S.S. Steiner, Inc.

Trademark Trial and Appeal Board

Oct 14, 2014

No. 85913690 (T.T.A.B. Oct. 14, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 14, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re S.S. Steiner, Inc.
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Serial No. 85913690
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Norman P. Soloway of Hayes Soloway, PC for S.S. Steiner, Inc.

Sara N. Benjamin, Trademark Examining Attorney, Law Office 110,
Chris A. F. Pedersen, Managing Attorney.
_____

Before Wellington, Kuczma, and Hightower,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
S.S. Steiner, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark AlphaBio (in standard characters) for:
Cleaning preparations for cleaning purposes in the food and food processing
industry; cleaning preparations containing plant extracts for industrial use,
excluding skin care products, namely, facial wash, toner, moisturizing and fade
gel in International Class 3; and

Anti-microbial preparations for inhibiting bacteria, fungi and algae; anti-fungal
preparations; anti-biotic preparations, for industrial and agricultural uses
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excluding transdermal patches for use in treatment of the human body in
International Class 5.1

The Trademark Examining Attorney has refused registration of Applicant’s
mark based on a likelihood of confusion, under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), in view of the following registered marks:
ALPHA-BIOPLEX (Registration No. 2039858 in typed format2) for:
“skin care products, namely, facial wash, toner, moisturizer, and fade gel” in
International Class 3;3 and

ALPHA BIO (Registration No. 3003326, in standard characters) for, inter alia:
“design, engineering, quality control and inspection services for others in the
field of biopharm and hygienic process applications” in International Class 42.4

More specifically, the Examining Attorney has cited the first registration (‘858)
as a basis for refusal to Applicant’s identified goods in International Class 5; and
the second registration (‘326) has been cited as a basis for refusal to Applicant’s
identified goods in International Class 3.
After the refusal was made final, Applicant filed a request for reconsideration
which was denied by the Examining Attorney. Applicant then appealed and briefs,
including a reply brief from Applicant, have been filed. We affirm, in part, and
reverse, in part, the likelihood of confusion refusal.

1 Application Serial No. 85913690 was filed on April 24, 2013, based upon Applicant’s
allegation of first use anywhere and in commerce on January 31, 2012, under Section 1(a) of
the Trademark Act.
2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings.
3 Registration issued February 25, 1997; renewed.
4 Registration issued May 26, 1998; renewed.
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Likelihood of Confusion
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 1357, 177 USPQ 563 (CCPA 1973). See
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, however, two key considerations are
the similarities between the marks and the similarities between the goods 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).
Similarity of the Marks
In comparing the marks, we must consider them in their entireties as to
appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005).
Here, we find Applicant’s mark to be extremely similar visually and phonetically
to each of the cited registered marks inasmuch as all begin with the terms ALPHA
BIO. Indeed, Applicant’s mark is essentially identical to the registered mark
ALPHA BIO (Reg. ‘326); the deletion of the space between the terms has little, if
any, significance for purposes of distinguishing the two marks. With regard to the
mark in Registration No. ‘858, the only real difference is that it contains the
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additional element PLEX following the shared terms ALPHA and BIO. Because the
added element is at the end of the registered mark, it is less prominent whereas,
ALPHA BIO, appearing first is more likely to be impressed in purchasers’
memories. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897
(TTAB 1988) (“it is often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered”). Moreover, any
stylization or use of varying upper/lower case lettering is irrelevant given Applicant
seeks registration of its mark in standard characters and we must assume the
applied-for mark may appear in the same stylization and case lettering used in the
registered marks. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98
USPQ2d 1253 (Fed. Cir. 2011).
As to the marks’ commercial impressions and connotations, we find that these
too are very similar based on the shared, initial two elements ALPHA and BIO. The
term “alpha” means “the first letter of the Greek alphabet” or “something that is
first.”5 The “bio” element, when considered in the context of Applicant’s and the
registrants’ identified goods, may be understood as an abbreviation or suggestive for
“biology” or “biologic.” However, neither Applicant nor the Examining Attorney
asserts that any of the marks possesses a different connotation or commercial
impression or that the wording ALPHA BIO would somehow be understood

5 “Alpha.” 2014. In Merriam-Webster.com. Retrieved October 6, 2014, from
http://www.merriam-webster.com/dictionary/hacker. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re
Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010).

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differently by consumers for purposes of distinguishing Applicant’s mark. Thus, we
must assume that consumers are likely to perceive the marks in the same manner
based on the known meanings of these terms.
Accordingly, we find Applicant’s mark is essentially identical to the registered
mark ALPHA BIO and extremely similar to the other registered mark, ALPHA-
BIOPLEX. Such strong similarity of the marks is a du Pont factor that weighs in
favor of a finding of likelihood of confusion.
Applicant’s Argument That “the Terms ‘ALPHA’ and ‘BIO’ Are Dilute[d]”6
Applicant argues that the terms ALPHA and BIO are “weak in connection with
the relevant goods and services.” Brief at pp. 6-7. Applicant points to printouts from
the USPTO TESS electronic database that it submitted showing lists of third-party
applications and registrations with either the term ALPHA or BIO in the applied-
for or registered marks.7 Specifically, there are listings of: forty-eight (48)
applications and one (1) registration for the mark ALPHA 1 MARKETING; and fifty
(applications) for marks containing the term BIO (by itself or as part of a longer
word). Applicant also relies on copies of website printouts showing use of the
citedregistered marks.8
Although Applicant does not cite to authority in support of its argument, we note
that the sixth du Pont factor involves the consideration of any evidence pertaining
to “the number and nature of similar marks in use on similar goods.” In essence,

6 Brief p. 6.
7 Submitted with Applicant’s response to Office Action filed on September 7, 2013.
8 Submitted with Applicant’s Request for Reconsideration filed on January 23, 2014.
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this factor entertains the notion that as a result of substantial third-party use of
similar marks (or marks containing the same element) for similar goods (or
services), consumers may become conditioned to look beyond the common
characteristics and distinguish such marks based on what would otherwise be less
significant features or elements. However, in order for any argument in this regard
to have merit, it must be shown that there actually are other similar marks being
used on the same or similar goods (or services).
As to the record before us, the list of third-party applications have no probative
value other than as evidence that the applications were filed. See TBMP Section
1208.02 and authorities cited therein. Moreover, with respect to the one listed
registered mark containing the term ALPHA, this is not sufficient to make the
registration of record and there are limited circumstances in which the Board will
consider such a listing. Id. In particular, if an applicant includes a listing of
registrations in a response to an Office action, and the examining attorney does not
advise the applicant that the listing is insufficient to make the registrations of
record at a point when the applicant can correct the error, the examining attorney
will be deemed to have waived any objection to consideration of the list itself, for
whatever probative value it may have. Id. That is the case here as the Examining
Attorney did not advise Applicant regarding the insufficiency. However, and we
stress this point, the Board will not consider more than the information provided.
Here, Applicant provided information regarding one registered mark containing the
term ALPHA without any indication of goods or services. Id.
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The cited registrations, as well as three other previously-cited registrations that
were later withdrawn as bases for the likelihood of confusion refusal, are of record
and we do not ignore them.9 The three previously-cited registered marks are:
Registration No. 3474883 (ALPHABIOCOM) for
“advertising and marketing services for the pharmaceutical, biosciences and life
sciences fields” in International Class 35; and
“writing articles for medical and scientific journals in the fields of
pharmaceuticals, biosciences and life sciences fields [sic]; educational services,
namely, conducting seminars and conferences relating to the pharmaceutical,
biosciences and life sciences fields” in International Class 41;

Registration No. 3407217 for the mark AB ALPHA BIO TEC (stylized with a
design) for various dental instruments;

Registration No. 4279729 for the mark ALPHABIO CENTRIX for
“transdermal patches for use in the treatment of the human body to reach
optimal performances” in International Class 5.

However, in general, the mere existence of such third-party registrations has
little probative value because they are not evidence that the marks are in use on a
commercial scale or that the public is even familiar with them. See Smith Bros. Mfg.
Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in the U.S. Patent and
Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983). We further note that goods and
services covered by the registrations of record are, for the most part, quite different

9 In total, five registrations were cited in the first Office Action (issued on August 17, 2013)
and a copy of each registration was attached thereto. Registrations Nos. 3407217 and
3474883 were expressly withdrawn as bases for refusal in the final Office Action (issued on
October 15, 2013) in view of Applicant’s amendment to its identification of goods. Likewise,
Registration No. 4279729 was expressly withdrawn in the Examining Attorney’s Brief (on
page 1).
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from each other. We cannot discern any pattern of use of the combined terms within
any one field of use. Thus, for purposes of the sixth du Pont factor, these
registrations are not evidence that consumers have been exposed to the marks.
The only real evidence indicating that any of the aforementioned marks in use
are the website printouts for the two cited registrations, namely:
the BIOCARE LABS website showing the mark ALPHA BIOPLEX in connection
with skincare products, e.g., anti-aging emollient; and

the ALPHA BIO website showing the mark in connection with purification
systems, mechanical and process engineering services, etc.;

However, the mere fact these registered marks are in use does not establish any
weakness of the composite terms in any one particular field of goods or services.
Again, as reflected in the identifications and as used in the website evidence, there
is no real theme or similarity of the goods or services. Rather, they are distinctively
different goods and services vis-à-vis each other.
In sum, the record does not establish that consumers may be accustomed to
marks containing the terms ALPHA and BIO in the field(s) of use for the involved
goods and services, and the fact that Applicant’s mark shares this combination of
terms with the registered marks is not given any less importance for purposes of
distinguishing the marks.
Accordingly, this factor is neutral in our analysis.
(Dis)Similarity of Applicant’s Goods to the Goods and Services in the Cited
Registrations

We turn now to the du Pont factor involving the relatedness of Applicant’s goods
vis-à-vis the goods or services identified in the two registrations. At the outset and
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relevant to this appeal, we note that it is well-settled that in making our
determination of relatedness, we must look to the goods as identified in the
application vis-à-vis the goods or services as they are recited in the cited
registrations. See Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97 USPQ2d
1990, 1991 (TTAB 2011). It is also not necessary that the respective goods or
services be 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
or services are related in some manner, or that the conditions and activities
surrounding the marketing of the goods or services 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 originated
from the same producer. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
We make our relatedness of goods/services analyses on an individual basis in
light of the previously-explained manner in which the likelihood of confusion refusal
has been presented by the Examining Attorney. That is, she has argued that the
goods identified in the ‘858 registration are related to Applicant’s identified goods in
International Class 5; and that the services recited in the ‘326 registration are
related to the goods in International Class 3 of the application.
Relatedness of Applicant’s Goods to Those Identified in
Registration ’858 (ALPHA-BIOPLEX)

The Examining Attorney correctly notes that Applicant’s “anti-microbial
preparations for inhibiting bacteria, fungi and algae [and] anti-fungal preparations”
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are not limited to any field of use and thus must be presumed to include usage
similar to that of ‘858 Registrant’s “skin care products.” In other words, Applicant’s
anti-microbial and anti-fungal preparations may be used in the skin care field,
performing the same or similar functions as the Registrant’s “facial wash.” In
support of her contention that these goods are related, the Examining Attorney
submitted printouts of approximately twenty use-based, third-party registrations
which include both skincare products as well as anti-microbial or anti-fungal
preparations in their identifications of goods.10 For example:
OPALINE (Reg. No. 3927442) for “skin creams and lotions; dry stabilized oxygen
for use as a non-medicated skin cleansing wash … [and] non-medicated,
antimicrobial skin creams and balms”

GEL3OZONE (Reg. No. 4043876) for “face and body creams … hand cleaning
gels … non-medicated skin care preparations, namely, creams, lotions, gels,
toners, cleaners and peels … anti-itch cream … antibiotic creams … [and]
antifungal creams for medical use”

LOVE MY SKIN, LOVE MYBODY (Reg. No. 4309538) for “non-medicated skin
care preparations, namely, creams, lotions, gels, toners, cleaners and peels …
[and] vaginal preparations, namely, antifungals”

NOPSOR (Reg. No. 4121124) for “non-medicated preparations all for the care of
skin, hair and scalp … skin cleansing cream … [and] antibiotic creams …
antifungal creams for medical use …”

These registrations have probative value to the extent that they suggest that
skin care preparations and anti-microbial or anti-fungal preparations are the type
of goods that could be marketed by a single source under a single mark. See In re
Association of the United States Army, 85 USPQ2d 1264, 1270 (TTAB 2007); In re

10 Attached to Office Actions dated August 17, 2013 and October 15, 2013.
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Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
In view of the evidence submitted by the Examining Attorney, we agree that
anti-fungal and anti-microbial preparations are related to skin care products such
as facial wash; the goods identified in Class 5 of the application are related to the
goods identified in the ‘858 registration.
Relatedness of Applicant’s Goods to the Identified Services in
in Registration ‘326 (ALPHA BIO)
Again, the services covered by the ‘326 registration are described as “design,
engineering, quality control and inspection services for others in the field of
biopharm and hygienic process applications.” In arguing that there is a relationship
between these services and Applicant’s identified goods, the Examining Attorney
has focused solely on the latter field of services, namely, the “hygienic process
applications.” The record contains no definition of the phrase “hygienic process”;
however, the Examining Attorney relies on the definitions of the terms “hygienic”
and “hygiene,”11 and thus interprets Registrant’s services to include “the design,
engineering, quality control and inspection in the field of the science of the
establishment and maintenance of health and the conditions or practices (as of
cleanliness) conducive to health.” The Examining Attorney further concludes that
“Applicant’s identified goods are for the purpose of cleanliness or the maintenance

11 HYGIENIC is defined as: “Relating to being clean and [that] things that are done to
maintain good health: of or relating to hygiene.” HYGIENE is defined as: “a science of the
establishment and maintenance of health; conditions or practices (as of cleanliness)
conducive to health.” Merriam-Webster.com. Printouts of definitions were attached to Office
Action issued on October 15, 2013.
Serial No. 85913690
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of health … [and] the services of the registrant feature goods of the type provided by
applicant.” Brief at p. 8. In her brief, the Examining Attorney asserts that she has
submitted third-party registrations that support a finding of relatedness between
Applicant’s goods and “design and engineering services.”
Applicant, on the other hand, argues that its goods are “undoubtedly distinct”
from the services described in the ‘326 registration.
Based on the record before us, we find very little support for the Examining
Attorney’s explanation how Registrant’s services described in the registration are
related to any of the identified goods in the application. Her reliance on the rather
broad definition of the term “hygiene” offers little insight into Registrant’s services
and appears to be an improper dissection of the root of one word in the phrase
“hygienic process applications.” To the contrary, the Registrant’s website infers that
the design or engineering in the field of “hygienic process applications” involves
technology(ies) that are quite different from Applicant’s goods, such as
“computational fluid dynamics … membrane technology … chromatography …
temperature control systems … orbital welding systems … etc.”
As to the third-party registration evidence, the Examining Attorney does not
identify in her brief a single registration that covers both Registrant’s services, or
services akin thereto, and goods similar to those of Applicant. Our review of the
third-party registrations of record reveals there are none.
Accordingly, we find no viable relationship has been established between the
services described in the ‘326 registration and Applicant’s goods. In making this
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determination, we have kept in mind that where identical marks are involved, as is
the case here, the degree of similarity between the goods and services that is
required to support a finding of likelihood of confusion declines. Cf. In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir. 1993); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001).
In sum, we find that the goods in the ‘858 registration are related to Applicant’s
goods found in International Class 5 and this favors a likelihood of confusion as to
that class of goods. However, we cannot find that the services described in the ‘326
registration are related to the goods in International Class 3 of the application. This
favors a finding of no likelihood of confusion with respect to that class of goods.
Trade Channels and Classes of Consumers for the Goods
In explaining the similarity of the Applicant’s anti-microbial and anti-fungal
preparations, the Examining Attorney correctly noted that they are not limited to
any certain trade channels or industries or classes of consumers, as are many of its
other goods. Furthermore, the third-party registration evidence shows that there
are personal and skin care products identified as “anti-microbial” and “anti-fungal”
preparations. Thus, we must presume that consumers of the skin care or personal
care products will be the same consumers for the skin care facial wash products
identified in the ‘858 registration.
On the other hand, it has not been shown or explained how the services
described in the ‘326 registration will be offered to the same classes of consumers
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for Applicant’s goods; nor has the Examining Attorney described, let alone proven,
that these goods and services will move in the same or similar trade channels.
Conclusion
In sum, because Applicant’s goods, as identified in International Class 5, are
similar to the goods in the ‘858 registration and they may travel in the same trade
channels and be offered to the same classes of purchasers, we find that Applicant’s
mark AlphaBio is sufficiently similar to the registered mark ALPHA-BIOPLEX to
cause a likelihood of confusion.
On the other hand, we find no viable relationship between the services recited in
the ‘326 registration and any of Applicant’s identified goods. It has not been
demonstrated that the respective services and goods may travel in the same trade
channels or be offered to the same consumers. In view thereof and despite involving
legally identical marks, we find no likelihood of confusion with the ‘326 registration.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed only as to the goods in International Class 5.
The refusal is reversed with respect to Applicant’s goods in International Class
3. The application shall proceed to publication solely to this class of goods.