Applied Optical Systems, Inc.

Trademark Trial and Appeal Board

Sep 7, 2011

No. 77725044 (T.T.A.B. Sep. 7, 2011)

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.