Vaisala Oyj

Trademark Trial and Appeal Board

Sep 13, 2006

No. 78533852 (T.T.A.B. Sep. 13, 2006)

Mailed:
September 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vaisala Oyj
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Serial No. 78533852
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D. Peter Hochberg of D. Peter Hochberg Co., L.P.A. for
Vaisala Oyj.

Michael Webster, Trademark Examining Attorney, Law Office
102 (Karen Strzyz, Managing Attorney).
_______

Before Zervas, Walsh and Wellington, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Vaisala Oyj (“applicant”) filed, on December 16, 2004,
an application to register on the Principal Register the
mark VAISALA METCAST for “meteorological measurement
apparatus, namely, electronic signal transmitters and
electronic signal receivers, computer hardware, computer
operational software programs, microprocessor based
automatic meteorological weather station and computer link
therefor, all for use in sending, receiving and
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser No. 78533852
2
interpreting weather data information from and between
meteorological and environmental observations systems” in
International Class 9. The application is based on
applicant's assertion of a bona fide intention to use the
mark in commerce.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark METACAST (in standard
character form) for “computer software for presenting
meteorological information” in International Class 9; and
“scientific and industrial products research and
development; computer programming for others; rental of
computer programs; licensing of intellectual property;
meteorological forecasting; consultancy in the field of
engineering” in International Class 42.1
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act is based on an analysis of all of the facts in evidence

1 Registration No. 2310174, issued January 25, 2000. Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser No. 78533852
3
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, 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 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). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the similarity and dissimilarity of
the marks. Our focus is on whether the marks are similar
in sound, appearance, meaning, and commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005).
Applicant's mark is a combination of the terms METCAST
and VAISALA, and applicant maintains that VAISALA is its
house mark. See p. 8, response to first Office action. Of
course, there are significant similarities between the
second term in applicant's mark, i.e., METCAST, and the
only term in registrant’s mark, i.e., METACAST. Except for
the letter “A” in the middle of registrant’s mark, the
Ser No. 78533852
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terms are spelled identically. These terms are hence
similar in sound and appearance.
On the question of meaning, the examining attorney
maintains at p. 5 of his brief that METCAST and METACAST
may be viewed as a combination of “meteorology” and
“forecast,” both of which have relevance in the context of
applicant's and registrant’s goods. “Met.” is an
abbreviation for, inter alia, “meteorological,”
“meteorology,” and “metropolitan.” See definition of
“met.” in Webster's Third New International Dictionary
Unabridged (Merriam-Webster 2002). “Cast” is defined in
the same dictionary as, inter alia, “a forecast or
conjecture concerning future events or conditions.” We
take judicial notice of these definitions. See University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983). The combination METCAST hence
could be perceived by purchasers as meaning “meteorological
forecast” or “metropolitan forecast.”
There is no definition in the record or in Webster’s
Third New International Dictionary of “meta” as a word or
an abbreviation. The examining attorney points out that
both “met-” and “meta-”, as prefixes, appear in an English
language dictionary. “Met-” is identified in the Merriam-
Ser No. 78533852
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Webster Online Dictionary entry made of record with
applicant's request for reconsideration as a variant of
meta-; and both hence are defined in relevant part as “1 a:
occurring later than or in succession to: after … [;] b:
situated behind or beyond … [;] c: later or more highly
organized or specialized form of … [;] 2: change :
transformation … [;] 3 … more comprehensive: transcending.”
Thus, if MET and META are considered as prefixes, neither
METCAST nor METACAST have any particular meaning in the
context of applicant's and registrant’s goods and services,
even if CAST is defined as “forecast.”
If purchasers view METCAST as a combination of
“metropolitan” or “meteorological” or “meteorology” and the
English word “cast,” the question arises as to whether
METCAST is a descriptive or highly suggestive term in
connection with applicant's goods and services. This
question is important in considering the registrability of
applicant's VAISALA METCAST mark because there is a line of
cases holding that the addition of other matter, such as a
house mark, primary mark or other material, to one of two
otherwise similar marks, will not necessarily be sufficient
to distinguish the marks as a whole. See, generally, First
International Services Corp. v. Chuckles Inc., 5 USPQ2d
1628 (TTAB 1988); In re Champion Oil Company, 1 USPQ2d 1920
Ser No. 78533852
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(TTAB 1986); In re Christian Dior, S.A., 225 USPQ 533 (TTAB
1985); In re C. F. Hathaway Company, 190 USPQ 343 (TTAB
1976). The additional matter has been found sufficient to
distinguish the marks under circumstances where the
appropriated matter is highly suggestive or merely
descriptive or has been frequently used or registered by
others in the field for the same or related goods or
services. See, e.g., Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313 (TTAB 2005) (NORTON
MCNAUGHTON ESSENTIALS for ladies’ sportswear not
confusingly similar to ESSENTIALS for women’s clothing
because ESSENTIALS is a highly suggestive term for articles
of clothing); In re Merchandising Motivation, Inc., 184
USPQ 364 (TTAB 1974) (MEN'S WEAR for a semi-monthly
magazine not confusingly similar to MMI MENSWEAR for
fashion consulting for men because “MENSWEAR” is merely
descriptive of such services).
On the record before us, we do not find METCAST to be
merely descriptive or even highly descriptive of
applicant's goods. There is no evidence regarding use of
the term by purchasers in the meteorological field or that
the term would have any significance to purchasers.
Applicant has not argued that the term is descriptive or
highly suggestive. Also, applicant has submitted many
Ser No. 78533852
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registrations with its request for reconsideration for
marks similar in construction to applicant's mark such as
KITECAST, SKICAST, DRIVECAST, CLIMATECAST and WAVECAST for
weather-related goods and services, and these registrations
are on the Principal Register. We therefore find that
applicant may not avail itself of cases such as Knight
Textile, supra.
Also, to the extent that METCAST and METACAST have any
meaning to purchasers, we find that their meaning is
similar.
As for the commercial impression of METCAST and
METACAST, as noted earlier, the examining attorney points
out that both “met-” and “meta-”, as prefixes, appear in an
English language dictionary; and that “met-” is a variant
of “meta-.” Because “met-” as a prefix is a variant of
“meta-” and does not impart a different meaning to
registrant’s mark, we find that purchasers will not give
the “A” much weight and will find the commercial
impressions of the marks are the same.
Applicant has argued at p. 10 of its brief that “the
words MET, META and CAST are in widespread use alone or in
combination with other words and/or design elements (or
with each other) for a high number of marks … which cover
various goods and services in the meteorology industry.
Ser No. 78533852
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This common use of ‘MET,’ ‘META’ and ‘CAST’ reduces the
likelihood of confusion with other marks employing those
terms.” In this regard, applicant cites “at least eighty-
five different registrations” for marks containing MET
and/or CAST which cover various goods and services in the
meteorology industry” and which were made of record with
applicant's request for reconsideration.
The Board has held in the past that “[e]vidence of
widespread third-party use, in a particular field, of marks
containing a certain shared term is competent to suggest
that purchasers have been conditioned to look to the other
elements of the marks as a means of distinguishing the
source of goods or services in the field.” In re Broadway
Chicken Inc., 38 USPQ2d 1559 (TTAB 1996).
The problem with applicant's evidence and hence its
argument is that third-party registrations, by themselves,
are not entitled to much weight in determining whether
confusion is likely. See In re Hub Distributing, Inc., 218
USPQ 284 (TTAB 1983). Such registrations are not evidence
of what happens in the marketplace or that the public is so
familiar with the use of such marks that the other elements
are emphasized in order to allow purchasers to distinguish
among such marks. National Aeronautics and Space
Administration v. Record Chemical Co., 185 USPQ 563 (TTAB
Ser No. 78533852
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1975). Also, only two registrations include both MET and
CAST as part of the marks. These two registrations
(Registration Nos. 2525133 and 2770005) both contain the
term METROCAST, which has a different connotation than
either applicant's or registrant’s marks due to their
inclusion of the English word METRO. Applicant's argument
is thus not supported by substantial evidence and is not
persuasive. Moreover, if applicant’s mark should be
treated as a relatively weak mark, we note that even weak
marks registered on the Principal Register are entitled to
the statutory presumptions of Section 7(b) of the Act, and
hence should be protected against the registration by a
subsequent user of a highly similar mark for closely
related goods. See Hollister Incorporated v. Ident A Pet,
Inc., 193 USPQ 439 (TTAB 1976).
Much of the foregoing discussion has involved the
second term in applicant's mark. Applicant's mark also
contains the initial term VAISALA, which is applicant's
house mark, part of applicant's corporate name and the
subject of Registration No. 1124655, a copy of which
applicant submitted with its request for reconsideration.
It has frequently been held that the addition of a
trade name or house mark or other such matter to one of two
otherwise similar marks will not serve to avoid a
Ser No. 78533852
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likelihood of confusion. See First International Services
Corp. v. Chuckles Inc., 5 USPQ2d at 1632; Envirotech Corp.
v. National Service Industries, Inc., 197 USPQ 292 (TTAB
1977). Indeed, it has been held in this regard that
“[w]here the marks are otherwise virtually the same, the
addition of a house mark or … a surname … is more likely to
add to the likelihood of confusion than to aid to
distinguish the mark” at issue. Key West Fragrance &
Cosmetic Factory, Inc. v. Mennen Co., 216 USPQ 168, 170
(TTAB 1982). Because VAISALA is applicant's house mark,
its addition to METCAST, a term which has not been shown to
be descriptive or highly suggestive, does not serve to
avoid a likelihood of confusion.
In view of the foregoing, we find that the marks, when
considered as a whole, are similar in appearance, meaning,
sound and commercial impression, and we resolve the du Pont
factor regarding the similarity of the marks against
applicant.
We next consider the similarity and dissimilarity of
applicant's and registrant’s goods, and applicant's goods
and registrant’s services. It is well settled that goods
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods and services are related in
Ser No. 78533852
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some manner or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Both applicant and registrant’s goods are in the
meteorological field, and both applicant and registrant
list computer software in their identifications of goods.
Applicant’s apparatus takes meteorological measurements and
registrant’s software presents the meteorological
information. The goods are complimentary in that one is
used to obtain information and the other is used to present
the same information. The same individual or entity would
likely use both goods. Also, in view of the similarity
between the marks, those purchasers of applicant's goods
who require replacement software or even software in the
nature of upgrades for their meteorological measurement
apparatus would likely consider applicant as the source of
registrant’s software in that registrant also provides
Ser No. 78533852
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software in the meteorological field. Applicant's goods
also are related to registrant’s services in that
registrant’s services include “meteorological forecasting,”
and applicant's goods would be used – by the same
individual or entity – in such forecasting. For the
foregoing reasons, we find that applicant’s and
registrant’s goods, and applicant's goods and registrant’s
services, are related and resolve the du Pont factor
regarding the similarity of the goods and services against
applicant.
With respect to the similarity or dissimilarity of
trade channels, the identifications of goods and the
identification of services do not contain trade channel
limitations within the meteorological field. Because our
determination of the issue of likelihood of confusion
between the applied-for and registered marks must be made
on the basis of the goods and services as they are
identified in the involved application and registration,
and because there are no trade channel limitations in the
identifications, we presume that the registration
encompasses all goods and services of the nature and type
described, and that the identified goods and services move
in all channels of trade that would be normal for such
goods and services, and that they are available to all
Ser No. 78533852
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classes of purchasers for the described goods and services.
In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992); In re
Elbaum, 211 USPQ 639 (TTAB 1981). Thus, because the same
user may use applicant’s goods to first obtain
meteorological information and then registrant’s goods to
present that information, and because registrant’s
meteorological forecasting services are without limitation,
we conclude that the trade channels for applicant’s goods
and registrant’s goods and services overlap.
We next consider the conditions under which and buyers
to whom sales are made. Applicant maintains that
applicant's and registrant’s goods are “high-end and
expensive meteorological measurement apparatus” whose
“consumers are typically sophisticated and savvy” and “who
would be quite familiar with the Appellant’s house mark and
trade name VAISALA, as well as the cited mark METACAST.”
Brief at p. 12. Applicant further contends that a
reasonably prudent purchaser in the meteorology industry
would not buy such goods casually, but rather only after
careful consideration. Applicant also argues that
purchasers of such goods would “undoubtedly be familiar
with the Appellant’s house mark VAISALA and that the
Ser No. 78533852
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standard should be elevated to a discriminating purchaser
standard due to the nature of the goods.”2 Brief at p. 14.
There is no evidence in the record regarding the cost
of applicant’s goods. Thus, we are unable to gage just how
“expensive” applicant's goods are or just how
discriminating applicant's purchasers are. Also, even if
we accept applicant's attorney’s arguments as true, we find
that the similarity of the marks and goods outweighs any
purchaser sophistication. In re Decombe, 9 USPQ2d 1812
(TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983). Moreover, the fact that purchasers are
sophisticated in a particular field does not necessarily
mean that they are knowledgeable in the field of trademarks
or immune from source confusion. In re Total Quality Group
Inc., 51 USPQ2d 1474 (TTAB 1999); In re Hester Industries,
Inc., 231 USPQ 881 (TTAB 1986) (“While we do not doubt that
these institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,

2 The evidence of record does not support applicant's assertion
that VAISALA is a “strong and well-known” mark. If true,
however, the renown of VAISALA would foster the likelihood of
reverse confusion. The Federal Circuit, our primary reviewing
court, has recognized that reverse confusion is also prohibited
by Section 2(d). See In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993).
Ser No. 78533852
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substantially identical marks are applied to related
products”).
The du Pont factor regarding the conditions under
which and buyers to whom sales are made is neutral.
We have also considered applicant's additional
arguments in support of registration of its mark, but have
not found them to be persuasive. The additional du Pont
factors referred to in applicant's summary in its brief and
not specifically discussed in our decision do not persuade
us that there is no likelihood of confusion between
applicant's and registrant’s marks.
In conclusion, because of the similarity in the marks
and the goods and services, as well as the similarity in
the trade channels, and because we are not persuaded that
confusion is not likely in view of any purchaser
sophistication, we find that purchasers familiar with
registrant's goods and services offered under the mark
METACAST would be likely to believe, upon encountering
applicant's mark VAISALA METCAST for the goods recited in
its application that they originate with or are somehow
associated with the same entity.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.