Ameritec Corp.

Trademark Trial and Appeal Board

Jul 22, 1997

EX (T.T.A.B. Jul. 22, 1997)

Paper No. 14
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ameritec Corporation
________
Serial No. 74/570,031
_______
Edward O. Ansell for Ameritec Corporation
Michael A. Szoke, Trademark Examining Attorney, Law Office
103 (Kathryn D. Erskine, Managing Attorney)
_______
Before Simms, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Ameritec Corporation has appealed from the Trademark
Examining Attorney's final refusal to register NIAGARA as a
trademark for "telecommunications call generators and
simulators."1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the
ground that applicant's mark, as used on its identified

1 Application Serial No. 74/570,031, filed September 6, 1994,
and asserting first use and first use in commerce as early as
March 26, 1992.
Ser No. 74/570,031
2
goods, is likely to cause confusion with the mark NIAGARA,
registered for "electrical transformers."2
The case has been fully briefed; 3 an oral hearing was
not requested.
Essentially it is the Examining Attorney's position
that the marks are identical and that "electrical
transformers" may be used in telephony and
telecommunications applications. As a result, the Examining
Attorney asserts that the transformers identified in the
cited registration are likely to be sold to the same
equipment manufacturers and engineers who purchase
applicant's equipment. In support of this position, the
Examining Attorney has made of record catalog evidence which
shows that transformers are used in the telephony and
communications fields. For example, a listing for Altran
Corp. advertises "Quality Magnetic Components for
...Telephony," and states "Power transformers and associated
filtering magnetics can be readily produced to precise
performance levels." An advertisement for APX Technologies

2 Registration No. 604,430, issued April 12, 1955; renewed
twice.
3 The Examining Attorney has, in his brief, objected to certain
third-party registrations submitted by applicant because they
were obtained from a private company's data base, rather than
from the records of the Patent and Trademark Office. This
objection is not well taken. Applicant submitted these
registrations during the prosecution of its application, and the
Examining Attorney did not advise applicant at that time, when
the problem could have been corrected, that there was any
problem with the submission. In these circumstances, we think
the Examining Attorney has waived his right to object. Further,
there is no indication that the registrations submitted by
applicant are inaccurate.
Ser No. 74/570,031
3
Inc. is headed "Communications Transformers, Inductors &
Specialized Magnetic Products," pictures "coupling
transformers" refers to "Fly Back Transformers," and states
"We are transformer and magnetics specialists!" Microtran
advertises "telephone interconnect transformers," while
Valor lists "pulse transformers and common mode chokes for
data communications and telecommunications applications."
Applicant, on the other hand, argues that its goods are
very different from the registrant's. According to the
declaration of Mark Henderson, applicant's Vice President-
Simulator Group, its NIAGARA products are "load testing and
bulk call generation equipment, that is, telecommunications
simulator test equipment." It can be used for testing
switching systems, and such applications as load testing,
traffic generation, traffic route testing, call feature
testing, call completion analysis and complex call testing.
The customers for applicant's products are for the most part
manufacturers of telecommunications systems, but may also
include providers and users of telecommunications services.
Henderson declaration, & 4. In the United States
applicant "interfaces with its customers directly through
its sales force, order entry personnel and its technical
applications group." The persons making the buying
decisions are invariably engineers by education and/or
experience.
According to the declaration of Bertrand Dubois,
applicant's Manager of Purchasing, a telecommunications call
Ser No. 74/570,031
4
generator "is usually purchased by an institution of such
size that purchasing practices have interlocking levels of
responsibility, i.e., engineering personnel familiar with
the general type of equipment desired prepare detailed
requirements, and purchasing personnel seek vendors offering
products meeting such requirements." Purchasing personnel
would, after receipt of a requirement, review catalogs and
buying guides and, where indicated, would consult with the
party who authored the requirements.
As for registrant's goods, applicant asserts that they
are heavy duty power transformers which are estimated to
cost in the five-figure range. Applicant points to
promotional literature of the registrant, which it has made
of record, which states that registrant, in addition to
manufacturing standard power and distribution transformers,
"also manufacture[s] arc furnace, induction furnace,
hazardous duty, rectifier duty, motor drive duty, traction
duty, PCB retrofit, padmount, unit substation,
autotransformer, motor starting autotransformer and water
cooled liquid filled transformers." Applicant also asserts,
based on statements made in the registrant's literature,
that registrant's customers include universities, OEM's,
[original equipment manufacturers] utilities, armed forces
and government agencies.
Thus, it is applicant's position that the registrant's
electrical transformers are different from the very
inexpensive and small transformers used in call generators.
Ser No. 74/570,031
5
As the Examining Attorney correctly notes, the question
of likelihood of confusion must be determined on the basis
of the identification of goods set forth in the subject
application and cited registration. In re William Hodges &
Co., Inc., 190 USPQ 47 (TTAB 1976). Thus, whatever the
particular properties applicant asserts the registrant's
electrical transformers actually do have, we must consider
the registration to encompass all electrical transformers,
including electrical transformers which are used in
communications applications.
Having said this, however, we do not find that the
Examining Attorney has demonstrated that the relevant
consumers are likely to believe that telecommunications call
generators and simulators and electrical transformers
emanate from the same source, even if they are sold under
the identical trademark NIAGARA. As applicant has pointed
out, there are 148 different categories of transformers.
Transformers are relatively ubiquitous items for electronic
equipment, being "a device employing electromagnetic
induction to transfer electrical energy from one circuit to
another, i.e., without direct connection between them."4
The mere fact that transformers may be used in applicant's
equipment, or may be purchased by the same manufacturers of

4 S. Gibilisco, The Illustrated Dictionary of Electronics, 6th
ed. 8 1994. The Board may take judicial notice of dictionary
definitions. 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).
Ser No. 74/570,031
6
telecommunications systems that purchase applicant's
equipment, is not enough for us to conclude that applicant's
goods are sufficiently related to the goods identified in
the cited registration to support a finding of likelihood of
confusion. See Hewlett-Packard Co. v. Human Performance
Measurement Inc., 23 USPQ2d 1390 (TTAB 1991) (the fact that
both parties share a common channel of trade does not
necessarily mandate a finding that the products are related
and that confusion is likely).
There is no evidence to show that manufacturers of
telecommunications call generators and simulators
manufacture or sell electrical transformers, or vice versa,
let alone evidence that companies would sell such goods
under the same mark. Moreover, applicant has shown that the
kinds of electrical transformers used in connection with
applicant's identified goods, i.e., transformers used in
communications equipment, are minor, inexpensive items that
are, in effect, incidental to the purposes of the equipment.
The purchase of telecommunications call generators and
simulators is necessarily undertaken with great care.
Applicant has shown that its goods are sold via direct
contact between its personnel and the purchaser. Applicant
has also shown that the purchasing decisions for such goods
are made by engineering personnel who are familiar with the
equipment. Such purchasers are not likely to think that all
items which may be used in communications systems will come
from the same source, even if they are sold under the same
Ser No. 74/570,031
7
mark. Rather, these sophisticated purchasers will know what
kinds of equipment a particular manufacturer is likely to
produce; if it is not usual in the trade for a maker of
telecommunications call generators and simulators to also
make transformers (and, again, there is no evidence of
record that any do), these purchasers are not likely to
assume that applicant's telecommunications equipment and the
registrant's transformers emanate from the same source. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993)
(manufacturers, wholesalers, and retailers are knowledgeable
about the products in the field and the sources thereof, and
therefore the likelihood that they would be confused by the
use of the identical marks of applicant and registrant on
the differing goods involved is much less than would be the
case if both marks were encountered by the general public).
Having considered all of the relevant duPont factors,
we find that the evidence of record is insufficient to prove
that applicant's use of NIAGARA for telecommunications call
generators and simulators is likely to cause confusion with
the mark NIAGARA, registered for electrical transformers.
Ser No. 74/570,031
8
Decision: The refusal of registration is reversed.
R. L. Simms
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges
Trademark Trial and Appeal Board