Carrier Corporation

Trademark Trial and Appeal Board

Feb 15, 2008

No. 78329277 (T.T.A.B. Feb. 15, 2008)

Mailed: February 15, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Carrier Corporation
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Serial No. 78329277
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Terrence J. McAllister of Ohlandt, Greeley, Ruggiero &
Perle, LLP for Carrier Corporation.1

Carol Spils, Trademark Examining Attorney, Law Office 104
(Chris Doninger, Managing Attorney).
_______

Before, Quinn, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Carrier Corporation has filed an application to
register the mark INFINITY in standard character form for
goods ultimately identified as:
heating, ventilation and air conditioning systems,
namely, air conditioners, heat pumps, furnaces, fan
coils, evaporation coils, air handling units and

1 After briefs on the case were filed, applicant filed a
revocation and power of attorney appointing Mr. McAllister.
Under the circumstances, a courtesy copy of this decision will be
forwarded to applicant’s prior attorney, Dana F. Bigelow of Wall
Marjama & Bilinski LLP.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78329277
2
boilers, all for residential use in International
Class 11.2

The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark so resembles the mark
INFINITI, previously registered for “electric circulating
and ventilating fans; namely, ceiling fans,”3 that, when
used on or in connection with applicant’s goods, it is
likely to cause confusion or mistake, or to deceive.4
When the refusal was made final, applicant appealed.
Briefs have been filed.
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

2 Serial No. 78329277, filed on November 18, 2003, which alleges
dates of first use of April 1, 1987.
3 Registration No. 1758207 issued March 16, 1993; renewed. This
registration is owned by Hunter Fan Company.
4 The examining attorney initially cited several additional
registrations as bars to registration of applicant’s mark. These
registrations were subsequently withdrawn.
Ser No. 78329277
3
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).
The examining attorney contends that applicant’s mark
INFINITY and the cited mark INFINITI are highly similar.
The examining attorney also contends that the “fan coils”
identified in applicant’s application and the “ceiling
fans” identified in the cited registration are related
goods. In support of her position that these goods are
related, the examining attorney has submitted copies of
third-party registrations which she maintains show that
companies have registered their marks for fan coils and
ceiling fans.
Applicant, in urging reversal of the refusal to
register, argues that the marks are not similar because
they are spelled differently. Further, applicant states
that it uses the INFINITY mark “in combination with the use
of a house mark such as ‘Carrier’” and therefore “the
likelihood of confusion to the consumer will be
substantially lessened.” (Brief at 2). Applicant also
argues that fan coils are different in nature from ceiling
fans. Specifically, applicant argues that:
Ser No. 78329277
4
[C]eiling fans and fan coils both involve a fan
but are otherwise substantially different in
function, structure and purpose. A ceiling fan
is used to circulate and mix air that would
otherwise be stagnant in a room, whereas a fan
coil acts to introduce a heating or cooling
medium into a coil over which a fan is caused to
pass air so as to transfer the cooled or heated
air into a room to be conditioned. (Reply brief
at 2).

Insofar as the trade channels are concerned, applicant
contends that its goods are sold by HVAC (heating,
ventilation and air conditioning) distributors and dealers
whereas registrant’s ceiling vans are sold primarily by
home improvement stores. Also, applicant argues that the
purchasers of both its goods and registrant’s goods are
sophisticated. Applicant states that it has used the
INFINITY mark in connection with the involved goods since
April 1987 and there have been no instances of actual
confusion. Finally, applicant maintains that marks
consisting of or containing the word INFINITY/INFINITI are
weak marks which are therefore entitled to only a limited
scope of protection.
We turn, first, to a determination of whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks must be considered in their entireties,
Ser No. 78329277
5
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result.
We find that the marks INFINITY and INFINITI are
substantially similar in terms of appearance, differing
only by one letter. We also find that the marks are
identical, in terms of sound. With respect to connotation,
it is likely that the cited mark INFINITI would be
perceived as a mere misspelling of the word “infinity” and,
thus it would have the same connotation as applicant’s mark
INFINITY. Similarly, in terms of overall commercial
impression, we find that INFINITY and INFINITI are
substantially similar. In sum, when we consider the marks
in their entireties, we find that they are identical in
sound and substantially similar in terms of appearance,
connotation and commercial impression.
Ser No. 78329277
6
We turn next to the similarity or dissimilarity of the
respective goods, and the similarity or dissimilarity of
the trade channels and classes of purchasers for the
respective goods. It is well established that the question
of likelihood of confusion must be determined on the basis
of the goods as they are set forth in the involved
application and the cited registration, and not in light of
what such goods are shown or asserted to actually be. See
Octocom Systems Inc. v. Houston Computer Services, Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); Canadian
Imperial Bank of Commerce, N.A. v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Thus, where
applicant’s and registrant’s goods are broadly described as
to their nature and type, it is presumed in each instance
that in scope the application and registration encompass
not only all goods of the nature and type described
therein, but that the identified goods move in all channels
of trade which would be normal for those goods and that
they would be purchased by all potential buyers thereof.
See In re Elbaum, 211 USPQ 639 (TTAB 1981). Further, it is
a general rule that the goods or services need be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods or services are related in some manner, or that the
Ser No. 78329277
7
circumstances surrounding their marketing are such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods or services. In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). Moreover, the greater the degree of
similarity between the applicant’s mark and the cited mark,
the lesser the degree of similarity between the applicant’s
goods and the registrant’s goods that is required to
support a finding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 35 (TTAB
1983).
Applying these principles to the present case, we find
that the trademark examining attorney has failed to
establish that applicant’s fan coils and registrant’s
ceiling fans are similar or related in a way which would
result in source confusion, even when they are marketed
under the substantially similar marks involved in this
case.
Ser No. 78329277
8
It is true that fan coils and ceiling fans may be
broadly characterized as goods for circulating air. The
mere fact that one may employ broad descriptive terms in
conjunction with two types of goods does not demonstrate
that they are related. See General Electric Company v.
Graham Magnetics Incorporated, 197 USPQ 690 (TTAB 1977);
Harvey Hubbell Incorporated v. Tokyo Seimitsu Co., Ltd.,
188 USPQ 517 (TTAB 1975). When we examine the involved
goods, they do not appear to be related in a manner that
would be likely to cause confusion. Fan coils are
components of heating, ventilation and air conditioning
(HVAC) systems and units; they do not appear to be consumer
items; rather they are the types of products that would be
offered by dealers and distributors of HVAC systems for use
by installers and repair personnel. On the other hand, the
cited registration is for ceiling fans. This is the type
of product that would be offered in home improvement stores
to the general public for use in their residences.
It appears to us that, because of the nature of the
goods, they would be offered to different purchasers
through different channels of trade. As such, it is
unlikely that there would be any opportunity for confusion
to occur.
Ser No. 78329277
9
In an attempt to show a relationship between the
respective goods, the examining attorney made of record
third-party registrations which she maintains show that
companies have registered their marks for both fan coils
and ceiling fans. Third-party registrations which
individually cover a number of different goods and which
are based on use in commerce serve to suggest that the
listed goods are of a type which may emanate from a single
source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
Upon closer examination of the evidence submitted by
the examining attorney, we find that only one use-based
third-party registration includes fan coils and ceiling
fans; that is, Registration No 2928079 for the mark
PANASONIC which includes “fan coil units” and “ceiling
fans.”5 This single registration is insufficient to show
that applicant’s fan coils and registrant’s ceiling fans

5 The examining attorney submitted over forty third-party
registrations in this case. The overwhelming majority appear to
relate to the registrations which were initially cited as bars to
registration of applicant’s mark but were subsequently withdrawn.
It would have been helpful if the examining attorney had
specified the third-party registrations on which she was still
relying to support her position that fan coils and ceiling fans
are related goods.
Ser No. 78329277
10
are of a type which may emanate from a single source.6
In view of the differences in the goods, the different
customers to whom they are sold, and the different trade
channels through which they are sold, we find that the
Office has not met its burden of proving that applicant’s
use of the mark INFINITY for applicant’s identified goods
is likely to cause confusion or mistake, or to deceive with
the registered mark INFINITI for ceiling fans.
Decision: The refusal to register under Section 2(d)
is reversed.

6 Also of record are two third-party applications for marks that
cover, inter alia, fan coils and ceiling fans. However,
applications are not probative of anything except that they were
filed.