Thorlabs, Inc.

Trademark Trial and Appeal BoardAug 7, 2020

88091849 (T.T.A.B. Aug. 7, 2020)

Mailed: August 7, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ——— In re Thorlabs, Inc. ——— Serial No. 88091849 ——— Harris A. Wolin, Myers Wolin, LLC, for Thorlabs, Inc. James Hill, Trademark Examining Attorney, Law Office 115, Daniel Brody, Manag- ing Attorney. ——— Before Zervas, Mermelstein, and Pologeorgis, Administrative Trademark Judges. Opinion by Mermelstein, Administrative Trademark Judge: Applicant seeks to register1 the standard-character mark KINESIS for a wide variety of optomechanical devices, including optomechanical devices being scientific apparatuses, namely, . . . motorized electric actuators; [and] optome- chanical devices in the nature of electrical controllers, namely, benchtop controllers; optomechanical devices in the nature of electronic benchtop controllers for laser di- odes and LEDs[,] current controllers for laser diodes . . . . 1 Application filed August 24, 2018, alleging first use and use in commerce as of May 25, 2015. We set out here only those goods of the Applicant and Registrant that the Examining At- torney has argued as the basis for refusal. Applicant’s goods are fully listed in Appendix A. This Opinion is not a Precedent of the TTAB Serial No. 88091849 - 2 - International Class 9. Registration has been finally refused on the ground that Applicant’s mark is likely to cause confusion or mistake or to deceive in view of the standard-character mark KINESYS, registered2 for a wide variety of goods, including apparatus, instruments and components for conducting, switching, transforming, accumulating, regulating or con- trolling electricity; electric actuators; sensors, namely, pressure sensors, flow sensors, temperature sensors, level sensors, sensors for logging state variables of liquids and gases, fluid flow sensors, viscosity sensors, gas sensors, conductivity sensors, sensors for determining relative per- mittivity, humidity sensors, optical sensors, magnetic sen- sors, capacitive sensors, chemical sensors, thermoelectric sensors, distance sensors, tilt sensors, particle counters, pi- ezoelectric actuators, electrostatic actuators and magnetic actuators. International Class 9. We affirm the refusal to register. I. Preliminary Matter Applicant attached two evidentiary appendices to its main brief. See App. Br., 7 TTABVUE 17–36. Both present evidence not previously in the record. (Applicant sub- mitted no evidence prior to appeal.) The Examining Attorney objected to this new evidence, pointing out that the record “should be complete prior to the filing of an appeal.” Ex. Att. Br., 9 TTABVUE 5 (quoting Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d)). Applicant did not respond to the Examining Attorney’s objection. Instead, 2 Reg. No. 4848935, issued November 10, 2014. The drawing of the mark in the registration is displayed as KineSys, but in light of the standard-character claim, we depict it in upper- case letters (KINESYS). See In re Calphalon Corp., 122 USPQ2d 1153, 1153 n.1 (TTAB 2017). Again, we have set out the goods focused on by the Examining Attorney. Registrant’s goods and services are fully listed in Appendix B. Serial No. 88091849 - 3 - Applicant attached additional new evidence to its reply brief. Reply Br., 12 TTABVUE 12–15. We sustain the Examining Attorney’s objection. In the course of an ex parte ap- peal, “[i]f the appellant . . . desires to introduce additional evidence after an appeal is filed, the appellant . . . should submit a request to the Board to suspend the appeal and to remand the application for further examination.” Trademark Rule 2.142(d). The procedure set out in Rule 2.142(d) allows the Examining Attorney an opportunity to consider and respond to the new evidence in the first instance and to submit re- sponsive evidence if appropriate. Applicant’s submission of new evidence with its briefs does not allow the Examining Attorney the opportunity to consider and respond to the new evidence. “The Board will generally not consider evidence in the first in- stance; that is the job of the examining attorney.” In re District of Columbia, 101 USPQ2d 1588, 1591 (TTAB 2012). The Examining Attorney’s objection is sustained and, therefore, the evidence sub- mitted with Applicant’s briefs will not be considered. Trademark Rule 2.142(d). II. Likelihood of Confusion Our determination under Trademark Act § 2(d) is based on an analysis of the pro- bative facts in evidence that are relevant to the factors bearing on the issue of likeli- hood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Serial No. 88091849 - 4 - Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). A. Similarity or dissimilarity of the marks In a likelihood of confusion analysis, we compare the marks in their entireties for similarities and dissimilarities in appearance, sound, connotation, and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are suffi- ciently similar in terms of their commercial impression such that persons who en- counter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1377, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation and internal quotation marks omitted). Applicant’s mark is KINESIS. The mark in the cited registration is KINESYS. The marks are highly similar — in fact, nearly identical. Slight differences in marks do not usually result in a finding of dissimilarity. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985). The marks are both in standard-character format, and Applicant’s mark could thus be depicted in any type style, size, or color — includ- ing any stylization used by the cited registrant. See In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983) (“the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”). In spelling, the marks differ only in their penultimate letter, Applicant’s mark Serial No. 88091849 - 5 - being spelled with an “I” while the registered mark is spelled with a “Y.” While we do not ignore this difference, we find that the marks nonetheless look nearly identical. See Elizabeth Arden Sales Corp. v. Faberge, Inc., 304 F.2d 891, 134 USPQ 186, 187 (CCPA 1962) (“the words Extraordinaire and Extrordinaire are the same for all practical purposes”). Moreover, we find it highly likely that KINESIS and KINESYS would be pro- nounced identically, with the last syllable in Applicant’s mark pronounced like –sis as in “basis” and the last syllable in the registrant’s mark pronounced like sys– as in “system.” Finally, we note that KINESIS refers to “the movement of an organism in response to a stimulus, as light.” Dictionary.com kinesis (last viewed July 24, 2020).3 While the registered mark is not a properly spelled word, because it is highly similar in appearance and identical in pronunciation to Applicant’s mark, it is likely to sug- gest the same meaning to consumers. See Contour Chair-Lounge Co. v. Englander Co., 324 F.2d 186, 139 USPQ 285, 288 (CCPA 1963) (finding CONTOUR and CONTUR similar: “but a slight misspelling . . . with identical pronunciation and meaning”). Applicant does not disagree with the Examining Attorney’s contention that the marks are similar, or even address the issue. Nor does Applicant identify the similar- ity of the marks as among the “relevant factors” in this case. App. Br., 7 TTABVUE 3 The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 88091849 - 6 - 5–6. To the contrary, we find the first du Pont factor highly relevant. In a likelihood of confusion analysis, “the ‘similarity or dissimilarity of the marks in their entireties’ is a predominant inquiry.” Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (quoting du Pont, 177 USPQ 567) (emphasis added). We find that Applicant’s mark is nearly identical to the mark in the cited regis- tration. This factor strongly favors a finding that confusion is likely. B. Similarity or dissimilarity and nature of the goods In comparing the goods, “[t]he issue to be determined . . . is not whether the goods . . . are likely to be confused but rather whether there is a likelihood that purchasers will be misled into the belief that they emanate from a common source.” Helene Curtis Indus. Inc. v. Suave Shoe Corp., 13 USPQ2d 1618, 1624 (TTAB 1989). It is not neces- sary that the parties’ goods be similar or even competitive to support a finding of likelihood of confusion. It is sufficient if the goods are related in some manner or that the conditions surrounding their marketing are such that they would be encountered by the same persons under circumstances that could, in light of the similarity of the marks, give rise to the mistaken belief that they come from or are associated with the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). We base our determination on the goods as identified in the application and cited registration, construed in a manner most favorable to the prior registrant. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Applicant’s identification of goods and that of the cited registrant are lengthy. We Serial No. 88091849 - 7 - will not attempt a comprehensive comparison of the goods; when comparing goods under the second du Pont factor, similarity need not be shown as to all of the goods in the application. “[I]t is sufficient for finding a likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a par- ticular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing Tuxedo Monopoly, 209 USPQ at 988). See also In re i.am.sym- bolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). In considering the goods recited in an application or registration, we are con- strained to read the goods as they are written. Each good stands on its own; goods are not to be read “in pari materia with, or to be limited by, the other wording in the identification of” goods, In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167–68 (TTAB 2013) (citing In re Thor Tech Inc., 90 USPQ2d 1634 (TTAB 2009)), nor may an applicant’s or a registrant’s goods be narrowed by extrinsic evidence. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Thus, Applicant’s attempt to limit the Registrant’s goods by reference to Registrant’s website , Reply Br., 12 TTABVUE 6, is futile both because it is unsupported without consideration of Applicant’s improperly submitted evidence and more importantly because such evi- dence is inappropriate even when timely submitted. Applicant argues that the goods in the cited registration are limited to “ ‘[c]ontrol equipment and apparatus for elevator controllers, namely, electric motors, controllers and control devices’ and ‘[e]lectronic control systems for vehicles, in particular for Serial No. 88091849 - 8 - hydraulic and pneumatic installations.’ ” App. Br., 7 TTABVUE 10. We disagree. Although the Class 9 identification in the cited registration begins: “[c]ontrol equipment and apparatus for elevator controllers, namely, electric motors, controllers and control devices; . . . ,” the semicolon after “devices” separates this clause from the rest of the identification. As a result, the preamble of the quoted language (“[c]ontrol equipment and apparatus for elevator controllers, namely . . .”) applies only to “electric motors, controllers and control devices.” The goods following each of the succeeding semicolons are considered independent of any restriction to “elevator controllers” or “hydraulic and pneumatic installations.”4 Midwest Gaming & Entm’t, 106 USPQ2d at 1166–67 & n.4 (TTAB 2013) (“Under standard examination practice, a semicolon is used to separate distinct categories of goods or services.”); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §§ 1402.01(a), 1902.02(f) (Oct. 2018) (semicolons are “used to separate distinct categories of goods or services within a single class”); Tuxedo Monopoly, Inc., 209 USPQ at 988 (construe identification of goods in a manner favorable to prior registrant). The goods in the cited registration include “electric actuators.” Applicant’s goods include “optomechanical devices being scientific apparatuses, namely, . . . motorized electric actuators.” We agree with the Examining Attorney, Ex. Att. Br., 9 TTABVUE 8, that the registrant’s “electric actuators” must be construed to comprise all electric 4 Applicant appears to understand this principle as it has used commas and semicolons to separate goods and categories of goods in its own identification. Serial No. 88091849 - 9 - actuators, including Applicant’s more narrowly described “optomechanical . . . motor- ized electric actuators.” In re Elbaum, 211 USPQ 639, 640 (TTAB 1981) (we must “presume[ ] that the scope of the registration encompasses all goods of the nature and type described”). Because the Registrant’s electric actuators must be construed to in- clude Applicant’s more specifically described motorized electric actuators, we con- clude that the goods are legally identical in part and to that extent identical. Am. Lava Corp. v. Multronics, Inc., 461 F.2d 836, 174 USPQ 107, 108 (CCPA 1972).5 We find that the second du Pont factor supports a finding of likely confusion. C. Channels of trade; conditions under which and buyers to whom sales are made Under the third du Pont factor, we consider “[t]he similarity or dissimilarity of established, likely-to-continue trade channels,” and under the fourth du Pont factor, we consider “[t]he conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” Du Pont, 177 USPQ at 567. Goods identified in an application or registration are presumed to travel in all usual channels of trade and to all usual customers for goods of the type identified. In re Elbaum, 211 USPQ at 640. Therefore, when goods are shown to be legally identical in part, we must consider them to move in the same channels of trade to the same purchasers. Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 5 It is possible that there are additional goods in the subject application that are identical or similar to goods in the cited registration, but identification of one such good is sufficient for a determination of this appeal. Tuxedo Monopoly, 209 USPQ at 988 Serial No. 88091849 - 10 - 1801 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550 (2019) (“the TTAB properly fol- lowed our case law and presumed that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods” (cleaned up)); see In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even in the absence of evidence regarding channels of trade and classes of consumers, the Board may rely on this legal presumption in determining likelihood of confusion). Because we have found Applicant’s actuators to be included within — and to that extent legally identical to — the Registrant’s more broadly described actuators, we must also presume that such identical goods move in the same channels of trade to the same prospective purchasers. Nonetheless, Applicant argues that confusion is not likely because the customers for such goods are sophisticated “optomechanical specialists.” App. Br., 7 TTABVUE 14. We agree that Applicant’s goods are clearly not ordinary household items that would be purchased by the average consumer. As identified, Applicant’s actuators are “optomechanical devices being scientific apparatuses.” Such an identification sug- gests goods which are purchased with care for specific purposes. Cf. In re Homeland Vinyl Prods., Inc., 81 USPQ2d 1378, 1380 (TTAB 2006) (“[F]ence rails are not impulse purchases and the construction and installation of a fence would require some level of knowledge and experience. We thus would expect that such purchasers would ex- ercise a relatively high degree of care in their purchasing decisions.”). This factor by itself favors a finding of no likelihood of confusion. But a finding that customers are sophisticated is not necessarily conclusive of the Serial No. 88091849 - 11 - question of likelihood of confusion. As already discussed, the marks at issue are nearly identical and the goods are identical in part. Under such circumstances, con- fusion is often found likely despite customer sophistication. “That the relevant class of buyers may exercise care does not necessarily impose on that class the responsibil- ity of distinguishing between similar trademarks for similar goods. ‘Human memo- ries even of discriminating purchasers . . . are not infallible.’ ” In re Research & Trad- ing Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)); Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962) (“Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field.”); In re Wilson, 57 USPQ2d 1863, 1865– 66 (TTAB 2001) (where marks are very similar and goods related, confusion may be likely even among sophisticated purchasers). Because we have found the goods to be legally identical, we apply the Viterra pre- sumption and find that Applicant’s actuators and those of the cited registrant move in the same channels of trade and to the same customers, factors which support a finding of likely confusion. While the goods at issue suggest that Applicant’s custom- ers are sophisticated and likely exercise heightened care in their purchases, such so- phistication and heightened care is outweighed by the other factors at hand, includ- ing the legally identical goods (motorized electric actuators) involved and the nearly identical marks at issue. Serial No. 88091849 - 12 - D. Applicant’s prior registration Finally, Applicant notes its ownership of Registration No. 4851516, for the mark KINESIS for use on a variety of “optomechanical devices.” App. Br., 7 TTABVUE 7. Applicant makes two arguments based on its prior registration: (1) That its current application should be treated as a “companion application” to the application under- lying its ’516 Registration, and that the Examining Attorney should approve its cur- rent application “consistently with the registration.” App. Br., 7 TTABVUE 7–8, and (2) that its prior registration “has co-existed with the” cited mark without confusion. Id. at 8. Before considering Applicant’s arguments we must determine whether Applicant’s registration is of record. Applicant first mentioned the registration in its response to the first Office Action, but did not submit a copy of it for the record or provide a com- plete listing of the goods to which the registration applied. Response, Apr. 19, 2019 (“Applicant would like to advise the Office that it owns registration for KINESIS (U.S. Registration No. 4,851,516 registered on November 10, 2015) that is premised for optomechanical devices and equipment.”). In his final Office Action, the Examining Attorney did not respond specifically to Applicant’s argument regarding its registra- tion or advise Applicant that the listed registration was not of record. Final Office Action, May 8, 2019. But Applicant again raised the issue in a request for reconsid- eration: Applicant respectfully submits that the current application (the KINESIS Application) should be treated as a Compan- ion Registration pursuant to TMEP 702.03(a)(iii) of Appli- cant's U.S. Registration 4851516 for the mark KINESIS (the KINESIS Registration). Pursuant to 702.03(a)(iii), in Serial No. 88091849 - 13 - a later application, the examining attorney should act con- sistently with the registration, unless it would be clear er- ror (TMEP 706.01). The KINESIS Registration covers op- tomechanical devices in the nature of optical posts, tubes, stages, cage systems, lenses, mirror and so forth, generally, and more specifically “Optomechanical devices in the na- ture of optical posts for precision alignment, lens tubes, translation stages, optomechanical cage systems consisting primarily of optomechanical mounts for optical lenses or optical mirrors for optomechanical purposes, optomechani- cal guides for optomechanical purposes, optical rails, mounting brackets and adapters for optomechanical cage assemblies, optomechanical mounts, optomechanical mir- ror mounts, kinematic optomechanical mounts, fixed opto- mechanical mounts, translation optomechanical mounts, rotation optomechanical mounts, optomechanical gimbal mounts, optomechanical filter mounts, v-shape optome- chanical mounts, stage optomechanical mounts, apertures, shelves adapted to hold optomechanical instruments and optomechanical enclosures adapted to protect optomechan- ical and optical instruments.” The entirety of Applicant's present identification of goods relates to goods associated with optomechanical systems, which is clearly distinct from Registrant's goods. Req. for Recon., Nov. 8, 2019. Again, a copy of the registration was not submitted. In denying Applicant’s request for reconsideration, the Examining Attorney ad- dressed Applicant’s argument based on its prior registration but again failed to advise Applicant that its listed registration was not of record. Recon. Letter, Nov. 23, 2011. We find that the Examining Attorney’s failure to object to the listing of Applicant’s registration constituted a waiver of any such objection. We will therefore consider the listed registration “for whatever limited probative value such evidence may have.” In re City of Houston, 101 USPQ2d 1534, 1536 (TTAB 2009) (quoting In re Broyhill Fur- niture Indus. Inc., 60 USPQ2d 1511, 1513, n.3 (TTAB 2001)). We therefore consider Applicant’s registration of KINESIS for the goods listed in Applicant’s request for Serial No. 88091849 - 14 - reconsideration. 1. Consistent examination While its reasoning is not entirely clear,6 Applicant apparently argues that it would be inconsistent for the USPTO to refuse registration to the subject application, having granted registration to both Applicant’s prior registration and the cited regis- tration. Under the thirteenth du Pont factor, the Board has addressed similar arguments on several occasions. See, e.g., In re Strategic Partners, Inc., 102 USPQ2d 1397 (TTAB 2012), In re Allegiance Staffing, 115 USPQ2d 1319 (TTAB 2015), In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790 (TTAB 2017). The cases are highly fact- 6 Applicant cites two sections of the TMEP in support of its argument. The first section states that generally, an Examining Attorney should treat an application consistently with a related application that has matured to registration unless it would be clear error to do so, but em- phasizes that “the USPTO is not bound by the decisions of the examining attorneys who ex- amined the applications. . . . Eligibility for registration must be determined on the basis of the facts that exist at the time registration is sought.” TMEP § 702.03(a)(iii). The second section explains the meaning of “clear error,” but states that the “standard is merely an ad- ministrative guideline. It does not confer on an applicant any entitlement to a showing of clear error, nor does it impose a higher standard of proof on the examining attorney than is otherwise required to establish a prima facie case for the refusal or requirement.” TMEP § 706.01. These sections do not apply to this case. First, the sections make clear that the Examining Attorney is not bound by the decisions of other examining attorneys. The sections provide guidance for Examining Attorneys, but do not entitle Applicant to registration, particularly if clear error would result. Second, Applicant currently seeks registration in connection with a significantly broader range of goods than those set out in Applicant’s prior registration, creating a different situation than that at the time Applicant’s prior registration was exam- ined and registered. Acting “consistently” — by passing the current application to publication — would require ignoring the additional goods in Applicant’s current application, clearly an abdication of the Examining Attorney’s statutory obligation to examine the application for registrability. Trademark Act § 12(a), 15 U.S.C. § 12(a). Serial No. 88091849 - 15 - specific, although they all deal with situations in which it is argued that a new regis- tration should be issued notwithstanding citation under Trademark Act § 2(d) of a conflicting registration because the failure to do so would be seemingly inconsistent with the Office’s previous grant of one or more other registrations to an applicant. Applicant’s argument that consistency requires approval of the subject application is not convincing for two reasons. First, it is significant that both Applicant’s prior registration and the cited registration were issued less than five years ago. Under such circumstances, Applicant could seek to cancel the cited registration if there are grounds to do so. Cf. USA Warriors, 122 USPQ2d at 1793. While we realize that a cancellation proceeding would impose a burden on Applicant, it would be preferable to registering conflicting marks if confusion would otherwise be likely. In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (“we will not compound the problem of the registration of a confusingly similar mark by permitting such a mark to register again”). But more importantly, we find that Applicant’s prior registration is not a signifi- cant factor to the registrability of its current application because the goods in the current application are significantly different from the goods in Applicant’s prior reg- istration. Applicant’s current application includes many goods not identified in its prior registration — including “motorized electric actuators.” (Applicant’s prior reg- istration does not include actuators of any sort.) The fact that Applicant was success- ful in obtaining a registration for KINESIS for certain goods does not mean that it is Serial No. 88091849 - 16 - entitled to an additional registration of the mark for different goods.7 While we have considered Applicant’s prior registration and the intervening cited registration, we do not find it inequitable or inconsistent to refuse registration to the subject application, notwithstanding the existence of Applicant’s prior registration. 2. Coexistence Applicant also contends that its registration “has co-existed with the [cited mark] for over four and half [sic] years without confusion.” App. Br., 7 TTABVUE 8. Under the eighth du Pont factor, we must consider any evidence of “[t]he length of time dur- ing and conditions under which there has been concurrent use without evidence of actual confusion.” Du Pont, 177 USPQ at 567. Note, however, that this factor requires examination of the actual circumstances and conditions under which Applicant’s and Registrant’s marks have been concurrently used. In re Guild Mortgage Co., 2020 USPQ2d 10279, *6 (TTAB 2020) (“The eighth du Pont factor . . . requires us to look at actual market conditions, to the extent there is evidence of such conditions of rec- ord.”); see also In re Thomas, 79 USPQ2d 1021, 1028 (TTAB 2006) (“[T]he fact that the cited mark and MARCHE NOIR at one time coexisted on the register does not prove that they coexisted during that time without confusion in the marketplace.”). Because Applicant submitted no evidence of its actual use and that of the cited regis- trant, there is nothing to consider under this du Pont factor. 7 Indeed, the difference in goods between Applicant’s prior registration and its current appli- cation may explain why the cited registration was not barred by Applicant’s prior application, while the cited registration has been cited against Applicant’s new application. Serial No. 88091849 - 17 - III. Conclusion We have found the marks to be nearly identical and at least some of Applicant’s goods (“optomechanical devices being scientific apparatuses, namely, . . . motorized electric actuators”) to be legally identical to at least some of the goods in the cited registration (“electric actuators”). Those goods are presumed to be sold to the same purchasers in the same channels of trade. While we have taken into account the likely sophistication of Applicant’s customers, we do not find that factor to outweigh the other factors. We have likewise considered Applicant’s prior registration, but for the reasons discussed, we do not give it substantial weight. Having considered all of the relevant evidence and argument, we find Applicant’s mark likely to cause confusion or mistake or to deceive. Decision: The refusal to register under Trademark Act § 2(d) is affirmed. Appendix A Mark: KINESIS Application No. 88091849 Class 9: Optomechanical devices being scientific apparatuses, namely, motor- ized one-axis positioners, motorized X-Y positioners, motorized XYZ po- sitioners, motorized multi-axis positioners with up to six degrees of free- dom, motorized goniometers, motorized rotation stages, motorized post mounts, motorized irises, motorized optomechanical mounts and posi- tioners, motorized electric actuators, motorized mounting platforms, motorized gimbal mounts, motorized shutters, motorized lens position- ers, motorized laboratory jacks, motorized kinematic optical mounts, motorized translation stages, motorized tilt platforms, motorized opto- mechanical components enabling mounts and cage rods to be joined to- gether to provide a cage assembly with a common optical axis; motorized optomechanical components being scientific apparatuses that enable positioning of optical components, light sources, or sensors, namely, op- tical post assemblies consisting of an optical post, post holder, and base; optomechanical devices in the nature of lasers for nonmedical purposes; optomechanical devices in the nature of electrical controllers, namely, benchtop controllers; optomechanical devices in the nature of electronic benchtop controllers for laser diodes and LEDs current controllers for laser diodes; optomechanical devices in the nature of current controllers for LEDs; optomechanical devices in the nature of motorized optoelec- tronics mounts for LEDs; optomechanical devices in the nature of mo- torized optoelectronics mounts for laser diodes; optomechanical devices being scientific apparatuses in the nature of translation stages, optome- chanical cage systems consisting primarily of optomechanical mounts for optical lenses or optical mirrors for optomechanical purposes, opto- mechanical light guides for optomechanical purposes, optomechanical mounts, optomechanical mirror mounts, kinematic optomechanical mounts, fixed optomechanical mounts, translation optomechanical mounts, rotation optomechanical mounts, optomechanical gimbal mounts, optomechanical filter mounts; motion controllers for use with optomechanical devices in the nature of translation stages, optomechan- ical cage systems consisting primarily of optomechanical mounts for op- tical lenses or optical mirrors for optomechanical purposes, optome- chanical guides for optomechanical purposes, optomechanical mounts, optomechanical mirror mounts, kinematic optomechanical mounts, fixed optomechanical mounts, translation optomechanical mounts, ro- tation optomechanical mounts, optomechanical gimbal mounts, optome- chanical filter mounts, v-shape optomechanical mounts, and stage opto- mechanical mounts, and apertures; optomechanical devices in the na- ture of fiber-coupled laser diodes. Serial No. 88091849 - 19 - Appendix B Mark: KINESYS Registration No. 4848935 Class 7 Hydropneumatic storage units being machine parts; Accumulators in the nature of batteries, namely, piston accumulators, bladder accumu- lators, diaphragm accumulators, bellows accumulators, spring accumu- lators, in each case being parts of machines and accumulator installa- tions consisting of such accumulators, being parts of machines, includ- ing in the field of offshore and deep sea applications; Hydraulic, hydro- pneumatic and reflective sound, vibration and pressure dampers, reso- nators, silencers, in each case being parts of machines; Filtration de- vices and filters, being parts of machines, for filtration and separation technologies, usable for all technical, chemical, biological, and process engineering applications; Replacement parts for the aforesaid goods; Coalescers, as parts of machines; Air, oil and gas filters, namely, high- pressure, medium-pressure and low-pressure filters, liquid filters, pipe filters and process line filters, gas filters, namely, for seal gas systems, cyclone filters and other separating filters, filling filters and ventilation filters, full-flow filters and partial-flow filters, multistage filters, return flow filters, namely, suction filters and return flow suction filters, tank- integrated filters, namely, ventilating and drying devices, drum filters and strip winding filters, perforated plate filters and screen filters, of- fline filters and inline filters and spin-on filters, plastic melt filters, membrane filters, filter units together with draining apparatus, all be- ing parts of machines; Air, oil and gas filter component parts, namely, perforated plate and screen filter elements, gap-type tube filter ele- ments, rheological filter elements, flow filter elements, filter candles, filter cartridges, filter housings, filter discs and disc filter elements, fil- ter mats, filter pots, filter cloths, filter bags, filter strips, filter packets and deep filter elements, namely, filter fabric materials, in each case being parts of machines; Cooling and heating devices, namely, heat ex- changers being parts of machines for stationary and mobile applications for exchanging heat between liquid and/or gaseous media; machine parts, namely, shut-off equipment, shut-off apparatus, stop valves, switch-over devices and valves being parts for machines, in particular for hydraulic and pneumatic propellants and media; In particular inflow pressure and circulating pressure balances, flow control valves, priority valves, shuttle valves, seat valves and slide valves, throttle valves, dia- phragms, directional control valves, non return valves, pressure valves, pressure control valves and pressure limiting valves, optionally with in- dicators and monitors, vent valves; Control apparatus being parts of machines, in particular for hydraulic and pneumatic installations, in particular flow-dividers and control blocks, namely, valve control blocks; Hydraulic or pneumatic operating cylinders, being parts of ma- chines; Hydraulic and pneumatic motors and engines, gears, couplings, pumps, motor pump units and compressors, all being parts of machines; Serial No. 88091849 - 20 - Mark: KINESYS Registration No. 4848935 Hydraulic or pneumatic drive units for land, air and water vehicles and being parts of machines, namely, drives for motors, drives for vacuum pumps, gears and enclosed drives for industrial machinery, hydrostatic drives other than for land vehicles, fluid drive couplings, gear drives, parts of wind turbine motors, namely, compact drive systems, variable frequency drives for large power applications in the oil and gas, metal, marine and other industries, variable speed drives for use with fluid pumping systems, variable speed hydrokinetic and hydrodynamic drive which transmits power through the kinetic energy principle of a fluid or liquid in motion, in particular for process engineering, for general ma- chine construction and for vehicles, in particular for construction ma- chines, for machine tools, for machines for manufacturing plastics, for drives for tools, for presses, for transport installations, for shipping and aeronautics, for chemical and reactor technology, for mining and iron and steel works, and for rolling mills, in particular consisting of at least one hydraulic pump, at least one drive motor and at least one container of metal or plastic for liquids; Electric and hydraulic motors, not for land vehicles; Machine parts, namely, electrical controlling devices, in par- ticular electric, electro-mechanical and electro-hydraulic control appa- ratus; Lubricating apparatus and equipment, namely, lubricating ma- chines; supply apparatus for stationary and mobile application, namely, distributors for hydraulic and pneumatic installations and machines; Parts of hydraulic and pneumatic machines, namely, mechanically op- erated clamping apparatus and clamping machine tools; Motor-driven hydraulic pressure and feed pumps, being parts of machines, adjustable and non-adjustable; Hydraulic drive units for elevator controllers, transport controllers and lift controllers, in particular consisting of a hydraulic pump, a drive motor and a liquid container of metal or plastic; Machines for industrial washing and cleaning; Hydraulic and electro- mechanical drives for machines (not computer drives); Electric, hydrau- lic and electro-hydraulic actuators for all types of transmissions, in par- ticular for variable speed motors; Electric motors for machines and for power tools, servomotors. Class 9 Control equipment and apparatus for elevator controllers, namely, elec- tric motors, controllers and control devices; Resonators; Indicator, mon- itor and control apparatus for level, pressure, temperature and quantity for gaseous and liquid media, manometer monitoring switches; Switch- ing apparatus, monitoring apparatus and diagnostic apparatus for use in electronic measurement technology; Apparatus, instruments and components for conducting, switching, transforming, accumulating, reg- ulating or controlling electricity; Electrical transducers; Electric actua- tors; Sensors, namely, pressure sensors, flow sensors, temperature sen- sors, level sensors, sensors for logging state variables of liquids and gases, fluid flow sensors, viscosity sensors, gas sensors, conductivity Serial No. 88091849 - 21 - Mark: KINESYS Registration No. 4848935 sensors, sensors for determining relative permittivity, humidity sen- sors, optical sensors, magnetic sensors, capacitive sensors, chemical sensors, thermoelectric sensors, distance sensors, tilt sensors, particle counters, piezoelectric actuators, electrostatic actuators and magnetic actuators; Active and passive electric and electronic components, namely, capacitors, connectors, filters, oscillators, relays, switches, transformers, resistors, semiconductors, integrated circuits, rectifiers, transistors, thick-film materials, thin-film materials, solid-state memo- ries; Microwave antenna; Magnets, namely, in combination with valve switching components, except ignition magnets for motors and engines; Optical equipment and apparatus, namely, cameras, microscopes, opti- cal recording apparatus, in particular for analysis and metrology; Opti- cal particle counting apparatus; Components for electronic apparatus, logical elements, electrotechnical and electronic component parts and units consisting thereof, namely, printed circuits, semiconductor de- vices, integrated circuits, memory devices in the nature of memory boards, memory cards and semi-conductor memory units, electric resis- tors and microprocessors; Frequency transformers; Circuit boards with electrotechnical and electronic assemblies and component parts of com- puters and data processing installations, and electric and electronic in- stallations for monitoring, testing and controlling industrial working processes and of apparatus and instruments in land, air and water ve- hicles, namely, semi-conductors; Electronic, electrotechnical and me- chanical apparatus, equipment and instruments, namely, for computers and systems constructed from the aforesaid goods, namely, peripheral apparatus connected thereto for the acquisition, display, output and transmission of data and for manufacturing and process technology; Computers, in particular computers for research, scientific and indus- trial purposes, in particular for technical and natural science applica- tions; Dosimeters; Control apparatus and vehicle stabilisation systems, namely, roll stabilisation devices; Electronic control systems for vehi- cles, in particular for hydraulic and pneumatic installations, in partic- ular transition coils and control blocks, including valve control blocks. Class 37 New installation, construction, maintenance, repair, inspection services in the course of construction, and replacement of hydraulic, electric and electronic installations, devices and their components; Maintenance of mobile and stationary filter systems, cross-flow filtration and solvent recovery; Maintenance of fluids such as hydraulic and cooling lubricant liquids and gases; Processing and disposal of tribological systems, in- cluding filters and filter components in compliance with environmental regulations, including emission standards and other environmental cri- teria.