THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB

Hearing: January 11, 2018 Mailed: May 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Standard Tools and Equipment Co.
v.
Dropship LLC d/b/a Tool USA
_____

Opposition No. 91222920
_____

Alan B. Felts and Blake P. Hurt of Tuggle Duggins PA,
for Standard Tools and Equipment Co.

J. Curtis Edmondson and Jason Aldred of Law Offices of J. Curtis Edmondson, PLLC,
for Dropship LLC d/b/a Tool USA.

______

Before Lykos, Masiello and Pologeorgis,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:

On August 26, 2014, Dropship LLC (“Applicant”) filed an application to register

on the Principal Register the mark displayed below
Opposition No. 91222920

for goods ultimately identified as “manually operated hand tools, namely, hammers,

trowels, sanding wire wool, drill accessories, namely, bits for hand drills” in

International Class 8.1 During the course of prosecution, Applicant disclaimed the

wording “TOOL” and “USA.COM” apart from the mark as shown. The description of

the mark is as follows:

The mark consists of the word “TOOL” in white with blue outlining and
to the upper right the wording “USA” with an American Flag in the
background of the letters with white stars and stripes, a blue
background behind the stars and red stripes, which appear over the
wording “.COM” in gray. The colors red, white, blue, black, and gray are
claimed as features of the mark.

Standard Tools and Equipment Company (“Opposer”) opposes registration of

Applicant’s mark on the ground of likelihood of confusion under Trademark Act

Section 2(d), 15 U.S.C. § 1052(d), based on Opposer’s previously used and registered

marks as well as prior common law use. In the Notice of Opposition, Opposer pleads

ownership of (1) Registration No. 2011200 for the typed mark2 TOOLS USA

(“TOOLS” disclaimed) on the Supplemental Register for “equipment catalogs for

1 Application Serial No. 86377838, filed on August 26, 2014 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), alleging February 2, 2007 as date of first use and date of first use
in commerce.
2Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012). See also TRADEMARK MANUAL OF
EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (Oct. 2017).

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Opposition No. 91222920

vehicle repair shops” in International Class 16;3 (2) Registration No. 2041542 for the

mark shown below

(“TOOLS USA” disclaimed) on the Principal Register also for “equipment catalogs for

vehicle repair shops” in International Class 16;4 and (3) Application Serial No.

86426730, filed October 17, 2014, for the standard character mark TOOLS USA

(“TOOLS” disclaimed) on the Principal Register for “on-line retail store services

featuring equipment for automotive, body shop, and painting industries” in

International Class 35.5 In addition, Opposer alleges prior common law use of the

“Banner Trademark” displayed below

in connection with Opposer’s online retail website located at www.toolsusa.com “that

was made public and went live in June 1997, continuously selling” . . . “air

3 Registered on October 26, 1996, alleging 1988 as the date of first use anywhere and date of
first use in commerce. The underlying application that matured into the registration was
filed on April 26, 1993.
4 Registered on March 4, 1997, alleging 1985 as the date of first use anywhere and date of
first use in commerce. The registration does not include a description of the mark. The
underlying application that matured into the registration was filed on April 22, 1993.
5Application Serial No. 86426730 filed on October 17, 2014, based on an allegation of use in
commerce under Trademark Act Section 1(a), 15 U.S.C. § 1051(a), and claiming June 29, 1997
as the date of first use and date of first use in commerce. Opposer asserts a claim of acquired
distinctiveness under Section 2(f), 15 U.S.C. § 1052(f), for the entire mark. See Opposer’s
Notice of Reliance, Ex. D; 25 TTABVUE 74.

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Opposition No. 91222920

compressors power tools, hand tools, paint booths and other products, including but

not limited to hammers, drills, drill bits, sanding tools, sanding accessories, painting

booths, painting accessories and the like.” Notice of Opposition ¶¶ 1 and 3; 1

TTABVUE 5. Opposer also alleges that it has “collected incidents of actual consumer

confusion, specifically between Opposer’s retail website located at www.toolsusa.com

and Applicant’s website located at www.toolusa.com.”6 Id. at ¶ 11; 1 TTABVUE at 7.

Applicant, in its Answer, denied the salient allegations in the notice of opposition.7

An oral hearing was held on January 11, 2018. The case is now fully briefed and

has been presented to us for a decision on the merits.

I. The Record

The record includes the pleadings and, pursuant to Trademark Rule 2.122(b), 37

C.F.R. § 2.122(b), Applicant’s application file. In addition, the parties introduced the

following:

A. Opposer’s Evidence

1. Opposer’s Notice of Reliance (filed March 31, 2017 at 25 TTABVUE)

6The Board sua sponte dismissed Opposer’s claims of deceptiveness and false suggestion of
a connection under Trademark Act Section 2(a), 15 U.S.C. § 1052(a), and dilution under
Trademark Act Section 43(c), 15 U.S.C. § 1125(c), identified on the ESTTA generated cover
sheet without supporting allegations in the text of the notice of opposition. See November 22,
2016 interlocutory order denying Opposer’s motion for summary judgment. 21 TTABVUE 3-
4.
Citations to the record are by entry and page number to TTABVUE, the Board’s online
docketing information and file database. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d
1473, 1476 n.6 (TTAB 2014).
7The Board sua sponte struck Applicant’s affirmative defenses as either unsupported by the
allegations in the answer or legally futile. See November 22, 2016 interlocutory order denying
Opposer’s motion for summary judgment. 21 TTABVUE 4-5.

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Opposition No. 91222920

comprised of:

A true and correct copy of Applicant’s U.S. Trademark Application
Serial No. 86377838 and file history obtained from the USPTO TSDR
database showing current status and title (“Ex. A”);8

A true and correct copy of Opposer’s U.S. Trademark Registration No.
2011200 obtained from the USPTO TSDR database showing current
status and title and USPTO Assignment Branch record (“Ex. B”);

A true and correct copy of Opposer’s U.S. Trademark Registration No.
2041542 obtained from the USPTO TSDR database showing current
status and USPTO Assignment Branch record (“Ex. C”);

A true and correct copy of Opposer’s U.S. Trademark Application with
U.S. Serial No. 86426730 and file history obtained from the USPTO
TSDR database showing current status and title (“Ex. D”);

Applicant’s Responses to Opposer’s Interrogatory Nos. 3, 11, 12, and 21
(“Ex. E”);

A true and accurate copy of a webpage on Applicant’s website at
www.toolsusa.com accessed and obtained on 30 March 2017 (“Ex. F”);

A true and accurate copy of a webpage on Applicant’s website at
http://toolusa.com/tzO l-91012.html accessed and obtained on 30 March
2017 (“Ex. G”);

A true and accurate copy of a webpage on Applicant’s website at
http://toolusa.com/construction-safety/gloves/industrial-chemical.html
accessed and obtained on 30 March 2017 (“Ex. H”);

A true and accurate copy of a webpage on Applicant’s website
http://toolusa.com/catalogsearch/result/?cat=&q=sander accessed and
obtained on 30 March 2017 (“Ex. I”);

A true and accurate copy of a webpage on Applicant’s website at
http://toolusa.com/hand-tools/hammers.html accessed and obtained on
30 March 2017 (“Ex. J”);

8The submission of the opposed application was superfluous. See Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b).

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Opposition No. 91222920

A true and accurate copy of a webpage on Opposer’s website located at
https://www.toolsusa.com/dent-pulling-systems/ accessed and obtained
on 30 March 2017 (“Ex. K”);

A true and accurate copy of a webpage on Opposer’s website at
https://www.toolsusa.com/gloves/ accessed and obtained on 30 March
2017 (“Ex. L”);

A true and accurate copy of a webpage on Opposer’s website at
https://www.toolsusa.com/air-and-electric-sanders/ accessed and
obtained on 30 March 2017 (“Ex. M”); and

A true and accurate copy of a webpage on Opposer’s website located at
https://www.toolsusa.com/auto-body-hammers/ accessed and obtained
on 30 March 2017 (“Ex. N”).9

2. Testimony Declaration of Michael Kestler, President of Opposer (filed

March 31, 2017 at 26 TTABVUE) with the following exhibits:

A true and accurate copy of an excerpt from Opposer’s TOOLS USA
website accessed and obtained on March 30, 2017 displaying the
“Banner Trademark” (“Ex. 1”);

A true and accurate copy of a representative TOOLS USA catalog
distributed the public (“Ex. 2”);

Google® search engine results for the term “Tools USA” accessed and
obtained on March 30, 2017 (“Ex. 3”);

A true and accurate copy of an excerpt from Applicant’s website at
http://toolusa.com/tz01-91012.html offering for sale an automotive dent
puller accessed and obtained on March 30, 2017 (“Ex. 4”);

A true and accurate copy of an excerpt from Opposer’s website at
https://www.toolsusa.com/dent-pulling-systems offering for sale
automotive dent pulling systems (“Ex. 5”);

A true and accurate copy of an excerpt from Applicant’s website at
http://toolusa.com/hand-tools/hammers.html offering for sale hammers
(“Ex. 6”);

9 Opposer’s submission of copies of the notice of opposition and answer in this proceeding
(Exhibits O and P) with its notice of reliance was unnecessary.

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Opposition No. 91222920

A true and accurate copy of an excerpt from Opposer’s website at
https://www.toolsusa.com/auto-body-hammers/ offering for sale auto
body hammers (“Ex. 7”);

A true and accurate copy of an excerpt from Applicant’s website at
http://toolusa.com/catalogsearch/result/?cat=q=sander offering for
sanding equipment (“Ex. 8”);

A true and accurate copy of an excerpt from Opposer’s website at
https://www.toolsusa.com/air-and-electric-sanders offering for sale
sanding equipment (“Ex. 9”);

A true and accurate copy of an excerpt from Applicant’s website at
http://toolusa.com/construction-safety/gloves/industrial-chemical.html
offering for sale construction safety gloves (“Ex. 10”);

A true and accurate copy of an excerpt from Opposer’s website located
at https://www.toolsusa.com/gloves offering for sale latex and vinyl
gloves (“Ex. 11”);

Email correspondence from Haden Edwards, a customer of Applicant, to
Opposer dated August 1, 2014 comprised in part of a scanned copy of a
packing slip incorrectly listing Opposer’s website address alongside
Applicant’s physical address (“Ex. 12”);

Email correspondence from Mr. Kestler to Applicant dated August 1,
2014 (“Ex. 13”);

A true and accurate copy of the return packing slip dated June 15, 2015
from a product return from Jessica Harding, a customer of Applicant,
addressed to Opposer (“Ex. 14”); and

A true and accurate copy of a demand letter dated October 24, 2013 from
Opposer’s attorney sent to an entity using the domain name
toolsusaandequipment.com (“Ex. 15”) and a true and accurate copy of an
email showing compliance in disconnecting the websites (“Ex. 16”).

B. Applicant’s Evidence

1. Applicant’s Notice of Reliance (filed May 1, 2017 at 27 TTABVUE)

comprised of:

A true and correct copy of the record of Registration No. 2011200 printed
from the USPTO Trademark Status and Document Retrieval (“TSDR”)
database (“Ex. A”);

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Opposition No. 91222920

A true and correct copy of the record of Registration No. 2041542 printed
from TSDR (“Ex. B”);

A true and correct copy of excerpts from the record of Application Serial
No. 86426730 (“Exs. C and D”); and

A copy of a packing slip from Applicant (“Ex. E”).

2. Testimony Declaration of Ram Baheti, Manager of Applicant (“Baheti

Dec.”) (at 27 TTABVUE 319-320).

II. Standing

Standing is a threshold issue that must be proven by the plaintiff in every inter

partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401 (2015). Our primary

reviewing court, the U.S. Court of Appeals for the Federal Circuit, has enunciated a

liberal threshold for determining standing, namely that a plaintiff must demonstrate

that it possesses a “real interest” in a proceeding beyond that of a mere intermeddler,

and “a reasonable basis for his belief of damage.” Empresa Cubana Del Tabaco, 111

USPQ2d at 1062 (citing Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-

26 (Fed. Cir. 1999)). A “real interest” is a “direct and personal stake” in the outcome

of the proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.

Opposer has demonstrated through the USPTO TSDR database printouts made

of record with its notice of reliance that it is the owner of its pleaded registrations

and that the registrations are valid and subsisting. See Cunningham v. Laser Golf

Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc. v.

Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). In addition,

Opposer submitted evidence of Opposer’s ownership of its pleaded trademark

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Opposition No. 91222920

application and of the Office action suspending said application pending resolution of

Applicant’s application. See Weatherford/Lamb Inc. v. C&J Energy Servs. Inc., 96

USPQ2d 1834, 1837 (TTAB 2010) (standing established where Office action

suspending plaintiff’s application pending possible refusal based on alleged likelihood

of confusion with defendant’s registration made of record). Lastly, as discussed in

more detail below, Opposer, through its declaration testimony and related exhibits

has established common law use of the Banner Trademark in connection with tools

and online retail sales of equipment and tools. See Giersch v. Scripps Networks Inc.,

90 USPQ2d 1020, 1022 (TTAB 2009) (common-law use sufficient to establish

standing). All of the aforementioned evidence demonstrates that Opposer has a real

interest in this proceeding and a reasonable belief that it would be damaged by

registration of Applicant’s mark. In view thereof, Opposer has established its

standing.

III. Section 2(d) Claim

Opposer, as plaintiff in this proceeding, bears the burden of proof by a

preponderance of the evidence. To prevail on a likelihood of confusion claim brought

under Trademark Act Section 2(d), a party must first prove that it owns “a mark

registered in the Patent and Trademark Office or a mark or trade name previously

used in the United States . . . and not abandoned . . . .” 15 U.S.C. § 1052(d). Typically

in cases such as the one before us where an Opposer has properly made its pleaded

registrations of record, the Board will find that priority is not at issue with respect to

the marks and goods identified therein, and proceed directly to the likelihood of

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Opposition No. 91222920

confusion analysis. See, e.g., Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d

1464, 1469 (TTAB 2016) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496

F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)). In this case, however, rather than

concentrating on Opposer’s registered marks, we have decided instead to focus on

Opposer’s pleaded common law Banner Trademark. In our view, this common law

mark and the goods with which it is allegedly associated, as identified in the notice

of opposition, is more likely to support a likelihood of confusion claim. In other words,

if Opposer could prevail on its Section 2(d) claim on prior common law use of this

mark, then consideration of Opposer’s pleaded registered marks would be

unnecessary. See In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).

A. Priority

We turn now to whether Opposer has proved prior common law use of its Banner

Trademark by a preponderance of the evidence before any date upon which Applicant

may rely. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1834

(TTAB 2013) (citing Hydro-Dynamics Inc. v. George Putnam & Co. Inc., 811 F.2d

1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987)). Applicant failed to present any evidence

at trial to establish its alleged February 2, 2007 date of first use of its applied-for

mark. See Trademark Rule 2.122(b)(2); 37 C.F.R. § 2.122(b)(2 (“The allegation in an

application for registration, or in a registration, of a date of use is not evidence on

behalf of the applicant or registrant; a date of use of a mark must be established by

competent evidence.”). However, it may rely on its August 26, 2014 filing date as its

constructive use date. See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36

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Opposition No. 91222920

USPQ2d 1328, 1332 (TTAB 1994) (an application filing date for a use-based

application can establish constructive use of a mark). Therefore, Opposer must

demonstrate ownership and use of its pleaded common law Banner Trademark prior

to this date. See Giersch v. Scripps, 90 USPQ2d at 1023. See also Otto Roth & Co. v.

Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981).

Opposer has alleged prior common law use of its Banner Trademark on its online

website in connection with the following goods: “air compressors power tools, hand

tools, paint booths and other products, including but not limited to hammers, drills,

drill bits, sanding tools, sanding accessories, painting booths, painting accessories

and the like.” According to the declaration testimony of Michael Kestler, Opposer’s

President, Opposer “is the owner of common law rights embodied in the TOOLS USA

mark and design as demonstrated by the banner located at www.toolsusa.com (the

‘Banner Trademark’)”; Opposer “has been using the Banner Trademark since at least

the end of 1999”; Opposer “has continuously and without interruption used the

Banner Trademark for over seventeen (17) years dating back to 1999”; and “its

continual and uninterrupted use of the Banner Trademark has been exclusive.”

Kestler Dec. ¶¶ 10, 16-18; 26 TTABVUE 4-5. In connection therewith, Mr. Kestler

submitted an authenticated printout from Opposer’s website depicting the Banner

Trademark. Id. at Ex. 1. In addition, he submitted with his declaration authenticated

printouts from Opposer’s website offering for sale under the Banner Trademark

automotive dent pulling systems (Kestler Dec. ¶ 33, Ex. 5); auto body hammers

(Kestler Dec. ¶ 36, Ex. 7); sanding equipment (Kestler Dec. ¶ 39, Ex. 9); and latex and

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Opposition No. 91222920

vinyl gloves (Kestler Dec. ¶ 42, Ex. 11). 26 TTABVUE 8-9, 22-23, 27, 31, and 35. We

find that Opposer, through its testimony and documentary evidence, has established

prior proprietary rights in the Banner Trademark in connection with the above

mentioned goods sold via its www.toolsusa.com website well before Applicant’s

constructive date of first use. With the exception of the “latex and vinyl gloves,” we

deem the remaining products to be within the scope of the goods as to which Opposer

pleaded earlier use of its mark. As such, Opposer is entitled to rely on automotive

dent pulling systems, auto body hammers, and sanding equipment as within the

scope of properly pleaded goods for purposes of priority.

B. Likelihood of Confusion

Having established priority, we are left with the issue of likelihood of confusion.

We base our determination under Section 2(d) on an analysis of all of the probative

evidence of record bearing on a likelihood of confusion. In re E. I. du Pont de Nemours

& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See also, In re

Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not

all of the DuPont factors are relevant to every case, and only factors of significance to

the particular mark need be considered.” In re Mighty Leaf Tea, 601 F.3d 1342, 94

USPQ2d 1257, 1259 (Fed. Cir. 2010). For example, the Board can “focus … on

dispositive factors, such as similarity of the marks and relatedness of the goods.”

Herbko Int’l, Inc. v. Kappa Books, Inc., 64 USPQ2d at 1380 (quoting Han Beauty, Inc.

v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001). These

factors, and the other relevant du Pont factors are discussed below.

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Opposition No. 91222920

The Goods; Channels of Trade

We commence with a comparison of the goods and similarity or dissimilarity of

established, likely to continue trade channels. Although Opposer’s common law rights

in its Banner Trademark are limited to the actual goods and channels of trade for

which it uses its mark, we must consider Applicant’s goods to encompass all the goods

as they are recited in the application. Stone Lion Capital Partners, LP v. Lion Capital

LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (citing Octocom Sys.,

Inc., v. Hous. Computss Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

1990)).

In the context of likelihood of confusion, it is sufficient if likelihood of confusion is

found with respect to use of the mark on any item that comes within the description

of goods in the application. Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1661

(TTAB 2014) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,

209 USPQ 986, 988 (CCPA 1981) and Apple Comput. v. TVNET.Net, Inc., 90 USPQ2d

1393, 1398 (TTAB 2007)). As noted above, Applicant seeks to register its mark for

“manually operated hand tools, namely, hammers, . . . sanding wire wool, [and] drill

accessories, namely, bits for hand drills” in International Class 8. Because Applicant’s

“manually operated hand tools, namely, hammers” are unrestricted as to type, we

must assume that they encompass all types of manually operated hammers, including

Opposer’s “auto body hammers.” See In re Hughes Furniture Indus., Inc., 114

USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of

‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and

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Opposition No. 91222920

commercial furniture.’”). Accordingly, we find that the goods are identical in part. See

In re Fat Boys Water Sports, 118 USPQ2d 1511, 1518 (TTAB 2016). This du Pont

factor weighs in favor of finding a likelihood of confusion.

With regard to the similarity or dissimilarity of established, likely to continue

trade channels, we note that there are no limitations as to channels of trade or classes

of purchasers in the identification of goods in Applicant’s application. It therefore is

presumed that all of Applicant’s goods, including Applicant’s manually operated

hammers move in all channels of trade normal for those goods, and that they are

available to all classes of purchasers for those goods, namely the general public. See

Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d

1813, 1815 (Fed. Cir. 1987); Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 343

(TTAB 1983). This is consistent with the record which shows that Applicant sells its

products online through its own direct-to-consumer website www.toolusa.com and

various other online retailers offering the goods of third parties such as Amazon, eBay

and Sears. Opposer’s Notice of Reliance, Ex. E (Applicant’s Response to Interrogatory

No. 11); 25 TTABVUE 90. Opposer offers its “auto body hammers” via its own direct-

to-consumer website and catalogs which, in addition to offering for sale Opposer’s

own branded products, also offer for sale products manufactured by unrelated

entities. Opposer also testified that it does not exclusively target its advertising to

the automotive, body shop and painting industries but rather towards “all

consumers.” Kestler Dec. ¶ 48; 26 TTABVUE 9. As such, this du Pont factor also

favors a finding of likelihood of confusion.

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Opposition No. 91222920

The Marks; Strength of Opposer’s Mark

Keeping in mind that where the goods are in part identical, the degree of

similarity between the marks necessary to support a determination that confusion is

likely declines, see Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d

1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012), we now consider the first du Pont

likelihood of confusion factor, which involves an analysis of “the similarity or

dissimilarity of the marks in their entireties as to appearance, sound, connotation

and commercial impression.” Palm Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison

Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du

Pont, 177 USPQ at 567). “The 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 persons who encounter the marks would be likely

to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning

LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal citation

omitted). The focus is on the recollection of the average purchaser, who normally

retains a general rather than a specific impression of trademarks. In re Binion, 93

USPQ2d 1531, 1534 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,

108 (TTAB 1975). Our analysis cannot be predicated on dissection of the involved

marks. Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks

in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,

212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected

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Opposition No. 91222920

and considered piecemeal; rather, it must be considered as a whole in determining

likelihood of confusion.”).

Turning now to our comparison of Opposer’s common law mark and Applicant’s

applied-for mark, shown below, respectively,

we observe that the literal portions TOOLS USA versus TOOL USA.COM are highly

similar, inasmuch as Applicant’s mark represents the domain name version of

Opposer’s mark in singular form. Cf. In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB

1985) (in comparing NEWPORTS versus NEWPORT, “the pluralization of applicant’s

mark . . . is almost totally insignificant in terms of the likelihood of confusion of

purchasers”). Consumers are likely to overlook the slight difference in sound and

appearance between TOOLS USA and TOOL USA.COM. The red, white and blue

stars and waving stripes motifs depicted in both marks are similar in appearance and

meaning, inasmuch as both are reminiscent of the U.S. flag, and both reinforce the

geographic significance of the term USA and add a patriotic impression. Although the

stars and stripes are displayed in different patterns, the overall connotation and

commercial impression are the same – the promotion of tools manufactured and sold

in the United States.

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Opposition No. 91222920

Applicant questions the conceptual or inherent strength of the literal portion

TOOLS USA in Opposer’s mark. See Am. Lebanese Syrian Assoc. Charities Inc. v.

Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011) (citing Tea Board

of India v. Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006) (“In determining

the strength of a mark, we consider both its inherent strength based on the nature of

the mark itself and its commercial strength, based on the marketplace recognition

value of the mark.”); Top Tobacco, L.P. v. N. Atlantic Operating Co., Inc., 101 USPQ2d

1163, 1171-72 (TTAB 2011). We assess the inherent strength of a mark in terms of

where it falls on the “spectrum of distinctiveness,” UMG Recordings Inc. v. Mattel

Inc., 100 USPQ2d 1868, 1882-83 (TTAB 2011), and the commercial strength of a mark

in terms of its exposure to the public.

The TOOLS USA portion of Opposer’s Banner Trademark is geographically

descriptive, making the term conceptually and inherently weak. However, this

weakness is mitigated by the fact that it is surrounded by an inherently distinctive

stars and stripes design element. In addition, the word order of TOOLS USA is not

entirely natural, such that the term is less clearly descriptive than would be the term

“USA tools.” Furthermore, the record shows some degree of secondary meaning and

commercial strength in this geographically descriptive component as evidenced by

Opposer’s continuous and substantially exclusive use of its Banner Trademark for

almost twenty years; over $100,000,000 in combined sales revenue since 2002 from

the TOOLS USA branded mail-order catalogs and the TOOLS USA website (Kestler

Dec. ¶ 26; 26 TTABVUE 6); and $2,400,000 in advertising expenditures related solely

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Opposition No. 91222920

to the TOOLS USA website since 2003 in the areas of search engine optimization

(SEO) and keyword services, lead generation services, and targeted email marketing

campaigns. Id. at ¶¶ 20, 23, 24 and Ex. 3; 26 TTABVUE 5-6, 19. As a result, Opposer’s

website displaying its Banner Trademark has a priority position when searched on

the Google® search engine. Id. at ¶ 24, Ex. 3; 26 TTABVUE 5-6, 19. Consumer

recognition of the “TOOLS USA” portion of Opposer’s Banner Trademark as carrying

secondary meaning is also reflected in the evidence of actual consumer confusion

discussed in more detail below. See Tools USA and Equip. Co. v. Champ Frame

Straightening Equip. Inc., 87 F.3d 654, 39 USPQ2d 1355, 1360 (4th Cir. 1996)

(“Evidence offered as to actual customer confusion, although also probative of

likelihood of confusion, certainly tends to show [secondary meaning].”). See also J.

Thomas McCarthy, 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 15:11

(5th ed.) (“If there is reliable evidence of actual customer confusion, then it follows

logically that there must also be some secondary meaning in the senior user’s

designation. If people were not aware of the trademark significance of the senior

mark, how could they be confused as to source or affiliation? Thus, evidence of actual

confusion is also evidence of secondary meaning and trademark significance.”), and

§ 15:37 (“Evidence of actual confusion is strong evidence of secondary meaning.”).

Given the evidence of consumer recognition of the geographically descriptive

component “TOOLS USA” in Opposer’s Banner Trademark, we accord the

geographically descriptive portion of that mark more weight than we otherwise

typically would.

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Opposition No. 91222920

Taken in their entireties, we find that Opposer’s and Applicant’s marks are

similar in sight, sound, connotation and commercial impression. This first du Pont

factor weighs in favor of finding a likelihood of confusion.

Actual Confusion

Finally, we direct our attention to the nature and extent of any actual confusion.

If proven, evidence of actual confusion is entitled to great weight. In re Majestic

Distilling Co., 65 USPQ2d at 1205 (“A showing of actual confusion would of course be

highly probative, if not conclusive, of a high likelihood of confusion.”).

Mr. Kestler testified that since 2014, Applicant’s constructive use date, it “has

received multiple inquiries from customers who have demonstrated actual confusion

with respect to Standard Tools’ website at www.toolsusa.com and Applicant’s website

at www.toolusa.com as well as the Standard Tools trademarks, specifically the

TOOLS USA marks.”10 More specifically, Mr. Kestler recounted three instances of

actual confusion:

(1) On or about August 1, 2014, Opposer received an inquiry from Mr.
Haden Edwards, a customer of Applicant, who was attempting to
register a complaint concerning one or more of Applicant’s products. The
packing slip provided by the customer incorrectly recited Opposer’s
website at www.toolsusa.com instead of Applicant’s www.toolusa.com
website, despite listing Applicant’s physical address. Kestler Dec. ¶ 51
and Ex. 12; 26 TTABVUE 9, 36-39.

10 Opposer’s trial evidence of actual consumer confusion is admissible. As previously
explained in the Board’s November 22, 2016 interlocutory order, Applicant’s objections to the
packing slips and a customer complaint were overruled. The packaging slips were properly
authenticated and introduced into evidence at trial by the declaration of Mr. Kestler. In
addition, customer communications are recognized as an exception to the hearsay rule (Fed.
R. Evid. 802) under Fed. R. Evid. 803(3). See Nat’l Rural Electric Coop. Ass’n v. Suzlon Wind
Energy Corp., 78 USPQ2d 1881, 1887 n.4 (TTAB 2006).

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Opposition No. 91222920

(2) On or about June 15, 2015, Opposer received a product return from Ms.
Jessica Harding, a customer of Applicant, who was attempting to return
a product purchased from Applicant on Amazon.com. The shipping label
prepared by the customer erroneously listed Opposer’s physical address
instead of Applicant’s. Kestler Dec. ¶ 53 and Ex. 14; 26 TTABVUE 10,
43-45.

(3) On or about April 28, 2016, Opposer received a complaint from Jane
Thiels Lyle, a customer of Applicant, about a product she purchased
from Applicant. The customer did not believe that Opposer and
Applicant were separate companies and did not understand why
Opposer could not remedy the problem she was having with the product
she purchased from Applicant. Kestler Dec. ¶ 50; 26 TTABVUE 9-10.

With regard to the first instance, Ram Baheti, Manager of Applicant, stated that

the actual confusion was “due to Applicant’s printing mistake.” Baheti Dec. ¶ 7; 27

TTABVUE 320. As to the second instance, Mr. Baheti acknowledged actual confusion,

but explained this was due to “consumer mistake.” Id.

Applicant argues that, even assuming each of these instances constitute actual

confusion, there is nothing in the record to show that this is more than a negligible

portion of the market. Applicant’s argument is not persuasive. “The best evidence of

likelihood of confusion is provided by evidence of actual confusion.” Exxon Corp. v.

Texas Motor Exchange of Hous., Inc., 628 F.2d 500, 208 USPQ 384, 389 (5th Cir.

1980). We find that this factor weighs in favor of finding a likelihood of confusion.

Balancing the du Pont Factors

In conclusion, we observe that the involved goods are essentially identical in part

and sold in overlapping trade channels to the same consumers. When considered in

their entireties, Opposer’s common law Banner Trademark and Applicant’s applied-

for mark are similar in appearance, sound, meaning and commercial impression, and

the record shows specific instances of actual consumer confusion. “The existence of

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Opposition No. 91222920

actual confusion is normally very persuasive evidence of likelihood of confusion and

undercuts any possible claim that the marks are so dissimilar that there can be no

likelihood of confusion.” Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1553 (TTAB

2012) (citing Thompson v. Haynes, 305 F.3d 1369, 64 USPQ2d 1650 (Fed. Cir. 2002)).

The remaining du Pont factors are deemed neutral.

Accordingly, we find that Opposer has proved its Section 2(d) claim by a

preponderance of the evidence.

Decision: The opposition is sustained on Opposer’s Section 2(d) claim.

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