IKA - Werk GmbH & Co. KG

Trademark Trial and Appeal BoardOct 18, 2019

86679551 (T.T.A.B. Oct. 18, 2019)

This Opinion is not a Precedent of the TTAB Mailed: October 18, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re IKA - Werk GbmH & Co. KG _____ Serial No. 86679551 _____ John J. O’Malley of Volpe and Koenig, P.C., for IKA - Werk GmbH & Co. KG. Amy L. Kertgate, Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Bergsman, Ritchie, and Coggins, Administrative Trademark Judges. Opinion by Ritchie, Administrative Trademark Judge: IKA - Werk GmbH & Co. KG (“Applicant”) seeks registration on the Principal Register of the mark ROTAVISC, in standard characters, for “Scientific research and laboratory apparatus, namely, rheometers and viscometers; viscometer; rotational rheometer for measuring the viscosity, viscoelasticity, temperature and pressure of Serial No. 86679551 - 2 - fluids,” in International Class 9.1 The Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on the prior registration of the mark ROTOVISCO, in typed drawing form,2 for, “Apparatus for measuring the viscosity of liquids-namely, a viscometer,” in International Class 9.3 When the refusal was made final, Applicant filed a timely appeal. Both Applicant and the Examining Attorney have filed briefs. We affirm the Section 2(d) refusal to register. I. Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of 1 Serial No. 86679551, filed on June 30, 2015, based upon Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), alleging Applicant’s bona fide intent to use the mark in commerce. 2 See TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”) § 807.03(i) (October 2018) (“Prior to November 2, 2003, ‘standard character’ drawings were known as ‘typed’ drawings. The mark on a typed drawing was required to be typed entirely in capital letters. A typed mark is the legal equivalent of a standard character mark.”). 3 Registration No. 1007084, registered March 18, 1975. Sections 8 and 15 affidavits accepted and acknowledged. Renewed three times. Serial No. 86679551 - 3 - differences in the essential characteristics of the [goods or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “Not all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)). A. The Goods and Channels of Trade We consider first the respective goods as identified in the application and the cited registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014) (goods as identified in involved application and cited registration compared). Both the application and the cited registration identify “viscometer/s.” Applicant acknowledges: It is well settled that the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in Applicant’s application vis-à-vis the goods and/or services recited in the Cited Registration.4 It is indeed axiomatic that we must look at the goods as identified. See Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an 4 26 TTABVUE 13. Serial No. 86679551 - 4 - applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed.” (citations omitted)). Applicant goes on to argue, however: In particular, Applicant’s Mark covers laboratory products that are specifically designed for and directed towards highly trained and sophisticated specialists. In stark contrast, upon information and belief, the Cited Registration does not even remotely cover goods directed to such consumers.5 The identified viscometers are legally identical. In addition, the Examining Attorney has submitted evidence of both registrations and web pages from third parties that offer for sale under the same mark goods identified in both the application and the cited registration, such as rheometers and viscometers, by companies such as Canon, Brookfield, Cole-Parmer, Grace Instrument, fann, and ThermoFisher Scientific.6 As for the channels of trade, when as here, the goods are identical in part, they are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). Thus, without regard to Applicant’s arguments and evidence of marketplace use, we must presume that the trade channels and classes of purchasers are the same for both the viscometers identified in the application and for the 5 26 TTABVUE 13. To the extent this argument is meant to address the fourth du Pont factor, we address that, infra. 6 Evidence of third-party, use-based registrations is attached to the May 24, 2016 Final Office Action, at 4-18, and evidence of third-party Internet use is attached at 21-61. Serial No. 86679551 - 5 - viscometers identified in the cited registration. Web evidence submitted by the Examining Attorney further shows overlapping channels of trade and classes of consumers for other goods identified in the cited registration and the application.7 We find that the second and third du Pont factors weigh heavily in favor of finding a likelihood of confusion. B. The Marks We next compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73 USPQ2d at 1692. 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 terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721. Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). Where, as here, the marks appear on identical goods, the degree of similarity between the marks necessary to support a finding of likely confusion declines. Bridgestone Ams. Tire Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 7 In addition to the web pages cited above, which show viscometers and rheometers offered for sale under the same mark, the Examining Attorney included further evidence of them being sold by the same retailers, attached to the May 24, 2016 Final Office Action, at 64-77. Serial No. 86679551 - 6 - 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). The mark in the cited registration is ROTOVISCO and Applicant’s mark is ROTAVISC. Both marks contain the similar lead terms “ROTO,” which is listed as an acronym for “rotation,” and “ROTA,” which is derived from the Latin rota, for “wheel.”8 Both continue with “VISC” or “VISCO,” a derivative or shortening of the term “viscous” or “viscosity” as measured by the viscometers and rheometers identified in the application and the cited registration. In this regard, the record contains ample evidence that these instruments may contain rotational functions.9 While the cited mark may be suggestive, there is no evidence that it is commercially weak. Thus, the marks are highly similar in sight, sound, connotation, and commercial impression. The first du Pont factor also favors finding a likelihood of confusion. C. Conditions of Sale Applicant argues that we should consider the sophistication and degree of purchaser care likely to be exercised by the relevant consumers. As noted above, Applicant argues that its goods are “laboratory products that are specifically designed for and directed towards highly trained and sophisticated specialists.”10 8 See evidence attached to May 24, 2016 Final Office Action, at 88-92. 9 See Applicant’s identification of goods (“rotational rheometer for measuring the viscosity, viscoelasticity, temperature and pressure of fluids),” and evidence attached to October 13, 2015 Office Action, at 8, 12, 28, and May 24, 2016 Final Office Action, at 56, 61, 67. 10 26 TTABVUE 13. Serial No. 86679551 - 7 - Based on the identifications of goods, and on information submitted into the record by the Examining Attorney that includes price listings for viscometers at over $2,000 and rheometers listed at over $17,000,11 we may expect that consumers of Applicant’s and Registrant’s identified goods are likely to exercise a certain degree of care in selecting these instruments. Nevertheless, it is well-established that even sophisticated consumers are not immune from source confusion where, as here, the goods are legally identical and the marks are highly similar. See Cunningham, 55 USPQ2d at 1846. Overall, we find the fourth du Pont factor to slightly weigh against finding a likelihood of confusion. II. Conclusion After considering all of the arguments and evidence of record as they pertain to the relevant du Pont factors, we find that the goods are identical in part and otherwise related, and we presume that they would travel through some of the same channels of trade to some of the same classes of consumers. The marks are highly similar in sight, sound, connotation, and commercial impression. While we expect that consumers of these goods may exercise a heightened degree of care, this is outweighed by the highly similar marks used on identical goods, and we find, on the balance, that there is a likelihood of confusion between Applicant’s mark ROTOVISC and the registered mark ROTOVISCO, for their respective identified goods, which are legally identical and otherwise related. See HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 11 See evidence attached to May 24, 2016 Final Office Action, at 40, 42. Serial No. 86679551 - 8 - (Fed. Cir. 1990) (finding similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.