAB 1976) (TING and TING COLA held confusingly similar to TANG breakfast drink). See also In re Mack, 197 USPQ 755, 757 (TTAB 1977) ("It is also well settled that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate likelihood of confusion." [FN4]
*2 Even assuming applicant is correct in asserting that its goods and the goods of the cited registration are sold to and used by only knowledgeable individuals, the similarity of TURCOOL and TRUCOOL is so great that confusion is nevertheless likely. Application of Computer Communications, Inc., 484 F.2d 1392, 1394, 179 USPQ 51, 52 (CCPA 1973) ("... being skilled in one's art does not necessarily preclude mistaking one trademark for another when the marks are as similar as those before us, and cover merchandise in the same general field.") See also Daltronics, Inc. v. H.L. Dalis, Inc., 158 USPQ 475, 481 (TTAB 1968).
Decision: The refusal to register is affirmed.
L. L. Rooney
R. L. Simms
E. W. Hanak
Members, Trademark Trial and Appeal Board
FN1. Serial No. 600,158, filed May 22, 1986, claiming first use on April 21, 1986.
FN3. Obviously, correct pronunciation as desired by the applicant cannot be relied upon to avoid a likelihood of confusion. There is no "correct" pronunciation for a trademark. Yamaha International Corp. v. Stevenson, 196 USPQ 701, 703 (TTAB 1977). See also In re Belgrade Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969).
FN4. It should be noted that similarity of the marks in one respect--sight, sound or meaning--will not automatically result in a finding of likelihood of confusion even if the goods are identical or closely related. Rather, the rule is that taking into account all of the relevant facts of a particular case, similarity as to one factor (sight, sound or meaning) alone "may be sufficient to support a holding that the marks are confusingly similar." Trak Inc. v. Trag Inc., 212 USPQ 846, 850 (TTAB 1981) (emphasis added). To the extent that the above cited statements from General Foods Corp. v. Wisconsin Bottling, Inc., supra and In re Mack, supra suggest that a finding of similarity as to sight, sound or meaning automatically results in a finding of likelihood of confusion when the goods are identical or closely related, said statements are hereby clarified.