L-com, Inc.v.Elecom Co., Ltd.

Trademark Trial and Appeal Board

Aug 27, 2012

No. 91192293 (T.T.A.B. Aug. 27, 2012)

Mailed: August 27, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

L-com, Inc.
v.
Elecom Co., Ltd.
_____

Opposition No. 91192293
to application Serial No. 77658488
filed on January 28, 2009
_____

Theodore Naccarella and Gregory Bernabeo of Saul Ewing LLP
for L-com, Inc.

Curtis B. Hamre and Sarah G. Voeller of Hamre, Schumann,
Mueller and Larson, P.C. for Elecom Co., Ltd.
______

Before Bucher, Kuhlke and Shaw, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Elecom Co., Ltd., seeks registration of the
mark for goods identified as:
Data processing equipment, namely, computer mouse;
computer keyboards; remote control apparatus for
radios, televisions, stereos and PCs; Game
controllers for computer games; webcams;
loudspeakers; headphones; microphones; computer
monitors; computer memories; memory cards in the
nature of computer hardware; memory cards, namely,
reading and writing devices for memory cards; hard
disk drives (HDD); optical disc drives; magneto
optical drives for computers; floppy discs drives
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91192293
2
for computers; USB hubs; computer peripheral
devices; computer network peripherals; computer
cables; cables for computer networks; audiovisual
cables; coaxial cables; mouse pads; wrist rests
for use with computers; cases for optical discs;
cases for digital cameras; camera cases; cases for
memory cards; protective carrying cases for
portable digital audio players; cases for hard
disc drives for computers, portable CD/DVD drives,
adapters, computer mouse, and other computer
peripheral devices; fitted plastic films known as
skins for covering and providing a scratch proof
barrier or protection for electronic devices,
namely, MP3 players, mobile telephones, smart
telephones, digital cameras, global positioning
systems and personal digital assistants; apparatus
for recording, transmission or reproduction of
sound and images; blank magnetic data carriers;
calculating machines, data processing equipment
and computers; modem; portable telephones;
telephone receivers; telephone transmitters;
cleaning apparatus for sound recording discs;
computer programs recorded on data media for
working computer peripherals; downloadable
computer software for working computer
peripherals; computer software recorded on data
media for working computer peripherals; navigation
apparatus for vehicles in the nature of on-board
computers; television receivers in the nature of
TV sets; television tuners; dictating machines;
sound recording apparatus; karaoke players;
notebook and laptop computers; amplifiers;
telephone wires; tripods for cameras; sound
alarms; antennas in the nature of aerials; bags
for laptop personal computers in the nature of
computer carrying cases, in International Class 9
and;

Attaché cases; bags in the nature of envelopes and
pouches of leather for merchandise packaging;
backpacks; briefcases; suitcases; traveling bags;
traveling trunks; trunks in the nature of luggage,
in International Class 18.1

1 Application Serial No. 77658488 filed on January 28, 2009,
based on an allegation of a bona fide intention to use the mark
in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. §
1051(b) and reliance on a foreign registration under Section
44(e) of the Trademark Act, 15 U.S.C. § 1126(e).
Opposition No. 91192293
3
Opposer, L-com, Inc., opposed registration of
applicant’s mark on the grounds that, as applied to
applicant’s goods, the mark so resembles opposer’s
previously used and registered L-COM marks for a wide
variety of computer and general electrical connectivity
products and accessories, including, electrical cables,
adapters, connectors, cables, etc. as to be likely to cause
confusion, to cause mistake, or to deceive under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d).2 Opposer pleaded
ownership of Registration No. 2697029 for the mark L-COM (in
typed form) for:
Wire ties, in International Class 6;

Modular crimp/termination tools; coaxial
crimp/terminatin tools; fiber termination tools,
in International Class 8;

Computer and communication related products and
accessories—namely, electrical cables; adapters;
connectors; enclosures; switches; network
switches; rack equipment, namely racks, rack
drawers, rack shelves, rack power distributors,
rack panels for accepting electrical connectors,
rack sub-panels, rack panel extenders, rack cable
managers, and rack bases; modular wiring aids,
network interface cards; baluns, namely, d-
subminiature, coaxial, fiber, modular and serial
connectors; plastic and metal universal electric
project boxes; blue boxes comprising compact die-
cast metal housings for electrial applictions;
gender changers in the nature of electric compact
auto switches and electrical adapters; data d-
subminature coaxial, modular, IEEE, fiber optic,
token ring, and multi-port adapters; coaxial

2 The pleading also included allegations pertaining to the claim
of dilution; however, this claim was dismissed with prejudice on
August 3, 2011.

Opposition No. 91192293
4
transfer, modular, data/data-transfer and video
switches; wall plates; jacks; surface mounting
boxes; junction boxes; cables; cords; plugs; and
test/testing equipment, namely, electrical cable
and cord testers, fiber optic cable testers, and
electrical continuity testers, in International
Class 9;

and Registration No. 1691214 for the following mark
for:

computer related products and accessories; namely,
electrical cables and adapters, crimp connectors,
plastic and metal enclosures; namely, instrument
cases, universal electrical project boxes, small
instrument boxes enclosures, blue boxes comprising
compact diecast metal housing for electrical
applictions, coaxial transfer switches, recessed
wall plates; namely, recessed wall plates, single
feed through adapter wall plates, dual feed
through adapter wall plates, line terminators,
mounting brackets, modular wiring aids comprising
wallplates, jacks, cables, cords, plugs, surface
mounting boxes, modular couplers, junction boxes,
modular adapters; namely, adapters with blank
inserts, coaxial adapters, modular kits comprising
electrical cables, connectors, adapters, jumper
wires, modular switch boxes, networking solutions
comprising central balun patch panels, coax balun
concentrator, central coax organizer, central
cable organizer, master balun integrator, module
patch panels, BNC coaxial baluns, two port coaxial
multiplexer, data line protectors, surge
protectors, modem protectors, lightning surge
protectors, power controllers, data line switch
boxes, printer buffers and sharers, data line
monitors, gender changers, electrical cables
including small computer system interface cables
and cable terminators, connector covers, connector
extenders, reverse adapters and bulkhead adapters
and right angle adapters and parts thereof, rack
panels, cable testers, breakout boxes, on-line
interruptible power apparatus and scanning
electrical cable testers, in International Class
9.3

3 Opposer also pleaded several applications which matured into
registrations preceding trial. See August 3, 2011 Board Order.
Opposition No. 91192293
5
By its answer, applicant denies the salient
allegations.4
EVIDENTIARY ISSUES/RECORD
We first address the parties’ cross-motions to strike
certain evidence, consideration of which was deferred until
this final decision. See Board Order dated December 12,
2011.
We begin by noting that the parties entered into a
stipulation concerning the introduction of evidence that
included the following stipulations:
1. Any evidence submitted in connection with the
parties’ cross motions for summary judgment can be
used in either parties’ Notice of Reliance....
3. Additional evidence can be used in either parties’
Notice of Reliance, provided that the additional
evidence is of the same type that was submitted in
connection with a motion for summary judgment.
Examples of these types of evidence include, for
example, declarations, web pages and catalog pages.
4. This stipulation relates to the admissibility of
evidence, and has no bearing on the weight to be
accorded to any evidence.

By its motion, opposer seeks to strike Appendices Nos.
63-92 submitted under applicant’s November 22, 2011, Notice
of Reliance. Appendices Nos. 63-86 are printouts of
webpages from various third-party websites, and Appendices
Nos. 87-92 are copies of selected pages from the file
histories of third-party oppositions and applications.

4 Applicant’ “affirmative defenses” are more in the nature of
amplifications of its denials. Applicant’s “estoppel” defense is
waived inasmuch as applicant did not provide argument on that
defense.
Opposition No. 91192293
6
Opposer argues that these documents were submitted to
demonstrate third-party “uses of trademarks allegedly
similar to the L-COM and ELECOM trademarks.” Opp. Mot. to
Strike p. 10. Opposer contends that these documents are
directly responsive to numerous of Opposer’s discovery
requests but had not been produced. Opposer argues that
“[d]ocuments not produced until after the start of trial
generally are stricken when the documents are within the
scope of documents requested, but not produced during
discovery.” Id.
During the discovery period, opposer requested
documents in applicant’s “possession, custody or control”
pertaining to third-party use of similar marks, knowledge of
third parties’ use of a similar designation, and any
investigation performed relating to the “likelihood of
confusion or similarity of the designation Elecom with any
other designation.”
Applicant responds that all documents pertaining to
third-party trademarks that were in its “possession, custody
or control” during discovery were disclosed as references
contained in a trademark search report. Further, while some
of the documents were not produced, they were not in
applicant’s custody or control until “preparation of
Opposition No. 91192293
7
Applicant’s Notice of Reliance.” App. Mot. to Strike p. 3.5
In addition, applicant argues that opposer was put on notice
about each of the applications and registrations that were
the subject of the selected pages from the file histories
submitted by applicant. Specifically, applicant contends
that each of these applications were addressed in
applicant’s requests for admissions wherein opposer admitted
that it “either did not oppose certain applications, or that
it entered into an agreement with the third-party
applicants.” App. Mot. to Strike p. 5. Finally, applicant
cross moves to strike “newly created tables and sales
reports.” App. Mot. to Strike p. 13.6
It is well established that, in Board proceedings, a
party is under no obligation to investigate third parties in
order to respond to discovery requests. Rocket Trademarks
Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011);
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657
(TTAB 2002); Sports Authority Michigan Inc. v. PC Authority
Inc., 63 USPQ2d 1782 (TTAB 2001). In addition, applicant’s
pretrial disclosures provided sufficient information to
comply with that rule. In view of the above, opposer’s

5 We note that these documents, although not submitted as part of
the summary judgment record, are of “the same type” as those
documents and, as such, are covered by the stipulation. Opposer
does not dispute this and only moves to strike based on the
failure to produce responsive documents.

Opposition No. 91192293
8
objection to these exhibits on the basis that the documents
were not previously produced in response to opposer’s
discovery requests is overruled and opposer’s motion to
strike is denied.
Turning to applicant’s cross motion, we first note that
applicant presented it, in essence, as a “conditional”
motion arguing that “[i]f [applicant’s] third party
information is to be excluded from consideration, as Opposer
requests, it is only fair that Opposer’s non-disclosed
evidence also be disregarded.” In view of our decision
denying opposer’s motion to strike, applicant’s “condition”
has been removed and its motion is rendered moot. We also
deny applicant’s motion on its merits inasmuch as the
documents applicant seeks to strike are demonstrative
exhibits (tables showing third-party registrations and
allegedly closely related goods, and various types of sales
reports) derived from previously disclosed underlying data.
Exhibits 3, 15-28 and 39 are in the nature of summaries that
fall within Fed. R. Evid. 1006 (“The contents of voluminous
writings, recordings, or photographs which cannot
conveniently be examined in court, may be presented in the
form of a chart, summary, or calculation.”). Further, with
regard to Exhibits 56-59, while these reports provide more

6 Applicant’s request that “the Board expressly prohibit Opposer
from attempting to conduct depositions during its rebuttal
testimony period” is moot.
Opposition No. 91192293
9
detailed information than the produced reports they are of
substantially the same nature as the disclosed data, and a
party is not required, in advance of trial, to disclose each
document or other exhibit it plans to introduce. Trademark
Trial and Appeal Board Manual of Procedure (TBMP) § 414 (3d
ed. rev. 2012). Finally, those documents that were
submitted in support of the prior motion for summary
judgment are clearly covered by the stipulation which
provides that “any evidence submitted in connection with the
parties’ cross-motions for summary judgment can be used in
either parties’ Notice of Reliance.”
In view of the above, the record includes the pleadings
and, by operation of Trademark Rule 2.122(b), the file of
the opposed application. In addition, opposer submitted, by
stipulation of the parties, testimony by declaration, with
exhibits, of Edward Caselden, opposer’s president and CEO,
Zbigniew Woronko, opposer’s Chief Operating Officer,
Christopher Long, opposer’s Senior Vice President Ecommerce
and Marketing, William Byrd, opposer’s Senior Business
Analyst, and Theodore Naccarella, opposer’s outside counsel.
Opposer also submitted a notice of reliance on status and
title copies of several of opposer’s pleaded registrations,
including Reg. No. 2697029, and file histories of certain
Board proceedings.
Opposition No. 91192293
10
Applicant submitted, by stipulation of the parties,
testimony by declaration, with exhibits, of Yutaka Yamamoto,
applicant’s General Manager of Business Operations, and
Sarah G. Voeller, applicant’s outside counsel. Applicant
also submitted a notice of reliance on various documents,
including application file histories, web pages from third-
party websites, web pages showing opposer’s goods offered
for sale under the L-COM mark in Japan, and discovery
responses.
THE PARTIES
Since approximately 1985, opposer has manufactured and
sold computer and communication connectivity products
(cables, connectors, adapters, etc.).7 Opposer also sells
products manufactured by others, including webcams, computer
monitors, USB hubs and computer keyboards.8 Opposer sells
its products via the Internet through its own website and
third-party websites such as Amazon.com, over the telephone,
through distributors and through retail outlets.9 Opposer's
consumers include distributors, retail outlets,
professionals in the computer and communication field, and

7 Caselden Dec. ¶ 4 (Appdx 2).

8 Woronko Dec. ¶ 3 (Appdx 3). Such products are sold under the
third-party’s mark and opposer’s L-COM mark as the reseller.

9 Woronko Dec. ¶ 8.

Opposition No. 91192293
11
non-professional consumers.10 The mark L-COM “was chosen
because it was a rough concatenation of the founder’s first
name, Al, and last name, Contarino [and] the connotation of
the ‘COM’ portion of the name was recognized by myself, Al,
and others as connoting computers and communication.”11 The
L-COM mark is opposer’s house brand and essentially every
product sold by opposer is sold under the house brand,
including products manufactured by others.12
Applicant sells “consumer-friendly, aesthetically-
pleasing ear buds, mouses, computer cases, CD holders,
etc.”13 Applicant has sold certain of its goods (mouses,
mouse pads, headphones, cables, etc.) in the United Sates
since 2006.14 The mark ELECOM was “intended as a
combination of the words ‘elegant computing.’”15
STANDING/PRIORITY
Because opposer has made its pleaded registrations,
including Reg. No. 2697029, of record and has shown that the
registrations are valid and subsisting and owned by opposer,

10 Woronko Dec. ¶ 9.

11 Caselden ¶ 5.

12 Caseldon Dec. ¶¶ 6-7; Woronko Dec. ¶ 15.

13 Yamamoto Dec. ¶ 4 (Appdx 1).

14 Naccarella Dec.¶ 4, Exhs. C-E (applicant’s responses to certain
interrogatories and requests for admission) (Appdx 33-36);
Yamamoto Dec. ¶ 8.

15 Yamamoto Dec. ¶ 7.

Opposition No. 91192293
12
opposer has established its standing to oppose registration
of applicant’s mark and its priority is not in issue as to
the goods and services in those registrations.16 See King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
In addition, opposer has proven its standing and
priority as to its common law rights in the mark L-COM as
used in connection with, inter alia, the following goods
and/or the wholesale/retail sales of such goods: antennas,
amplifiers, cases, computer monitors, computer keyboards,
and web cameras.17 Opposer’s first use dates for each of
these goods predate applicant’s January 28, 2009 filing date
and the earlier 2006 use date for certain of applicant’s
goods. Applicant does not challenge opposer’s priority as
to any of applicant’s identified goods. Applicant does
contend that opposer’s “asserted common law use is of the
design mark along with the words ‘Global
Connectivity’ or, in earlier items, a stylized ‘L-com
Connectivity Products’.” App. Br. p. 7-8. However, the
record also includes examples of L-COM depicted on the

16 Opp. NOR, Appdx 1.

17 Long Dec. ¶¶ 10-17 Exhs. F-1, F-2, K-1 (Appdx 11, 17-28) (these
exhibits include sales reports for leatherette cases from 1999-
2010 and catalogs from 2006-2010 showing cases for sale); Woronko
Dec. Exhs H-J (Appdx 45-49).

Opposition No. 91192293
13
packaging in block lettering without a design.18 As
discussed above, the record shows that opposer has
continuously sold such goods in the United States via the
Internet (from its own and third-party websites), via
telephone and retail stores.19
Accordingly, we turn to the question of likelihood of
confusion.
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) 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 and 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 begin with the strength of opposer’s L-COM mark in
order to determine the scope of protection to be accorded
opposer’s mark as we analyze the other du Pont factors.
The strength of a mark “may be measured indirectly, among
other things, by the volume of sales and advertising
expenditures of the goods traveling under the mark, and by
the length of time those indicia of commercial awareness

18 See, e.g., Woronko Dec. Exh. B (Appdx 5) (2010 Master catalog);
Exh. D (Appdx 7) (label on box Bates no. 005912); Woronko Dec.
Exh. K 2005 Master Catalog (Appdx 50) (see, Bates no. 012417 page
151 of catalog showing L-COM on page displaying computer
keyboards with and without monitors).

19 See Woronko and Long Declarations.
Opposition No. 91192293
14
have been evident.” Bose Corp. v. QSC Audio Products, Inc.,
293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Although raw numbers of product sales and advertising
expenses may have sufficed in the past to prove fame of a
mark, raw numbers alone may be misleading. Some context in
which to place raw statistics may be necessary. Bose Corp.,
63 USPQ2d at 1309.
In support of its assertion of fame, opposer has shown
that it has used the L-COM house mark on or in connection
with virtually all of its goods for over 25 years.20 Sales
of goods under the L-COM mark and advertising expenditures
have been substantial over the past few years.21 Opposer
distributes hundreds of thousands of catalogs in the United
States in which almost every page bears the L-COM mark at
least once.22
Based on this record, we find that opposer has not met
its burden to show that it owns a famous mark. Lacoste
Alligator S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB
2009) (“Because of the extreme deference that we accord a
famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the

20 Caselden Dec. ¶¶ 6-7.

21 Long Dec. ¶ 7. The exact figures were provided under seal.

22 Woronko Dec. ¶ 6.
Opposition No. 91192293
15
party asserting that its mark is famous to clearly prove
it”); Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82
USPQ2d 1901 (TTAB 2007). While opposer has had sales
success, opposer has not provided clear context for its
sales and advertising numbers with regard to the industry.
Further, other than catalogs, there is no other evidence to
show that consumers are exposed to opposer’s mark on a
sustained level that would engender fame. In view thereof,
the strength of opposer’s mark does not reach the level of
playing “a ‘dominant’ role in the process of balancing the
du Pont factors.” Recot Inc. v. M.C. Becton, 214 F.3d 1322,
54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
Countering opposer’s evidence of commercial strength,
applicant has submitted evidence to show third-party use of
marks allegedly similar to L-COM and/or ELECOM in support of
its argument that opposer’s mark is weak. Applicant’s
evidence consists of excerpts from 23 separate third-party
websites for the marks: ELCOM (11), EL.COM (1), PENN ELCOM
(1), EL-COM (2), ELCOM SYSTEMS(1), ELECOM (4), LCOMM (1),
ELCOM SOLUTIONS (1) and LKOMM(1). Several examples are for
goods and services, that while in the computer or
communications fields, are not as similar to opposer’s goods
as applicant’s identified goods. For example, LCOMM is used
in connection with a wireless telecommunications company.
The third-party website examples that include goods and/or
Opposition No. 91192293
16
services that are similar to opposer’s goods and appear on
their face to be within the United States are:
ELCOM (Elcom Components Inc.) for distributor of
electronic components and electromechanical
products, including cables;23

ELCOM (Elcom Systems Inc.) for electronic
components, including attenuators, terminations,
and multicouplers;24 and

ELECOM (Elecom Systems) for providing IT products,
custom computer systems, and networking
components.25

Overall, we find that the evidence proffered to
establish the du Pont factor of third-party use has limited
probative value because in many cases the goods or services,
although in the same general industry (e.g., web content
management systems, semiconductor products, public relations
specializing in technology, telecommunications consulting,
or laser marking systems, control systems and robotics) are
not so similar to opposer’s goods. In addition, as opposer
notes in several cases it appears that the business
corresponding to the website is outside of the United States
and there is no evidence of use in the United States.
Finally, even as to those that are on point, in general, web
site listings are of limited probative value inasmuch as
they give no indication as to actual sales, when the mark

23 App. NOR Appdx. 72.

24 App. NOR Appdx. 75.

25 App. NOR Appdx. 76.
Opposition No. 91192293
17
was adopted, and customer familiarity with the marks.
Sports Authority, 63 USPQ2d at 1798; cf. AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ
268, 270 (CCPA 1973). However, the numerous web site
examples are probative evidence that businesses in the
computer or communications fields use the term COM and that
such marks often co-exist and are distinguished because of
the other terms used in connection with COM, and it
corroborates the connotation of COM as computer or
communication, as recognized by Mr. Woronko, opposer’s Chief
Operating Officer.26 Sports Authority, 63 USPQ2d at 1798.
Overall, we find that opposer’s mark L-COM is not
famous and conceptually is somewhat weak given the
suggestive and diluted nature of the COM portion of its
mark. Nonetheless, the record supports a finding of some
commercial strength.
Applicant also argues that opposer “has allowed other
companies to use the trademark and company name L-COM or a
similar term.” App. Br. p. 21. Applicant points to three
specific examples: ELCOM for semiconductor chips; L’COM for
earphones, radio transmitters and receivers, microphones for
helmets; and PENN ELCOM for metal racks, metal hardware,
mounting brackets for speakers, etc.27

26 Woronoko Dec. ¶ 9.

27 Voeller Dec. ¶ 20 Exh. 25-27 (Appdx 9-10, 15-16, 63-89).
Opposition No. 91192293
18
We first observe that, “it is entirely reasonable for
the opposer to object to the use of certain marks in use on
some goods which it believes would conflict with the use of
its marks on its goods and services while not objecting to
use of a similar mark on other goods which it does not
believe would conflict with its own use.” McDonald’s Corp.
v. McKinley, 13 USPQ2d 1895, 1899-1900 (TTAB 1989).
Further, it is unclear to what extent these third-party
marks are used in the United States. As opposer points out
in one instance, the application for the L’COM mark was
abandoned for failure to file a statement of use. While
this is not definitive evidence that the mark is not
actually in use in the United States, it does highlight the
limitations in relying on such website evidence.
This brings us then to our consideration of the
similarities between opposer’s and applicant’s goods,
channels of trade, classes of purchasers and conditions of
sale. We must make our determinations under these factors
based on the goods as they are recited in the application
and registrations. See Octocom Systems Inc. v. Houston
Computers Services, 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
Opposition No. 91192293
19
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which sales of the goods are directed.”); In re Elbaum, 211
USPQ 636 (TTAB 1981).
With regard to the goods in International Class 9,
applicant’s “computer cables; cables for computer networks;
audiovisual cables; coaxial cables” encompass or are
encompassed by opposer’s “electrical cables” and “cables” in
opposer’s Reg. No. 2697029, and as such, they are legally
identical. It is sufficient for a finding of likelihood of
confusion if the relatedness is established for any item
encompassed by the identification of goods within a
particular class in the application. Tuxedo Monopoly, Inc.
v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986
(CCPA 1981); Baseball America Inc. v. Powerplay Sports Ltd.,
71 USPQ2d 1844, 1847 n.9 (TTAB 2004).
Further, in view of the absence of any limitations and
the identical nature of these goods we must presume that the
channels of trade and classes of purchasers overlap.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, 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.”);
Opposition No. 91192293
20
and 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”).
With regard to applicant’s goods in International Class
18, opposer’s leatherette cases are closely related to
applicant’s various bags. Moreover, we find applicant’s
various bags to be related to opposer’s Class 9 goods in
Reg. No. 2697029 inasmuch as applicant’s broad
identification “bags in the nature of envelopes and pouches
of leather for merchandise packaging” includes goods that
could be designed to be used with opposer’s computer and
communications related goods and would be viewed as
complementary.28 In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
With regard to the channels of trade and classes of
purchasers, in view of the absence of restrictions in the
application as to trade channels and purchasers, we must
presume that applicant’s goods would be sold in all ordinary
channels of trade and offered to all ordinary classes of
consumers for these goods. See Hewlett-Packard Co. v.

28 Such conclusion is further supported by evidence of third-party
competitors that sell similar computer goods and cases.
Nacarella Dec. ¶ 6, Exh. G (Appdx 32, 37); Byrd Dec. ¶¶ 2-3, Exh.
A (Appdx 30, 31). We further note that opposer’s Reg. No.
1691214 includes “instrument cases” in its Class 9 recitation of
goods.

Opposition No. 91192293
21
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002); and Octocom, 16 USPQ2d at 1783. Such trade channels
would include opposer’s established trade channels (third-
party websites, telephone, distributors and retail
stores).29 Applicant’s unlimited identification also
encompasses opposer’s classes of consumers which range from
the skilled and tech savvy consumer to the ordinary non-
professional consumer.30
As to the conditions of sale, the price range for the
majority of opposer’s products is from a few dollars to
fifty dollars.31 Further, many of applicant’s products are
of the same type and would have a similar price range.32 As
to the goods that are relatively inexpensive, purchasers are
less likely to exercise care in the purchasing process.
Thus, the relatedness of the goods, channels of trade,
classes of purchasers and conditions of sale all favor a
finding of likelihood of confusion.
We now consider whether the marks L-COM and ELECOM are
similar or dissimilar when compared in their entireties in
terms of appearance, sound, connotation and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot

29 Woronko Dec. ¶¶ 8-10; Long Dec. ¶¶ 7-26 (Appdx 11).

30 Long Dec. ¶¶ 1-7, Exh. A (Appdx 11-12); Long Supp. Dec. ¶¶ 1-
21, Exh. M (Appdx 55-56).

31 Woronko Dec. ¶ 20.

Opposition No. 91192293
22
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). In making this finding, the focus is
on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Finally, as to those goods that are
identical (i.e., cables), we keep in mind that “when marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992).
As noted above, the COM portion of the parties’ marks
is suggestive of computer and communications goods; as such,
the identical suffix does not necessarily create likely
confusion. However, in this case the prefixes share
similarities that result in a very similar sound. While, as
applicant argues, its mark may be divided into three
syllables compared to opposer’s two syllable mark, when
spoken L-COM and ELECOM sound very similar. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH
confusingly similar to COMMUNICASH); In re Pellerin Milnor
Corp., 221 USPQ 558 (TTAB 1983) (MILTRON confusingly similar

32 Woronko Dec. ¶ 18.
Opposition No. 91192293
23
to MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975)
(LUTEXAL confusingly similar to LUTEX). See also In re
Energy Telecomms. & Elec. Ass’n, 222 USPQ 350 (TTAB 1983)
(ENTELEC confusingly similar to INTELECT); and RE/MAX of
America, Inc. v. Realty Mart, Inc., 207 USPQ 960 (TTAB 1980)
(REMACS confusingly similar to RE/MAX).
As to appearance, we find that the dissimilarities are
not sufficient to obviate likely confusion. In attempting
to distinguish the marks, applicant relies on the minimal
stylization in its mark, which alone is not sufficient to
distinguish the marks. Moreover, as to the Class 9 goods,
opposer’s registered mark is in typed form, thus, in our
analysis we must consider all forms of display. In re RSI
Systems, LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP
1207.01(c)(iii) (7th ed. rev. 2010). Therefore, the minimal
stylization in applicant’s mark cannot serve to distinguish
the marks, inasmuch as we must consider opposer’s registered
mark “regardless of font style, size, or color.” Citigroup
Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1258-59 (Fed. Cir. 2011). Finally, as to
opposer’s common law rights we have found that it
established trademark rights in the term L-COM without the
design element. Thus, we are left with the shared visual
impressions of L COM with only the two interspersed E’s in
Opposition No. 91192293
24
applicant’s mark and the hyphen in opposer’s mark to
distinguish the appearance.
With regard to connotation, applicant argues that its
mark “has the connotation of an actual word having meaning”
whereas opposer’s mark “does not connote a real word,
instead calling to mind the ‘.com’ top level domain, or some
sort of acronym, with the ‘L’ possibly indicating a model
number or generation number.” App. Br. p. 9. However,
there is not sufficient evidence to conclude what the
respective connotations would be, other than COM referencing
the computer/communications related goods, which would be
the same. Finally, the similar structure of the marks,
letters preceding the suffix COM, add to the overall similar
commercial impression. In view of the above, we find the
marks to be similar and this factor weighs in favor of a
likelihood of confusion.
Finally, applicant argues that despite concurrent sales
since 2006 there have been no instances of actual confusion.
However, there is no evidence in the record to support a
finding that there has been a meaningful opportunity for
confusion to occur. In fact, the record supports the
opposite conclusion inasmuch as there is no evidence of the
extent of applicant’s use of its mark. Gillette Can., Inc.
v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In view
thereof we consider this factor to be neutral.
Opposition No. 91192293
25
On balance, the relevant du Pont factors weigh in favor
of a likelihood of confusion. In view of the similarity of
the marks, the related nature of the goods, and the overlap
in the channels of trade and classes of customers, we
conclude that there is a likelihood of confusion between
opposer’s mark L-COM and applicant’s mark such
that registration of applicant’s mark is barred under
Trademark Act Section 2(d). To the extent there is any
doubt, we must resolve that doubt in favor of opposer as the
prior user and registrant. Giant Food, Inc. v. Nation’s
Foodservice, Inc., Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
Decision: The opposition is sustained.