Chemalloy Co., Inc.v.Aluminium Rheinfelden GmbH

Trademark Trial and Appeal Board

Aug 20, 1999

No. 91105477 (T.T.A.B. Aug. 20, 1999)

Hearing: Paper No. 25
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 20, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
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Chemalloy Company, Inc.
v.
Aluminium Rheinfelden GmbH
_____
Opposition No. 105,477
to application Serial No. 74/592,092
filed on October 28, 1994
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John F. McNulty of Paul & Paul for Chemalloy Company, Inc.
Gregory P. LaPointe of Bachman & LaPointe for Aluminium
Rheinfelden GmbH
______
Before Hanak, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Aluminium Rheinfelden GmbH (applicant) seeks to
register TIBLOY for “chemical compounds for use in metal
refining processes” (class 1) and for “unwrought and/or
partially wrought common metals and their alloys in rod,
sheet, wire and/or billet form for use in further metal
refinement and manufacturing processes” (class 6). The
Opposition No. 105,477
2
application was filed on October 28, 1994, based upon a
German registration which issued on September 21, 1994.
Chemalloy Company, Inc. (opposer) filed a notice of
opposition alleging that long prior to 1994 it both used and
registered the mark TI-LOY for scrap metal composed
primarily of titanium for use in the manufacture of steel
and ferro alloys. Continuing, opposer alleged that the
contemporaneous use of opposer’s mark TI-LOY and applicant’s
mark TIBLOY is likely to result in confusion.
Applicant filed an answer which denied the pertinent
allegations of the notice of opposition and a counterclaim
seeking to cancel opposer’s pleaded Registration No.
1,669,141 for TI-LOY on the basis that said term is generic
for the goods listed in the registration (scrap metal
composed primarily of titanium for use in the manufacture of
steel and ferro alloys). Subsequently, applicant withdrew
its counterclaim.
Both parties filed briefs. Opposer took the testimony
of its president Anthony C. Demos. Applicant made of record
no evidence.
In any likelihood of confusion analysis, two key
considerations are the similarity of the marks and the
similarity of the goods. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by Section 2(d) goes to
Opposition No. 105,477
3
the cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks.”).
In this case, the uncontradicted testimony of Mr. Demos
demonstrates that certain of applicant’s class 6 goods are,
despite differences in terminology, essentially identical to
registrant’s goods. Applicant seeks to register TIBLOY for
common metals and their alloys for use in further metal
refinement and manufacturing processes. Opposer’s
registration of TI-LOY covers “scrap metal composed
primarily of titanium for use in the manufacture of steel
and ferro alloys.” Obviously, the term “common metals” is
broad enough to encompass “scrap metal composed primarily of
titanium.” Moreover, both applicant’s common metals and
opposer’s scrap metal are for use in the manufacture or
refinement of other metals such as steel.
As for applicant’s class 1 goods (chemical compounds
for use in metal refining processes), Mr. Demos testified
that such compounds are routinely purchased by opposer’s
customers who must use said compounds in conjunction with
opposer’s scrap metal in order to manufacture steel and
ferro alloys. Thus, applicant’s class 1 goods are closely
related to opposer’s goods in that without said chemical
compounds, opposer’s scrap metal could not be processed to
make steel and ferro alloys.
Opposition No. 105,477
4
Turning to a consideration of the marks, we note at the
outset that when the goods of the parties are almost
identical or very closely related, “the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Obviously, both marks consist of six characters, with
only the third character being different. Thus, in terms of
visual appearance the marks are extremely similar.
Moreover, in terms of pronunciation the marks are
likewise extremely similar. This is particularly true when
one takes into account the fact that “there is no correct
pronunciation of a trademark.” In re Belgrade Shoe, 411 F.
2d 1352, 162 USPQ 227 (CCPA 1969).
Finally, in terms of connotation we find that either
both marks lack any connotation, or assuming the correctness
of applicant’s assertion that the letters TI would be
recognized by consumers as the chemical abbreviation for
titanium, than both marks have the same connotation, namely
that the metals involved contain titanium and that
applicant’s chemical compounds are for use in the refining
of metals containing titanium.
Given the fact that applicant’s goods are nearly
identical to or very closely related to opposer’s goods and
Opposition No. 105,477
5
the additional fact that the marks are extremely similar in
terms of visual appearance, pronunciation and connotation,
we find that their contemporaneous use is likely to result
in confusion.
Decision: The opposition is sustained.
E. W. Hanak
G. D. Hohein
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board