S.S. Steiner, Inc.Download PDFTrademark Trial and Appeal BoardOct 14, 2014No. 85913690 (T.T.A.B. Oct. 14, 2014) Copy Citation 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. _____ Serial No. 85913690 _____ 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 Serial No. 85913690 - 2 - 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. Serial No. 85913690 - 3 - 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 Serial No. 85913690 - 4 - 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). Serial No. 85913690 - 5 - 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. Serial No. 85913690 - 6 - 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. Serial No. 85913690 - 7 - 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). Serial No. 85913690 - 8 - 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 Serial No. 85913690 - 9 - 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” Serial No. 85913690 - 10 - 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. Serial No. 85913690 - 11 - 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 - 12 - 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 Serial No. 85913690 - 13 - 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 Serial No. 85913690 - 14 - 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. Copy with citationCopy as parenthetical citation