Dade Behring Inc.v.Bio-Chem Laboratory Systems, Inc.

Trademark Trial and Appeal Board

Mar 9, 2001

No. 91114796 (T.T.A.B. Mar. 9, 2001)

03/09/01
PTH
Opposition No. 114,796
Dade Behring Inc.
v.
Bio-Chem Laboratory
Systems, Inc.
Before Seeherman, Hairston and Rogers, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
By the Board:
Dade Behring Inc. has opposed the intent to use
application of Bio-Chem Laboratory Systems Inc. for the mark
shown below,
for “medical devices, namely, electrolyte analyzers for
medical diagnostic use.”1 In the notice of opposition,
opposer asserted that since 1997 it has used the mark
QUIKLYTE in connection with electrolyte testing apparatus
for medical diagnostic use; that it is the owner of a
1 Serial No. 75/483,436, filed May 12, 1998.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
2900 Crystal Drive
Arlington, Virginia 22202-3513
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. Error! Reference source not found.
2
registration for this mark (Registration No. 2,207,140
issued December 1, 1998); that applicant’s mark CHEMLYTE so
resembles opposer’s previously used and registered mark
QUIKLYTE as to be likely to cause confusion; and that
applicant’s use of the mark CHEMLYTE will “dilute or impair”
opposer’s QUIKLYTE mark.
In its answer, applicant denied the essential
allegations of the notice of opposition.
This case now comes up on applicant’s motion for
summary judgment. Opposer has filed a brief in response
thereto.2
Applicant, in moving for summary judgment, concedes
that opposer has priority and that the parties’ goods are
the same. Applicant, however, maintains that there is no
likelihood of confusion in this case because the parties’
marks are distinguishable. In particular, applicant argues
that the marks’ common element LYTE is weak and has been
frequently adopted by third parties in the medical
diagnostic field such that the relevant purchasers are
accustomed to looking at the other element(s) in marks which
include the suffix -LYTE in order to distinguish such marks.
2 Inasmuch as applicant has not objected to opposer’s request to
accept its late-filed response, the request is approved and the
Board will consider opposer’s response to applicant’s summary
judgment motion.
Opposition No. Error! Reference source not found.
3
Applicant has submitted the following definitions of “lyte”
taken from Webster’s Third New International Dictionary
(1981):
1 –lyte: a substance capable of undergoing
lysis3
2 –lyte –-see –lite
In addition, applicant submitted from the same dictionary
definitions of the terms “electrolyte,” “anolyte,”
“catholyte,” and “hydrolyte.” Also, applicant submitted,
for goods in International Class 10, a list of seven
registered and pending marks which include the term “lyte”
and a list of sixty-four registered and pending marks which
include the term “lite.”
Opposer, in response to the motion for summary
judgment, contends that applicant has not demonstrated that
there are no genuine issues of material fact in this case.
In particular, opposer maintains that the list of registered
and pending marks submitted by applicant, in the absence of
evidence that the marks are in use, fails to establish that
marks consisting of the term LYTE are weak. Moreover,
opposer argues that seven registered and pending third-party
LYTE marks is an insufficient number to establish that
opposer’s mark exists in a “crowded field” and that the
sixty-four registered and pending LITE marks are not
3 We judicially notice that the same dictionary defines “lysis”
as “a process of disintegration or dissolution.”
Opposition No. Error! Reference source not found.
4
relevant because LITE has a connotation which is not
particularly pertinent in the field of medical diagnostics.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317, 106 S. Ct. 2548
(1986). Upon consideration of the evidence and the
arguments presented, we find that summary judgment is
warranted in applicant’s favor.
As noted above, applicant has conceded that the goods
on which it intends to use its mark are identical to
opposer’s goods and, thus, the parties’ goods would move in
the same channels of trade to the same purchasers. However,
notwithstanding the identity of the goods, we find that
applicant’s mark CHEMLYTE is simply not similar enough to
opposer’s mark QUIKLYTE as to be likely to cause confusion.
Applicant has established by means of a dictionary
definition that the suffix “lyte” has descriptive
significance as used in connection with an electrolyte
testing apparatus for medical diagnostic use. Opposer does
not dispute that “-lyte” is descriptive, but rather argues
Opposition No. Error! Reference source not found.
5
that the third-party registrations, in the absence of
evidence of use of the marks therein, do not establish that
marks consisting of the term “-lyte” are weak. It is true
that the third-party registrations are not evidence of use
of the marks therein to the extent that the public is
necessarily aware of them. However, as the Board noted in
American Hospital Supply Corp. v. Air Products and
Chemicals, Inc., 194 USPQ 340 (TTAB 1977), at 343, third-
party registrations are “competent to establish that a
portion common to the marks involved in a proceeding has a
normally understood and well-known meaning; that this has
been recognized by the Patent and Trademark Office by
registering marks containing such a common feature for the
same or closely related goods where the remaining portions
of the marks are sufficient to distinguish the marks as a
whole; and that therefore the inclusion of [the common
element] in each mark may be an insufficient basis upon
which to predicate a holding of confusing similarity.” In
other words, third-party registrations may be used to show
the meaning of a mark or term in the same way that
dictionaries are used. In this case, the third-party
registrations for marks which include the term LYTE for
goods in International Class 10 are additional evidence that
the LYTE portion of the involved marks has a normally
Opposition No. Error! Reference source not found.
6
understood and well known meaning as used in the medical
diagnostics field.4
It is well-established that in articulating reasons
which support our conclusion on the issue of likelihood of
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 24
USPQ2d 749, 751 (Fed. Cir. 1985).
In view of the fact that the term “LYTE” has
descriptive significance when used in connection with the
involved goods, the relevant purchasers thereof are apt to
look to the other elements of the marks which include the
term in order to distinguish between them. We believe this
to be especially true in this case since the class of
purchasers for the involved goods would be relatively
sophisticated and would immediately recognize the
descriptive significance of the LYTE portion of the marks.
When the marks in the case at hand are considered in
their entireties, with appropriate weight given to the
dominant features thereof, the marks are not so similar in
sound, appearance or meaning that confusion is likely. As
4 We agree with opposer, however, that the term LITE does not
have the same meaning as LYTE when used in connection with the
Opposition No. Error! Reference source not found.
7
the beginning portions of the respective marks, QUIK and
CHEM make strong impressions. QUIK and CHEM do not sound or
look alike, and as a result, the marks in their entireties
are markedly dissimilar. Moreover, the marks have quite
different connotations. Opposer’s mark QUIKLYTE suggests an
electrolyte testing apparatus which yields quick results,
whereas applicant’s mark CHEMLYTE suggests the chemical
analysis performed by the electrolyte analyzers themselves.
This case is akin to Keebler Company v. Murray Bakery
Products, Inc., 866 F.2d 1386, 9 USPQ2d 1736 (Fed. Cir.
1989) and Kellogg Co. v. Pack ‘Em Enterprises, Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991) in which summary
judgment was granted to the defendants. In the Keebler
case, PECAN SHORTIES for cookies was held not likely to
cause confusion with PECAN SANDIES for identical goods. In
the Kellogg case, FROOTEE ICE and design for flavored ice
bars was held not likely to cause confusion with FROOT LOOPS
for breakfast cereal and related products. In each case the
term common to both marks in issue was either descriptive of
the goods or was the phonetic equivalent of such descriptive
term. In each case, it was held that the dissimilarity of
the marks in their entireties was a sufficient basis upon
which to grant summary judgment.
involved goods, and thus the third-party registrations for LITE
marks are not probative of the meaning of LYTE.
Opposition No. Error! Reference source not found.
8
In this case, there are no genuine issues of material
fact as to the dissimilarity between the marks QUIKLYTE and
CHEMLYTE. This factor, the dissimilarity of the marks,
outweighs the other DuPont5 factors favoring opposer. See
Kellogg, supra, at 1144-45 stating that “[w]e know of no
reason why, in a particular case, a single DuPont factor may
not be dispositive.”
Applicant’s motion for summary judgment is accordingly
granted and the opposition is dismissed.
5 In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973).