Intercorr Int’l.

Trademark Trial and Appeal Board

Feb 3, 2004

No. 78089697 (T.T.A.B. Feb. 3, 2004)

Paper No. 11
TJQ
Mailed:2/3/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Intercorr International, Inc.
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Serial No. 78089697
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Raymond R. Ferrera for applicant.
Priscilla Milton, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Quinn, Hohein and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Intercorr International, Inc. has appealed from the
final refusal of the Trademark Examining Attorney to
register the mark CORRMETER for “electronic instruments,
namely, sensors, analyzers and processors useful with data
acquisition and control systems for monitoring and
processing data regarding various electrochemical
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78089697
2
phenomena, namely, modality data, pitting factors, scaling
factors, and corrosion rates.”1
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, when used on its identified goods, so
resembles the mark CORROSOMETER for “electrical instrument
to measure in millionths of an inch the progress of
corrosion on tested specimens,”2 as to be likely to cause
confusion or mistake or deception.
Applicant and the Examining Attorney have filed
briefs.3 An oral hearing was not requested.
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
1 Application Serial No. 78089697, filed October 23, 2001,
alleging first use anywhere on June 15, 2000, and first use in
commerce on December 15, 2000.
2 Registration No. 665713, issued August 12, 1958; second
renewal.
3 Applicant, in its brief, contends that certain points raised by
the Examining Attorney in her denial of applicant’s request for
reconsideration were improper because they were not raised
earlier in the prosecution. Applicant suggests that the
application should be remanded to the Examining Attorney “for
further discussion based on the merits of said new arguments.”
A remand is not warranted under these circumstances. The
Examining Attorney, in responding to a request for
reconsideration, is permitted to raise new arguments and
introduce additional evidence to support the refusal to register.
TBMP §1204. Thus, there is nothing improper in the Examining
Attorney’s actions.
Ser No. 78089697
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1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
With respect to the goods, it is well established that
the goods of the parties need not be similar or
competitive, or even that they move in the same channels of
trade, to support a holding of likelihood of confusion. It
is sufficient that the respective goods of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same source. See In re International
Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant points to a number of distinctions between
the goods, including that the registrant’s product is
incapable of performing the complex tasks handled by
Ser No. 78089697
4
applicant’s product. Although applicant’s goods are
specifically different from the goods identified in the
cited registration, the question is whether purchasers are
likely to confuse the source of the goods, not the goods
themselves.
In this case, both applicant and the registrant sell
instruments for checking the progress or rate of corrosion.
These products appear to move in the same channels of trade
and would be purchased by the same classes of purchasers.
The record includes articles retrieved from the NEXIS
database showing that the same articles make reference to
instruments that measure corrosion and to instruments that
monitor corrosion. The Examining Attorney also has made of
record two registrations, one owned by the registrant (not
cited as a Section 2(d) bar herein) and one owned by a
third party, which show that instruments for measuring
corrosion and instruments for monitoring corrosion are the
types of goods which have been registered by individual
entities under a single mark. Such registrations, which
individually cover a number of different items and which
are based on use in commerce, serve to suggest that the
listed goods are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993). Accordingly, consumers could well
Ser No. 78089697
5
believe that applicant's identified electronic corrosion
monitoring instruments and the registrant's electrical
corrosion measuring instruments emanated from the same
source if they were offered under similar marks.
With respect to the marks, applicant points out that
the registrant’s mark includes three additional letters and
two additional syllables. As acknowledged by applicant,
however, there is no correct pronunciation of a trademark.
The similarities in sound, appearance and meaning between
the marks CORROSOMETER and CORRMETER outweigh any
differences. The marks are similarly constructed in that
both begin with a term suggesting “corrosion” followed by
the identical term “meter.” Although the marks are
suggestive, applicant’s mark and the registrant’s mark
convey the same meaning, that is, a meter that checks on
corrosion. We also note that the record is devoid of any
evidence of third-party uses of similar marks in the trade.
We recognize that the technical nature of the goods
dictates that purchasers are likely to be sophisticated
and/or have educational advanced degrees, and that this
factor weighs in applicant’s favor. Nonetheless, given the
similarities between the marks and the goods, even careful
purchasers are likely to be confused. Purchasers will
Ser No. 78089697
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assume that one mark is a variant of the other, with each
identifying goods coming from a common source.
Applicant makes the point that a metal plate, having
artwork and the name of applicant’s company, is attached to
each of its products. According to applicant, this
“marketing technique” still further reduces the likelihood
of confusion between the marks. Suffice it to say,
however, that in deciding likelihood of confusion, we
compare the marks as shown in the application and the cited
registration.
In urging that the refusal be reversed, applicant
asserts that it and registrant “have had an ongoing
business relationship over the course of several years, and
that the prior registrant is fully aware of the Applicant’s
ongoing use of the CORRMETER mark in commerce.” Applicant
goes on to state that “[t]o date, the prior registrant
continues to do business with the Applicant, and has never
complained of or voiced any concern regarding Applicant’s
commercial activities” and that the “prior registrant has
also never advised Applicant of even a single instance of
any actual or potential market confusion regarding the
parties’ respective products over a several year period.”
(brief, p. 3) During the prosecution of the application,
applicant earlier indicated that it had “initiated
Ser No. 78089697
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discussions considered likely to lead to execution of a
consent agreement between the parties which would likely
bear on the registrability of the presently claimed mark.”
(response, July 22, 2002). An agreement, however, was
never submitted for consideration.
Applicant’s assertions, without any evidentiary
support, are not persuasive of a different result. There
is no consent agreement of record, and no presumption can
be made that the registrant consents to applicant’s use and
registration of the mark or that the registrant admits that
confusion among purchasers by applicant’s concurrent use of
the mark is unlikely. In re Majestic Distilling Company,
Inc., supra at 1205-1206.
In sum, in view of the similarities between the marks
and the goods sold there under, we find that confusion is
likely to occur in the marketplace.
Decision: The refusal of registration is affirmed.
Ser No. 78089697
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