Evonik Goldschmidt GmbH

Trademark Trial and Appeal BoardFeb 1, 2013

No. 85014843re (T.T.A.B. Feb. 1, 2013)

Mailed: February 1, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Evonik Goldschmidt GmbH ________ Serial No. 85014843 _______ Request for Reconsideration _______ 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: On December 13, 2012, Evonik Goldschmidt GmbH has filed a request for reconsideration of that portion of the Board’s October 1, 2012 decision1 affirming the examining attorney’s refusal of registration on the basis that 1 Applicant was granted an extension of time to file the request for reconsideration. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 85014843 2 applicant’s use of its mark SK-INFLUX is likely to cause confusion with Registration No. 3422863 for the mark (hereafter SK AND BUTTERFLY DESIGN) for, inter alia, acetone and citric acid for industrial purposes.2 The examining attorney had also refused registration on the basis of two additional registrations owned by the same registrant. Registration No. 3411705 is for the same mark, for a variety of goods in Class 5. In view of our decision affirming the refusal based on Registration No. 3422863, we declined to consider the refusal based on Registration No. 3411705, stating that: ... 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 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. 2 This registration lists hundreds of items in Class 1. The examining attorney discussed and submitted evidence to show the relatedness of applicant’s goods to the citric acid and acetone listed in the identification, and we confined our analysis in our opinion to those particular goods. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods in the application). Ser No. 85014843 3 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. p. 15-16. We also reversed the refusal based on Registration No. 2759298 for (hereafter LETTER DESIGN MARK) 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.3 Applicant does not seek reconsideration of our decision with respect to the refusals based on the latter two registrations. 3 The registration, as it currently stands (some of the original classes having been cancelled for failure to file a Section 8 affidavit of use), are for goods in Classes 1 and 4; the above- listed goods in Class 1 are most similar to the goods in applicant’s application. Ser No. 85014843 4 Applicant argues that for the same reasons the Board reversed the refusal of registration for Registration No. 2759298 for the Letter Design mark, namely the du Pont4 factors of the (dis)similarity of the marks and the sophistication of the customers, we should have reversed the refusal of registration based on Registration No. 3422863 for the SK and butterfly design mark. With respect to the factor of the similarity of the marks, applicant essentially argues that its mark is as different from the SK and butterfly design mark in Registration No. 3422863 as it is different from the Letter Design mark in Registration No. 2759298, and because we found that applicant’s mark was not confusingly similar to the Letter Design mark, we should find that applicant’s mark is not confusingly similar to the SK and butterfly design mark. In our October 1, 2012 decision we discussed at some length why we considered applicant’s mark to be similar to the SK and butterfly design mark, while different from the Letter Design mark. In particular, at pages 5-6, we stated that: The mark in Registration No. 2759298 [the Letter Design mark] consists of letters in a design 4 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Ser No. 85014843 5 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 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. On the other hand, we specifically explained that the SK and butterfly design mark was different from the Letter Design mark, in that it was clear that in the former mark the letters are “SK.” We also explained that these letters Ser No. 85014843 6 comprise the only literal element of the mark, and are larger and clearly separate from the design element which, although it is described in the registration 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. We therefore concluded that consumers are likely to refer to or call for the registrant’s goods by the only literal element in the mark, “SK,” and treated “SK” as the dominant part of the SK and butterfly design mark. We find no error in our conclusion that applicant’s mark is confusingly similar to the SK and butterfly design mark, even though it is not confusingly similar to the Letter Design mark. Applicant also takes issue with our statement that “based on the record herein, ‘SK’ must be considered arbitrary,” p. 10, pointing out that the registrant’s name is SK Holdings Co., Ltd., and therefore the SK refers to the registrant. Although this may be the derivation of SK as used in the registrant’s mark, there is no evidence in the record that the letters SK have any meaning in general or in the industry, and therefore they are considered arbitrary. We assess the likelihood of confusion based on the marks alone, and not other information such as a Ser No. 85014843 7 party’s corporate or trade name, since such information is not part of the mark and may not be known to purchasers. As we pointed out in the opinion, p. 14, in response to applicant’s argument that consumers would know the geographic origin of its goods: ... 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 1581, 1587 (TTAB 2007). The same point holds true for extrinsic information regarding the registrant. Thus, as far as the registrant’s mark is concerned, the letters SK appearing in it are arbitrary. Many of applicant’s arguments regarding the factor of the similarity of the marks are merely a repetition of those it made in its appeal brief, and we have not discussed them herein. A request for reconsideration should not be a reargument of the points presented in the requesting party’s brief on the case. See TBMP § 543 (ed ed. rev. 2012). Ser No. 85014843 8 Applicant also argues that the Board did not give proper weight to the factor of the sophistication of the purchasers. In our decision we specifically found that the purchasers must be considered sophisticated and careful. However, we also found that the goods were identical, and stated that ... 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. p. 14. Accordingly, we gave proper weight to the factor of the sophistication of the purchasers, but found, for the reasons stated, that such sophistication was not likely to avoid confusion. After considering all of applicant’s arguments, including those not specifically addressed herein, we find that our decision affirming the refusal of registration on the basis of Registration No. 3422863 for SK and butterfly design was proper. The request for reconsideration is denied.