Entech S.r.l.

Trademark Trial and Appeal Board

Jan 22, 2013

No. 79093424 (T.T.A.B. Jan. 22, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 22, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ENTECH S.R.L.
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Serial No. 79093424
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Kourtney A. Mulcahy of Hinshaw & Culbertson LLP for ENTECH S.R.L.

Nakia D. Henry, Trademark Examining Attorney, Law Office 111 (Robert Lorenzo,
Managing Attorney).
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Before Bucher, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
ENTECH S.R.L. (“applicant”) seeks registration on the Principal Register of
the following mark:

for goods identified as follows:
metal handles for doors and closing manuals systems comprised of
door locks, door latches, door knobs, door stoppers, door plates, and
door bells in International Class 6; and
electronic door closing systems in International Class 9.1

1 Application Serial No. 79093424 was filed on 12/09/2010, pursuant to Section 66(a) of the
Trademark Act. The application includes the following description: “The mark consists of
Serial No. 79093424

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The examining attorney has refused registration of applicant’s mark under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The examining attorney has
taken the position that applicant’s mark, when used in connection with the identi-
fied goods, so resembles the mark INTECH DOOR BLOCK registered for “door
locks” in International Class 6,2 as to be likely to cause confusion, to cause mistake
or to deceive.
After the examining attorney made the refusal final, applicant appealed to
this Board. Applicant and the examining attorney have fully briefed the issues in
this appeal. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address a preliminary evi-
dentiary matter. Applicant has submitted third-party registrations to support its
argument that were attached to its appeal brief for the first time in the proceed-
ing. However, the record in an application must be complete prior to the filing of
an appeal, and the examining attorney has properly objected to these third-party
registrations as untimely. We agree with the examining attorney’s objection, and
this evidence has not been considered. 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc.,
64 USPQ2d 1058, 1059 n.2 (TTAB 2002); In re Trans Cont’l Records Inc., 62
USPQ2d 1541, 1541 n.2 (TTAB 2002); and TBMP §§ 1203.02(e), 1207.01.

the wording “ENtECH,” with the letter “t” presented in lower case lettering. The applica-
tion also notes: “Color is not claimed as a feature of the mark.”
2 Registration No. 2175235 issued on July 21, 1998; renewed. No claim is made to the exclu-
sive right to use the term “Door Block” apart from the mark as shown.
Serial No. 79093424

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II. Likelihood of Confusion
A. Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evi-
dence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
B. Arguments of applicant and the examining attorney
In urging registrability, applicant contends that when compared in their en-
tireties, the respective marks are dissimilar as to sight, sound, connotation and
overall commercial impression; that “Tech” formatives (and marks with similar
spellings) are commonly used in related fields, and hence, the cited mark should be
granted a narrow scope of protection; that while registrant’s goods simply serve to
lock a door, applicant’s goods consist of entire door closing systems; and that given
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these differences in the types of products, registrant’s and applicant’s respective
goods are targeted to quite different classes of consumers.
By contrast, the examining attorney argues that applicant’s mark is quite
similar to the most dominant portion of registrant’s mark; that the respective goods
are closely related, if not identical, and hence, we must further presume that the
channels of trade and the customers will be the same; and finally that any remain-
ing doubt regarding a likelihood of confusion must be resolved in favor of the prior
registrant.
C. Relationship of the goods
We turn our attention first to the relationship of the good as described in the
application and registration. Octocom Systems, Inc. v. Houston Computers Services
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
It is settled that it is not necessary that the respective goods be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. That is, the issue is not whether consumers would confuse the
goods themselves, but rather whether they would be confused as to the source of the
goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The goods need only be suf-
ficiently related that consumers would be likely to assume, upon encountering the
goods under similar marks, that the goods originate from, are sponsored or author-
ized by, or are otherwise connected to the same source. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re Mel-
ville Corp., 18 USPQ2d 1386 (TTAB 1991).
Serial No. 79093424

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Applicant lists its goods as “metal handles for doors and closing manuals sys-
tems comprised of door locks, door latches, door knobs, door stoppers, door plates,
and door bells; and electronic door closing systems.” Registrant’s goods are simply
listed as “door locks.” Hence, applicant’s broadly-identified goods explicitly include
as one of the components, registrant’s exact identification of goods, namely, door
locks. And just like a manual closing system, an electronic door closing system could
well include components for opening and closing a portal electronically, such as a
handle, knob, door opener, and/or door lock. Copies of use-based, third-party regis-
trations may serve to suggest that the goods are of a type which may emanate from
a single source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993). In this context, the examining attorney
submitted for the record third-party registrations demonstrating that door locks
are used in connection with all types of door closing systems. Additionally, the exam-
ining attorney supplied evidence from the Internet to demonstrate that these goods
are commonly sold within similar channels of trade and/or are sold by one entity to
the same classes of ordinary consumers.
Accordingly, applicant’s goods in both classes are considered closely relat-
ed, if not identical, to registrant’s door locks for purposes of our likelihood of confu-
sion analysis, and this du Pont factor favors a finding of likelihood of confusion.
D. Similarities of the Marks
Applicant has applied to register the mark . The registered mark is
INTECH DOOR BLOCK, with a disclaimer of the words “Door Block.”
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In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the simi-
larity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. 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 impression that confusion as to the source of the
goods offered under the respective marks is likely to result.
Because the similarity or dissimilarity of the marks is determined based on
the marks in their entireties, the analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the en-
tire marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
On the other hand, different features may be analyzed to determine whether
the marks are similar. Price Candy Company v. Gold Medal Candy Corporation,
220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particu-
lar feature of a mark, provided the ultimate conclusion rests on a consideration of
the marks in their entireties. In re National Data Corp., 224 USPQ at 751. The fo-
cus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106 (TTAB 1975).
Although the disclaimed portion of registrant’s mark cannot be ignored, and
the marks must be compared in their entireties, generic matter that has been dis-
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claimed is typically less significant when comparing marks. See In re Dixie
Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re
Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985). There-
fore, we agree with the examining attorney that the leading term “INTECH” is the
dominant term of registrant’s mark. As to sound, the dominant “INTECH” portion
of registrant’s mark is phonetically quite similar to applicant’s “ENtECH” mark.
In some reported cases, the similarity in sound alone has been found sufficient to
support a finding that the marks are confusingly similar. In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988), See also In re 1st USA Realty Prof’ls, Inc., 84
USPQ2d 1581, 1586 (TTAB 2007). Accordingly, this du Pont factor also weighs in
favor of a finding of likelihood of confusion.
E. The number and nature of similar marks in use on similar goods
The sixth du Pont factor requires consideration of any evidence pertaining to
“the number and nature of similar marks in use on similar goods.” In this context,
applicant notes that the examining attorney had earlier in the prosecution of this ap-
plication also based her likelihood of confusion refusal on three additional citations:

for, inter alia, “ … metal handles and knobs for doors,
drawers and cupboards … ” in International Class 6;3

3 Registration No. 2827646 issued on March 30, 2004; Section 8 affidavit (6-yr) accepted and
Section 15 affidavit acknowledged.
Serial No. 79093424

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TRENTECH for “physical and electronic security systems, namely,
automated security gates, motion sensitive security
lights, personal security alarms, electronically operated
high security lock cylinders, facilities management
hardware and software, namely, software to control
building environmental, access and security systems;
personnel badge identification systems, namely, mag-
netic identifying cards, encoded electronic chip cards for
identifying particular users of computers and mobile
phones” in International Class 9;
“technical services, namely, installation and mainte-
nance of physical and electronic security systems” in In-
ternational Class 37; and
“design, development and technical consultation in con-
nection with physical and electronic security systems”
in International Class 42;4 and

for “ … electric theft prevention installations, namely,
electronic anti-theft system comprised of a bar code
scanner that allows manufacturers to temporarily disa-
ble electronic goods during the manufacturing process
and allows retailers to enable such goods upon receiving
the purchase price for the goods; electric locks; fire
alarms; electrical controlling devices, namely, electronic
push buttons use[d] for bells; electric door openers; time
attendance system comprised of computers and clocks;
fingerprint reader” in International Class 9.5

As discussed above, applicant also attempted with its appeal brief to place
into the record a number of third-party registrations having quite different
marks for largely unrelated goods in International Classes 9 and 6. We have
given these untimely submitted registrations no consideration, but should has-
ten to add that even if we had considered them, they would not change the re-

4 Registration No. 3409010 issued on April 8, 2008.
5 Registration No. 3841690 issued on August 31, 2010. This registration issued under the
provisions of Section 66A of the Trademark Act and has no indication of use in the United
States.
Serial No. 79093424

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sult herein.6 In fact, it should surprise no one that there are plenty of composite
marks in class 9 containing formatives suggesting “technology,” such as “tech,”
“tec,” “tek,” “techs,” “tex,” etc. However, inasmuch as there is no evidence in this
record on which we could find the designation “Intech” within registrant’s cited
mark to be weak, either commercially or conceptually, we consider this to be, at
best for applicant, a neutral factor in this case.
F. Balancing the factors
In view of the facts that the cited mark INTECH DOOR BLOCK has not
been shown to be commercially weak, that the respective marks are quite similar,
and that the goods are closely related if not overlapping, we find that applicant’s
registration of the mark is likely to cause confusion.
Decision: The refusal under Trademark Act § 2(d) to register applicant’s
mark is hereby affirmed.

6 These purportedly included the following marks for goods in Class 9: INTECH21 and
design (for energy management systems), STARTECH.COM (for computer goods and ser-
vices), TECHNOX STORE (for electronic adapters), INSTRUTECH (for pressure
control devices), TECH-LABS and design (for interactive training materials), PRO-TECH
8 FUSION (for protective work gloves), COILTEK (for sophisticated metal-detecting equipment),
and a single mark for decorative metal sheets in Class 6: ARTTEC.