Eutectic Corporation

Trademark Trial and Appeal Board

Aug 22, 2006

No. 78350479 (T.T.A.B. Aug. 22, 2006)

Mailed: August 22, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Eutectic Corporation
________

Serial No. 78350479
_______

Mark J. Pandiscio of Pandiscio & Pandiscio, P.C. for
Eutectic Corporation.

Susan Kastriner Lawrence, Trademark Examining Attorney, Law
Office 116 (Meryl L. Hershkowitz, Managing Attorney).
_______

Before Drost, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Eutectic Corporation to
register the mark XUPERARC in standard character form on
the Principal Register for the following goods, as amended:
“electric welding machines for resistance welding,
incandescent welding, sparc welding and arc welding;
autogenous soldering machines; machines and machine tools
for the cutting and forming of materials; plasma etching
machines; cutting torches; and jets, tips and nose pipes
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 78350479
2
for use with plasma cutting torches” in International Class
7.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used on its goods, so
resembles the mark, SUPERARC, previously registered on the
Principal Register in standard character form, for “welding
wire electrodes,” in International Class 92 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.3
Applicant and the examining attorney filed briefs and
applicant filed a reply brief. Applicant requested an oral
hearing; however, that request subsequently was withdrawn.
Applicant contends that it is the owner of
Registration No. 1071690 for the mark XUPER for “metallic
welding electrodes;” that the mark cited by the examining

1 Application Serial No. 78350479 was filed January 12, 2004,
based on applicant’s assertion of its bona fide intent to use the
mark in commerce. In response to a requirement by the trademark
examining attorney, applicant claimed ownership of Registration
No. 1071690.

2 Registration No. 2460099, issued June 12, 2001. We note that
at the time the cited registration was issued, a mark appearing
in standard character form was identified as a “typed drawing.”

3 In her first Office action, the trademark examining attorney
also cited Registration No. 2709101, owned by the same
registrant, as a bar to registration under Trademark Act Section
2(d). However, the examining attorney withdrew the refusal to
register under Section 2(d) as to Registration No. 2709101 in her
final Office action.
Ser No. 78350479
3
attorney in this case was registered subsequent to
applicant’s prior registration; that applicant’s prior
registration was not held to be confusingly similar to the
mark cited as a bar to registration herein; and that, as a
result, the mark in the cited registration should be
afforded a narrow scope of protection. Applicant further
contends that its XUPERARC mark differs from the cited
SUPERARC mark in appearance, sound, and connotation; that
“there are many registered marks that are phonetic
equivalents of one another and used to identify similar
goods;” (brief, page 10) and that in this case, “small
differences in the marks and their use should be sufficient
to distinguish them from one another.” (brief, page 9)
Applicant contends in addition that its goods differ
significantly from those of registrant; that, specifically,
its goods “are essentially completed machines, while
registrant’s goods are essentially components;” (brief,
page 12) and that the differences between the goods is
evidenced by their classification in different classes.
The examining attorney maintains that applicant’s mark
is nearly identical to the mark in the cited registration.
Specifically, the examining attorney argues that
applicant’s XUPERARC mark differs from the mark, SUPERARC,
in the cited registration only in the substitution of the
Ser No. 78350479
4
letter X” for the letter “S” as the first letter thereof;
that the marks otherwise are identical in appearance and
spelling; and that because both marks appear in standard
character format, they may be presented in an identical
fashion. The examining attorney further argues that the
letters “X” and “S” are similar in pronunciation; that the
marks thus are nearly identical in sound, connotation and
commercial impression. The examining attorney contends in
addition that evidence attached to her final Office action
demonstrates that applicant’s goods are commonly identified
with those of registrant under the same mark; that
applicant’s own website indicates that it provides the
goods identified in the cited registration as well as those
in its subject application; that, as a result, “it may be
presumed that purchasers are accustomed to seeing such
goods with the same marks and are conditioned to believe
they come from the same source;” (brief, unnumbered pages
9-10) and that consumers of such goods are further
accustomed to purchasing them through the same trade
channels. With regard to applicant’s prior registration,
the examining attorney contends that “the marks in the two
registrations were much further apart along the spectrum of
confusion – XUPER versus SUPERARC;” (brief, unnumbered page
12) that the mere “existence of two similar marks for
Ser No. 78350479
5
similar goods does not lead to a finding that a mark is
weak;” (Id.) that in any event, even weak marks are
entitled to protection against registration by a subsequent
user of a confusingly similar mark for related goods or
services; and that the actions and prior decisions of other
examining attorneys are “without evidentiary value and are
not binding upon the Office.” (Id.)
Applicant argues in reply that the letter “X” is
unique in the English language; that words beginning with
the letter “X” are very uncommon; and that, as a result,
“these words carry an air of sophistication and complexity
in their sound;” (reply brief, page 3) that applicant’s
mark thus is “a powerful and commercially impressive term,
and as such is easily distinguishable and memorable for
consumers;” (Id.) and that the term “SUPER” in registrant’s
mark, by comparison, “carries a simpler, more descriptive
meaning” and “creates a very different commercial
impression in the mind of a consumer.” (reply brief, pages
3-4) Applicant further argues that its mark is pronounced
“ZUPERARC” which is different in both sound and meaning
from registrant’s SUPERARC mark.
Our determination of the issue of likelihood of
Ser No. 78350479
6
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,
however, 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).
We begin by comparing the marks at issue, noting that
the test under the first 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 or services
offered under the respective marks is likely to result.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975).
In this case, we note that applicant’s mark, XUPERARC,
and the registered mark, SUPERARC, both comprise eight
letters, seven of which are identical and appear in
Ser No. 78350479
7
identical order. Thus, aside from the substitution of the
letter “X” in applicant’s mark for the letter “S” in that
of registrant, the marks are identical in appearance. We
further note that the marks both comprise “UPERARC” as
their second through eighth letters, the only difference
being the above-referenced substitution of the first letter
thereof. Thus, the marks are nearly identical in spelling.
In addition, we note applicant’s assertion in its reply
brief that its mark is pronounced “ZUPERARC.” In that
regard, there is no correct pronunciation of a trademark,
and purchasers may pronounce the involved marks
identically. Even if they do not, applicant’s suggested
pronunciation of its mark is very similar to the
pronunciation of the cited mark. As a result, we are not
persuaded by applicant’s assertion that the presence of the
letter “X” as the first letter of its mark lends the mark
such an “air of sophistication and complexity in [its]
sound” as to distinguish it from the mark in the cited
registration. On the contrary, applicant’s mark differs
only with regard to a single letter that is very similar in
sound to the corresponding letter in registrant’s mark.
Based upon the foregoing, we find that the marks are nearly
identical in sound, appearance and spelling, and convey
highly similar commercial impressions.
Ser No. 78350479
8
We turn now to comparing applicant’s proposed goods
with those of registrant. Applicant’s goods, as noted
above, include electric welding machines used for a variety
of welding applications. Registrant’s goods are “welding
wire electrodes.” Notably, applicant does not argue that
its goods are unrelated to those of registrant, or that the
goods otherwise would not be used together.4 Rather,
applicant asserts that its goods are “completed machines”
while those of registrant are components. We note,
however, that applicant cites to no authority or evidence
to support its apparent contention that welding components
are unrelated to welding machines. In addition, the
examining attorney submitted with her final Office action
copies of use-based, third-party registrations covering
both applicant’s electric welding machines and welding
electrodes. This evidence of record suggests that
consumers will assume a common source upon encountering
highly similar marks at least for electric welding machines
and welding wire electrodes. Third-party registrations
that individually cover different items and that are based

4 We note, in that regard, that the application at issue herein
originally recited goods in International Class 9, including
“electric welding electrodes,” in addition to the Class 7 goods
identified above. Applicant deleted its identification of Class
9 goods in response to the examining attorney’s first Office
action.

Ser No. 78350479
9
on use in commerce serve to suggest that the listed goods
and/or services are of a type that may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
The examining attorney also introduced screen shots
from the on-line retail websites of various suppliers of
welding-related goods. This evidence shows that these
retailers offer retail services through which consumers may
purchase the goods of both applicant and registrant, and
that the goods are offered under the respective marks
mentioned.
We find that the examining attorney’s evidence
establishes that there is a viable relationship between
applicant’s goods and those of registrant. The evidence
suggests that consumers have been exposed at least to
welding machines as well as to welding wire electrodes,
emanating from the same source under the same mark.
Further, inasmuch as the identification of goods in both
the involved application and cited registration are not
limited to any specific channels of trade, we presume an
overlap and that the goods would be offered in all ordinary
trade channels for these goods and to all normal classes of
Ser No. 78350479
10
purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992).
Applicant further argues that the classification of
its goods in International Class 7, as opposed to
registrant’s goods which are classified in International
Class 9, illustrates the differences between them.
However, and as noted by the examining attorney, the
classification of goods and services by the U.S. Patent and
Trademark Office is a purely administrative determination
and has no bearing on the issue of likelihood of confusion.
See Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d
1771 (Fed. Cir. 1993); and National Football League v.
Jasper Alliance Corp., 16 USPQ2d 1212 (TTAB 1990). (The
classification system was established for the convenience
of the Office rather than to indicate that goods in the
same class are necessarily related or that classification
in different classes indicates that they are not related).
Thus, the classification of applicant’s goods in
International Class 9 and those of registrant in
International Class 7 does not serve as evidence that the
goods are somehow unrelated.
Applicant argues in addition that because of its prior
Registration No. 1071690 for the mark XUPER for “metallic
welding electrodes,” the registration cited herein should
Ser No. 78350479
11
be afforded a narrow scope of protection. First, we note
that the mark in applicant’s Registration No. 1071099,
namely, XUPER, is less similar both to the mark, SUPERARC,
in the cited registration and the mark, XUPERARC in the
application at issue. Second, it is well settled that each
case must be decided on its own merits. Previous decisions
by examining attorneys in approving other marks are without
evidentiary value and are not binding on the Office or the
Board. See In re Sunmarks Inc., 32 USPQ2d 1470 (TTAB
1994); and In re National Novice Hockey League, Inc., 222
USPQ 638, 641 (TTAB 1984).
In light of the foregoing, we conclude that consumers
familiar with registrant’s goods sold under its above-
referenced mark would be likely to believe, upon
encountering applicant’s goods rendered under its mark that
the goods originated with or are somehow associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Ser No. 78350479
12
Decision: The refusal to register is affirmed.