TBN Holdings Inc.

Trademark Trial and Appeal Board

Jan 11, 1999

No. 74710101 (T.T.A.B. Jan. 11, 1999)

Paper No. 12
BAC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re TBN Holdings Inc.
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Serial No. 74/710,101
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D. Peter Hochberg of D. Peter Hochberg Co., L.P.A. for TBN
Holdings Inc.
E. Santiago Clarke, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney)
_______
Before Cissel, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
TBN Holdings Inc. has filed an application to register
the mark OMNI for “solvents, namely, acetone, aromatics,
hexane, methanol, methylene, mineral spirits, toluene,
napthas, xylene, isopropyl alcohol (IPA), methyl ethyl
ketone (MEK), methyl isobutyl ketone (MIBK), lacquer
diluent, perchloroethylene (PERC), trichlorethane (111TRI),
Ser. No. 74/710101
2
trichlorethylene (TRI), chlorinated solvents, and solvent
blends thereof.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
two prior registrations issued to two different entities--
(1) the mark OMNISOLV for “organic glass distilled solvents
used by laboratories in educational institutions,
government facilities and industry for general in vitro
use”2; and (2) the mark shown below
for “chlorine for use in pools and spas, and pool and spa
water test kits consisting primarily of diagnostic
chemicals” in Class 1, “general purpose surface cleaners
for pools and spas” in Class 3, and “algicides for use in
pools and spas” in Class 5.3 The Examining Attorney
contends that applicant’s mark, when applied to its

1 Serial No. 74/710,101, filed August 2, 1995. Applicant claims
dates of first use and first use in commerce of January 2, 1988.
2 Reg. No. 1,182,588, issued December 22, 1981, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
3 Reg. No. 1,504,458, issued September 20, 1988, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser. No. 74/710101
3
identified goods, so resembles both previously registered
marks as to be likely to cause confusion, mistake or
deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
We affirm the refusal to register as to the mark
OMNISOLV (Reg. No. 1,182,588) only. In reaching this
conclusion, we have considered all of the relevant du Pont4
factors in relation to both cited registrations.
Turning first to the refusal to register based on the
mark OMNI and O design (Reg. No. 1,504,458), while there
are clearly differences in these respective marks
(applicant’s mark is OMNI, whereas the registered mark
includes a fanciful “O” within a dark square design, and
the word OMNI in large block type), it is not improper to
give more weight to a dominant feature of a mark. See In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997); In re Electrolyte Laboratories Inc., 913
F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990); and In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987).
OMNI is the dominant portion of the cited mark, and it is
applicant’s entire mark. Thus, the common, dominant

4 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973).
Ser. No. 74/710101
4
element in these two marks is the same word. When this
registered mark and applicant’s mark are considered in
their entireties, the marks are similar in sound,
appearance and meaning.
However, as identified in the application and
registration respectively, the goods of applicant (a
variety of solvents and solvent blends) and this registrant
(chlorine, water test kits, surface cleaners and algicides,
all for pools and spas) are different. The Concise
Chemical And Technical Dictionary (1986) defines “chlorine”
as “yellowish-green poisonous gas”; “algicide” as “agent
which destroys algae”; and “solvent” as “component of a
solution which is present in excess; liquid used to
dissolve a substance.”5 Although the Examining Attorney
argues that the goods in both cited registrations are
“solvents,” the identification of goods in Registration No.
1,504,458 does not include solvents, but rather is for
chlorine, water test kits, surface cleaners and algicides,
all for pools and spas. There is no evidence of record to
show that such goods are solvents. To the contrary,
applicant explains that some of its goods are “chlorinated
organic solvents (i.e. are organic molecules combined with

5 The Board may take judicial notice of dictionary definitions.
See TBMP §712.01, and cases cited therein.
Ser. No. 74/710101
5
chlorine atoms), but that this is much different than the
use of straight chlorine for pool and spa cleaning”; and
that applicant “does not produce or sell chlorine or its
products, i.e., neither organic solvents nor chlorinated
organic solvents used for pool cleaning, pool testing or as
algicides.” (Applicant’s brief, p. 3). Thus, we agree
with applicant that the applicant’s goods and channels of
trade are dissimilar, and in fact, are unrelated to the
goods listed in Registration No. 1,504,458.
Based on the record before us, we conclude that the
goods of applicant and those in the cited Registration No.
1,504,458 are not sufficiently related that consumers are
likely to assume a common source when the goods are sold
under similar marks.
Turning next to the refusal to register based on the
mark OMNISOLV (Reg. No. 1,182,588), the marks OMNI and
OMNISOLV are similar in sound and connotation. We disagree
with applicant that the cited mark, OMNISOLV, creates a
different commercial impression from that of applicant’s
mark, OMNI. The addition of the abbreviation of the word
“solvent” in the cited mark does not distinguish the cited
mark from applicant’s mark. The purchasing public would
understand that “solv” is an abbreviation of “solvent,” the
involved goods.
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With regard to the respective goods and trade channels
as to the goods listed in this registration, applicant
argues that the cited registrant’s goods are used by
educational, government and industry laboratories “which
are most likely conducting biological research”
(Applicant’s brief, p. 11); that the cited registrant’s
goods are purchased by sophisticated purchasers who work in
laboratories in the biological field; that the purity of
such solvents is much higher than that offered by
applicant; and that applicant sells to repackagers,
distributors, and industrial end-users in large quantities
ranging from five-gallon containers to rail cars
(Applicant’s brief, p. 7). Applicant further contends that
there has been no actual confusion in the nine and one-half
years of contemporaneous use.
It is well settled that to support a holding of
likelihood of confusion, it is sufficient if the goods are
related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978);
and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
Ser. No. 74/710101
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Also, the Board must determine the issue of likelihood of
confusion on the basis of the goods as identified in the
application and the registration. See Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Here, the applicant’s goods and the cited registrant’s
goods are solvents. The likelihood of confusion would not
be precluded simply because the cited registrant’s solvents
are used by laboratories for general in vitro use. That
is, although the cited registant’s goods are identified as
solvents used by laboratories for in vitro use, applicant’s
goods are broadly identified as “solvents, namely...”.
There is no restriction in applicant’s identification of
goods which limits applicant’s goods or excludes the
solvents listed in the cited registration, nor is there any
restriction on applicant’s channels of trade. Applicant’s
broad identification of goods, listing numerous specific
solvents, encompasses solvents used in educational,
government and industry laboratories for general in vitro
use.
Assuming that the purchasers are sophisticated and the
channels of trade are separate, even relatively
sophisticated purchasers and users of solvents in
educational, governmental and industrial laboratories
Ser. No. 74/710101
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would, because of the similarity of the marks and the
similarity of the goods, believe that they come from the
same source. See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993). Cf. Electronic Design &
Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388 (Fed. Cir. 1992).
Regarding the absence of actual confusion, there is no
evidence as to the amount and extent of either applicant’s
or registrant’s sales, and we have no input from the
registrant as to any actual confusion. Therefore, we
cannot find that this factor weighs in applicant’s favor.
In any event, the test is likelihood of confusion, not
actual confusion.
Decision: The refusal under Section 2(d) is reversed
as to Registration No. 1,504,458, and the refusal to
register is affirmed as to Registration No. 1,182,588.
R. F. Cissel
B. A. Chapman
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal