Rexair, Inc.v.Beamco, Inc.

Trademark Trial and Appeal Board

Jan 11, 1999

No. 91104527 (T.T.A.B. Jan. 11, 1999)

Paper No. 19
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 11,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rexair, Inc.
v.
Beamco, Inc.
_____
Opposition No. 104,527
to application Serial No. 74/678,319
filed on May 27, 1995
_____
Jeffery A. Sadowski of Howard & Howard Attorneys, PC
for Rexair, Inc.
R. Michael Ananian of Flehr Hohbach Test Albritton &
Herbert, LLP for Beamco, Inc.
______
Before Hohein, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Beamco, Inc. has filed an application to register the
mark depicted below for “stationary and portable vacuum
cleaners incorporating small particle filtration components,
and parts of stationary and portable vacuum cleaners.”1
Opposition No. 104,527
2
Rexair, Inc. has filed an opposition to registration of
the mark on the ground of likelihood of confusion, under
Section 2(d) of the Trademark Act. Opposer alleges
ownership of a registration for the mark REXAIR in the
stylized form shown below for “vacuum cleaners, parts
thereof, and attachments therefor”; 2 continuous use of such
mark from the date of first use claimed in the registration
until the present time; and a likelihood of confusion with
applicant’s proposed mark when used in connection with goods
which would compete in the same market with opposer's vacuum
cleaners.3
Applicant, in its answer, denied the salient
allegations of the notice of opposition and further alleged
that applicant’s proposed mark “includes the pharmaceutical
‘prescription’ symbol 5 followed by the stylized word AIR”
and is pronounced “Prescription Air.”4

1 Ser. No. 74/678,319, filed May 24, 1995, on the basis of a bona
fide intent to use.
2 Reg. No. 610,593, issued Aug. 16, 1955, claiming first use
dates of Dec. 6, 1933; second renewal.
3 For purposes of this opinion, the term “REXAIR mark” will be
used to refer to opposer’s mark in the stylized form in which it
is registered.
4 Applicant also set forth as an affirmative defense (although
strictly speaking, this is not an affirmative defense but simply
a defense to the likelihood of confusion claim) the contention
that opposer limits its activities to manufacturing vacuum
Opposition No. 104,527
3
The record consists of the file of the involved
application; the trial testimony taken by opposer of Kenneth
A. Hook, general counsel and an officer of opposer, and of
John J. Breslin, chairman of applicant; opposer’s Exhibits
1-33, which accompany the testimony; and opposer’s notice of
reliance introducing a copy of its pleaded registration.
Applicant took no depositions of its own, but cross-examined
both witnesses during the depositions taken by opposer and
introduced Exhibits 1-11 during the deposition of John
Breslin. Only opposer filed a brief on the case and its
request for an oral hearing was later waived.
Opposer introduced by means of the testimony of Kenneth
Hook a copy of the pleaded registration issued to a
predecessor of opposer, as well as copies of the Section 8
and 15 affidavit filed by opposer in 1960, the application
for second renewal filed in August 1995 executed by Mr.
Hook, and the certificate of renewal issued by the Patent
and Trademark Office for the second renewal term.5 Mr.

cleaners for independent businessmen who in turn sell the
cleaners under the mark RAINBOW to individual customers.
5 Although opposer filed a notice of reliance, and a supplement
thereto, to make of record a “status” copy of the pleaded
registration, the copy submitted is identical to that issued with
the second certificate of renewal in May 1996. Inasmuch as the
present opposition was filed in December 1996 and the testimony
period for opposer was not until August 1997, the copy is not
reasonably contemporaneous so as to be considered timely
documentation of the current status and title of the
registration. See TBMP § 703.02(a). As a result, only the
testimony of Mr. Hook has been relied upon to establish that the
registration is subsisting and owned by opposer.
Opposition No. 104,527
4
Hook’s testimony also introduced photographs of the
specimens which were filed with the Section 8 and 15
affidavit and the first and second renewals, the specimens
evidencing continued use of the REXAIR mark on vacuum
cleaners, though, in later years, not in the stylized form
shown in the registration. For example, in the specimen
submitted with the second renewal application, the plate
used on the goods bears the notation “MFG BY REXAIR, INC.”
in typed letters, in conjunction with the mark RAINBOW. Mr.
Hook’s testimony also introduced copies of recent owners’
manuals and demonstration notebooks for opposer’s vacuum
cleaners, as sold under the RAINBOW mark, in which it is
stated that the products are manufactured by Rexair, Inc.,
are sold to its authorized RAINBOW distributors for resale
to the ultimate users, and that REXAIR is a registered mark
of opposer. Third-party advertisements were also introduced
showing use of both trademarks, RAINBOW and REXAIR, in
promotion of the vacuum cleaners by opposer’s independent
authorized distributors to purchasers of the products.
By means of the testimony of Mr. Breslin, opposer
established that applicant had not, as of the August 21,
1997 date of the deposition, used its proposed mark, which
applicant consistently refers to as “Prescription Air”, but
was selling the portable industrial vacuum cleaner upon

Opposition No. 104,527
5
which it intended to use the mark under its model number.
Mr. Breslin further testified that applicant advertises in
the Thomas Register models similar to that with which it
intends to use its mark; that it does no business with
respect to portable vacuum cleaners on the retail level;
and, that it advertises under the trade name and trademark
Grand Central in its chief sales area, the San Francisco Bay
area, for “built-in vacuum systems” manufactured by
applicant for residential, commercial and industrial use.
By cross-examination applicant introduced into the record
copies of the agreement into which opposer enters with its
independent authorized distributors for sale of the RAINBOW
vacuum cleaners and of the limited warranty which opposer
provides to these distributors for its products. Mr.
Breslin also testified to the fact that opposer’s vacuum
cleaners use a water filter but that applicant’s vacuum
systems use an entirely different filtration system
involving non-aqueous solid materials.
Despite the deficiencies in the status and title copy
of the pleaded registration which opposer submitted with its
notice of reliance, we find that opposer has adequately
established ownership and the subsistence of Registration
No. 610,593 for the mark REXAIR (in stylized form) by the
testimony of Mr. Hook. Accordingly, priority is not an
Opposition No. 104,527
6
issue in this case. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Thus, we turn to the issue of likelihood of confusion
and those of the du Pont factors6 which we find most
relevant to our determination, namely, the similarity or
dissimilarity of the marks and the similarity or
dissimilarity of the goods and the channels of trade for the
respective products.
Opposer contends that the marks of the two parties are
substantially identical in sound, appearance and
connotation. While applicant has taken the position that
the 5 symbol in its mark represents the word “Prescription”
and would be pronounced as such, opposer argues that
applicant’s mark is more likely to be pronounced in a
shorthand manner, as “Rexair,” similarly to opposer’s mark.
It has frequently been stated that there is no one
correct pronunciation of a trademark. See In re Belgrade
Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); Frances
Denney, Inc. v. ViVe Parfums Ltd., 190 USPQ 302 (TTAB 1976).
Even though applicant may have intended to use the 5 symbol
as shorthand for the word “Prescription”, there is no
assurance that purchasers, upon viewing the mark, would say
the word “Prescription” rather than merely adopting the

6 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973).
Opposition No. 104,527
7
shorthand version for pronunciation purposes also. Thus, we
find that the two marks are clearly susceptible to, at the
very least, the highly similar pronunciations, “Rexair” and
“R-x-Air”, if not to the same pronunciation, “Rexair”,
Furthermore, both applicant’s mark and opposer’s mark
present the same general appearance. In addition, whether
or not applicant’s mark, on further contemplation, is given
applicant’s intended interpretation as “Prescription Air”,
or opposer’s mark is equated with “ King of the Air” (as
opposer itself defined its mark in Opposer’s Exhibit 1), we
find the overall commercial impression created by the two
marks to be highly similar, namely, Rx or REX ° AIR.
Insofar as the goods are concerned, we agree with
opposer that the stationary and portable vacuum cleaners of
applicant must be viewed as substantially identical to the
vacuum cleaners of opposer. There are no restrictions in
the identification of goods in either the application or
registration which might serve to distinguish the goods of
the two parties. See Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 490, 1 USPQ2d 1813 (Fed. Cir.
1987). Opposer’s vacuum cleaners are not limited to any
particular type of filtration system. Applicant’s vacuum
cleaners may be portable or stationary; it is immaterial.

Opposition No. 104,527
8
Finally, since there is no restriction in either
opposer’s registration or applicant’s application as to the
channels of trade or class of purchasers, it must be assumed
that the goods of each move through all the normal channels
of trade for goods of this type and are available to all
purchasers of these goods, whether they be in the retail,
commercial, or industrial field. See Fort Howard Paper Co.
v. Marcal Paper Mills, Inc., 189 USPQ 305 (TTAB 1975). The
goods, as recited, being virtually identical, the channels
of trade and class of purchasers must also be presumed to be
virtually identical. Although applicant may have introduced
evidence with respect to the independent distributors
authorized by opposer to sell its vacuum cleaners to the
ultimate customers, all of this is irrelevant to the present
determination of likelihood of confusion. No such
limitations exist in the pleaded registration. Nor has
applicant filed a counterclaim seeking partial cancellation
of the registration under Section 18 of the Trademark Act on
the basis of this evidence, as a possible means of avoiding
the likelihood of confusion. See Eurostar Inc. v. “Euro-
Star” Reitmoden GmbH & Co. KG, 34 USPQ 2d 1266 (TTAB 1994).
Accordingly, on the basis of the similarity between the
marks of the parties and the virtual identity of the goods
and channels of trade, we find that contemporaneous use of
Opposition No. 104,527
9
the respective marks in connection with the respective goods
would be likely to cause confusion.
Opposition No. 104,527
10
Decision: The opposition is sustained and registration
is refused to applicant.

G. D. Hohein
H. R. Wendel
D. E. Bucher
Trademark Administrative Judges,
Trademark Trial and Appeal Board