Asahi Seiko Co., Ltd.

Trademark Trial and Appeal Board

Jul 7, 1999

No. 75087423 (T.T.A.B. Jul. 7, 1999)

Paper No. 14
BAC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Asahi Seiko Co., Ltd.
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Serial No. 75/087,423
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Simor L. Moskowitz of Jacobson, Price, Holman & Stern, PLLC
for Asahi Seiko Co., Ltd.
Cheryl S. Goodman, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Asahi Seiko Co., Ltd. (a corporation of Japan) has
filed an intent-to-use application to register the mark
shown below
for “money handling equipment, namely, measuring apparatus
for determining the authenticity of coins, apparatus for
analyzing paper currency with electronic pules (sic-
Ser. No. 75/087423
2
pulses), coin dispensing apparatus, and bill dispensing
apparatus, vending machines; stamp dispensing apparatus;
vending machines for dispensing cards featuring
magnetically encoded data; and electrical mechanical parts
therefor.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if applied to its identified
goods, would so resemble the registered mark shown below
for “calculating machines, cash registers and desk top
computers and parts therefor,”2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register. In reaching
this conclusion, we have considered all of the relevant du
Pont3 factors.

1 Application Serial No. 75/087,423, filed April 10, 1996. The
application is based on applicant’s alleged bona fide intention
to use the mark in commerce.
2 Registration No. 1,955,916, issued February 13, 1996.
3 In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1977).
Ser. No. 75/087423
3
Turning first to a consideration of the respective
goods, the Examining Attorney has made of record several
third-party registrations, which issued on the basis of use
in commerce, to demonstrate that sellers of cash
registers and calculators also market vending machines,
coin and bill dispensers and money validating machines, by
showing that a single entity has registered a single mark
for these items.4
Third-party registrations, however, are not evidence
of commercial use of the marks shown therein, or that the
public is familiar with them. Nevertheless, third-party
registrations which individually cover a number of

4Some examples of the third-party registrations submitted by the
Examining Attorney include the following: (1) Reg. No. 1,547,188
for “money handling equipment, namely currency counters, fit and
unfit note sorters, currency banders, coin counters, coin and
note dispensers and currency validators; cash registers; banking
transaction automation equipment, namely, financial terminals and
teller’s machines; paper counters and dispensers and document
counters; token counters; automatic vending machines”; (2) Reg.
No. 2,044,439 for, inter alia, “...vending machines, counterfeit
coin detecting machines, machines for counting and sorting money,
cash registers,...”; (3) Reg. No. 1,889,687 for “cash registers;
electronic validators for discriminating true money from
counterfeit money and for discriminating between various
denominations of money; electronic coin counters”; (4) Reg. No.
1,529,332 for, inter alia, “electric and electronic equipment and
accessories, namely,... electronic calculators,... cash
registers,... vending machines...”; (5) Reg. No. 2,074,607 for
“sales transaction devices, namely point of sale terminals, cash
registers, vending machines, and personal computers linked to a
host computer which houses a substantial portion of the
processing hardware and software used by the transaction
devices”; and (6) Reg. No. 1,428,114 for, inter alia,
“...electronic cash registers; coin operated vending
machines...”.
Ser. No. 75/087423
4
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Moreover, it is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion; it being sufficient that the goods
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be encountered by the same persons under circumstances that
could give rise to the mistaken belief that they emanate
from or are associated with the same source. See Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 596 (TTAB 1978);
and In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992).
We acknowledge that applicant’s goods, identified as
various items of money handling equipment, vending
equipment, and stamp dispensing apparatus (and parts
therefor), and the cited registrant’s calculating machines,
cash registers and desk top computers (and parts therefor)
are obviously specifically different products. However,
the Examining Attorney has made a prima facie showing that
applicant’s specific goods identified as various money
Ser. No. 75/087423
5
handling machines and the cited registrant’s cash registers
are related inasmuch as some companies market various items
of money handling equipment such as cash registers,
machines to determine the authenticity of coins/bills,
coin/bill dispensing apparatus, and vending machines; and
that each of those companies offers its various products
for sale under the same trademark. See In re Starcraft
Corp., 18 USPQ2d 1163 (TTAB 1990); and In re Epic Systems
Corp., 228 USPQ 213 (TTAB 1985).
Regarding the respective trade channels and
purchasers, the Board must determine the issue of
likelihood of confusion on the basis of the goods as
identified in the application and the registration. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Neither applicant’s nor the cited registrant’s
identification of goods is restricted as to trade channels
or purchasers. Thus, the Board must consider that the
parties’ respective goods could be offered and sold to the
same class of purchasers through all normal channels of
trade for such goods. See In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211 USPQ 639
(TTAB 1981).
Ser. No. 75/087423
6
The case of In re Shipp, 4 USPQ2d 1174 (TTAB 1987),
(argued by applicant), is distinguishable from the case at
hand. In the Shipp case, the applicant offered laundry and
dry cleaning services to the general public, whereas the
cited registrant’s goods were commercial dry cleaning
machine filters, and a variety of dry cleaning preparations
offered to dry cleaning establishment owners and operators.
In the case now before us, applicant intends to sell, inter
alia, various money handling machines and vending machines,
and the cited registrant sells, inter alia, cash registers.
The record before us is sparse as to exactly who are the
purchasers and prospective purchasers of the parties’
products, but we presume that some purchasers of money
handling machines (e.g., machines to analyze coins/bills),
would also need to purchase cash registers (e.g., retail
stores, supermarkets).
Turning next to a consideration of the respective
marks, it is well established that the addition of a house
mark to one of two otherwise similar marks is not generally
sufficient to avoid a likelihood of confusion in trade.
The reasoning behind this policy is that a company should
not be permitted to appropriate a competing company’s mark
merely by adding its own name or house mark to the
competitor’s mark. See In re U.S. Plywood-Champion Papers,
Ser. No. 75/087423
7
Inc., 175 USPQ 445 (TTAB 1972); and In re Christian Dior,
S.A., 225 USPQ 533 (TTAB 1985). Clearly both parties’
respective marks share the word SEIKO, and the fact that
applicant’s mark also includes its house mark ASAHI, does
not necessarily establish that confusion as to source is
unlikely. In its application, applicant translated the two
words which form its mark by stating that “‘asahi’ means
rising sun or morning sun” and “‘seiko’ means precision
industry.” Applicant also provided evidence that the term
“seiko” has other meanings, including as a given name, a
surname, and it is used as part of the trade name of
several Japanese corporations (e.g., the cited registrant’s
name is Kabushiki Kaisha Hattori Seiko, ta Seiko
Corporation; Teraoka Seiko Co., Ltd.; and Fukuda Seiko Co.,
Ltd.). Regardless of the various meanings or uses of the
term “seiko,” both parties’ marks share the word. See
Myrurgia, S.A. v. Comptoir De La Parfumerie S.A. Ancienne
Maison Tschanz, 441 F.2d 673, 169 USPQ 587 (CCPA 1971); and
Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ 461
(TTAB 1985).
Purchasers familiar with registrant’s goods sold under
the registered mark SEIKO are likely, upon seeing
applicant’s mark ASAHISEIKO on related goods, to assume
that applicant’s goods come from the same source as
Ser. No. 75/087423
8
registrant’s goods. The emphasis in determining likelihood
of confusion is not on a side-by-side comparison of the
marks, but rather must be on the recollection of the
average purchaser, who normally retains a general, rather
than a specific, impression of the many trademarks
encountered; that is, the purchaser’s fallibility of memory
over a period of time must also be kept in mind. See
Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Edison Brothers
Stores v. Brutting E.B. Sport-International, 230 USPQ 530
(TTAB 1986).
To the extent that purchasers notice the differences
in the marks, they may believe that applicant’s mark is a
revised version of registrant’s mark, now used on other
money handling machines, vending machines and stamp
dispensing machines. Thus, we find that the marks are
similar.
Finally, any doubt on the question of likelihood of
confusion must be resolved against the newcomer as the
newcomer has the opportunity of avoiding confusion, and is
obligated to do so. See In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and Hilson
Research Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, at 1440 (TTAB 1993).
Ser. No. 75/087423
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Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board