Evonik Goldschmidt GmbH

Trademark Trial and Appeal Board

Oct 1, 2012

No. 85014843 (T.T.A.B. Oct. 1, 2012)

Mailed:
October 1, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Evonik Goldschmidt GmbH
________

Serial No. 85014843
_______

William F. Lawrence and Marilyn Matthes Brogan of Frommer
Lawrence & Haug LLP for Evonik Goldschmidt GmbH.

Maureen Dall Lott, Trademark Examining Attorney, Law Office
117 (J. Brett Golden, Managing Attorney).
_______

Before Seeherman, Holtzman and Lykos, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Evonik Goldschmidt GmbH has appealed from the final
refusal of the trademark examining attorney to register
SK-INFLUX, in standard characters, as a trademark for
“chemical products for use in industry, namely, additives
and auxiliary agents for the production of cosmetic and
pharmaceutical products.”1 Applicant has stated that “SK”

1 Application Serial No. 85014843, filed April 15, 2010. The
application is based on Section 1(a) (use in commerce) and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 85014843
2
and “INFLUX” appearing in the mark has no significance in
the relevant trade or industry or as applied to the
goods/services listed in the application, or any
geographical significance.
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that applicant’s mark, as used for its goods, is likely to
cause confusion with the following marks, all owned by the
same entity, SK Holdings Co., Ltd.:

for, inter alia, chemical additives for use in
the manufacture of pharmaceuticals, cosmetics and
plastic molding compositions; chemical additives
for use in the manufacture of adhesives,
pharmaceuticals, textile, plastics and paints;
synthetic resins for use in the manufacture of
adhesive, paint, cosmetics and binder.2

asserts first use and first use in commerce as early as March 31,
2000. Applicant also asserts a priority filing date of March 2,
2010, under Section 44(d) of the Trademark Act, based on a German
application. Applicant subsequently submitted the German
registration, thus perfecting the Section 44(e) basis for the
application.
2 Registration No. 2759298, issued September 2, 2003. The
registration as originally issued was for goods in eight classes.
The registration for six of the classes was cancelled as a result
of the registrant’s failure to file a Section 8 affidavit of
continuing use for the goods in those classes. The goods that
Ser No. 85014843
3

for, inter alia, acetone and citric acid for
industrial purposes;3

and for, inter alia, medicines for sensory
organs, namely, central nervous system
stimulants; oral contrceptive pillls, gummed
medical taffeta plasters; mouthwashes for medical
purposes; breath refreshers for medical purposes;
vermifuges; Goulard water for use as an
astringent or anti-inflammatory lotion;
bronchodilating preparations; antiparasitic
preparations; eye-wash; tobacco-free cigarettes
for medical purposes; cod liver oil; agents
affecting metabolism; liniments; chilblain
preparations, digitalin; synthetic narcotics,
anesthetics; agents affecting perpheral nervous
system; agents for immunity adjustment; agents
for treating physically caused lesions; and
oriental medicines for women’s diseases, namely,
hormonal imbalances or fertility treatments;4

remain, and for which a Section 8 affidavit has been accepted,
are in Classes 1 and 4, and we have listed those goods in Class 1
that are most similar to the goods in applicant’s application.
3 Registration No. 3422863, issued May 6, 2008. This
registration lists hundreds of items in Class 1. The examining
attorney has discussed and submitted evidence to show the
relatedness of applicant’s goods to the citric acid and acetone
listed in the identification, and we therefore will not burden
this opinion with a multi-page listing of the entire
identification.
4 Registration No. 3411705, issued April 15, 2008. The
registration is for a very large number of goods in Class 5, and
we have listed a small number of the items that are in the nature
of pharmaceutical products. The examining attorney has stated
that the refusal with respect to this registration is limited to
applicant’s “chemical products for use in industry, namely,
additives and auxiliary agents for the production of
pharmaceutical products,” i.e., not the additives and auxiliary
agents for the production of cosmetics.
Ser No. 85014843
4

Registration No. 3422863 includes the description
statement, “The mark consists of the color red appearing in
the inside of the butterfly and in the letters SK. The
color white appears separating the color red from the color
orange which appears on the outside of the butterfly’s
wings.” (The description of the mark in Registration No.
3411705 is essentially the same, but instead of the
language “the inside of the butterfly,” it says
“the inside of the butterfly’s wings.”)
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
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).
We consider the issue of likelihood of confusion with
respect to each registration in turn.
Registration No. 2759298
Applicant’s identified additives for the production of
cosmetic and pharmaceutical products must be considered
legally identical to the chemical additives for the
manufacture of pharmaceuticals and cosmetics identified in
Ser No. 85014843
5
this registration and, because the goods are legally
identical, they must be presumed to travel in the same
channels of trade and be sold to the same classes of
customers. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in
the application and registration, goods and services are
presumed to travel in the same channels of trade to the
same class of purchasers). These two du Pont factors
obviously favor a finding of likelihood of confusion.
However, there are two other relevant du Pont factors that
do not, and in this case they outweigh the other factors.
The mark in Registration No. 2759298 consists of
letters in a design format in which the letters partially
appear on the reverse tonality background, and part of each
letter appears or is created by part of the other letter.
As a result, it is not clear that the letters are, in fact,
“SK”; for example, the mark may be perceived as the letter
“S” next to an abstract line design. Even if we accept
that consumers would view the letters in the mark as “SK,”
because the letters are depicted in a noticeable design
format, we cannot treat the mark as though it were merely
the letters SK, or that it would be pronounced as SK. “The
nature of stylized letter marks is that they partake of
both visual and oral indicia, and both must be weighed in
Ser No. 85014843
6
the context in which they occur.” In re Electrolyte
Laboratories, Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240
(Fed. Cir. 1990). As the predecessor to our primary
reviewing court stated in Georgia-Pacific Corp. v. Great
Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 699 (CCPA
1980), a mark that consists of highly stylized letters is
“in the gray region between pure design marks which cannot
be vocalized and word marks which are clearly intended to
be.”
Accordingly, we do not regard the letters “SK” in
applicant’s mark SK-INFLUX to convey the same impression as
“SK” in the cited mark, and cannot base a finding of
similarity on the mere fact that both marks can be said to
contain these letters. Because of the significant visual
differences between the marks, and the fact that a design
mark is viewed, not spoken, and therefore the cited
stylized letter mark cannot be treated simply as a word
mark, we find that the marks are different in appearance,
pronunciation, connotation and commercial impression. See
In re Electrolyte Laboratories, 16 USPQ2d at 1240.
Further, based on the identification of the goods,
which are chemical additives for the manufacture of
pharmaceuticals and cosmetics, the purchasers must be
deemed to be manufacturers of pharmaceuticals and
Ser No. 85014843
7
cosmetics. As such, they are considered to be
sophisticated purchasers, who would purchase these products
with care. Such purchasers are not likely to believe that
these goods emanate from a single source merely because the
letters in a design mark may be construed as “SK,” and “SK”
is the first element of applicant’s mark.
In view of the foregoing, the examining attorney’s
refusal of registration based on Registration No. 2759298
is reversed.
Registration No. 3422863
The mark in this registration, as well as in
Registration No. 3411705, is

and, unlike the mark in Registration No. 2759298, the mark
is not merely a design mark, but a mark in which it is
clear that the letters are “SK.” Further, these letters
comprise the only literal element of the mark, and are
larger and clearly separate from the design element which,
although it is described as a butterfly, is an abstract
design rather than a true image of a butterfly, such that
it does not clearly convey that it is a depiction of any
particular object. As a result, consumers are likely to
Ser No. 85014843
8
refer to or call for the registrant’s goods by the only
literal element in the mark, “SK.” See In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (if a mark
comprises both a word and a design, then the word is
normally accorded greater weight because it would be used
by purchasers to request the goods or services).
Accordingly, we treat “SK” as the dominant part of the
registered mark.
As for applicant’s mark, because a hyphen separates
the “SK” portion from the “INFLUX” portion, “SK” will be
seen as a separate element. Further, although applicant
has stated that “influx” has no significance in the
industry, we take judicial notice that the word “influx”
means “the act of flowing in; inflow,”5 and therefore, as
applied to additives, has a slight suggestive connotation.
Moreover, based on the record herein, “SK” must be
considered arbitrary. Although applicant has submitted
four third-party registrations which include the letters
“SK,” third-party registrations are not evidence of use of
the marks. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1259 (Fed. Cir. 2010). Third-party registrations may

5 Collins English Dictionary, unabridged, 10th ed. (2009). The
Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
Ser No. 85014843
9
be considered in the manner of dictionary definitions, to
show that a term has a particular significance in an
industry, id., but the four third-party registrations
submitted by applicant are for very different goods from
those at issue herein, such that they do not show that “SK”
has a significance for the registrant’s goods.6 Because SK
is the first part of applicant’s mark, and INFLUX has a
slight suggestive significance, we view SK as the dominant
part of applicant’s mark. See Palm Bay Imports v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, there is nothing improper in
stating that, for rational reasons, more or less weight has
been given to a particular feature of a mark, provided the
ultimate conclusion rests on a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d

6 Registration No. 3438660 for SK-Electronics and design is for,
inter alia photomasks for use in manufacture of electronic visual
display panels and other electronic devices; Registration No.
3425869 for SK-2000 is for adhesive for use with cellulose
insulation; Registration No. 3580685 for SKion is for, inter
alia, chemicals used in industry, science and photography, as
well as in agriculture, horticulture and forestry, fire
extinguishing compositions, and chemical substances for
preserving food stuffs; Registration No. 3583617 for SKK and
design is for custom manufacture of compression moulded
pharmaceutical preparations for others.
Ser No. 85014843
10
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Therefore, in
comparing the marks, we give greater weight to the letters
“SK” in the registrant’s mark, and to the “SK” portion of
applicant’s mark, although we hasten to add that we are not
comparing only these elements, but are considering the
marks as a whole. Because of the manner in which “SK”
appears in applicant’s mark, it gives the impression of a
house mark, with “INFLUX” indicating a product line. As a
result, those who are familiar with the registrant’s SK and
design mark are likely to believe, if the mark is used on
goods that are the same or similar to the registrant’s,
that the goods emanate from the same source.
In concluding that the marks are similar, we have
considered applicant’s various arguments, but are not
persuaded thereby. The cases relied on by applicant, in
which no confusion was found despite a common element, are
inapposite. In those cases, the common element was
descriptive or highly suggestive, and therefore was not a
sufficient basis on which to predicate a finding of
likelihood of confusion. In this case, there is no
evidence that “SK” is not an arbitrary mark. Applicant has
also argued that its mark would be pronounced SKIN FLUX,
and therefore it differs in pronunciation and connotation
from the cited mark. Although it is possible that some
Ser No. 85014843
11
consumers might run the mark together in order to create a
shorter, two-syllable term, it is more probable that
consumers would treat the hyphen in the mark, SK-INFLUX, as
indicating that these are separate elements, and would view
the mark as consisting of the letters S and K and the word
Influx and therefore pronounce the mark as the four
syllable S-K-Influx,. Certainly in light of the role that
hyphens play in the English language to separate elements
of a term, we cannot accept applicant’s unsubstantiated
assertion that consumers would view and pronounce the mark
as applicant suggests. Because of the common element SK in
both marks, and because INFLUX in applicant’s mark gives
the impression of a subsidiary product line mark, we find
that the element INFLUX in applicant’s mark is not
sufficient to distinguish the marks, and that overall the
marks are similar in appearance, pronunciation, meaning and
commercial impression.7
We turn next to the question of the similarity of the
goods. The examining has pointed out that this cited

7 Applicant makes the argument that “a simple side by side
viewing” of the cited mark in contrast to its mark demonstrates
the significant differences in the marks. Reply brief, p. 3.
However, side-by-side comparisons are not the appropriate test.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1976)(“it is well established that the test to be applied in
determining likelihood of confusion is not whether marks are
distinguishable on the basis of a side-by-side comparison”).

Ser No. 85014843
12
registration includes citric acid and acetone, and has
submitted evidence showing that these items are used as
ingredients in cosmetics and pharmaceuticals. We note that
the identification for citric acid in the identification is
for “citric acid for industrial use,” and therefore we
cannot treat this item as being for cosmetic and
pharmaceutical use, which is the field in which applicant’s
identified additives and auxiliary agents for the
production of cosmetic and pharmaceutical products are
used. However, the “acetone” identified in the cited
registration is not limited to any particular field, and
the evidence submitted by the examining attorney shows that
this product is used in cosmetic products. For example,
the website for Spectrum Chemicals and Laboratory Products
states that it is “a major manufacturer and distributor of
cosmetic ingredients and cosmetic chemicals used in the
production of personal care, cosmeceutical, toiletry and
fragrance products,” and lists, under the “Cosmetic
Chemicals & Cosmetic Ingredients” that it supplies,
“acetone NF” and “acetone reagent ACS.”8 An article in

8 www.spectrumchemical.com, attached to July 21, 2011 Office
action, pages 24 and 29.
Ser No. 85014843
13
DERMAdoctor, which discusses cosmetic ingredients, lists
“acetone” under “Common Ingredients.”9
Because the registrant’s identification is not
restricted as to the use of the various chemicals, and
because the evidence shows that acetone may be used in
cosmetics, the registrant’s identified goods must be deemed
to be, in part, additives for the production of cosmetic
products, and therefore applicant’s and the registrant’s
goods must be considered to be in part identical.
Applicant argues that there is no evidence that the
purchasing decisions for the applicant’s and the
registrant’s goods would be made by the same people.
However, to the extent that the goods are legally
identical, they must be presumed to travel in the same
channels of trade and be sold to the same classes of
purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
(TTAB 1994).
The du Pont factors of the similarity of the goods and
the channels of trade favor a finding of likelihood of
confusion.
The next factor we consider is the sophistication of
the purchasers. As we have previously discussed, the

9 www.dermadoctor.com, attached to January 3, 2011 Office
action, p. 158.
Ser No. 85014843
14
purchasers must be considered sophisticated and careful.
However, even careful consumers can be confused if similar
marks are used on identical goods since, even though they
would be aware of the differences in the marks, they would
believe those differences represented variant brands
emanating from a single source. As for applicant’s
argument that consumers would be “well aware that the
product is coming from the Applicant company,” brief, p. 7,
this apparently refers to applicant’s earlier comment that
“consumers would recognize Applicant’s goods as coming from
the Applicant source based in Germany, in contrast to the
goods from the Korea-based owner of the cited
registrations.” Brief, p. 7. In other words, applicant is
relying on the extrinsic fact of the geographic locations
of the applicant and registrant to show that confusion is
not likely. However, we must determine whether applicant’s
mark is likely to cause confusion with the registrant’s
mark, not whether consumers might be able to obtain other
information as to the source of the goods. For example,
the cases are legion that information on labels that states
the company name or house mark of the manufacturer will not
permit the manufacturer to register a mark that is
confusingly similar to another party’s mark. See, for
example, In re 1st USA Realty Professionals Inc., 84 USPQ2d
Ser No. 85014843
15
1581, 1587 (TTAB 2007). We also point out that the
registrant is not restricted to manufacturing its products
in Korea, and certainly in today’s global economy with its
multinational corporations, consumers are likely to believe
that a company could have branches or subsidiaries in more
than one country. In this connection, we note that the
website for Siegfried states that it has pharmaceutical
production facilities located in Switzerland, Germany,
Malta and the U.S.A., and subsidiaries in China and
Taiwan.10
We affirm the refusal of registration based on this
registration.
Registration No. 3411705
The mark in this registration is the same as that in
Registration No. 3422863. The goods, however, are not as
close to applicant’s goods as those in Registration No.
3422863. Accordingly, we need not engage in an extended
analysis of whether applicant’s use of its mark is likely
to cause confusion with this registration. If confusion is
likely with Registration No. 3422863, applicant’s mark must
be refused registration on that basis, and there is no need
to also consider whether the refusal of registration on the

10 www.siegfried.ch, attached to May 25, 2010 Office action at
page 82.
Ser No. 85014843
16
basis of Registration No. 3411705 must also be affirmed.
On the other hand, if applicant’s mark were not likely to
cause confusion with Registration No. 3422863, then,
because the goods in Registration No. 3411705 are not as
close to applicant’s goods as are the goods in Registration
No. 3422863, a fortiori there can be no likelihood of
confusion with respect to Registration No. 3411705. See In
re Hartz Hotel Services Inc., 102 USPQ2d 1150, 1151 (TTAB
2012) (if confusion is likely between applicant’s mark and
a registration for same services, there is no need to
consider the issue of likelihood of confusion with a
registration for other goods and services, while if there
is no likelihood of confusion with respect to mark for
identical services, there would be no likelihood of
confusion with respect to a registration for goods and
services that are not identical).
Decision: The refusal of registration is affirmed on
the basis of likelihood of confusion with Registration No.
3422863.