Nuova Vamatex S.p.A.

Trademark Trial and Appeal Board

Aug 26, 1999

No. 75095244 (T.T.A.B. Aug. 26, 1999)

Paper No. 9
EWH/hlj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 26, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Nuova Vamatex S.p.A
________
Serial No. 75/095,244
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Thomas W. Perkins of Young & Thompson for Nuova Vamatex
S.p.A.
Anthony R. Masiello, Trademark Examining Attorney, Law
Office 104.
_______
Before Seeherman, Hanak and Walters, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
Nuova Vamatex S.p.A. (applicant) seeks to register
VAMATEX and design in the form shown below for “weaving
looms and component parts thereof.” The application was
filed on April 25, 1996 based upon applicant’s ownership of
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an Italian registration of the same mark.
The examining attorney refused registration pursuant
to Section 2(d) of the Lanham Trademark Act on the basis
that applicant’s mark, as applied to weaving looms and
component parts thereof, is likely to cause confusion with
the mark FAMATEX, previously registered in the form show
below for “machines for textile finishing.” Registration
No. 635,151.
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When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request a
hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
similarites of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry manadated by section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
Considering first the goods, the Examining Attorney
has made of record approximately ten third-party
registrations in an effort to show that the same companies
market under the same marks both weaving looms and machines
for textile finishing. In its brief, applicant makes
essentially two comments with regard to this evidence.
First, applicant states that “it is not believed that
eleven registrations are indicative of what is common in
the industry.” (Applicant’s brief pages 3-4). Given the
highly specialized nature of the goods in question, we
believe that approximately ten registrations are indeed
indicative of what is at least a not uncommon practice in
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the industry, namely, for the same companies to market
under the same marks both weaving looms and machines for
textile finishing. Second, applicant notes that a few of
the registrations are somewhat ambiguous in their
recitation of goods such that one cannot be certain that
they cover both weaving looms and machines for textile
finishing. In this regard, we believe that applicant is
correct that a few of the third-party registrations made of
record are indeed somewhat ambiguous. However, there are
at least seven registrations which cover both types of
goods. Thus, given the fact that we are dealing with
highly specialized machinery where there are a limited
number of manufacturers – as contrasted with other
industries where there are a large number of manufacturers
– we find that the Examining Attorney’s evidence is
sufficient to establish a not uncommon practice for
companies to manufacture and sell under the same marks both
weaving looms and machines for textile finishing. In this
regard, we note that applicant never elected to put in any
evidence to the contrary. For example, applicant made of
record no affidavit or declaration the thrust of which was
that it was uncommon for companies to manufacture and
market under the same marks both weaving looms and machines
for textile finishing.
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On another point, applicant argues that “the goods in
the registration and application are used in two entirely
separate phases of the textile manufacturing process which
do not necessarily bear any direct relation to one
another.” (Applicant’s brief page 3). At the outset, we
note that applicant has conceded that both registrant’s
goods and applicant’s goods are utilized in the “textile
manufacturing process.” As for applicant’s unsubstantiated
assertion that the functions performed by registrant’s
goods and those performed by its goods “do not necessarily
bear any direct relation to one another,” we simply note
that applicant is implicitly acknowledging that they may
well bear a direct relation with one another. Indeed,
applicant’s goods (weaving looms) are used to make the
cloth. Registrant’s goods are used to finish the cloth.
Hence, it appears that there is a clear relationship
between these two goods in that the finishing of the raw,
woven cloth is a necessary step in order to make it of use
to manufacturers of clothing and the like. Again, we note
that applicant has made of record absolutely no evidence.
If registrant’s goods and applicant’s goods did indeed bear
no direct relationship to one another, we presume that
applicant would have made of record at least a simple
affidavit to that effect.
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In short, we find that applicant’s goods (weaving
looms) and registrant’s goods (machines for textile
finishing) are clearly related because (1) the third-person
registations indicate that the same companies manufacture
and market both under the same marks, and because (2) both
types of products are employed in, to use applicant’s
words, “the textile manufacturing process.”
Turning to the consideration of the marks, we note
that marks are typically compared in terms of visual
appearance, pronunciation and connotation. It has been
held that in appropriate circumstances, similarity as to
any one of these three factors may be sufficient to support
a finding of likelihood of confusion. Krim-Ko Corp. v.
Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968).
We acknowledge applicant’s assertion that in terms of
visual appearance, there are some clear dissimiliarites
between its mark and registrant’s mark. However, in both
marks, the word portions are quite prominent and these
words portions are very similar in terms of visual
appearance in that they merely differ by the initial
letter, with registrant’s word being FAMATEX and
applicant’s word being VAMATEX.
As for pronunciation, obviously applicant’s mark would
not be pronounced as VAMATEX and design and registrant’s
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mark would not be pronounced as FAMATEX and design.
Rather, the two marks would be pronounced as VAMATEX and
FAMATEX. Thus, in terms of pronunciation the marks are
extremely similar. Indeed, unless a consumer was listening
for the difference, he or she could easily mistake one mark
for the other when spoken.
Finally, in terms of connotation, both marks are
either entirely arbitrary, or at most slightly suggestive
in that both marks end with the letters TEX, which is
reminiscent of the textile industry.
In short, the goods are clearly related, and the marks
are extremely similar in terms of pronunciation and lack of
connotation, and are at least somewhat similar in terms of
visual appearance. Under such circumstances, we normally
would find that this would present a clear case of
likelihood of confusion. However, applicant has argued,
and the Examining Attorney does not seriously dispute this
point, that the purchasers of its goods and registrant’s
goods are sophisticated and that the goods are fairly
expensive. (Applicant’s brief page 4). It is these
factors of purchaser sophistication and expensive goods
that cause us to find this case to be a close one.
However, when the issue of the likelihood of confusion is
close, we are obligated to resolve doubts in favor of the
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registrant and prior user. In re Hyper Shoppes, 837 F.2d
463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
DECISION: The refusal to register is affirmed.
E. J. Seeherman
E. W. Hanak
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and appeal Board
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