forteq Nidau AG

Trademark Trial and Appeal Board

Apr 19, 2013

No. 85269539 (T.T.A.B. Apr. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re forteq Nidau AG
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Serial Nos. 85269539 and 85269553
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Mary Catherine Merz of Merz & Associates, P.C. for forteq Nidau AG

Kim Teresa Moninghoff, Trademark Examining Attorney, Law Office 113 (Odette
Bonnet, Managing Attorney).
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Before Zervas, Bergsman, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
forteq Nidau AG filed an application to register on the Principal Register the
mark FORTEQ, in standard character form,1 and the mark set forth below2 for
goods and services in International Classes 7, 9, 10, 17, and 42.

1 Application Serial No. 85269539, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
March 17, 2011.
2 Application Serial No. 85269553, filed under Trademark Act § 1(b), 15 U.S.C. § 1051(b), on
March 17, 2011.
Serial Nos. 85269539 and 85269553
2

In each case, the trademark examining attorney refused registration under §
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), only as to certain goods and services
in Classes 7, 9 and 42, on the ground that applicant’s mark, as used in connection
with applicant’s goods and services, so resembled two registered marks as to be
likely to cause confusion, or to cause mistake, or to deceive. When the refusal was
made final, applicant filed notices of appeal and requests for reconsideration. On
reconsideration, the examining attorney maintained her refusal in each case.
However, in response to applicant’s appeal brief, the examining attorney limited her
refusal by withdrawing the refusal with respect to the goods in Class 9 and with
respect to one of the cited registrations. At this time, the refusal relates only to the
following goods and services of applicant:
Machine couplings, except for land vehicles; gears and
gear boxes for industrial machinery, in International
Class 7; and
Product design and development of gear wheels,
combinations of gear wheels and transmission systems, in
International Class 42.
The registered mark that has been cited by the examining attorney as a bar to
registration is set forth below:

The cited mark is registered on the Principal Register for the following goods and
services: 3

3 Reg. No. 1785196, issued on August 3, 1993; renewed.
Serial Nos. 85269539 and 85269553
3

unwrought and partly wrought metals, alloys and
superalloys, rings-alternator retaining rings and
cylindrical parts adapted to be attached to either end of
the rotor, verticle stabilizer pivots, forged pinions,
blowout preventing forgoings, stamped metal parts, cones
and heads for rock bits for terrestrial and underwater oil
well drilling, metallic pieces for loading cranes and rotor
housings, and forged, rolled, cast, stamped and bright
metal parts; namely, metallic pieces for pumps, for
machines, for forged frames, for compressors, for turbine
discs, for lower beam fittings, for torque plate outboard
spars, for block heads, and for airplanes and helicopters,
all for use in the shipbuilding, defense armament, tool
making, mechanical engineering, hydroelectric,
petroleum, nuclear and power generation industries, in
International Class 6;
metallic parts for land, air, water and space vehicles; and
landing gear parts and air frames for helicopters, in
International Class 12;
metallic parts and gun barrels for firearms and other
types of armaments, in International Class 13;
treating of metals and metal materials by mechanical,
heat and chemical means, in International Class 40.
The issues raised by the two appeals are identical in part and otherwise
highly similar, as are the briefs and evidentiary records. Accordingly, the Board
will address both appeals in a single opinion. Citations to the briefs refer to the
briefs filed with respect to application Serial No. 85269539 unless otherwise noted.
We have, of course, considered all arguments and evidence filed in each case,
including any arguments and evidence not specifically discussed in this decision.
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
Serial Nos. 85269539 and 85269553
4

USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods and services at issue. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, the applicant and
the examining attorney have also submitted evidence and arguments regarding
classes of customers and the degree of care exercised in selecting the goods.
We will first consider the similarity or dissimilarity of the marks at issue.
Applicant argues that the use of the letter Q in applicant’s mark FORTEQ is
unusual, because in English the letter Q is almost invariably followed by the letter
U. Applicant also points out the visual difference between FORTEQ and
FORTECH.4 The examining attorney argues in return that a final letter Q is not
unknown in trademarks, which are free of ordinary conventions of English spelling,
and has submitted evidence of 17 registered marks that, like applicant’s mark, end
with the formative -TEQ.5 Among these are the registered marks NAVTEQ, DURA
TEQ, CHEMTEQ, INTERTEQ, and AIRTEQ.
In our review of the marks, we give due regard to the facts that the cited
registered mark includes a graphic design element and that one of applicant’s
marks also is stylized with a design. We consider the marks at issue in their
entireties. However, 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

4 Applicant’s brief at 5.
5 Examining attorney’s brief at 6; Response to request for reconsideration mailed August 9,
2012.
Serial Nos. 85269539 and 85269553
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ultimate conclusion rests on a consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In the
case of marks consisting of words and a design, the words are normally given
greater weight because they would be used by consumers to request the products.
In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito
Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc.
v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant
Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).
FORTEQ and FORTECH are similar in appearance, differing only in the last
letter or last two letters of the respective terms. We note that 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
overall commercial impression so that confusion as to the source of the goods offered
under the respective marks is likely to result. San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
We agree with the examining attorney that the marks are likely to be
pronounced exactly alike. We also find that that the suggestive meaning arising
from the elements –TECH and –TEQ are likely to be the same in the field of
machine parts and their manufacture; that is, these elements are likely to be
Serial Nos. 85269539 and 85269553
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interpreted as suggestive of the words technology, technical and, perhaps,
technique. Applicant argues that its customers, who are “businesses seeking
‘precision-made plastic components and assemblies’ made to their specifications”
are likely to receive different commercial impressions from the two marks; but
applicant does not suggest what that different impression would be, or why its
customers would perceive the marks in different ways.6
Because of the similarities in the word portions of the marks, and because the
respective design portions are not sufficient to substantially alter the impression
created by such similarities, we find that applicant’s marks and the cited registered
mark are similar in commercial impression, such that they would be likely to give
rise to confusion if used on commercially similar goods. Accordingly, this du Pont
factor weighs in favor of a finding of likelihood of confusion.
We turn next to the similarity or dissimilarity of the goods and services at
issue. We will consider applicant’s goods and services separately.
The examining attorney has focused her argument upon a comparison of
applicant’s “Machine couplings, except for land vehicles; gears and gear boxes for
industrial machinery” with the goods of registrant that are described as follows:
forged, rolled, cast, stamped and bright metal parts;
namely, metallic pieces for … machines, …, all for use in
the shipbuilding, defense armament, tool making,
mechanical engineering, hydroelectric, petroleum, nuclear
and power generation industries.
The examining attorney’s position appears to be that “metallic pieces for…

6 Applicant’s brief at 6.
Serial Nos. 85269539 and 85269553
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machines” is sufficiently broad to encompass “machine couplings,” “gears,” and
“gear boxes.” To support this position, she has submitted 10 third-party
registrations having identifications of goods that include the wording “machine
parts” alongside words that describe the goods of applicant.7
With respect to applicant’s “gear boxes,” it seems clear that such goods are
not within the scope of “metallic pieces.” Gear boxes are machines unto themselves
and are too complex to be described as a piece of metal. We also question whether
“machine couplings” and “gears” would be understood to be “metallic pieces.” While
the category of “metallic pieces… for machines” may seem broad, we would hesitate
to find, without more evidence, that this wording encompasses all metal products
having a mechanical application.
The third-party registrations do not suffice to show that applicant’s goods are
related to those of registrant. They demonstrate that “machine parts” are
mentioned alongside “gears” and “couplings.” However, this is unsurprising
because gears and couplings are, themselves, machine parts. Showing a link to
“machine parts” does not show a link to registrant’s goods. While registrant’s Class
6 identification of goods includes many items that are identified with more
specificity than the designations “machine parts” and “metallic pieces” provide, we
find no clear references in the third-party registrations to any such items. On the
record before us, we find no apparent commercial relationship between the goods of
applicant and registrant. Accordingly, this factor weighs against a finding of

7 Office action dated June 22, 2011.
Serial Nos. 85269539 and 85269553
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likelihood of confusion.
As we find the goods at issue dissimilar, we have no grounds to presume, as
suggested by the examining attorney, that the goods move in the same trade
channels and are available to the same customers.8 In the absence of evidence to
the contrary, these two du Pont factors weigh against a finding of likelihood of
confusion.
We agree with applicant’s argument that the goods at issue are not likely to
be purchased on impulse and that this factor weighs against a finding of likelihood
of confusion.
Applicant’s arguments regarding the nature of the customers of applicant
and registrant are no longer apposite to this appeal, inasmuch as applicant focuses
on the automotive aspects of the goods; all automotive goods of applicant have been
released from the examining attorney’s refusal, and none of the remaining goods of
applicant at issue are vehicle parts. Similarly, the relevant goods of registrant are
not for automotive purposes.
Considering all of the evidence and arguments before us, we find that the
examining attorney has not established, prima facie, that applicant’s marks are
likely to give rise to confusion in connection with applicant’s identified goods.
We turn next to a consideration of applicant’s services, which are identified
as “Product design and development of gear wheels, combinations of gear wheels

8 Examining attorney’s brief at 11.
Serial Nos. 85269539 and 85269553
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and transmission systems.” The examining attorney based her refusal on the cited
registrant’s services in Class 40, which are identified as “treating of metals and
metal materials by mechanical, heat and chemical means.”
The examining attorney argues first that “registrant’s metal treatment
services are broad enough to include custom manufacturing of metal parts,” and
then that “Custom manufacturing services are commonly provided by the same
source that offers product design and development services.”9 We find the first step
of the examining attorney’s analysis faulty. We do not consider metal treatment
services to be either the same as manufacture or sufficiently broad to encompass
manufacture. In the case of treatment services, the customer provides an item and
the service provider performs the desired process and then returns the item. In the
case of manufacture, the customer requests that a product be produced and provides
detailed instructions as to the nature of the desired product; and the service
provider takes the necessary steps to produce and deliver the product. There is no
reason to make a general assumption that those who treat items would also be able
to manufacture the items; nor that those who manufacture goods to the order of
others would be in a position to take ready-made goods and subject them to some
treatment process. As we see no inherent relationship between metal treatment
and custom manufacture, there is no ground for taking the additional leap from
manufacture to “design and development.”

9 Id. at 12.
Serial Nos. 85269539 and 85269553
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The examining attorney’s evidence from third-party web sites10 may
illustrate that those who manufacture things may also offer to design such things.
However, it does not make the necessary further connection to materials treatment
services. The examining attorney’s single example of a “one-stop” metal
finishing/design/production business is an insufficient basis for concluding that
metal treatment is commercially related to design and development of gearing. The
fact that the company touts itself as a “one-stop” business suggests that the services
offered are not typically offered together.
As we find the services of applicant and registrant to be substantially
dissimilar, we find that use of applicant’s marks in connection with its services is
unlikely to lead to confusion, mistake or deception among relevant customers.
Decision: The refusal to register is reversed.

10 Office action of June 22, 2011.