Agilent Technologies, Inc.Download PDFTrademark Trial and Appeal BoardApr 26, 2013No. 85381449 (T.T.A.B. Apr. 26, 2013) Copy Citation THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: April 26, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Agilent Technologies, Inc. _____ Serial No. 85381449 _____ Ester Martín Maillaro of Holland & Hart LLP for Agilent Technologies Inc. Sara N. Benjamin, Trademark Examining Attorney, Law Office 110 (Chris A. F. Pedersen, Managing Attorney). _____ Before Zervas, Kuhlke and Hightower, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Applicant, Agilent Technologies, Inc., filed an application to register on the Principal Register the mark HI-PLEX1 in standard characters for goods identified as “liquid chromatography columns” in International Class 9. 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 its identified goods, so resembles the registered mark HEPLEX2 in standard characters for: 1 Application Serial No. 85381449, filed on July 26, 2011, alleging first use and use in commerce in 1985, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). 2 Registration No. 3359876, issued on December 25, 2007. Serial No. 85381449 2 Hydraulic, pneumatic, hydraulic-pneumatic operation cylinders and cylinder parts for use as machine parts; distance valves, pneumatically and hydraulically controlled valves for use as machine parts, in International Class 7; and Valves, namely, safety valves and pressure relief valves of metal and plastic; control valves, electromagnetically and electronically controlled valves for use with machines; mechanic, pneumatic, hydraulic, hydraulic-pneumatic accumulators, namely, spring, piston, bladder and membrane accumulators; apparatus and instruments for measuring, controlling, monitoring, checking, regulating, signaling, switching, commanding and indicating temperature, pressure, paths as length, velocities, accelerations, brightness, weights, power, electric currents, voltages and resistances, torques, filling levels and angles; sensors for recordation of physical data, in particular those for recordation of temperature, pressure, paths, lengths, velocities, accelerations, brightness, weights, power, electric currents, voltages and resistances, electric and magnetic fields, capacities, torques, filling levels and angles, namely, temperature sensors, pressure sensors, distance sensors, speed sensors, acceleration sensors, brightness sensors, weight sensors, power sensors, ampmeters, volt meters, resistance sensors, rotation sensors and position sensors; parts of all aforementioned goods, in International Class 9 as to be likely to cause confusion, mistake or deception. 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 and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). We begin with the du Pont factor of the relatedness of the goods. We base our evaluation on the goods as they are identified in the registration and application. Serial No. 85381449 3 In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also 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 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 themselves, but rather whether they would be confused as to the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be sufficiently related that consumers would be likely to assume, upon encountering the goods under similar marks, that the goods 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); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991). The examining attorney, relying primarily on the language of applicant’s and registrant’s respective identification of goods, contends that the products are related because the registration has no restrictions and the “wording is presumed to encompass all goods of the type described, including various laboratory instruments, equipment and apparatuses.”3 To further support the contention that the goods are related, the examining attorney asserts that the submitted third- party registrations and web pages from applicant’s and third-parties’ websites include “goods of the type provided by applicant and registrant” and, as such, 3 E. A. Br. p. 9. Serial No. 85381449 4 demonstrate that the respective goods are of a type that may emanate from a single source under a single mark. Looking at the identifications it is clear that applicant’s goods are not included in registrant’s goods. A “liquid chromatography column” is used for liquid chromatography, a technique to separate different chemicals and identify them by color. It is used in “laboratories to isolate new compounds, analyze subtle differences between different environmental samples, and even in the sequencing of DNA.”4 High performance liquid chromatography is used in “drug analysis, toxicology, explosives analysis, ink analysis, fibers, and plastics to name a few forensic applications.”5 Registrant’s “apparatus” is used to analyze “temperature, pressure, paths as length, velocities, accelerations, brightness, weights, power, electric currents, voltages and resistances, torques, filling levels and angles,” variables that are related to the registrant’s automotive uses (see below) but not to the separation of chemicals by color to isolate compounds, in particular for food and drug analysis. Further, there is no evidence to support relatedness between applicant’s goods and the goods listed in International Class 7 in the registration, which are all machine parts. In addition, the evidence does not definitively connect applicant’s goods with registrant’s International Class 9 goods that are not limited to machines or mechanics, e.g., “apparatus and instruments for measuring, controlling, monitoring, checking, regulating, signaling, switching, commanding and indicating 4 Req. for Recon. (March 15, 2010) www.pa.msu.edu. 5 Id. www.juschromatography.com. Serial No. 85381449 5 temperature, pressure, paths as length, velocities, accelerations, brightness, weights, power, electric currents, voltages and resistances, torques, filling levels and angles.” The evidence generally either fails to identify the particular types of goods at issue here, or the evidence is from sources which sell a broad range of various goods that are generally of a scientific or industrial nature6. The most that can be said based on the evidence of record is that applicant’s and registrant’s goods fall within the general category of scientific equipment. In re Princeton Tectonics Inc., 95 USPQ2d 1509, 1512 (TTAB 2010). As noted by applicant, the registration does not specify that the goods are for laboratory equipment and, more significantly, none of the broad wording in the registration covers the purpose, use or function of applicant’s liquid chromatography columns. In fact, much of the identification refers to machine parts and the “apparatus” is used to analyze a set of variables that includes velocities, accelerations and torque, which has nothing to do with separating chemical compounds but rather looks at physical movement. This is borne out by the record. Registrant indicated in its own response to an Office Action issued during the prosecution of its registration that its goods are “used by original equipment manufacturers and automotive tier suppliers in building 6 For example, Reg. No. 2323142 is for, inter alia, “gas and liquid chromatography apparatus …, namely, … flow switching devices… .” This identification does not include registrant’s goods because all of the named apparatus pertains specifically to chromatography which has a particular function and purpose not included in registrant’s “apparatus … for … switching … temperature, pressure, paths as length, velocities, accelerations, brightness, weights, power, electric currents, voltages and resistances, torques, filling levels and angles.” See Office Action (November 23, 2011) TSDR p. 5. Serial No. 85381449 6 original vehicles.”7 The fact that applicant’s and registrant’s goods both fall within the overall category of scientific equipment does not necessarily make them related. Princeton Tectonics, Inc., 95 USPQ2d 1509. We find the evidence of record insufficient to show that the circumstances surrounding the marketing of “liquid chromatography columns” on the one hand and registrant’s listed goods on the other hand, are such that relevant purchasers would mistakenly believe that the respective goods originate from the same source. Id. In view of the above, we find that the Office has not established that the goods are related. In regard to the purchasers and the conditions of sale, applicant’s goods are not extremely expensive; however, they are not the type of goods subject to impulse purchasing and would be purchased with some care by scientists or laboratory technicians. As noted above there is nothing in registrant’s identification to support a finding that the goods are for laboratory use, however, to the extent the purchasers would overlap, registrant’s prospective purchasers would also be knowledgeable and exercise care in their purchase. We turn to the du Pont factor of the similarities and dissimilarities between applicant’s mark HI-PLEX and registrant’s mark HEPLEX. We analyze “the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re Viterra Inc., 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) quoting du Pont, 177 USPQ at 567. See also Palm Bay Imports Inc. v. Veuve Clicquot 7 Resp. to Office Action (January 10, 2010) Exh. C (“Amendment and Remarks” filed by registrant in prosecution of its underlying application). Serial No. 85381449 7 Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). While there are similarities in sound and appearance between HI-PLEX and HEPLEX, the difference between the “HI” and “HE” and the hyphen in applicant’s mark separating “HI” from “PLEX” does affect the connotation and commercial impression in the context of applicant’s goods. The record establishes that “high- performance liquid chromatography” is a specific type of chromatography8 and purchasers of liquid chromatography columns would be knowledgeable about this type of chromatography. Thus, the significance of “HI” in applicant’s mark would not be lost on applicant’s potential purchasers. This creates a very different connotation and commercial impression from HEPLEX which has no meaning in relation to its goods based on this record and does not engender the meaning “high” or “high performance.” Further, during prosecution applicant submitted many third-party use-based registrations for various types of scientific apparatus that include the suffix PLEX arguing that the registered mark is weak. As noted by the examining attorney, third-party registrations are not evidence of use in the marketplace. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973). However, third-party registrations may be used in the nature of a dictionary definition to show that a particular term has a descriptive or suggestive significance in regard to the subject goods, such that consumers would look to other elements in the marks to distinguish the source of the goods. In re Hartz Hotel Servs., Inc., 102 8 See, e.g., Req. for Recon. (March 15, 2012), www.justchromatography.com. Serial No. 85381449 8 USPQ2d 1150, 1153-54 (TTAB 2012). Certainly that is the case with regard to the ubiquitous suffix “PLEX.” The record includes examples of many third-party registrations wherein the marks for registrant’s types of goods include “PLEX” as a suffix, connoting perhaps the flexibility associated with plastic or something consisting of various parts.9 Thus, the PLEX portion of the marks does not serve as a significant source-indicating function for the respective marks. We acknowledge that the marks have similarities; however, because of the nature of applicant’s goods, HI-PLEX has a particular meaning and commercial impression when used with applicant’s goods that is not applicable to registrant’s goods, and the PLEX portion of the marks is weak. This difference in connotation and commercial impression, combined with the differences in appearance where the hyphen serves to emphasize the “HI” portion of applicant’s mark, differentiates the marks and we treat the first du Pont factor as slightly favoring applicant. After considering all of the evidence of record and argument pertaining to the du Pont likelihood of confusion factors, and in particular the differences in the nature of the goods, the care with which they are purchased, and the differences in the marks, we find that the Office has not satisfied its burden of proving that confusion is likely. 9 PLEX – “a combining form meaning “having parts or units” of the number specified by the initial element”. Random House Dictionary (2013) retrieved from dictionary.reference.com. The Board may take judicial notice of dictionary definitions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85381449 9 Decision: The refusal to register based on a likelihood of confusion under Section 2(d) of the Trademark Act is reversed. Copy with citationCopy as parenthetical citation