Dextra Asia Co., LTD

Trademark Trial and Appeal Board

Sep 30, 2011

No. 77848919 (T.T.A.B. Sep. 30, 2011)

Mailed: September 30, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Dextra Asia Co., LTD
________

Serial No. 77848919
_______

John S. Egbert of Egbert Law Offices for Dextra Asia Co.,
LTD.

April Roach, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
_______

Before Quinn, Taylor and Lykos, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Dextra Asia Co., LTD. has filed an application to
register on the Principal Register the mark UNITEC (in
standard character format) for goods ultimately identified
as “Metal reinforcement bars and their metal connectors
used in concrete construction and in ground engineering,
namely, mechanical splices for concrete reinforcement bars,
tension bars and rods, soil nails, rock bolts, reservation
tubes for sonic testing, all made of metal” in Class 6.1

1 Serial No. 77848919 filed October 14, 2009, and with an
allegation of a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77848919
2
The 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, is likely to be confused
with the marks in U.S. Registration Nos. 3472457 and
3550354, both owned by the same entity, shown below.
Registration No. 32724572

Registration No. 35503543 for the stylized mark

Both marks are for “Harnesses; anchoring material of metal,
namely, anchors; metal gripping buckles for pulling bands”
in International Class 6; “Safety restraints; safety
restraints, namely, safety bands for working on masts, nets
for protection against accidents; Fall protection equipment
for fall restraint and fall arrest, namely, lanyards,
harnesses, and lines” in International Class 9; “Ropes,
cables, cords, cordage and hoisting straps, all for tying-
down, bundling or securing heavy objects for storage or
transportation, or for handling loads; lashing bands of
textile, with metal fasteners/buckles for wrapping or

2 Issued July 22, 2008.
3 Issued December 23, 2008.
Serial No. 77848919
3
binding” in International Class 22; “Industrial textiles
and textile goods, namely, vinyl textiles for use in the
manufacture of ropes, lashing bands, straps and harnesses;
flame-resistant fabric”; and “Import and export of
harnesses, anchoring material of metal, metal gripping
buckles for pulling bands, building materials of metal,
rings, hooks, security apparatus, safety bands for working
on masts, safety harnesses, nets for protection against
accidents, ropes for tying-down, bundling or securing
objects for storage or transportation, cables for tying-
down, bundling or securing objects for storage or
transportation, cords for tying-down, bundling or securing
heavy objects for storage and transportation, cordage for
tying-down, bundling or securing heavy objects for purposes
of storage or transportation, hoisting straps, lashing
bands of textile, with metal fasteners/buckles, textiles,
industrial textiles and textile goods, flame-resistant
fabric; business organization management and business
economics consultancy” in International Class 35.
After the refusal was made final, applicant appealed
and requested reconsideration of the final refusal. On
December 29, 2010, the examining attorney denied the
request for reconsideration and the appeal was resumed on
January 7, 2011. Applicant and the examining attorney
Serial No. 77848919
4
filed briefs. For the reasons discussed below, we affirm
the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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 Company, 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).
In analyzing likelihood of confusion, we limit our
discussion to Registration No. 3550354 for the mark
for “anchoring material of metal, namely, anchors,” as this
mark and goods are the closest to applicant’s mark and
recited goods and, with further regard to the goods, are
the goods on which the examining attorney focused her
arguments.4 To the extent that there would be confusion

4 We note in this regard that likelihood of confusion must be
found if there is likely to be confusion with respect to any item
that comes within the identification of goods in the application.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986 (CCPA 1981). The Office need only show that
at least one of the identified goods in the application is
related to the goods identified in the cited registration.
Serial No. 77848919
5
with the ‘354 registration, it would serve little purpose
to consider the other registration. And if there is no
likelihood of confusion with the ‘354 registration, there
would similarly be no likelihood of confusion with the
other registration.
With respect to the marks, we examine the similarities
and dissimilarities of the marks, in their entireties, in
terms of sound, appearance, meaning and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The test under this du Pont factor 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 overall commercial impressions
that confusion as to the source of the goods offered under
the respective marks is likely to result.
Applicant’s mark is UNITEC (in standard character
form) and the cited mark is . We find the dominant
and distinguishing element in the cited mark is the literal
element UNITEX; registrant’s mark is not so highly stylized
that its block font serves to distinguish the mark from
applicant’s mark given the fact that applicant’s mark is in
standard character form and, thus, could be displayed in
similar styled lettering. See, e.g., Citigroup Inc. v.
Serial No. 77848919
6
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011) (“If the registrant …
obtains a standard character mark without claim to any
particular font style, size or color, the registrant is
entitled to depictions of the standard character mark
regardless of font style, size, or color….” (internal
quotation marks omitted); and Squirtco v. Tomy Corp, 697
F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he
argument concerning a difference in type style is not
viable where one party asserts rights in no particular
display. By presenting its mark merely in a typed drawing,
a difference cannot legally be asserted by that party”).
The dominant and distinguishing portion of the cited
mark UNITEX is very similar in appearance to applicant’s
mark UNITEC having the first five letters in common. The
difference of one letter in the marks, especially because
it is the last letter, has little effect on the appearance
of the marks and is unlikely to be noticed by prospective
purchasers especially if the marks are viewed at different
times. See Weiss Associates, Inc. v. HRL Associates, 902
F.2d 1546, 14 USPQ2d 1848, 1841 (Fed. Cir. 1990) (“It is
the especially hard to distinguish between TMS and TMM when
the marks only differ by the last letter.”). The marks are
also very similar in pronunciation, both being three
Serial No. 77848919
7
syllables and differing only slightly in the sound of the
last syllable; purchasers may easily confuse the “tex”
sound of the cited mark for the “tec” sound of applicant’s
mark, particularly since “tex” may be pronounced as the
plural of “tec.” As to connotation, the marks could convey
somewhat different meanings, but there is no evidence one
way or the other. While there are specific differences
between the marks and, even though the mark may differ in
connotation, we nonetheless find that these differences are
outweighed by the substantial similarities in appearance
and sound and overall commercial impression.
We simply are not persuaded by applicant’s arguments
to the contrary. In particular, even if the respective
marks were viewed as consisting of the prefix “UNI”
combined with the letters “TEC” and “TEX,” respectively, it
is still unlikely that the different last letters will be
noticed by prospective purchasers particularly where, as
here, the marks are similar in sound. We also are not
convinced that the substitution of the “C” in applicant’s
mark for the “X” in the cited mark creates marks with
distinct connotations and commercial impressions.
Applicant particularly argues that its UNITEC mark, when
viewed in connection with reinforcement bars and connectors
in the concrete industry, “implies to the consumer the word
Serial No. 77848919
8
‘united’ (as in the connectors and the strengthening of
concrete) and the word ‘technology’ (as in the
technological advances the company has made in this field
or industry)”; whereas “the cited registrant’s ‘UNITEX’
mark[], when viewed in light of its use in relation to
harnesses and anchors in the industrial industry would
evoke in the consumer the thought of the ‘textiles’ used in
their harness and restraint materials.” Br. p. 7. There
is nothing in the record that confirms the connotation of
applicant’s mark, but even if so perceived, we cannot
attribute the asserted connotation to registrant’s mark.
The goods at issue in the cited mark, as identified, are
“anchoring material of metal, namely, anchors.” Not only
are the goods not limited to the industrial industry but,
being metal, are not evocative of textiles.
The du Pont factor of similarity/dissimilarity of the
goods thus favors a finding of likelihood of confusion.
We now turn to a consideration of the goods identified
in the application and the cited registration. It is well
settled that goods need not be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is enough that the goods are related
in some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by
Serial No. 77848919
9
the same persons under circumstances which would give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods. In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991). Further, we must
consider the cited registrant’s goods as they are described
in the registration and we cannot read limitations into
those goods. See Hewlett-Packard Press Inc., 281 F.3d
1261, 62 USPQ 2d 1001 (Fed. Cir 2002); and Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1987). If the cited registration
describes goods broadly, and there is no limitation as to
the nature, type, channels of trade or class of purchasers,
it is presumed that the registration encompasses all goods
of the type described, and that they move in all channels
of trade normal for these goods, and that they are
available to all classes of purchasers for the described
goods. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992).
In support of her contention that applicant’s metal
reinforcement bars and their metal connectors used in
concrete construction and in ground engineering, namely,
mechanical splices for concrete reinforcement bars, tension
Serial No. 77848919
10
bars and rods, soil nails, rock bolts, reservation tubes
for sonic testing, all made of metal are related to
registrant’s anchoring material of metal, namely, anchors,
the examining attorney has made of record excerpts from
various websites of third parties showing that metal
reinforcement bars and their connectors, and/or soil nails,
and metal anchors are commonly provided together by the
same entity under the same mark, are used by the same
consumers and are similar or complementary in terms of
purpose or function. The excerpts are as follows:
• www.williamsform.com: showing that
anchors are used with metal bars to anchor
rock and concrete
(November 24, 2009 Office action, pp. 8-9
and 14-15)

• www.daytonsuperior.com: showing that
tension bars for lifting are designed to
be used with anchors for concrete
applications
(November 24, 2009 Office action, pp. 10-
13)

• www.judycompany.com: showing that anchors
and rock nails are used in anchoring
systems
(November 24, 2009 Office action, pp. 16-
18)

• www.contechsystems.com: describing
anchoring systems comprised of strand or
bar anchors, micropiles, and soil nails
for retrofitting of building structures,
slope stabilization, earth retention, and
foundation design
(June 10, 2010 Office action, pp. 8-10)

Serial No. 77848919
11
• www.dsiamerica.com: describing a
reinforcement system with metal bars and
anchors for use in concrete and soil
(June 10, 2010 Office action, pp. 11-14)

• www.duraset.com: describing use of ground
anchors and reinforcement bars in the
construction industry
(June 10, 2010 Office action, pp. 11-14)

The Internet materials introduced by the examining
attorney demonstrate that applicant’s and registrant’s
goods are commonly used together for the same purpose
and/or function and frequently emanate from the same source
under a common mark. We thus find the evidence sufficient
to establish that applicant’s metal reinforcement bars and
their metal connectors used in concrete construction and in
ground engineering are closely related and complementary to
registrant’s anchoring materials of metal, namely, anchors.
In making our finding, we keep in mind that registrant’s
anchors are not limited to any particular function or
industry and, as such, are presumed to be used for concrete
applications in the construction industry.
Further, with respect to the channels of trade and
classes of purchasers, in the absence of any limitations to
the identification of goods in the cited registration, we
must presume that registrant’s anchoring material of metal,
namely, anchors will move in all normal channels of trade
which, as demonstrated by the evidence of record, include
Serial No. 77848919
12
the field of construction, and will be used by all normal
potential purchasers, including contractors in the
construction industry. In re Elbaum, 211 USPQ 639 (TTAB
1981).
Applicant’s arguments regarding the actual function
and trade channels of registrant’s goods, and its attempts
to limit the same to use in lifting heavy equipment in the
industrial field fail, inasmuch as an applicant may not
restrict the scope of goods in an otherwise unrestricted
registration by argument or extrinsic evidence. See In re
Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986).
Applicant’s reliance on In re Trackmobile Inc., 15 USPQ2d
1152, 1153 (TTAB 1990) is misplaced. In that case, the
Board reiterated the well-established rule of law that “the
Board must compare applicant’s goods as set forth in its
application with the goods as set forth in the cited
registration. It is improper to decide the issue of
likelihood of confusion based upon a comparison of
applicant’s actual goods with registrant’s actual goods.”
Id. at 1153. The Board went on to state that “when the
description of goods for a cited registration is somewhat
unclear, as is the case herein, it is improper simply to
consider that description in a vacuum and attach all
possible interpretations to it when the applicant has
Serial No. 77848919
13
presented extrinsic evidence showing the description of
goods has a specific meaning to members of the trade.” Id.
at 1154. Trackmobile stands for the proposition that when
the nature of the goods is unclear (e.g., mobile railcar
movers v. light railray motor tractors), extrinsic evidence
may be used to demonstrate what a specific term means in an
industry to understand whether or not one is encompassed by
the other. The nature of the goods in this case is clear.
The absence of function and trade channel limitations does
not present a “vacuum”; it simply provides for broader
protection.
We similarly find applicant’s argument that the scope
of registrant’s goods should be limited based on the
wording used to describe other goods listed in the
registration unavailing. See In re Thor Tech, Inc., 90
USPQ2d 1634, 1638 (TTAB 2009) (the Board will not read a
limitation as to a specific item in the identification of
goods in pari materia with the other goods listed in the
identification). While many of the other goods listed in
the identification are textile products for lifting and
moving objects, this limitation cannot be read into the
discretely identified item, “anchoring materials of metal,
namely, anchors.”
Serial No. 77848919
14
Last, we are not persuaded by applicant’s argument
that the purchasers of its goods and the cited registrant’s
goods are sophisticated in a manner that will effectively
eliminate any likelihood of confusion.5 First, even if the
purchasers of both applicant’s and registrant’s goods are
sophisticated and will exercise a degree of care in their
purchasing decisions, contrary to applicant’s assertion,
the respective identifications do not reflect that the
goods would only be sought only by professionals in
discrete industries – civil works in the case of applicant
and industrial manufacturing in the case of the registrant.
Moreover, applicant does not provide any evidence regarding
the decision-making process used by these purportedly
professional consumers, the role trademarks play in their
decision making-process, or how observant and
discriminating they are in practice. Accordingly, the flaw
in applicant’s argument is that there is no corroborating
evidence. See Refreshment Machinery Inc. v. Reed
Industries, Inc., 196 USPQ 840, 843 (TTAB 1977) (selling to
a sophisticated purchaser does not automatically eliminate

5 With regard to the numerous cases cited by applicant to
bolster its contention that both applicant’s and the cited
registrant’s purchasers are sophisticated and that such
sophistication obviates the likelihood of confusion, as is often
noted by the Board and the courts, each case must be decided on
its own merits. See In re Nett Designs Inc., 236 F.3d 1339, 51
USPQ2d 1564, 1566 (Fed. Cir. 2001).
Serial No. 77848919
15
the likelihood of confusion because “[i]t must also be
shown how the purchasers react to trademarks, how observant
and discriminating they are in practice, or that the
decision to purchase involves such careful consideration
over a long period of time that even subtle differences are
likely to result in recognition that different marks are
involved”). In any event, even knowledgeable and careful
purchasers can be confused as to source, where, as here,
very similar marks are used in connection with closely
related goods. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even
of discriminating purchasers … are not infallible.").
We thus find this du Pont factor neutral.
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant’s
arguments relating thereto, including those arguments not
specifically addressed herein, we conclude that in view of
the substantial similarity in the commercial impressions of
applicant’s mark, UNITEC, and registrant’s mark ,
their contemporaneous use on the involved closely related
and/or complementary goods is likely to cause confusion as
to the source or sponsorship of such goods. Moreover, to
Serial No. 77848919
16
the extent that we have any doubts as to the correctness of
this conclusion, we resolve such doubts against applicant
and in favor of registrant. See Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992); and Ava Enterprises Inc. v.
Audio Boss USA Inc., 77 USPQ2d 1783 (TTAB 2006).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.