Applied Optical Systems, Inc.Download PDFTrademark Trial and Appeal BoardSep 7, 2011No. 77725044 (T.T.A.B. Sep. 7, 2011) Copy Citation Mailed: September 7, 2011 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Applied Optical Systems, Inc. ________ Serial No. 77725044 _______ Dyan M. House and Robert D. McCutcheon of Munck Carter LLP for Applied Optical Systems, Inc. Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _______ Before Quinn, Taylor and Wolfson, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Applied Optical Systems, Inc. has filed an application to register on the Principal Register the mark EZ-MATE (in standard character format) for “fiber optic connectors” in International Class 9.1 Registration has been finally refused on the ground that the proposed mark so resembles the mark shown in U.S. Registration No. 3218852, EASYMATE (in standard character 1 Serial No. 77725044, filed April 29, 2009, and alleging April 2008 as the date of first use of the mark anywhere and in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77725044 2 format) for “electrical and electronic connectors” in International Class 9 that, when used on or in connection with the identified goods, it is likely to cause confusion, to cause mistake, or to deceive under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d).2 The examining attorney also made final a requirement for a substitute specimen because the specimen “disagrees with the mark in the drawing,” i.e., the specimen displays the mark as EZ-MATE- 4, and the drawing shows the mark as EZ-MATE. Applicant appealed and requested reconsideration of the refusals. On reconsideration, applicant made arguments in support of its position on the Section 2(d) issue and submitted a substitute specimen. In his October 8, 2010 response, the examining attorney deemed the substitute specimen acceptable and to have resolved the drawing/specimen issue, but denied the request for reconsideration as to the Section 2(d) refusal. This appeal was resumed on October 14, 2010 solely with regard to that issue. Both applicant and the examining attorney filed briefs and applicant filed a reply brief. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set 2 Issued April 22, 1997, renewed. Ser No. 77725044 3 forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We first consider the du Pont factor of the similarity/dissimilarity of the marks and compare applicant's mark EZ-MATE and registrant's mark EASYMATE in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general, rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Ser No. 77725044 4 Applicant, while acknowledging the similarities between the marks with respect to sound and “the highly suggestive connotation,” maintains that its “use of the two-letter term “EZ” with a hyphen between the first portion of the mark and the second, “MATE”, creates a substantially different appearance to Registrant’s EASYMATE.” Br. p. 5. The examining attorney, by contrast, maintains that applicant’s mark and the cited registered mark are identical in connotation and sound and highly similar in appearance and, consequently, create an overall general impression that is likely to confuse customers as to the source of the highly related goods. We agree with the examining attorney and find applicant’s mark EZ-MATE substantially similar to the cited mark EASYMATE in terms of appearance, both comprised of two terms; the second in each being the identical word “MATE,” the first in each being the word “EASY,” or its abbreviation “EZ.”3 Because the comparison of the marks is 3 As requested by the examining attorney, we take judicial notice of the definition of “EZ,” which is defined as an abbreviation of “easy.” Encarta® World English Dictionary [North America Edition] 2009, retrieved at www.encarta.msn.com,etc. on January 21, 2011. The Board may take judicial notice of dictionary definitions including online dictionaries which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 17989)(TTAB 2002); University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., Inc., 213 USPQ594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Ser No. 77725044 5 not necessarily made on a side-by-side basis, and because purchasers, with their imperfect recollections of trademarks, are unlikely to recall the differences in spelling when they encounter the marks at different times and in connection with closely related goods, the different spellings do not distinguish the marks. Nor do we find the hyphen in applicant’s mark a distinguishing feature as it serves mainly as spacing between the two terms. See Goodyear Tire & Rubber Co. v. Dayco. Corp., 201 USPQ 485, 489 n.4 (TTAB 1978) (difference of hyphen insignificant). In terms of sound, we find the marks are phonetic equivalents, which will be pronounced identically. See RE/MAX of America, Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) (similarity in sound alone may be sufficient to support a finding of likelihood of confusion). See also, for example, Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); and In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). Despite the differences in spelling, when compared in their entireties, the marks EZ-MATE and EASYMATE are substantially similar in appearance and identical in sound. While admittedly both marks are highly suggestive in meaning, they suggest the same idea, i.e., that both applicant’s and registrant’s goods facilitate ease of Ser No. 77725044 6 connection. As such, applicant’s mark and the cited mark are highly similar in commercial impression. Applicant argues that the term “MATE” is highly common in both the field of fiber optic connectors and the field of electronic connectors and, thus, the difference in the appearance of “EZ-” compared to “EASY” is significant with these highly suggestive marks in the context of the goods and the circumstances in which they are purchased. We find this argument unavailing. While the record shows that the term “mate” is used in the fields of fiber optic and electrical and electronic connectors, it does not show that the term is so “common” in those fields that very slight differences in the appearance of marks containing the term would serve to distinguish them. There simply is no evidence of widespread trademark use by others of similar marks for similar goods in the marketplace. In any event, as just discussed, we recognize that both applicant’s mark “EZ-MATE” and registrant’s mark “EASYMATE” are highly suggestive and somewhat weak for the respective goods. However, even a weak mark is entitled to protection against the registration of a very similar mark for closely related goods. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 Ser No. 77725044 7 (CCPA 1974) (likelihood of confusion is to be avoided as much between weak marks as between strong marks). We now turn to a consideration of the du Pont factors of the relatedness of the goods, channels of trade and classes of purchasers. It is settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods recited in the cited registration. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ 2d 1715 (TTAB 1991). Further, it is a general rule that the goods do not have to be identical or directly competitive to support a finding that there is a likelihood of confusion. It is sufficient if the respective goods are related in some manner and/or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, because of the similarity of the marks used in connection therewith, give rise to the mistaken belief that they emanate from or are associated with a single source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); In re International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). Ser No. 77725044 8 Where the goods in an application or cited registration are broadly described, such that there are no restrictions as to trade channels and purchasers, it is presumed that the identification of goods encompasses not only all goods of the nature and type described therein, but that the identified goods are provided in all channels of trade which would be normal therefor, and that they would be purchased by all potential customers thereof. See, e.g., In re Elbaum, 211 USPQ 639 (TTAB 1981). The examining attorney contends that applicant’s fiber optic connectors and registrant’s electrical and electronic connectors are related, that they perform the same function as a connection device, and are of a kind that often emanate from a single source. To support his position, the examining attorney has made of record copies of various use-based third-party registrations, i.e., Registration Nos. 1312138, 1917760, 2121281, 2370032, 2780022, 2609465, 2977496, 3104422, 3492128, 3642649, 3426857 and 3324436, showing that a common mark has been registered by the same entity for both fiber optic connectors or, in two cases, fiber optic cable connectors and electrical and/or electronic connectors.4 4 We note that Registration Nos. 2370032 and 3324436 are owned by the same entity. Ser No. 77725044 9 These third-party registrations may serve to suggest that the types of goods involved herein may emanate from a single source. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-party registrations are “not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may nonetheless have some probative value to the extent that they may serve to suggest that such goods and/or services are of a type which may emanate from a single source”). See also Albert Trostel & Sons, 29 USPQ2d at 1786. The examining attorney has also made of record Internet evidence showing the respective goods offered to the same potential customers in the same trade channels. These include, for example: DIGITIVITY Electrical & Electronics Industry Marketplace (www.digitivity.com...), Maxbar (www.maxbar.com/walther-couplings/autosystems.html), and Mecco, Inc. (www.meccoinc.com). Last, the examining attorney has made of record a web page from applicant’s website showing that applicant offers a product that combines the electrical and fiber optic Ser No. 77725044 10 connectors into a single device.5 See exhibits to the Office Action issued July 27, 2009. Based on the third-party registrations, Internet evidence and applicant’s own website, we find that applicant’s fiber optic connectors and registrant’s electrical and electronic connectors are closely related connective devices, which may be sold by the same source under the same mark. Applicant does not argue otherwise and, in fact, at page 6 of its brief, states that it does not dispute “the notion that companies that sell fiber optic connectors also sell electrical connectors.” Applicant instead contends that its goods are sold to customers directly through applicant’s sales persons and through trade shows. However, in the absence of any limitations to the channels of trade or classes of purchasers in both applicant’s application and the cited registration, we presume that both applicant’s and registrant’s goods are or will be sold in all the usual trade channels therefor, including direct sales and at tradeshows, and to all the usual classes of purchasers. See In re Elbaum, supra. As such, at a minimum, the trade channels overlap. 5 The web page was retrieved on July 23, 2009 at www.appliedopticalsystems.com/products.aspx?id=2550. Ser No. 77725044 11 Applicant argues with respect to the du Pont factor of the conditions under which sales are made that “the typical purchaser of its fiber optic connectors uses such a high degree of care in purchasing the goods that there is no likelihood of confusion between Applicant’s mark and Registrant’s mark.” Br. p. 6. Applicant particularly contends that the goods are sold to sophisticated customers directly through applicant’s sales persons and at trade shows, typically cost hundreds of dollars for each component, and are highly specialized such that a great deal of care must go into the purchasing decision. As stated, however, the identification of applicant’s goods has no limitation as to classes of consumers or channels of trade and therefore we cannot presume that they are sold only to sophisticated consumers and only by direct sales. Nor is there any evidence in the record regarding the care a consumer exercises in buying fiber optic connectors. Nonetheless, even if we assume that applicant’s goods are expensive and would be purchased universally by sophisticated purchasers who would exercise a degree of care in their purchasing decisions, such purchasers are not necessarily immune to source confusion especially where, as here, the marks are substantially similar and the goods closely related. See In re Research Trading Corp., 793 Ser No. 77725044 12 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“Appellant’s argument that purchasers of safety devices would not be confused because of the care they would be expected to exercise in the selection of that equipment is not persuasive in view of the very close similarity between the marks. That 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.”); see also Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers … are not infallible.”). As a final argument in favor of a finding of no likelihood of confusion applicant contends that, following the examining attorney’s line of reasoning, if applicant’s goods and trade channels are so closely intertwined with registrant’s goods and trade channels, then it follows that there has been ample opportunity for confusion to arise. Applicant asserts that for approximately the last three years, it and registrant have been using their marks without any confusion. According to applicant, the absence of confusion supports its position that the marks have different commercial impressions and/or that the relevant Ser No. 77725044 13 consumers are sophisticated, and thus are not confused by the marks. We find this argument unpersuasive for several reasons. First, the record is devoid of any evidence supporting this assertion. See In re Majestic Distilling Co., 65 USPQ2d at 1205 (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”); see also In re Bissett-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that confusion did not exist or that there was no likelihood of confusion). Second, as applicant acknowledges, it is not necessary to show actual confusion in order to establish likelihood of confusion. See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990). Last and most importantly, in this ex parte proceeding, we have had no opportunity to hear from the registrant as to whether it has encountered any instances of confusion, and therefore, despite applicant’s theoretical assertion to the contrary, we simply cannot ascertain whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. As the Board previously Ser No. 77725044 14 stated in In re General Motors Corp., 23 USPQ2d 1465, 1470 (TTAB 1992): We recognize, of course, that the above [evidence of an absence of actual confusion] is one-sided inasmuch as it provides only applicant’s experience in the marketplace and not that of registrant. Normally, in the absence of a detailed consent agreement, the registrant has no opportunity to be heard in an ex parte proceeding of this type and the Board, therefore, is not in a position to meaningfully assess whether the claimed period of contemporaneous use had provided ample opportunity for confusion to have arisen. See, e.g. In re Jeep Corp., [222 USPQ 333, 337 (TTAB 1984)]. The asserted evidence of actual confusion, especially over a relatively short period of years, has thus often been asserted to be of “limited influence” or of “dubious probative value”. See, e.g., In re Barbizon International, Inc., 217 USPQ 735, 737 (TTAB 1983) and In re Whittaker Corp., 200 USPQ 54 (TTAB 1978), respectively. Applicant’s assertion of the absence of actual confusion is accordingly of little probative value in our determination on the issue of likelihood of confusion. After careful consideration of the evidence of record and all of the arguments made by applicant and the examining attorney, including the ones not specifically discussed, we conclude that purchasers familiar with registrant’s electrical and electronic connectors sold under the EASYMATE mark would be likely to believe, upon encountering applicant’s mark EZ-MATE for fiber optic Ser No. 77725044 15 connectors, that such goods originate from or are sponsored by or affiliated with the same source. Decision: The refusal to register under Section 2(d) of the Trademark Act is affirmed. Copy with citationCopy as parenthetical citation