TTAB Affirms 2(d) Refusal: Nearly Identical Marks and Related Goods

Overview

This case centered on an applicant's effort to register the mark TRUGRIT for power-operated abrasive wheels intended for metal grinding. The USPTO refused registration based on a likelihood of confusion with the registered mark TRUE GRIT, used for abrasive lapping compounds in industrial sharpening and grinding. The Board found the minor difference of a single letter and space too insignificant to distinguish the marks. Further, the Applicant's reliance on physical differences between the products failed to prove the goods were unrelated.

Background

The Applicant, MacLan, Inc., filed an application seeking to register the mark TRUGRIT in standard characters for power-operated abrasive wheels, namely, abrasive grinding wheels for metals in International Class 7.

The Applicant filed an application to register the mark TRUGRIT in standard characters for "power-operated abrasive wheels, namely, abrasive grinding wheels for metals" in International Class 7.

The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, asserting that the Applicant’s mark so resembled the registered mark TRUE GRIT for abrasive lapping compounds for industrial sharpening and grinding in International Class 3 as to be likely to cause confusion.

After the Examining Attorney made the refusal final, the Applicant appealed to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

Before addressing the likelihood of confusion, the Board resolved an evidentiary objection regarding "Exhibit A," an image of the Registrant’s TRUE GRIT lapping compound attached to the Applicant's brief. The Examining Attorney objected to this submission because it was already part of the record from the Request for Reconsideration.

The Board sustained the objection, calling the re-submission of prosecution record materials with an appeal brief "superfluous." It emphasized that attaching previously filed evidence to a brief is neither a courtesy nor a convenience to the Board. Consequently, the Board excluded the exhibit from consideration in its final decision.

DuPont #1: Similarity of the Marks

In this case, the Registrant’s mark was TRUE GRIT and the Applicant’s mark was TRUGRIT, both presented in standard characters. The Examining Attorney argued that the marks differed by only one letter, "E," and a single space.

The Board found that this slight difference in spelling was not enough to distinguish the marks. Because they differed by only a single letter and were likely to be pronounced identically, the Board deemed them phonetic equivalents.

The Board further examined the connotation of the marks, noting that both conveyed a play on the phrase "true grit." Relying on dictionary definitions, the Board noted that "grit" refers to minute rough granules of sand or stone, the texture used in grinding, or a coarse hard sandstone used for making grindstones.

Given that both marks were used on abrasives (grinding wheels and lapping compounds), the Board found nothing in the record to suggest the marks would have different meanings to consumers. The Board concluded that the marks conveyed the same commercial impression.

According to the Board, both marks suggested the productive use of abrasives, weighing this factor strongly in favor of a likelihood of confusion.

DuPont #2: Relatedness of the Goods

The second DuPont factor focused on the similarity and nature of the goods as identified in the application and the cited registration. The Applicant’s goods were identified as power-operated abrasive wheels for metals, while the Registrant’s goods were identified as abrasive lapping compounds for industrial sharpening and grinding.

The Applicant argued that the goods were distinct and "vastly different" because a grinding wheel is a physical tool, whereas a compound is a substance retrieved from a pail. The Applicant asserted that these physical differences prevented any customer confusion.

The Board rejected this argument, stating that the central issue was not whether purchasers would confuse the products themselves, but whether consumers would be confused as to the source of the goods. The Board noted that goods do not need to be identical to be related; they only need to be related such that their marketing circumstances could give rise to the belief that they originate from the same source.

The Board pointed out that both the application and the registration identified "abrasive" materials used for "grinding." While the Applicant’s wheels were specified for metals, the Registrant’s goods were for industrial sharpening and grinding, a description that includes (but is not limited to) metals.

Using the dictionary definition of "lapping" as polishing a surface until smooth, the Board suggested that lapping compounds could be used sequentially to polish and smooth rough edges left by grinding wheels. Because the goods could be used for a common purpose, the Board found they were likely to be perceived by purchasers as deriving from the same source.

To further support this finding, the Board turned to the evidence made of record by the Examining Attorney. The evidence shows eight companies offering both types of goods under the same mark. The Applicant failed to address this third-party evidence in its briefs, which the Board interpreted as a concession on the issue. Consequently, the Board found that the goods were related under the second DuPont factor.

Board’s Decision

The TTAB affirmed the refusal to register the Applicant’s mark. The Board concluded that the first and second DuPont factors weighed heavily in favor of finding a likelihood of confusion. The Board noted that the Applicant identified no countervailing factors to offset these findings.