Bruker Nano, Inc.

Trademark Trial and Appeal Board

Nov 27, 2018

No. 87221625 (T.T.A.B. Nov. 27, 2018)

Mailed: November 27, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Bruker Nano, Inc.
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Serial No. 87221625
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Jay G. Durst of Boyle Fredrickson SC
for Bruker Nano, Inc.
Odette Martins, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
_____

Before Cataldo, Mermelstein and Shaw,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant Bruker Nano, Inc. seeks registration on the Principal Register of the
mark ULTIMA NEURALIGHT 3D (in standard characters with a disclaimer of 3D),
identifying the following goods: “microscopes, and accessories therefor, namely, a
holographic image generation attachment” in International Class 9.1

1 Application Serial No. 87221625 was filed on October 31, 2016 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to
use the mark in commerce. Applicant submitted the disclaimer of “3D” in response to the
Examining Attorney’s requirement.
This Opinion is not a
Precedent of the TTAB
Serial No. 87221625
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The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as
intended to be used in connection with the identified goods, so resembles the mark
ULTIMA (in typed or standard characters) in the following registrations, previously
issued to the same entity on the Principal Register, identifying the following goods:
“spotting scopes; eyepieces for telescopes,” in International Class 9;2 and “optical
products, namely telescopes and binoculars,” in International Class 9,3 as to be likely
to cause confusion, to cause mistake, or to deceive.
After the Examining Attorney made the refusals final, Applicant appealed to this
Board and filed a request for reconsideration, which was denied. We affirm the
refusal to register.
Evidentiary Objection
Before proceeding to the merits of the refusal, we address an evidentiary matter.
Applicant submitted its appeal brief on June 1, 2018.4 On June 4, 2018, Applicant
submitted two copies of a revised appeal brief with attached exhibits, accompanied
by a motion for “correction” of its June 1, 2018 brief based upon the assertion that the
earlier filed copy inadvertently omitted the attachments.5 The Trademark Examining
Attorney objected to the exhibits attached to Applicant’s revised brief on the ground

2 Registration No. 4547679 issued on June 10, 2014.
3 Registration No. 1547189 issued on July 11, 1989. Section 8 and 15 affidavits accepted and
acknowledged. First Renewal.
4 9 TTABVUE.
5 10, 11 TTABVUE.
Serial No. 87221625
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that the evidence comprising the attachments was not introduced into the record
during prosecution of the involved application.6 We sustain the Examining Attorney’s
objections.7
Trademark Rule 2.142(d) reads as follows:
The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.
Applicant did not introduce any evidence in support of its arguments in favor of
registration during prosecution of the involved application. The evidence submitted
for the first time as attachments to Applicant’s appeal brief thus is untimely and will
not be considered.8 See Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). See also, e.g.,
In re I-Coat Co., 126 USPQ2d 1730, 1733-34 (TTAB 2018).
Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of

6 13 TTABVUE 15.
7 In addition to lodging her objections, the Examining Attorney discussed, in the alternative,
the evidence submitted with Applicant’s brief. 13 TTABVUE 16. Nonetheless, by arguing that
the Board should not consider the attachments, the Examining Attorney preserved her
objections thereto. See TBMP § 1207.03 and authorities cited therein.
8 The proper procedure for an applicant or examining attorney to introduce evidence after an
appeal has been filed is to submit a written request with the Board to suspend the appeal
and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TBMP § 1207.02 and authorities cited therein.
Serial No. 87221625
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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, however, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
1. Focus on Cited Registration No. 4547679
For purposes of the du Pont factors that are relevant to this appeal we will
consider Applicant’s involved mark and identified goods and the ULTIMA mark that
is the subject of cited Registration No. 4547679, identifying “spotting scopes;
eyepieces for telescopes.” If likelihood of confusion is found as to the mark and goods
in this registration, it is unnecessary to consider the other cited registration.
Conversely, if likelihood of confusion is not found as to the mark and goods in this
registration, we would not find likelihood of confusion as to the mark and goods in
the other cited registration inasmuch as the marks in both registrations are identical
and the identified goods are related. See In re Max Capital Grp., 93 USPQ2d 1243,
1245 (TTAB 2010).
2. Relatedness of the Goods/Channels of Trade/Consumers
With regard to the goods, channels of trade and classes of consumers, we must
make our determinations based on the goods as they are identified in the application
Serial No. 87221625
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and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). A proper comparison of the goods considers whether “the
consuming public may perceive [the respective goods or services of the parties] as
related enough to cause confusion about the source or origin of the goods and
services.” Hewlett Packard, 62 USPQ2d at 1004. Therefore, to support a finding of
likelihood of confusion, it is not necessary that the goods be identical or even
competitive. It is sufficient that the goods are related in some manner, or that the
circumstances surrounding their marketing are such that they would be encountered
by the same persons in situations that would give rise, because of the marks, to a
mistaken belief that they originate from the same source or that there is an
association or connection between the sources of the goods. In re Thor Tech Inc., 90
USPQ2d 1634, 1635 (TTAB 2009).
Applicant’s goods are “microscopes, and accessories therefor, namely, a
holographic image generation attachment” and the goods in the cited registration are
“spotting scopes; eyepieces for telescopes.” In support of the refusal of registration,
the Examining Attorney introduced with her February 14, 2017 first Office Action,9

9 At .pdf 7-21.
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September 8, 2017 final Office Action10 and March 28, 2018 denial of Applicant’s
Request for Reconsideration11 printouts from the following third-party internet
websites offering under the same mark goods identified in the subject application and
cited registration.
highpointscientific.com provides microscopes, accessories for
microscopes, and spotting scopes;

telescope.com provides microscopes and spotting scopes;

carson.com provides microscopes and spotting scopes;

levenhuk.com provides microscopes and spotting scopes;

nikon.com provides microscopes and spotting scopes;

barska.com provides microscopes and spotting scopes;

vixenoptics.com provides microscopes and spotting scopes;

microscopeinternational.com provides microscopes, accessories for
microscopes, and spotting scopes;

benmicroscope.com provides microscopes and spotting scopes;

explorescientificusa.com provides microscopes and eyepieces for
telescopes; and

celestron.com (owner of the cited registrations) provides microscopes
and eyepieces for telescopes.

This evidence demonstrates that at least ten third parties in addition to Registrant
offer both Applicant’s goods and the goods in the cited registration under the same
mark.

10 At .pdf 39-114.
11 At .pdf 5-47.
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The Examining Attorney also introduced into the record with her February 14,
2017 first Office Action12 and September 8, 2017 final Office Action13 copies of eleven
use-based, third-party registrations for marks identifying, inter alia, goods identified
in the involved application and cited registration. The following examples are
illustrative:14
Registration No. 1695853 for the mark VIXEN (in typed or standard
characters) identifying, among other things, “microscopes, spotting scopes;”

Registration No. 1836671 for the mark GALILEO (in stylized form) for, among
other things, “microscopes, spotting scopes;” and

Registration No. 2796876 for the mark CARSON in stylized form for, among
other things, for “microscopes, spotting scopes.”

As a general proposition, although use-based, third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have some probative value to the extent they may serve
to suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d 864 F.2d 149 (Fed. Cir.) (table). In this
case, the totality of the website and third-party registration evidence demonstrates
that consumers would readily expect that these goods could emanate from the same
sources.

12 At .pdf 28-43.
13 At .pdf 12-37.
14 At .pdf 7-74.
Serial No. 87221625
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Applicant argues that
Applicant’s microscope goods do not compete or otherwise have
anything to do with any of the telescope or binocular goods of the Cited
Registrations. The goods of the Cited Registrations are in the
binoculars and telescope field.

In contrast, Applicant’s goods are directed to a holographic image
generation attachment for sophisticated research grade microscopes.
Applicant’s product allows a three dimensional holographic image to
be projected through a microscope and into an object that is being
imaged. It is used to accomplish photo-chemistry in living tissue and
probe neural connectivity. These research grade microscope
attachments are clearly dissimilar from the telescope and binocular
goods of the Cited Registrations.

For similar reasons as stated above, Applicant’s goods are sold in very
different trade channels to different types of purchasers compared to
the goods of the Cited Registrations. The goods of the Cited
Registrations are telescope and binocular goods ranging from hundreds
of dollars to thousands of dollars. These goods are typically sold
through the internet or through retail stores.

In contrast, Applicant’s goods are research grade microscope goods
costing tens of thousands of dollars, and more. For this reason,
Applicant’s goods may only be purchased through knowledgeable
dealers with sophisticated expertise about the goods and who can
assist the customer individually. Purchases are not completed through
the internet or at a retail store. The differing trade channels and
further direct contact of Applicant’s customer with a dealer further
diminishes any chances of a likelihood of confusion.

While Applicant does not dispute that there is at least a degree of
similarity between the potential trade channels for an overly broad
interpretation of the goods recited in the application and in the Cited
Registrations, Applicant asserts that the overlap is obviated by the
fact that Applicant’s goods are specialized microscope goods (as
indicated by the recitation of “microscopes, and accessories therefor,
namely, a holographic image generation attachment”) that are only sold
through dealers and are not the standard consumer variety microscope
goods that would be sold on the internet or in retail stores.15

15 9 TTABVUE 11-12.
Serial No. 87221625
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However, it is not necessary that Applicant’s goods “compete” with the goods in
the cited registration in order to find that the goods are related. The question is
whether the goods are sufficiently related such that, if similar marks are used
thereon, consumers will believe that the products emanate from the same source. The
evidence discussed above suggests that third parties offer both microscopes and
accessories therefor on the one hand, and spotting scopes and eyepieces for telescopes
on the other, under the same marks and have also registered marks to identify both
goods.
Furthermore, the identification of Applicant’s goods does not solely include
holographic image generation attachments for microscopes, but also includes
microscopes without any limitations as to type, price point or field of use. As a result,
we must presume that they include microscopes at all price points that are suitable
for any use typical for a microscope. As we noted above, our likelihood of confusion
determination is based upon the goods as they are identified in the application and
registration at issue. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William
Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also Octocom, 16 USPQ2d at
1787 (“The authority is legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of goods set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
the sales of goods are directed”).
Serial No. 87221625
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As the Court of Customs and Patent Appeals, the predecessor of the Federal
Circuit, explained in Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the word MONOPOLY as
its mark without any restrictions reflecting the facts in its
actual use which it argues on this appeal prevent likelihood
of confusion. We cannot take such facts into consideration
unless set forth in its application.

Likewise, in this case, we must also analyze the similarity or dissimilarity and nature
of the goods based on the description of the goods set forth in the application and the
registration at issue. In other words, we may not limit or restrict the microscopes
listed in the involved application or the goods identified in the cited registration.
In addition, the identifications of goods in the cited registration and involved
application do not recite any limitations as to the channels of trade in which
Applicant’s or Registrant’s goods are or will be offered. In the absence of trade channel
limitations on the goods under the marks, we must presume that the goods in the
involved application and cited registration are offered in all customary trade
channels, and are not limited solely to those trade channels argued by Applicant. See
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re
Elbaum, 211 USPQ at 640. As a result, we find unpersuasive Applicant’s arguments
seeking to impose trade channel limitations on the involved goods. “We have no
authority to read any restrictions or limitations into the registrant’s description of
goods.” Thor Tech, 90 USPQ2d at 1638. Nor may an applicant restrict the scope of
Serial No. 87221625
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the goods covered in a cited registration by argument or extrinsic evidence. Midwest
Gaming & Entm’t, 106 USPQ2d at 1165; In re La Peregrina Ltd., 86 USPQ2d 1645,
1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Further, as noted above, the Examining Attorney has introduced evidence that both
Applicant’s goods and Registrant’s goods are offered for sale on the same webpages.
This evidence supports a finding that these goods are offered in overlapping channels
of trade.
We find that the du Pont factors of the relatedness of the goods, channels of trade
and consumers weigh in favor of likelihood of confusion.
3. Conditions of Sale
Applicant argues that because the microscopes and accessories therefor identified
in the subject application are expensive and marketed through knowledgeable
dealers, the goods are likely subject to careful purchase. However, as discussed above
neither Applicant’s goods nor the goods in the cited registration are so limited. In
addition, neither identification of goods restricts the identified optical goods by price.
Because the identifications of goods in the application and cited registration contain
no limitations as to price points, we must presume that at least the microscopes,
spotting scopes and telescope eyepieces include lower cost optical items that may be
purchased without a high degree of care by more casual professionals and enthusiasts
exercising only an ordinary degree of care.
As a result, this du Pont factor is at best neutral or also favors a finding of
likelihood of confusion.
Serial No. 87221625
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4. Strength of the Cited Mark / Number and Nature of Similar Marks
Applicant argues that
A search of the USPTO’s records reveals common adoption of
“ULTIMA” in over 100 registered marks (examples submitted as
Exhibit A). In International Class 009, there are 28 third party
registered marks that use the word ULTIMA or a phonetically similar
word (submitted as Exhibit A). A proper application of the Du Pont
factors mandates that such uses be weighed and evaluated in making
a likelihood of confusion analysis. When the proper weight is accorded
the various uses and registrations, it is clear that there is no likelihood
of confusion between the Cited Registrations and the Mark.16

However, as discussed above Applicant has failed to timely introduce into the
record any evidence17 of the asserted weakness of the term ULTIMA that comprises
the mark in the cited registration. ULTIMA is defined as “the last syllable of a
word.”18 ULTIMA thus does not appear to have any meaning in connection with the
spotting scopes or telescope eyepieces identified in the cited registration. On this
record, we find that ULTIMA is both conceptually and commercially strong, with no
evidence of weakness. As a result, we accord the ULTIMA mark the broad scope of
protection given to arbitrary marks.
This du Pont factor is neutral.

16 9 TTABVUE 13.
17 Applicant attempted to submit registrations of marks comprising ULTIMA and similar
terms, but the relevant du Pont factor requires consideration of “[t]he number and nature of
similar marks in use on similar goods.” Du Pont, 177 USPQ at 567. “The existence of these
registrations is not evidence of what happens in the market place or that customers are
familiar with them nor should the existence on the register of confusingly similar marks aid
an applicant to register another likely to cause confusion, mistake or to deceive.” AMF Inc. v.
Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269–70 (CCPA 1973).
18 September 8, 2017 final Office Action at .pdf 12, retrieved from ahdictionary.com.
Serial No. 87221625
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5. Similarity or Dissimilarity of the Marks
We consider Applicant’s mark ULTIMA NEURALIGHT 3D and the registered
mark ULTIMA and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Stone Lion Capital Partners, LP v. Lion
Capital LLP, 110 USPQ2d at 1160; Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison
of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal quotation
marks omitted). See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464,
1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016).
Consumers may not necessarily encounter the marks in close proximity and must
rely upon their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d
at 1468.
Applicant’s mark ULTIMA NEURALIGHT 3D in standard characters consists of
the entirety of the registered mark ULTIMA, also in typed or standard characters,
and merely adds the wording “NEURALIGHT 3D” to modify “ULTIMA”. While there
is no rule that likelihood of confusion automatically applies where one mark
encompasses another, in this case, as in many others, the fact that the entire cited
mark is incorporated in Applicant’s mark increases the similarity between the two.
Serial No. 87221625
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See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir.
2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In re
U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (finding applicant’s CAREER
IMAGE marks similar to registered mark CREST CAREER IMAGES). Thus, the
marks are similar in appearance and sound to the extent that Applicant’s ULTIMA
NEURALIGHT 3D mark fully encompasses the registered ULTIMA mark.
The term ULTIMA, common to both marks, is defined as “the last syllable of a
word.”19 There is no evidence of record to suggest that the term ULTIMA possesses
any meaning in connection with either Applicant’s goods or the goods in the cited
registration. Neither is there any evidence that ULTIMA would have a different
connotation as applied to the goods in the involved application or cited registration.
The term NEURALIGHT in the involved application appears to be a coined word with
no known meaning.20 The disclaimed term 3D in Applicant’s mark is defined as “a
three-dimensional form; also an image or a picture produced in it.”21 As a result,
Applicant’s mark appears to connote a product capable of producing three
dimensional images, but otherwise part of the ULTIMA line of products. As a result,
ULTIMA and ULTIMA NEURALIGHT 3D are similar in connotation or meaning to
the extent that both suggest related ULTIMA optical products, with Applicant’s

19 September 8, 2017 final Office Action at .pdf 12, retrieved from ahdictionary.com.
20 To the extent NEURALIGHT may be intended to suggest a function or purpose of the goods
as explained by Applicant, namely, “to accomplish photo-chemistry in living tissue and probe
neural connectivity,” (9 TTABVUE 11) there is no evidence of such meaning.
21 February 14, 2017 first Office Action at .pdf 47, retrieved from Merriam-webster.com.
Serial No. 87221625
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microscopes and three dimensional imaging accessories denoted as ULTIMA
NEURALIGHT 3D.
Furthermore, we note that ULTIMA, the word that the marks share in common,
and the only word comprising the registered mark, is also the first word in the mark
in the involved application. Presto Prods., Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“[It is] a matter of some importance since it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser and
remembered.”). See also Palm Bay Imps., 73 USPQ2d at 1692 (“The presence of this
strong distinctive term as the first word in both parties’ marks renders the marks
similar, especially in light of the largely laudatory (and hence non-source identifying)
significance of ROYALE.”).
We acknowledge that the presence of “NEURALIGHT 3D” as the following term
in Applicant’s mark partially differentiates it visually and aurally from the registered
mark. This point of distinction, however, does not significantly diminish the strong
similarities in connotation and overall commercial impression engendered by these
two marks. Based upon the above analysis, we find that ULTIMA NEURALIGHT 3D
is more similar than dissimilar to the strong and arbitrary mark ULTIMA in terms
of appearance, sound, connotation and commercial impression. As a result,
consumers encountering ULTIMA NEURALIGHT 3D could mistakenly believe that
it represents a variation on the registered mark used to identify microscopes and 3-
D holographic imaging accessories therefor emanating from a common source.
Serial No. 87221625
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In view thereof, the du Pont factor of the similarity of the marks favors a finding
of likelihood of confusion.
Summary
Considering all the evidence of record, including any evidence not specifically
discussed herein, we find that the marks in their entireties are more similar than
dissimilar and that the identified goods are related and will be encountered by the
same consumers in common channels of trade at all price points. We find therefore
that Applicant’s mark is likely to cause confusion with the mark in the cited
registration when used in association with the identified goods.
Decision: The refusal to register Applicant’s mark on the ground of likelihood of
confusion is affirmed.