Water Analysis Technologies, Inc.

Trademark Trial and Appeal Board

Nov 20, 2012

No. 85215800 (T.T.A.B. Nov. 20, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 20, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
_____

In re Water Analysis Technologies, Inc.
_____

Serial No. 85215800
_____

Richard M. Klein and George P. Huang of Fay Sharpe LLP for Water Analysis
Technologies, Inc.

Barbara Brown, Trademark Examining Attorney, Law Office 116 (Michael W.
Baird, Managing Attorney).
_____

Before Bucher, Kuczma and Gorowitz, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Water Analysis Technologies, Inc., (“applicant”), appeals from a final refusal
to register the standard character mark:
ODO-TECH
as set forth in a use-based application filed pursuant to § 1(a) of the Trademark Act,
15 U.S.C. § 1051(a), for the following goods, as amended:
odor neutralizing preparations for general use on various
surfaces in Class 5.1

1 Serial No. 85215800 filed January 12, 2011, claiming first use of the mark anywhere and
first use in commerce on October 25, 2010.
Serial No. 85215800

2

The examining attorney issued a final refusal to register the mark pursuant
to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing Registration No. 2436908
owned by Nalco Company as a bar to registration.2
Registration No. 2436908 is for the mark ODORTECH in typed form3 for
goods and services in Classes 5 and 42, including the following goods in Class 5
which the examining attorney has identified as the basis for the citation:
Odor neutralizing chemicals for use in industry, namely
food processing, waste treatment, paper chemicals,
refining, mining and municipal, textiles, leather and
tanning, metal working chemicals, petrochemicals,
hospitals, apartments, real estate and landfills.
After the examining attorney made the refusal final, applicant appealed to
this Board. The applicant and examining attorney have filed briefs. We affirm the
refusal to register.
Likelihood of Confusion
Our determination of likelihood of confusion under § 2(d) is based on an
analysis of all of the probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion. 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.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (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

2 Registration No. 2436908 issued March 20, 2001, and has been renewed.
3 In 2003, Trademark Rule 2.52(a) was amended to refer to “typed” drawings as “standard
character” drawings. See Trademark Rule 2.52(a); 37 C.F.R. § 2.52(a); TMEP § 807.03(i).
Serial No. 85215800

3

services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976).
A. The similarity or dissimilarity and nature of the goods, channels of trade and
classes of consumers
We first consider the du Pont factor involving the similarity or dissimilarity
of applicant’s goods (odor neutralizing preparations for general use on various
surfaces), in relation to the goods in the cited registration (odor neutralizing
chemicals for use in industry, namely food processing, waste treatment, paper
chemicals, refining, mining and municipal, textiles, leather and tanning, metal
working chemicals, petrochemicals, hospitals, apartments, real estate and landfills).
It is well-settled that the issue of likelihood of confusion between applied-for and
registered marks must be determined on the basis of the goods as they are
identified in the involved application and registration. Paula Payne Products Co. v.
Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
Applicant’s odor neutralizing preparations “for general use” are identified
broadly enough to encompass the more specific odor neutralizing chemicals for use
in industrial applications identified in the cited registration. Thus, applicant’s
goods and the goods in the cited registration are closely related, if not the same. In
an attempt to avoid the overlap in goods resulting from its broad product
description, applicant argues that the term “general use” limits the identification of
its goods such that it excludes odor neutralizers for industrial purposes.4

4 Applicant’s Appeal Brief pp. 5-6.
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Serial No. 85215800

5

definition to applicant’s “odor neutralizing preparations for general use,” the
examining attorney contends that applicant’s products are applicable in most cases
and would therefore include specific applications such as the industrial applications
called for in the cited registration.5
Where, as here, the goods in an application are broadly described and there
are no limitations in the identification of goods as to their nature, type, channels of
trade or classes of purchasers, it is presumed that the scope of the application
encompasses all goods of the nature and type described, that applicant’s goods move
in all channels of trade that would be normal for such goods, and that applicant’s
goods would be purchased by all potential customers, including industrial
customers, i.e., those looking for the “odor neutralizing chemicals for use in
industry” sold by registrant. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing
The Kalart Co., Inc. v. The Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
1958); see also, In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008).
Based on the legally identical or highly related nature of the goods set forth
in the application and cited registration, and the similar trade channels and

5 See Examining Attorney’s Appeal Brief pp. 9-10. The examining attorney’s request for
judicial notice of the dictionary definition attached to her appeal brief is granted. The
Board may take judicial notice of online dictionary definitions submitted with an examining
attorney’s appeal brief including online dictionaries that exist in printed format or have
regular fixed editions. See In re Premiere Distillery LLC, 103 USPQ2d 1483, 1484 n. 2
(TTAB 2012) and In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also
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). While the online definition
provided by the examining attorney does not indicate whether the dictionary exists in a
printed format or has a regular fixed edition, applicant did not object to the introduction of
the definition.

Serial No. 85215800

6

customers, the du Pont factors of the similarity of the goods, trade channels and
customers favors a finding of likelihood of confusion.
B. The similarity or dissimilarity of the marks as to appearance/sound/meaning
and commercial impression
We now turn to the du Pont factor focusing on the similarity or dissimilarity
of the marks in their entireties as to appearance, sound, meaning and commercial
impression. du Pont, 177 USPQ at 567. Where the goods of the applicant and cited
registrant are similar and/or closely related as they are in this case, the degree of
similarity between the marks required to support a finding of likelihood of confusion
is not as great as would be required with diverse goods. In re J.M. Originals Inc., 6
USPQ2d 1393, 1394 (TTAB 1987); also see Shen Mfg. Co. v. Ritz Hotel Ltd., 393
F.3d 1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004).
The marks in this case, ODO-TECH and ODORTECH, are similar in
appearance, both beginning with “Odo” and ending in “Tech,” and sharing 7 of the 8
letters in common in the same order. The presence of a hyphen between the terms
“Odo” and “Tech” in applicant’s mark is an insignificant difference that is not likely
to be noticed or remembered by purchasers when encountering these marks at
separate times. See Mag Instrument Inc. v. Brinkman Corp., 96 USPQ2d 1701,
1712 (TTAB 2010) aff’d per curiam 2011 WL 5400095 (Fed. Cir. 2011) (the hyphen
does not distinguish MAG-NUM from MAGNUM); Breon Laboratories Inc. v.
Vargas, 170 USPQ 532, 536 (TTAB 1971) (BRONCO-FEDRIN and
BRONKEPHRINE may possess different suggestive connotations to persons
familiar with chemical or pharmaceutical terminology; the resemblances between
Serial No. 85215800

7

the marks in both sound and appearance are considered to be of such nature that
they frequently would sound alike when spoken and look so nearly alike when
written [physicians write prescriptions for products which are dispensed, and also
for over-the-counter products where there is a chance patients may not remember
the name] that confusion is likely); Humble Oil & Refining Co. v. Sekisui Chemical
Co. Ltd. of Japan, 165 USPQ 597, 604 (TTAB 1970) (in sustaining applicant’s
position that its prior use of “S-LON” supported its attempt to register the notation
“ESLON,” the Board noted that while the marks ‘S-LON’ and ‘ESLON’ differ, they
differ essentially only by one letter and a hyphen; it is manifest though that ‘ES’ is
merely the phonetic spelling of ‘S‘; that the marks ‘S-LON’ and ‘ESLON’ convey
exactly the same significance; and that ‘S-LON’ and ‘ESLON’ are and would be
recognized as the same mark); and Schering Corp. v. Faith Laboratories, Inc., 165
USPQ 670, 672 (TTAB 1970) (FA-DRIN includes all of the letters forming AFRIN
and the letters “RIN” form the end portions of both trademarks; additionally, the
letters forming the prefix portion thereof are the same, albeit transposed and each
term is comprised of two syllables; these resemblances outweigh the dissimilarities
to such an extent that persons, when persons are separately confronted with the
trademarks, confusion is likely).
With respect to the textual portions of the marks, applicant’s mark and the
cited mark differ by a single letter. While applicant argues that the omission of the
letter “R” in its mark distinguishes its mark from the cited mark, the omission of
one letter is insufficient to distinguish the two marks given their overall
Serial No. 85215800

8

similarities. This is particularly so where, as here, there is no evidence that the
absence of letter “R” in applicant’s mark results in a discernible difference in
pronunciation, and the omitted letter is from the middle of applicant’s mark. See
Apple Computer v. TVnet.net Inc., 90 USPQ2d 1393,1396 (TTAB 2007) (letter “v” is
insufficient to distinguish the dominant portions of the parties’ ITUNES and
VTUNES marks); Interlego AG v. Abrams/Gentile Entertainment Inc., 63 USPQ2d
1862, 1863 (TTAB 2002) (many adults would not notice the very minor difference
between LEGO and MEGO); Humble Oil, 165 USPQ at 604 ( S-LON and ESLON
differ essentially by one letter and a hyphen and would be recognized as the same
mark); M&T Chemicals Inc. v. Stepan Chemical Co., 150 USPQ 570, 571 (TTAB
1966) (BIO-DENT similar to BIOMET in sound and appearance).
The cases cited by applicant in support of its position that the marks are
dissimilar are readily distinguishable.6 In Iodent Chemical Co. v. Dart Drug Corp.,
207 USPQ 602, 607 (TTAB 1980), opposer, owner of the IODENT mark, supplied
BIODENT denture cleaner to applicant for many years. Accordingly, the Board
observed that “all of this reeks of acquiescence in its most blatant and recognizable
textbook form which should not be permitted to preclude registration sought by
applicant” unless likelihood of confusion would be inevitable. In H.L. Bouton Co.,
Inc. v. Parmelee Industries, Inc., 220 USPQ 79, 80 (TTAB 1983), the determination
of no likelihood of confusion between the marks TRU-FIT and U-FIT for identical
goods was based on the finding that FIT is a highly suggestive and weak component

6 See Applicant’s Appeal Brief p. 3.
Serial No. 85215800

9

of both marks and that the prefixes with which FIT was combined were not
confusingly similar. If the prefixes were confusingly similar, the Board
acknowledged it would have little difficulty finding that confusion was likely. Here,
there is no evidence that the common TECH portion of the marks is highly
suggestive or weak for odor neutralizing products. In affirming the Board’s
dismissal of an opposition against the registration of the mark BOSTON SEA
PARTY for restaurant services by the owner of the BOSTON TEA PARTY mark for
tea, the court relied on the differences between the goods and services as well as the
lack of evidence that applicant’s mark would be confused with opposer’s mark
rather than the well-known historical incident known as the Boston Tea Party.
Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982). The foregoing cases are readily distinguishable from this case and
accordingly, offer no support for applicant’s position.
Admitting both marks contain three syllables, applicant argues the marks
differ in sound because the emphasis in its mark is on the second syllable, whereas
all three syllables in the cited mark have the same emphasis.7 According to
applicant, the emphasis on the second syllable in its mark also creates a rhyming
pattern with the first syllable, i.e., “oh-doh,” that is not present in the cited mark.
This argument is not compelling because the marks in question could clearly be
pronounced with the same emphasis on all three syllables. As confirmed in a recent
decision of our primary reviewing court, there is no correct pronunciation of a mark

7 Applicant’s Appeal Brief p. 3.
Serial No. 85215800

10

because it is impossible to predict how the public will pronounce a particular mark.
In In re Viterra, the applicant, supported by dictionary definitions, argued that
XCEED and X-Seed are not phonetic equivalents because XCEED will be
pronounced with an emphasis on the second syllable, whereas X-Seed will be
pronounced with an emphasis on the first syllable. Upholding the Board’s finding
that “it is hard to imagine that the two marks will not sound alike when spoken,”
the Federal Circuit also confirmed that, as the Board recognized, there is no correct
pronunciation of a trademark, and consumers may pronounce a mark differently
than intended by the brand owner. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1912 (Fed. Cir. 2012) and Centraz Indus. Inc. v. Spartan Chem. Co.,
77 USPQ2d 1698, 1701 (TTAB 2006). In view of the foregoing, the marks in
question could clearly be pronounced with the same emphasis on all three syllables,
and therefore, applicant’s argument about the alleged impact of emphasis on the
sound of the marks is not persuasive.
While agreeing with the examining attorney that the portions of the cited
mark, i.e., “odor” and “tech,” combine to connote technology having to do with odors,
applicant contends that its mark has no inherent meaning noting that there is no
support for the examining attorney’s assertion that the ODO prefix in applicant’s
mark conveys the meaning of “odor.” Applicant is correct that there is nothing in
the record to support the contention that the term ODO, standing alone, conveys
the meaning of “odor.” However, the connotation of applicant’s mark which begins
with the term ODO, when properly viewed in connection with its odor neutralizing
Serial No. 85215800

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preparations, also connotes a product relating to odors. In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011) and In re Paper Doll Promotions Inc., 84 USPQ2d
1660, 1669 (TTAB 2007). Because both marks begin with a term that connotes
something relating to “odor” and end in the same term “Tech,” they have similar
connotations and commercial impressions.
C. Conclusion
Applicant’s mark and the cited mark are both used on odor neutralizing
products. The fact that the marks have the same number of syllables, share the
combination of the three initial letters “ODO” and the final syllable “TECH” in the
same order, renders them similar in appearance, sound connotation and commercial
impression. The marks are sufficiently similar in their entireties that customers
are likely to be confused as to the source of the odor neutralizing products provided
under them.

Decision: The refusal to register the mark ODO-TECH under § 2(d) of the
Trademark Act is affirmed.