The Board affirmed a Section 2(d) refusal to register the mark HARDROK EQUIPMENT INC.  for “distributorship services in the field of industrial machinery and parts therefor in the mineral and aggregate industries” (EQUIPMENT INC. disclaimed), finding confusion likely with the registered mark HARDROCK for rock drills, drill bits, and other drilling equiment. Although the relevant purchasers are “sophisticated and would exercise a significant degree of care,” the other relevant du Pont factors pointed to affirmance of the refusal. In re Hard Rok Equipment, Inc., Serial No. 87581245 (January 7, 2020) [not precedential] (Opinion by Judge Christopher Larkin).

The Board agreed with Examining Attorney Jonathon Schlegelmilch that HARDROK is the dominant element of applicant’s mark. Applicant’s assertion that the term “hardrock” is “inherently descriptive” was an improper collateral attack on the cited registration. Its argument that the term “hardrock” is diluted due to third-party usage was supported by evidence of only two third-party users, which fell well short of establishing a “plethora” of third-party marks that cases like Jack Wolfskin and Juice Generation require.

The Board found that the involved marks are “quite similar in appearance, sound, and connotation and commercial impression when considered in their entireties,” and thus the first du Pont factor “strongly supports a finding of a likelihood of confusion.”

As to the goods and services, the Board focused on the those as described “in the application and registration, and not on real-world conditions.” It found that the “industrial machinery and parts therefor” in applicant’s identification of distributorship services encompass the drilling equipment identified in the cited registration. “Accordingly, ‘while the goods and services are not identical, they substantially overlap, which weighs in favor of finding a likelihood of confusion.'” And so, the second du Pont factor  supported the refusal to register.

Applicant maintained that the involved goods and services are purchased by “highly sophisticated, professional purchasers who exercise a great deal of care in their purchases and are thus unlikely to be confused as to the source of their purchases.” The Board noted the lack of restrictions regarding “large scale commercial and industrial operation” purchasers or goods purchased through a quotation or bidding process, but it found that “the cost of those goods is obviously is obviously considerable … and that fact, coupled with the need to use particular machinery for particular functions in the mineral and aggregate industries, makes it very likely that all purchasers would exercise considerable care in the purchase decision under all circumstances of purchase.” The fourth du Pont factor thus supported a finding that confusion is not likely.

Finally, applicant pointed to the lack of any actual confusion despite some 15 years of concurrent use. The Board observed, however, that applicant and registrant are located 2000 miles apart, and the record did not show “that Applicant and Registrant have ever operated in the same area, which limits, if not eliminates entirely, the opportunity for confusion to occur.” The Board deemed this factor to be neutral.

The Board, in conclusion, found that “[s]ophistication of buyers and purchaser care are relevant considerations but are not controlling on this factual record.”

[T]he fact “[t]hat the relevant class of buyers may exercise care does not necessarily impose on that class the responsibility of distinguishing between similar trademarks for similar [goods and services]. ‘Human memories even of discriminating purchasers . . . are not infallible.'”

And so the Board affirmed the refusal.

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TTABlog comment: I think one could have guessed the outcome from the start? Do you?

Text Copyright John L. Welch 2020.