Carrier Corporation

Trademark Trial and Appeal Board

Feb 15, 2008

No. 78329286 (T.T.A.B. Feb. 15, 2008)

Mailed: February 15, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Carrier Corporation
________

Serial No. 78329286
_______

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:
thermostats and electronic controls for residential
heating, ventilation and air conditioning units;
electric fan coils in International Class 9; and
air filters for air conditioning units; air filters

1 After briefs on this 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. 78329286
2
for domestic use; humidifiers, ventilators for
heating, ventilation and air conditioning units 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 marks in the
following registrations, that, if used in connection with
applicant’s goods, it is likely to cause confusion or
mistake or to deceive:
Registration No. 1758207 for the mark INFINITI in
typed form for “electric circulating and
ventilating fans; namely, ceiling fans;”3

Registration No. 2123282 for the mark INFINITY in
typed form for, in relevant part, “controllers
for measuring, controlling, and/or regulating
temperature;”4 and

Registration No. 2126935 for the mark INFINITY
and design shown below,

for, in relevant part, “controllers for

2 Serial No. 78329286, filed November 18, 2003, based on
applicant’s allegation of a bona fide intention to use the mark
in commerce.
3 Registration No. 1758207 issued March 16, 1993; renewed. This
registration is owned by Hunter Fan Company.
4 Issued December 23, 1997; renewed.
Ser No. 78329286
3
measuring, controlling, and/or regulating
temperature.”5

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
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 Marks
We begin our analysis with a comparison of applicant’s
mark INFINITY and registrants’ marks INFINITI (Registration

5 Issued January 6, 1998; renewed. The latter two registrations
are owned by Newport Electronics, Inc. The examining attorney
initially cited several additional registrations as bars to
registration of applicant’s mark. These registrations were
subsequently withdrawn.
Ser No. 78329286
4
No. 1758207), INFINITY (Registration No. 2123282) and
INFINITY and design (Registration No. 2126935).
With respect to the marks, we are required to
determine the similarity of dissimilarity of the marks when
viewed in their entireties in terms of appearance, sound,
connotation and commercial impression. Although the marks
must be considered in their entireties, 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 offered under the respective marks is likely to
result.
We find that applicant’s mark INFINITY and the cited
mark INFINITI (Registration No. 1758207) 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
Ser No. 78329286
5
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 these marks in their entireties,
we find that they are identical in sound and substantially
similar in terms of appearance, connotation and commercial
impression.
Insofar as applicant’s mark INFINITY and the cited
mark INFINITY (Registration No. 2123282) are concerned, it
is readily apparent that they are identical in terms of
appearance, sound, connotation and commercial impression.
The cited mark INFINITY and design (Registration No.
2126935) contains the word INFINITY and the infinity
symbol. The presence, however, of the infinity symbol does
not serve to distinguish this mark from applicant’s
INFINITY mark. A design element such as that appearing in
the cited mark is generally less important than the word
portion of the mark in creating an impression. See In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Moreover, in the case of the cited mark, the infinity
symbol simply reinforces the word INFINITY. Further, the
font style in the cited mark is certainly not unique, and
because applicant’s mark is in standard character form it
Ser No. 78329286
6
may be displayed in the same font style. In sum, because
both marks are dominated by the term INFINITY, we find that
when considered in their entireties, they are substantially
similar in terms of appearance, sound, connotation and
commercial impression.
Applicant argues that marks consisting of or
containing the word INFINITY/INFINITI are weak marks which
are therefore entitled to only a limited scope of
protection. In support of its contention, applicant
submitted a list of third-party applications and
registrations taken from the USPTO TESS database. The list
consists simply of the registration/application number, the
word mark, and the status of the registration/application,
i.e., whether it is “live” or “dead.” Such a listing of
registration/application numbers and marks is generally
insufficient to make the registrations and applications of
record. See Trademark Board Manual of Procedure Section
1208.02 (5th ed. 2007) and cases cited therein. The
trademark examining attorney, however, did not object to
this list and we therefore consider the list of
registrations and applications of record.
This list does not indicate the particular goods in
connection with which the marks are registered or sought to
be registered. Therefore, it is of limited probative
Ser No. 78329286
7
value, since we cannot determine whether the marks are for
goods similar to those of the applicant and any of the
registrants. In this regard, even copies of third-party
registrations covering goods far removed from the goods of
the applicant and the registrants would be irrelevant to
the present likelihood of confusion analysis. See Conde
Nast Publications, Inc. v. America Greetings Corp., 329
F.2d 1012, 141 USPQ 249, 252 (CCPA 1964). Also, copies of
third-party applications are irrelevant because they are
not probative of anything except that the applications were
filed.
Nevertheless, even if marks which consist of or
contain the word INFINITY/INFINITI are considered to be
weak due to a high degree of suggestiveness conveyed by
such term, even weak marks are entitled to protection where
confusion is likely. Here, notwithstanding any alleged
weakness in the term INFINITY/INFINITI, applicant’s mark is
still identical/substantially similar to each of the
registered marks in appearance, sound, connotation and
commercial impression.
Further, to the extent that applicant contends that
the cited marks are entitled to a limited scope of
protection because they are not famous, such contention is
without merit. The absence of fame is not a consideration
Ser No. 78329286
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in our likelihood of confusion determination. See In re
Majestic Distilling Co., 315 F.3d 1311, 65 USOQ2d 1201
(Fed. Cir. 2003).
Applicant also maintains that confusion is not likely
because it will use the mark INFINITY with a house mark.
In determining applicant’s right to registration, only the
mark as set forth in the application may be considered;
whether or not INFINITY will be used in combination with a
house mark is of no significance. See Frances Denny v.
Elizabeth Arden Sales Corporation, 120 USPQ 480 (CCPA
1959).
The Goods
With respect to the 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 each of the cited registrations,
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 any of the registrant’s
goods are broadly described as to their nature and type, it
is presumed in each instance that in scope the application
Ser No. 78329286
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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
need not be identical or even competitive in order to
support a finding of likelihood of confusion. Rather, it
is sufficient that the goods are related in some manner, or
that the 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. 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 any
of the cited marks, 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
Ser No. 78329286
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confusion. In re Concordia International Forwarding Corp.,
222 USPQ 35 (TTAB 1983).
Registration No. 1758207

The goods in this registration are identified as
“electric circulating and ventilating fans; namely; ceiling
fans.” The examining attorney contends that applicant’s
Class 9 electric fan coils and Class 11 air conditioning
units are related to registrant’s ceiling fans. 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 electric fan coils and air conditioning
units, on the one hand, and ceiling fans, on the other
hand.
Applicant, however, argues that the respective goods
are different in nature. Insofar as the trade channels are
concerned, applicant contends that its goods are of a type
that are sold by HVAC distributors and dealers whereas
registrant’s ceiling fans are sold primarily by home
improvement stores. Also, applicant argues that the
purchasers of both its goods and registrant’s goods are
sophisticated.
We find that the trademark examining attorney has
failed to establish that applicant’s Class 9 electric fan
Ser No. 78329286
11
coils and registrant’s ceiling fans are similar or related
in a way which would result in source confusion, even if
they are marketed under the substantially similar marks
involved in this case.
It is true that electric 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. Electric fan coils are
components of heating, ventilation and air conditioning
(HVAC) equipment 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 and units 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.
Ser No. 78329286
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It appears to us that, because of the nature of the
goods, they would be offered to different classes of
purchasers through different channels of trade. As such,
it is unlikely that there would be any opportunity for
confusion to occur.
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 electric
fans 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 electric fan coils and
ceiling fans; that is Registration No. 2928079 for the mark
PANASONIC which includes “fan coil units” and “ceiling
fans.” This single registration is insufficient to show
that applicant’s electric fan coils and registrant’s
Ser No. 78329286
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ceiling fans are of a type which may emanate from a single
source.6
Insofar as applicant’s Class 11 air conditioning units
and registrant’s ceiling fans are concerned, we find that
these goods are sufficiently related that confusion is
likely to result from the use of the substantially similar
marks INFINITY and INFINITI. In this regard, the examining
attorney submitted the following use-based third-party
registrations which include in their respective
identifications both of these types of goods: Registration
No. 2429757 for the mark BLUE TECHNOLOGY for “air
conditioners,” “air conditioning units,” and “ceiling
fans;” Registration No. 2521116 for the mark GENUIN and
design for “air conditioners” air conditioning units,” and
“ceiling fans;” Registration No. 2634811 for the mark
HARBOR BREEZE for “ceiling fans” and “air conditioning
units;” Registration No. 2719978 for the mark MAICA for
“air conditioners” and “ceiling fans”; Registration No.
2928079 for the mark PANASONIC for “air conditioners”
“ceiling fans” and “air conditioning units;” Registration

6 Also, of record are two third-party applications for marks that
cover fan coils and ceiling fans. However, applications are not
probative of anything except that they were filed.
Ser No. 78329286
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No. 2813887 for the mark ACA for “air conditioners” and
“ceiling fans;” Registration No. 2835244 for the mark
ALWAYS QUIET. ALWAYS IN STYLE. for “ceiling fans” and “air
conditioning units;” Registration No. 2905847 for the mark
ICECO HEATING AND COOLING THE WORLD and design for “window
air conditioning units” and “ceiling mount fans”;
Registration No. 2921647 for the mark PAVILLON for air
conditioners” “air conditioning units” and “ceiling fans;”
and Registration No. 2830243 for the mark HARBOR BREEZE and
design for “ceiling fans” and “air conditioning units.”7
Although these registrations are not evidence that the
marks shown therein are in commercial use, or that the
public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
goods identified therein are of a type which may emanate
from a single source under the same mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, In re Mucky Duck
Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988). This
evidence demonstrates the existence of at least a viable

7 The examining attorney submitted over fifty 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 relying
to support her position with respect to the relatedness of
applicant’s electric fan coils and air conditioning units and
registrant’s ceiling fans.
Ser No. 78329286
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relationship between air conditioning units and ceiling
fans.
We also find that these types of goods may be sold in
overlapping trade channels and to the same classes of
purchasers. Applicant argues that its goods are of a type
that are sold through HVAC dealers and distributors.
However, no limitation or restriction appears in
applicant’s identification of goods, and therefore it can
be given no consideration. We must presume that
applicant’s air conditioning units include all the usual
types, including window air conditioners and portable air
conditioners. Such air conditioning units and ceiling fans
would be marketed in home improvement stores to the general
public. Nor can we accept applicant’s argument that
purchasers of the involved goods are sophisticated. This
argument is unsupported by any evidence in the record.
Moreover, as indicated, air conditioning units and ceiling
fans are purchased by the general public who would exercise
nothing more than normal care in purchasing the goods.
Registration Nos. 2123282 and 2126935
The pertinent goods in these registrations are
“controllers for measuring, controlling, and/or regulating
Ser No. 78329286
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temperature.” The examining attorney argues that such
goods are identical, or at the very least closely related,
to registrant’s identified “controllers for measuring,
controlling, and/or regulating temperature.”
Applicant, however, contends that the involved goods
are not related because the registrant’s controllers are
not for use in heating, ventilation and air conditioning
systems. In this regard, applicant submitted excerpts from
registrant’s Internet homepage. Applicant further contends
that the involved goods are offered in different channels
of trade and that the purchasers of the goods are
sophisticated.
The identified “controllers for measuring,
controlling, and/or regulating temperature” in the cited
registrations are not limited to a particular application.
As previously noted, the question of likelihood of
confusion must be determined on the basis of registrant’s
goods as they are set forth in the registrations, and not
in light of what such goods are shown or asserted to
actually be. Thus, for purposes of our likelihood of
confusion analysis herein, we must presume that
registrant’s controllers are for use in heating,
ventilation, and air conditioning systems. In other words,
we cannot limit registrant’s goods in the manner urged by
Ser No. 78329286
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applicant. Applicant’s goods, therefore, must be
considered as identical in part, or at a minimum closely
related to registrant’s goods.
Applicant’s argument about the differences in trade
channels also is unavailing. Again, in the absence of any
limitations in registrant’s identifications of goods, we
must presume that the registrant’s goods are sold in all of
the normal channels of trade for goods of that type,
including HVAC dealers and distributors.
With respect to applicant’s arguments that the
purchasers of the involved goods are sophisticated, we note
that applicant has not offered any evidence to support this
assertion. In any event, we note that even careful
purchasers are not immune from source confusion,
particularly here where the marks are
identical/substantially similar and the goods are, at a
minimum, closely related. In re Total Quality Group Inc.,
51 USPQ2d 1474 (TTAB 1999).
A final argument made by applicant requires comment.
Applicant contends that there have been no instances of
actual confusion occurring as a result of the
contemporaneous use of the marks of applicant and the
registrants. Although this is an intent-to-use
application, applicant states that it has used the INFINITY
Ser No. 78329286
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mark in connection with its identified goods since 2004.
We are not persuaded by applicant’s argument. As the Board
stated in In re Kangaroos U.S.A, 223 USPQ 1025, 1026-1027
(TTAB 1984):
[A]pplicant’s assertion that it is unaware of any
actual confusion occurring as a result of the
contemporaneous use of the marks of applicant and
registrant is of little probative value in an ex
parte proceeding such as this where we have no
evidence pertaining to the nature and extent of
the use by applicant and registrant (and thus
cannot ascertain whether there has been ample
opportunity for confusion to arise, if it were
going to); and the registrant has no chance to be
heard from (at least in the absence of a consent
agreement, which applicant has not submitted in
this case. Moreover, the test under Section 2(d)
is not actual confusion but likelihood of
confusion. (citations omitted)

Decision: The refusal to register applicant’s
Class 9 goods in view of Registration No. 1758207 is
reversed. The refusal to register applicant’s Class
11 goods in view of Registration is 1758207 is
affirmed. The refusal to register applicant’s Class 9
goods in view of Registration Nos. 2123282 and 2126935
is affirmed.