Techcross Inc.

Trademark Trial and Appeal Board

Apr 22, 2014

No. 85633620 (T.T.A.B. Apr. 22, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 22, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Techcross Inc.
_____

Serial No. 85633620
_____

Melissa S. Dillenbeck and Mita K. Lakhia of Drinker Biddle & Reath LLP for
Techcross Inc.

Rebecca Gilbert, Trademark Examining Attorney, Law Office 103 (Michael
Hamilton, Managing Attorney).
_____

Before Kuhlke, Bergsman and Wolfson, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Techcross Inc., filed an application to register on the Principal
Register the standard character mark ECS for goods ultimately identified as
“ballast water treatment unit; ballast water treatment apparatus, namely,
sterilization device,” in International Class 11.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with the

1 Application Serial No. 85633620, filed on May 23, 2012, based on an allegation of a bona
fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).

Serial No. 85633620

2

identified goods, so resembles the mark shown below for services identified as
“water treatment” in International Class 40,2 as to be likely to cause confusion,
mistake or deception among relevant consumers.

The cited registration includes a disclaimer for the word ENVIRONMENTAL
and the following description of the mark:
The mark consists of a circle design comprised of a stylized yin-yang
symbol and water drop design with the letters "E","C","S" in the middle
of the circle design. The wording "ENVIRONMENTAL" in stylized font
appears above the circle design and the wording "COMMON SENSE"
in stylized font appears below the circle design.

Color is not claimed as a feature of the mark.
When the refusal was made final, applicant requested reconsideration. On
July 2, 2013, the examining attorney denied the request. On October 2, 2013,
applicant filed this appeal and briefs have been filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. Du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (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, two key considerations are the similarities between the marks

2 Registration No. 3802479, issued on June 15, 2010.
Serial No. 85633620

3

and the similarities between the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We begin with considering the goods and services, channels of trade and
classes of purchasers. We must make our determinations under these factors based
on the goods and services as they are identified in the application and registration
and we cannot read limitations into those goods and services. See In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also
Stone Lion Capital Partners, LP v. Lion Capital LLP, ___ F.3d ___, ___ USPQ2d ___
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is settled
that it is not necessary that the respective goods and services be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether consumers would confuse the
goods and services themselves, but rather whether they would be confused as to the
source of the goods and services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
The goods and services need only be sufficiently related that consumers would be
likely to assume, upon encountering the goods and services under similar marks,
that the goods and services originate from, are sponsored or authorized by, or are
otherwise connected to the same source. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re Melville Corp., 18
USPQ2d 1386 (TTAB 1991). Finally, it is recognized that goods and services may
Serial No. 85633620

4

be related. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025
(Fed. Cir. 1988) (BIGG’S (stylized) for retail grocery and general merchandise store
services and BIGGS and design for furniture likely to cause confusion); Steelcase
Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (STEELCARE INC. and design
for refinishing of furniture, office furniture, and machinery and STEELCASE for
office furniture and accessories, likely to cause confusion).
The applicant does not dispute that the goods and services are related and
the record supports such a finding. The registrant’s services are identified without
restriction and would include water treatment for “ballast water.” Applicant’s goods
are complementary to registrant’s services in that they could be used in conjunction
with water treatment services or purchased for the purpose of water treatment,
albeit specifically for “ballast water.” The third-party registrations submitted by
the examining attorney with the first Office action are probative on this point in
that they serve to suggest these goods and services are of a kind that may emanate
from a single source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re
Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); and In re Albert Trostel
& Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). See, e.g., Reg. No. 3753894 for
the mark WAHASO WATER HARVESTING SOLUTIONS for, inter alia, water
purification and filtration apparatus and water treating services; Reg. No. 3721633
for the mark ANJAN and design for, inter alia, water treatment equipment,
namely, chemical sterilization units, and treatment of waste water services; Reg.
No. 3274545 for the mark BLUE PRO for, inter alia, waste water purification units,
Serial No. 85633620

5

and treatment of waste water services; and Reg. No. 3270249 for the mark
POLYCUBE for, inter alia, industrial-water purifying apparatus, and waste water
treatment services. Also submitted under the first Office action are printouts from
third-party websites providing both water treatment services and water treatment
devices under the same mark. For example:
Pure Water Solutions has been providing High Purity Water
Treatment Solutions throughout most of the Southern United States
since 1969. Our customers range from industry icons with complex
ultra-pure water treatment needs to those with simple deionized water
applications. … Products … Deionization Systems, High Purity Water
Systems, Disposable Filter Cartridges, Reverse Osmosis Systems …
Services … Complete Service and Preventative Maintenance Programs
… Engineering and Technical Support … Sanitizations … Ozonation
Services (www.purwatersolutions.com, attached to Final Office Action
(April 3, 2013)); and

Services for Water and Wastewater Treatment … Mobile and
Temporary Water Treatment Services Siemens Water Technologies
has a fleet of mobile assets configured with a variety of treatment
technologies standing by for emergency deployment when and where
needed … Products from bench-top high purity lab water to industrial
water reuse systems; from drinking water to wastewater treatment
and recycling; Siemens Water Technologies touches every component
of water and waste water treatment … Chemical Feed and Disinfection
Analyzers, controllers, induction systems, metering pumps, dry feed,
gas feed, polymer feed, chlorine dioxide and UV disinfection …
physical/chemical treatment products. (www.water.siemens.com,
attached to Final Office Action)).

Considering the channels of trade and classes of purchasers, because the
goods and services are closely related and there are no limitations as to channels of
trade or classes of purchasers in the cited registration, i.e., it includes applicant’s
field of “ballast water treatment,” we must presume that applicant’s goods and
registrant’s services will be sold or offered in the same channels of trade and will be
Serial No. 85633620

6

bought by the same classes of purchasers. In re Viterra, Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). See also Stone Lion Capital Partners, ___
USPQ2d ___; Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001;
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) and In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
In view of the above, the du Pont factors of the similarity of the goods and
services, the channels of trade and classes of purchasers favor a finding of likelihood
of confusion.
We turn next to consider the marks ECS and and compare them “in
their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at
567.
We begin by noting that letter marks are more susceptible to confusion
because letter combinations are likely to be inherently difficult to remember.
B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d 1500, 1509 (TTAB 2007) citing
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed.
Cir. 1990) and Alberto-Culver Co. v. F.D.C. Wholesale Corp., 16 USPQ2d 1597
(TTAB 1990). This is true even when the prospective purchasers of the services are
sophisticated purchasers. Id.
Serial No. 85633620

7

The dominant feature of registrant’s mark is the lettering ECS. As the
examining attorney explains, the lettering ECS “stands out visually, being in large
size and centered in the mark … the other wording … is merely wrapped around the
centered larger ECS, enhancing the visual focus on ECS.”3 Moreover, the wording
ENVIRONMENTAL COMMON SENSE would be perceived as a slogan framing the
more prominent portion ECS. As to the design element, it is well settled that the
“verbal portion of a word and design mark likely will be the dominant portion.”
Viterra Inc., 101 USPQ2d at 1911 (citing CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983). The words are accorded greater weight because
they would be used by purchasers to request the goods or services. In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999). The design in registrant’s
mark serves more as a background to the letters ECS and does not detract from
their prominence. The entirety of applicant’s mark is identical to this dominant
feature.
Applicant argues that the marks are “dramatically different”4 based on the
additional elements in registrant’s mark. However, in view of the dominance of the
letters ECS in registrant’s mark, the additional wording and design element,
combined or separately, do not sufficiently distinguish the marks. As noted by the
examining attorney, addition or deletion of matter does not necessarily obviate a
likelihood of confusion. In re Mighty Leaf Tea, 601 F.3d 1342, 1347-48, 94 USPQ2d
1257, 1260-61 (Fed. Cir. 2010) (affirming TTAB’s finding that applicant’s mark, ML,

3 Ex. Att. Br. p. 6.

4 App. Br. p. 2.
Serial No. 85633620

8

is likely to be perceived as a shortened version of registrant's mark, ML MARK
LEES (stylized), when used on the same or closely related skin-care products); and
In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) (holding
applicant's mark, MAX with pillar design, and registrant’s mark, MAX, likely to
cause confusion, noting that the “addition of a column design to the cited mark . . .
is not sufficient to convey that [the] marks . . . identify different sources for legally
identical insurance services”).
In addition, to the differences in sound and appearance, applicant argues
that the marks have different connotations. Specifically, applicant argues:
The cited mark’s additional terms and circular design lead the
consumer to think directly about the environment. The term
“environment” alone plus the circle shaped design are clearly
associated with the Earth, as well as environmental issues. Simply
viewing the Registrant’s mark evokes a feeling of concern and thought
about green policies and environmental causes. The Applicant’s mark,
however, has none of those connotations. Applicant’s mark does not
have any particular connotation, nor are consumers likely to associate
the mark with any one product or service. The omission of words and
design lead the Applicant’s mark to have a distinct commercial
impression from the cited mark, making confusion unlikely.5

It is clear that registrant’s mark in its entirety presents a meaning or
connotation that is associated with environmental issues and when viewed in its
entirety ECS could be viewed as the abbreviation for the slogan
ENVIRONMENTAL COMMON SENSE. However, applicant’s mark has no
element to exclude such a connotation from its mark, and its goods, “ballast water
treatment unit; ballast water treatment apparatus, namely, sterilization device,”
are used in connection with environmental cleaning. At best, applicant’s mark has

5 App. Br. p. 4.
Serial No. 85633620

9

no meaning, but upon seeing registrant’s mark, the environmental connotation does
not serve to distinguish it from applicant’s mark, particularly in the context of
applicant’s goods.
We find the marks to be similar in meaning, sound, appearance and overall
commercial impression and, on balance, the similarities in the marks outweigh
their differences. This factor weighs in favor of likely confusion. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012).
With regard to the conditions of sale, applicant argues, without evidentiary
support, that:
[T]he sophistication of the consumers of both Applicant’s and
Registrant’s goods, as well as the potential high cost of these goods,
renders confusion unlikely. Those who seek Applicant’s ballast water
treatment unit and apparatus are business consumers who are well-
trained and familiar with the specific needs of the water treatment
industry. These consumers are making a highly specific purchase for a
highly specific purpose and would make that purchase with a high
level of care. Applicant’s goods, at their core, are complex machines,
and are not directed at average consumers with simple water
problems. Rather, these goods are used by professionals and others
who have a unique understanding of ballast water treatment needs or
a particular interest in the industry.6
Although applicant did not provide any evidence to support its statement,
based on the identification of the goods, we can conclude that they would not be
inexpensive and would require a thoughtful decision by a knowledgeable purchaser
and this factor weighs in applicant’s favor. However, the exact nature of the
purchasing process is not known and we cannot conclude based on this record that
the level of sophistication outweighs the other du Pont factors to obviate likely

6 App. Br. p. 4 (citation omitted).
Serial No. 85633620

10

confusion. See In re Digirad Corp., 45 USPQ2d 1841 (TTAB 1998) (declarations
from applicant’s corporate secretary and medical director establish that applicant’s
and registrant’s goods involve different medical specialties, are highly complex and
expensive, and purchases involve extensive discussions between seller and buyer).
Moreover, even if purchasers are sophisticated or knowledgeable in a particular
field that does not necessarily mean that they are sophisticated or knowledgeable in
the field of trademarks or immune from source confusion. Imagineering Inc. v. Van
Klassens Inc., 53 F.3d 1260, 1265, 34 USPQ2d 1526, 1530 (Fed. Cir. 1995).
In conclusion, because the marks are similar, the goods and services are
related, and the channels of trade and consumers are the same, confusion is likely
between applicant’s mark ECS and the mark in the cited registration.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.