Blueair AB

Trademark Trial and Appeal Board

Feb 13, 2015

No. 86112707 (T.T.A.B. Feb. 13, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: February 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Blueair AB
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Serial No. 86112707
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John R. Crossan of Crossan IP Law, LLC,
for Blueair AB.
Parker W. Howard, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
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Before Seeherman, Kuhlke and Lykos,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Blueair AB has appealed from the final refusal of the Trademark Examining
Attorney to register BLUEWATER, in the stylized form shown below, for “tap-water
purifying apparatus; water purifiers for household purposes; water purifying units,
for potable water for household use,” in Class 11.1

1 Application Serial No. 86112707, filed November 7, 2013, pursuant to Section 1(b) of the
Trademark Act (intent-to-use).
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The mark is described as consisting “of a circular dot followed by the word
BLUEWATER with initial capital letter and all in sans-serif typeface.” Color is not
claimed as a feature of the mark.
Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of registrations owned by the same entity for the marks
BLUE WATER TECHNOLOGIES in standard characters, with WATER
TECHNOLOGIES disclaimed, for “water treatment and purification units for
removal of phosphorus, arsenic, heavy metals and other contaminants from
municipal wastewater, industrial process water, and drinking water”2 and BLUE
WATER TECHNOLOGIES and leaf design, as shown below, for “water treatment
and purification units for denitrification and removal of phosphorus, arsenic, heavy
metals and other contaminants from municipal wastewater, industrial process
water, and drinking water.”3

This registration includes a claim of acquired distinctiveness under Section 2(f) as
to the words BLUE WATER TECHNOLOGIES.

2 Registration No. 3023179, issued December 6, 2005; Section 8 affidavit accepted; Section
15 affidavit acknowledged.
3 Registration No. 4281643, issued January 29, 2013.
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It is the Examining Attorney’s position that Applicant’s mark so resembles the
marks shown in the cited registrations that, if used on Applicant’s identified goods,
it is likely to cause confusion or mistake or to deceive.
We affirm the refusal to register.
Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
With its brief Applicant submitted, for the first time, a number of exhibits. The
Examining Attorney has objected to this evidence, specifically Exhibits B through
G, and Exhibit J, as untimely.4 The Examining Attorney’s objections are well taken.
Trademark Rule 2.142(d) provides that the record in the appeal should be complete

4 The Examining Attorney’s objection has a typographical error. Instead of listing Exhibit
“J” he repeated the letter “F”: “Exhibit F (referred to by applicant as ‘The Asserted BLUE
WATER TECHNOLOGIES marks’), Exhibit G (referred to by applicant as ‘Registrant’s
BLUE WATER TECHNOLOGIES systems’), and Exhibit F (referred to by applicant as
‘Google.com search results for domestic or industrial systems’).” 11 TTABVUE 16. It is clear
that the second reference to “Exhibit F” was meant to be a reference to Exhibit J, since that
exhibit indicates that it is the result of a “Google Search.”
We also note that Applicant made reference to a Google search in its request for
reconsideration, filed June 2, 2014, stating that it had attached as Exhibits A and B pages
of current wagoogle.com [sic] results for searches on “water treatment.” Although Applicant
submitted two exhibits with the request for reconsideration, exhibits taken from
wagoogle.com [sic] were not submitted. The Examining Attorney pointed this out in his
denial of the request for reconsideration on June 23, 2014 (“Applicant claims that it has
attached evidence supporting this assertion. However, no such evidence appears in the
record. Because applicant failed to attach the evidence it cannot be considered, and
applicant’s unsupported argument is unavailing.”). Applicant did not submit a request for
remand to cure its apparent failure to include the referred-to evidence with its request for
reconsideration. Applicant cannot overcome its failure by the untimely submission of the
evidence with its appeal brief.
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prior to the filing of an appeal. We give no consideration to the untimely submitted
evidence.5
Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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 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 turn first to the du Pont factor of the similarity or dissimilarity of the goods
or services. Applicant’s goods are identified as “tap-water purifying apparatus;
water purifiers for household purposes; water purifying units, for potable water for
household use.” Such goods, as the identification makes clear, are for domestic use,
and would be purchased by the general public for use in the home. The goods
identified in the cited registrations are “water treatment and purification units for
removal of phosphorus, arsenic, heavy metals and other contaminants from
municipal wastewater, industrial process water, and drinking water” and “water

5 In view of the untimeliness of the evidentiary submissions we need not discuss the
additional reasons given by the Examining Attorney for objecting to the exhibits, nor do we
need to discuss the probative value of this evidence if it had been of record.
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treatment and purification units for denitrification and removal of phosphorus,
arsenic, heavy metals and other contaminants from municipal wastewater,
industrial process water, and drinking water.” Based on the identifications, one
purpose of these identified goods is to remove contaminants from municipal
wastewater and industrial process water, and the purchasers and users of such
goods would not be homeowners who would want water purifiers for household use.
However, the identifications in the cited registrations also include water treatment
and purification units for removal of contaminants from drinking water. These
goods, as identified, would encompass the “tap-water purifying apparatus; water
purifiers for household purposes; water purifying units, for potable water for
household use” identified in Applicant’s identification.
We note Applicant’s argument that the registrant’s goods are different in nature
from Applicant’s goods, and that the registrant’s goods are “huge, in-ground
installations and/or trailer-size portable facilities” that would not be suitable for in-
home or domestic use. Brief, 9 TTABVUE 3. The problem with this argument is
that we must determine the issue of likelihood of confusion on the basis of the goods
as they are identified in the application and the cited registrations. See Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir.
1983). As identified, the cited registrations would encompass drinking water
purification units for household use.
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Applicant also argues that the water its goods are designed to purify would not
normally have the contaminants, i.e., phosphorus, arsenic, heavy metals, that the
registrant’s goods are designed to remove. However, the identifications in the cited
registrations do not limit the water treatment and purification units to removal of
those particular elements; rather, the identifications also include “other
contaminants.” This broad description would include the contaminants that
Applicant’s water purifiers would remove.6
Thus, we find that the goods are legally identical to the extent that the goods as
identified in the cited registrations encompass the goods identified in Applicant’s
application. In view thereof, we need not rely on the Internet evidence submitted by
the Examining Attorney of third parties that offer both water purification
apparatus for household and for industrial use to show that these goods are related.
Further, because the goods are legally identical, they must be deemed to travel in
the same channels of trade. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908

6 We note that in its brief Applicant makes the statement, “If Registrant’s claim for its
goods under its asserted marks is considered by the Board to reach cleaning of pre-treated,
household tap water, then that claim is too broad and should be restricted or stricken.
Leave to convert this appeal then into a Cancelation Proceeding in part would then be
appropriate.” 9 TTABVUE 4. Once an application has been considered and decided on
appeal it will not be reopened except for the entry of a disclaimer or upon order of the
Director. See Trademark Rule 2.142(g). Thus, if Applicant is suggesting that if the Board
should affirm the refusal of registration Applicant then be allowed to seek cancellation of
the cited registrations, that would not be possible. Essentially, Applicant cannot wait to see
what would happen in this appeal, and if the decision were adverse to Applicant, it would
“convert” the appeal into a cancellation proceeding. If, during the course of examination,
Applicant wanted to bring a cancellation action it could have done so, and requested that
examination of the application be suspended. However, Applicant chose not to follow that
course. Even now, during the pendency of the appeal, if Applicant had actually brought a
cancellation action, it could have filed a request for suspension. However, the contingent
suggestion in Applicant’s brief to convert this appeal into a cancellation proceeding is not
possible under the rules, and is denied.
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(Fed. Cir. 2012) (when goods are identical, absent restrictions in the application and
registration, goods are presumed to travel in same channels of trade to same class
of purchasers). Thus, the second and third du Pont factors favor a finding of
likelihood of confusion.
We next consider the du Pont factors of the similarity or dissimilarity of the
marks and the strength of the cited registrations. In considering the similarity of
the marks, we keep in mind that when marks would appear on virtually identical
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). See also, In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010).
We begin with a comparison of Applicant’s mark and registrant’s mark BLUE
WATER TECHNOLOGIES in standard characters (Registration No. 3023179). We
must consider the marks in their entireties as to appearance, sound, connotation,
and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005).
Nevertheless, there is nothing improper in stating that more or less weight has
been given to a particular feature of a mark, provided the ultimate conclusion rests
on consideration of the marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Because the cited mark is in
standard characters, it is not limited to any particular rendition of the mark, and
therefore registrant may use the mark in any type font, including the upper and
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lower type font used by Applicant. See In re Mighty Leaf Tea, 94 USPQ2d at 1260.
Applicant’s mark also includes a dot design, however, this design does not serve to
distinguish the marks. In the case of a composite mark containing both words and a
design, “the verbal portion of the mark is the one most likely to indicate the origin
of the goods to which it is affixed.” In re Viterra Inc., 101 USPQ2d at 1908, quoting
CBS v. Morrow, 218 USPQ at 200. Although this is not a hard and fast rule, we find
that it is applicable here, since the dot is a common geometric feature that is not
particularly prominent; it is by the word portion of the mark that consumers are
likely to refer to and call for the goods. As for the fact that the cited mark contains
the word TECHNOLOGIES and Applicant’s mark does not, the presence or absence
of this disclaimed word does not distinguish the marks. TECHNOLOGIES is a term
that is highly suggestive or descriptive of goods of a technological nature. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (“the disclaimed word ‘Technologies’ is highly suggestive or
descriptive of the data processing and data transmission services in [applicant’s]
application”; “[applicant] selected the word ‘Technologies’ to describe or suggest the
technological nature of its new services”). Nor does the presence of absence of a
space between BLUE and WATER (BLUE WATER TECHNOLOGIES vs.
BLUEWATER and design) distinguish the marks. Consumers will readily recognize
the two words BLUE WATER in Applicant’s mark, and view BLUEWATER as the
equivalent of BLUE WATER. Thus, although we have compared the marks in their
entireties, we think it appropriate to give greater weight to the words BLUE
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WATER in both Applicant’s application and the cited registration. We find that the
marks are very similar in appearance, pronunciation, connotation and commercial
impression.
We reach a similar result when we compare Applicant’s mark with BLUE
WATER TECHNOLOGIES and design (Registration No. 4281643). Both the plain
block letters of BLUE WATER and the upper and lower sans serif font of
BLUEWATER would appear to consumers to be simply two versions of the same
mark. Although registrant’s mark includes a leaf design, this does not serve to
distinguish the marks; on the contrary, because the line emerging from the leaf
separates the words BLUE WATER from TECHNOLOGIES, the similarity between
this mark and Applicant’s mark is emphasized.
Applicant has argued that the cited registrations are entitled to a narrow scope
of protection, pointing out that the cited registrations issued over other
BLUEWATER/BLUE WATER marks, and that third-party BLUE WATER
registrations issued despite the presence of registrant’s registrations. Applicant
contends that its mark should be accorded similar treatment.
We need not engage in an extensive discussion of the third-party registrations,
since the Board must assess each mark on the record of the particular application,
and there is little persuasive value in third-party registrations showing what the
Office has done in prior situations. See In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). There are differences in the meanings of the
marks or in the goods/services between the third-party registrations and the cited
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registrations that are not the case with Applicant’s mark and the cited
registrations, e.g., TRUE BLUE in the mark TRUE BLUE WATER SOLUTIONS
(Registration No. 4066690) has a different meaning from BLUE WATER in BLUE
WATER TECHNOLOGIES; and BLUE WATER RESOURCES (Registration No.
4461112) is for different services (“providing industrial water delivery services”). We
also point out that at the time the cited registrations issued in 2004 and 2013, the
third-party registration (No. 1815794) for SKY BLUE WATER, which issued in
1994, had been partially cancelled, so the goods in that registration were limited to
“filtered bottled water.”
Therefore, even if we accept that the cited registrations, because of the
suggestive nature of the words BLUE WATER for purified water, have a limited
scope of protection, that protection still extends to prevent the registration of
BLUEWATER and dot design for legally identical goods.
The final du Pont factor discussed by Applicant is the lack of evidence of actual
confusion. In its request for reconsideration Applicant argues that “it is now using
its BLUEWATER and dot mark in the USA on its domestic, under-the-counter
water purification systems, without protest from or conflict with the [cited] marks
or its owner or, indeed, owners of the SKY BLUE WATER and TRUE BLUE
WATER SOLUTIONS marks.”
Applicant’s uncorroborated statements of no known instances of actual confusion
are of little evidentiary value. The lack of evidence of actual confusion carries little
weight. In re Majestic Distilling Co., 65 USPQ2d at 1205. This is particularly true
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in this case, where Applicant has filed its application based on an intention to use
the mark in commerce and we have no evidence about when Applicant began using
its mark, or the extent of its use, such that we could ascertain whether there has
been an opportunity for confusion to occur, if it were likely to occur.
These are the only du Pont factors that Applicant and the Examining Attorney
have discussed, or for which evidence has been submitted. To the extent that any
other factors are relevant, we treat them as neutral.
After reviewing all of the arguments and evidence, we find that Applicant’s
mark, used for its identified goods, is likely to cause confusion with the marks and
goods identified in the cited registrations.
Decision: The refusal to register Applicant’s mark BLUEWATER and design is
affirmed.