Crosstex International, Inc.

Trademark Trial and Appeal Board

Jun 1, 2011

No. 77888336 (T.T.A.B. Jun. 1, 2011)

Mailed:
June 1, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Crosstex International, Inc.
________

Serial No. 77888336
_______

Laura E. Smith, Esq. for Crosstex International, Inc.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Seeherman, Grendel and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Crosstex International, Inc. (“applicant”) filed a
use-based application to register the mark ULTRA, in
standard character form, for “surgical face masks,” in
Class 10.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the mark ULTRA SOFT
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77888336
2
and design, shown below, for “face masks for medical,
dental and veterinary use,” in Class 10.1

We first turn to an evidentiary matter. In the appeal
brief, the examining attorney objected to applicant’s
submission of a table of registrations and applications of
marks consisting, in whole or in part, of the word “Ultra”
for goods in Class 10, attached as an exhibit to
applicant’s April 22, 2010 response. Applicant’s table
included the mark, goods, status, and “owner of record.”
Applicant referred to the marks listed in the table to
rebut the examining attorney’s contention that the word
“Ultra” is the dominant element of the mark in the cited
registration and to show that “Ultra” is a weak term when
used in connection with goods in Class 10. In the May 10,
2010 Office action, the examining attorney noted
applicant’s table “as evidence of the weakness of the term
ULTRA,” but stated that the marks in the table were not
persuasive because the goods in the application and the
cited registration are identical. The examining attorney
did not object to the table of registrations in the May 10,

1 Registration No. 3257637, issued July 3, 2007.
Serial No. 77888336
3
2010 Office Action; the examining attorney did not raise
the objection until the examining attorney’s appeal brief.
To make registrations of record, soft copies of the
registrations or the complete electronic equivalent (i.e.,
complete printouts taken from any of the USPTO’s automated
systems (TESS, TARR, or TRAM)) must be submitted.
Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB 1998);
In re Volvo Cars of North America Inc., 46 USPQ2d 1455
(TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559,
1561 n.6 (TTAB 1996); In re Smith & Mehaffey, 31 USPQ2d
1531, 1532 n.3 (TTAB 1994); Weyerhaeuser Co. v. Katz,
24 USPQ2d 1230, 1231-32 (TTAB 1992).
“If an applicant includes a listing of registrations
in a response to an Office action, and the examining
attorney does not advise the applicant that the
listing is insufficient to make the registrations of record
at a point when the applicant can correct the error, the
examining attorney will be deemed to have stipulated the
registrations into the record.” TBMP §1208.02 (3rd ed.
2011). See also In re 1st USA Realty Professionals, 84
USPQ2d 1581, 1583 (TTAB 2007) (Board considered applicant’s
own registration, provided for the first time on appeal,
because it had been referred to during prosecution and the
examining attorney addressed the issue without objection;
Serial No. 77888336
4
Board also allowed evidence of a list of third-party
registrations because the examining attorney did not advise
applicant of the insufficiency of the list while there was
still time to correct the mistake); In re Broyhill
Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB
2001) (objection to evidence waived where it was not
interposed in response to applicant’s reliance on listing
of third-party registrations in response to initial Office
action). Because the examining attorney addressed the
merits of the evidence in applicant’s table of
registrations without objection in the May 10, 2010 Office
action, we find that the examining attorney waived his/her
right to object.
With respect to the pending applications listed in the
table, a pending application is incompetent to prove
anything other than the fact that it was filed. Merritt
Foods Co. v. Americana Submarine, 209 USPQ 591, 594 (TTAB
1980). Accordingly, we give no consideration to the
applications listed in applicant’s table.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
Serial No. 77888336
5
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity and nature of the
goods described in the application and registration,
the likely-to-continue channels of trade and classes
of consumers.

Applicant is seeking to register its mark for “surgical
face masks” and registrant’s mark is registered for “face
masks for medical, dental and veterinary use.” The goods at
issue are legally identical for purposes of our likelihood
of confusion analysis. Because the goods described in the
application and the cited registration are legally
identical, we must presume that the channels of trade and
classes of purchasers are the same. See Genesco Inc. v.
Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part
identical and in-part related nature of the parties’ goods,
Serial No. 77888336
6
and the lack of any restrictions in the identifications
thereof as to trade channels and purchasers, these clothing
items could be offered and sold to the same classes of
purchasers through the same channels of trade”); In re Smith
and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”).
Applicant contends that “registrant’s general purpose
face masks, suitable for veterinary as well as dental and
medical use are not interchangeable with the applicant’s
surgical face masks and that, therefore, they do not serve
the same purpose nor move in the same channels of trade.”
The problem with applicant’s argument is that in
considering the scope of the cited registration, we look to
the registration itself, and not to extrinsic evidence
about the registrant’s actual goods, customers, or channels
of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958). See also Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). The description of goods in the
Serial No. 77888336
7
registration are not restricted in any way and, therefore,
we find that registrant’s face masks for medical use
encompass applicant’s surgical face masks.
B. The strength of the cited registration.

A major part of our consideration of whether the marks
are similar is the strength of the mark in the cited
registration. With respect to the inherent strength of the
registered mark, the word “Ultra” means “going beyond what
is usual or ordinary; excessive; extreme.”2 The word “Soft”
means, inter alia, “smooth and agreeable to the touch; not
rough or coarse: a soft fabric; soft skin. … gentle or
mild”3 Thus, the term “Ultra Soft” means very smooth and
agreeable to the touch, very comfortable or very gentle.
This finding is supported by definitions of terms using the
word “Ultra.” For example, “ultraclean” means “extremely
clean,” “ultralight” means “extremely light,” and
“ultrapure” means “extremely pure.”4
As indicated above, applicant submitted a table of 71
registrations of marks consisting, in whole or in part, of

2 The Random House Dictionary of the English Language
(Unabridged), p. 2050 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
3 Id. at 1813.
4 Id. at 2050.
Serial No. 77888336
8
the word “Ultra” for goods in Class 10, including
Registration No. 3667615 for the mark ULTRAMASK for
respiratory face masks for medical purposes. Thus, on the
record before us, there are three “Ultra” marks (i.e.,
ULTRA, ULTRA SOFT and design and ULTRAMASK) and two “Ultra”
registrations for “Ultra” marks (the cited registration and
Registration No. 3667615) for medical face masks.
We also note from the materials submitted by applicant
the following sets of registrations for “Ultra” marks for
related medical products, owned, except where noted, by
different entities:
1. Gloves for medical and/or dental use.
Mark Registration
No.
Goods

ULTRAGARD 3256375 Disposable latex, vinyl, and
nitrile gloves for medical use

ULTRASENSE
ULTRAFORM5
3283673
2725421
Disposable gloves for medical and
dental use

ULTRA-SOFT 3489426 Gloves for medical use

ULTRA-FIT 1868143 Glove liners for use with latex
gloves for use by persons with
latex sensitivity

ULTRA-
PLUS6
2052671 Latex examination gloves used in
the dental-medical fields

5 These registrations are both owned by Microflex Corporation.
6 This registration is owned by applicant.
Serial No. 77888336
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2. Products and accessories for ultrasound
procedures.
Mark Registration
No.
Goods

ULTRASHAPE 3390298 Ultrasonic therapeutic medical
apparatus for medical, aesthetic
and therapeutic purposes

ULTRA-
COVER
3607822 Disposable medical products,
including, inter alia, ultrasonic
transducer covers

ULTRAMAX 2792486 Ultrasonic skin cleaning device

ULTRAFIT 3728718 Disposable protective cover for
ultrasound probes

ULTRAGLIDE 2272095 Medical diagnostic ultrasound
scanning gel

3. Needles.
Mark Registration
No.
Goods

ULTRA-FINE 2642357 Medical syringes and needles

ULTRACLEAN 2501133 Acupuncture needles

ULTRA
GLIDE
2293488 Suture needles

ULTRASAFE 2624070 Needle guards and unit dose
injection systems

Serial No. 77888336
10
4. Surgical blades
Mark Registration
No.
Goods

ULTRAFIT 2900456 Surgical blades and scalpels

ULTRA
POINT
2086741 Surgical blades and blade tips

ULTRACUT 2707889 Shaver blades for endoscopic use

5. Sutures and related products
Mark Registration
No.
Goods

ULTRABRAID 3018683 Surgical suture

ULTRA
GLIDE
2272095 Suture needles

ULTRAFIX 2162402 Suture anchors, suture anchor
inserters, and suture threaders

Third-party registrations are not evidence that the
marks are in use, much less that the extent of such third-
party use has been so great that consumers have become
accustomed to seeing various ULTRA marks in connection with
medical products, specifically face masks and, therefore,
have learned to distinguish between them. See Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462,
463 (CCPA 1973) (the purchasing public is not aware of
registrations reposing in the U.S. Patent and Trademark
Office); AMF Inc. v. American Leisure Products, Inc., 474
Serial No. 77888336
11
F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). Nevertheless,
the third-party registrations may be used in the manner of
a dictionary to show that a mark or a portion of a mark is
descriptive or suggestive of goods and services, or that it
has significance in a particular trade or industry.
The word “Ultra” is common to all of the listed
registrations. The dictionary definition shows that it has
a laudatory meaning that suggests the presence of some
extraordinary characteristic. An inference that we can
draw from the numerous third-party registrations consisting
of the word “Ultra” in connection with medical products is
that because of the suggestive or laudatory nature of the
word “Ultra,” a number of different registrants have
believed that various “Ultra” marks can be used and
registered side-by-side without causing confusion provided
there are minimal differences between the marks and/or the
goods. See Plus Products v. Natural Organic, Inc., 204
USPQ 773, 779 (TTAB 1979); Jerrold Electronics Corp. v. The
Magnavox Company, 199 USPQ 751, 757-758 (TTAB 1978) (third-
party registrations reflect belief by registrants, who
would be most concerned about avoiding confusion, that
various “Star” marks can coexist provided that there is
some difference between them); In re Sien Equipment Co.,
189 USPQ 586, 589 (TTAB 1975) (the suggestive meaning of
Serial No. 77888336
12
the word “Brute” explains the numerous third-party
registrations incorporating that word with other wording or
material no matter how little additional significance they
may add to the word “Brute” per se). Therefore, unlike a
situation involving an arbitrary or fanciful mark, the
addition of other matter to a laudatory or suggestive word
may be enough to distinguish it from another mark. In re
Hunke & Jocheim, 188 USPQ 188, 189 (TTAB 1975).
It seems both logical and obvious to us
that where a party chooses a trademark
which is inherently weak, he will not
enjoy the wide latitude of protection
afforded the owners of strong
trademarks. Where a party uses a weak
mark, his competitors may come closer
to his mark than would be the case with
a strong mark without violating his
rights. The essence of all we have
said is that in the former case there
is not the possibility of confusion
that exists in the latter case.

Sure-Fit Products Company v. Saltzson Drapery Company, 254
F.2d 158, 117 USPQ 295, 297 (CCPA 1958). Under these
circumstances, marks comprising or containing the word
“Ultra” in the medical field should be accorded a narrow
scope of protection.

Serial No. 77888336
13
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988).
In comparing the marks, we note that the marks are
similar in that they have in common the word “Ultra.”
However, as discussed above, the word “Ultra” has a
laudatory or suggestive meaning, and in the circumstances
of this case, the inclusion in both marks of this laudatory
element is not a sufficient basis for finding likelihood of
confusion. Rather, the marks have different meanings and
engender different commercial impressions. As indicated
above, applicant’s mark ULTRA means “going beyond what is
usual or ordinary; excessive; extreme.” When “Ultra”
stands alone as a mark, it engenders the commercial
impression of “the best.” Registrant’s mark ULTRA SOFT, on
the other hand, means extremely comfortable or extremely
Serial No. 77888336
14
gentle and therefore engenders a different commercial
impression from applicant’s mark. These differences in
meaning and commercial impression between applicant’s mark
ULTRA and registrant’s mark ULTRA SOFT and design, given
the weakness of the word “Ultra,” are sufficient to
distinguish the marks.
The examining attorney contends that “[a]pplicant’s
mark ULTRA is similar to the Registered Mark, ULTRASOFT,
because both contain the dominant feature ULTRA.”7 We
disagree with the premise that the word “Ultra” is the
dominant element of the registered mark. Registrant’s mark
is a unitary term. The word “Ultra” modifies the word
“Soft” to convey the meaning that registrant’s face masks
are very gentle or comfortable. The dictionary definitions
using the word “Ultra” noted above (e.g., ultraclean,
ultralight, and ultrapure) corroborate this finding.
D. Balancing the du Pont factors.
Despite the fact the goods at issue are identical,
because the word “Ultra” is a laudatory term, the fact that
it is common to both applicant’s and registrant’s mark is
not a sufficient basis to find confusion, particularly
because the marks ULTRA and ULTRA SOFT and design have

7 Examining Attorney’s Appeal Brief, unnumbered page 3.
Serial No. 77888336
15
different meanings and engender different commercial
impressions. Accordingly, we find that applicant’s mark
ULTRA for “surgical face masks” is not likely to cause
confusion with the mark ULTRA SOFT and design for “face
masks for medical, dental and veterinary use.” In saying
this, however, we wish to make clear we consider “Ultra” to
be a suggestive or laudatory term for medical goods that is
entitled to only a narrow scope of protection or
exclusivity of use, such that if a registration issues to
applicant it will also be entitled to a limited scope of
protection.
Decision: The refusal to register is reversed.