Fred Knapp Engraving Co. Inc.v.Advanced Lab Concepts, Inc.

Trademark Trial and Appeal Board

Sep 25, 2002

No. 91118040 (T.T.A.B. Sep. 25, 2002)

Mailed: September 25, 2002
Paper No. 20
csl

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Fred Knapp Engraving Co. Inc.

v.

Advanced Lab Concepts, Inc.
_____

Opposition No. 116,763
against Application No. 75/269,032,
filed April 3, 1997
and
Opposition No. 118,040
against Application No. 75/269,033,
filed April 3, 1997
_____

Edward R. Antaramian of Jansson, Shupe & Munger, Ltd. for
Fred Knapp Engraving Co. Inc.

Nathan C. Belzer of Locke Liddell & Sapp, LLP for Advanced
Lab Concepts, Inc.
______

Before Simms, Chapman and Rogers, Administrative Trademark
Judges:

Opinion by Simms:
Fred Knapp Engraving Co. Inc. (opposer), a Wisconsin
corporation, has opposed the application of Advanced Lab
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opp. Nos. 116,763 and 118,040
2
Concepts, Inc. (applicant), a Texas corporation, to
register the mark AIR LOGIC (“AIR” disclaimed) for the
following goods and services:
air distribution devices and handling
equipment for laboratories, namely, air
flow measuring devices which measure
air velocity and pressure, in Class 9;

air distribution and handling equipment
for laboratories, namely, fume
ventilation hoods, local fume exhaust
vents, air distribution devices,
namely, fans, airflow measuring
devices, exhaust vents and snorkels and
exhaust sinks, in Class 11;

conducting training classes in
maintaining laboratories, clean rooms
and critical spaces, in Class 41; and

consulting in the field of maintenance
and cleanliness standards for
laboratories, clean rooms and critical
spaces, in Class 42.1

Opposer also filed an opposition against applicant’s
application to register the following mark:

1 Application Serial No. 75/269,032, filed April 3, 1997, based upon
applicant’s allegation of a bona fide intention to use the mark in
commerce.
Opp. Nos. 116,763 and 118,040
3

for the same goods and services.2 Both parties have taken
testimony and opposer has filed notices of reliance upon an
unpleaded registration as well as on documents produced by
applicant during discovery.3 Both parties have filed briefs
but no request for an oral hearing was submitted.
The Pleadings
In the notices of opposition, opposer alleges that it
has previously used the mark and trade name “AIR LOGIC” for
such goods as pneumatic and vacuum control equipment and
air supply systems including control accessories and
components such as switches that interface from pressure
signals to electrical control circuits and from vacuum
signals to electrical systems; that it has used its mark on

2 Application Serial No. 75/269,033, filed April 3, 1997. Applicant has
also disclaimed the word “AIR” in this application.
3 While a party may not generally rely upon documents produced by another
party pursuant to a request for production, here opposer also submitted
these documents during the testimony deposition of its officer. These
documents are considered of record. Further, applicant has not
objected to the introduction of the unpleaded registration, and we have
considered it to be of record, although it has taken no part in our
consideration of the issue of likelihood of confusion between opposer’s
mark AIR LOGIC and applicant’s mark AIR LOGIC.
Opp. Nos. 116,763 and 118,040
4
some of these goods since as early as 1975, and on other
goods since 1977 and 1978; that opposer’s goods are sold
for instrumentation, medical and industrial applications;
that substantial goodwill has been developed in its
“distinctive and memorable mark”; that applicant’s goods
are closely related to opposer’s and sold to the same
target customers; that applicant’s adoption of the
identical mark indicates applicant’s intent to trade on
opposer’s goodwill; and that applicant’s mark, when used on
or in connection with applicant’s goods and services, so
resembles opposer’s mark as to be likely to cause
confusion, to cause mistake or to deceive. With its
pleading, opposer submitted status and title copies of
Registration No. 1,774,920, issued June 8, 1993, Sections 8
and 15 affidavit filed, for the mark AIR LOGIC for the
following goods:
machine parts; namely, pneumatic
components and systems, pneumatic
valves and pneumatic amplifiers, in
Class 7;

gauges, electric switches and sensory
devices; namely, pressure switches,
vacuum switches, pressure gauges,
vacuum gauges and spring sensors, in
Class 9; and

plastic fittings; namely, reducing,
straight tube, swivel tee and elbow
connectors and restrictors, in Class
17.
Opp. Nos. 116,763 and 118,040
5

In its answer, applicant has denied the allegations of
opposer’s pleadings except that it has admitted that the
marks (AIR LOGIC) of the parties are identical. As
affirmative defenses, applicant has asserted laches,
estoppel and acquiescence on the basis that opposer has
unreasonably delayed in asserting its rights, and that
applicant has relied on this delay to its detriment.
Applicant has also asserted the affirmative defense of
unclean hands.4 On August 15, 2000, the Board consolidated
Opposition No. 116,763, involving applicant’s attempt to
register the mark AIR LOGIC in typed form, with Opposition
No. 118,040, involving applicant’s application seeking to
register the mark shown in design format.
Opposer’s Record
Opposer took the testimony of its president and the
manager of its Air Logic Division, Mr. Jay R. Haertel. Mr.
Haertel testified that in 1975 opposer acquired the air
flow system manufacturing part of Johnson Controls
Fluidics. Opposer first used the mark AIR LOGIC on its
goods in September 1975. Opposer’s mark is used in the
following style:

4 There has been no testimony offered relating to these defenses, nor
has applicant argued in its brief that it should prevail because of
these defenses. Accordingly, we have given no consideration to these
defenses in this opinion.
Opp. Nos. 116,763 and 118,040
6

It has been used for such goods as pneumatic controls for
the medical (including laboratory applications),
semiconductor, general industrial and heating, ventilating
and air conditioning (HVAC) industries, the latter industry
including fume hood manufacturers. It has also used this
mark for plastic fittings, control equipment, pressure and
vacuum switches, pressure regulators, check valves, needle
valves and flow controls.
Opposer’s goods are sold to engineers of original
equipment manufacturers (OEM) for use in the products of
the OEMs. Opposer sells its goods directly and through
distributors. Opposer’s sales in the year 2000 were in the
low seven figures while its advertising expenses in the
same year were in the six figures.5 Opposer advertises in
trade magazines and at trade shows as well as through the

5 The parties submitted a stipulated protective order and these figures
are considered confidential. .
Opp. Nos. 116,763 and 118,040
7
distribution of promotional items bearing the mark. At
trade shows, opposer has displayed what it calls “Air
Logicasaurus,” a pneumatically operated, interactive
“dinosaur.” Over the last 25 years, opposer has spent over
$1 million in advertising its goods under the mark.
Although opposer’s goods are fairly inexpensive (Haertel
dep., 83-84), Mr. Haertel testified that opposer’s
customers are not impulse purchasers. There have been no
instances of actual confusion.
Mr. Haertel further testified that he has seen fume
hood manufacturers (but not applicant) displaying their
products at HVAC trade shows which opposer has attended.
Haertel dep., 67, 70 and Haertel rebuttal dep., 13. Mr.
Haertel testified that confusion would be likely because
the marks of the parties are “stacked” (one word displayed
above the other) with the sweeping “L” under the “O”, and
that both parties’ goods involve pneumatic controls and are
sold to the HVAC industry.
Opposer also filed a notice of reliance upon the
following unpleaded registered mark (Registration No.
1,752,598, issued February 16, 1993, Section 8 accepted,
Section 15 affidavit acknowledged) covering plastic
fittings and connectors for pneumatic and vacuum control
systems:
Opp. Nos. 116,763 and 118,040
8

Applicant’s Record
Applicant took the testimony of its founder, president
and CEO, Mr. Mark Etheridge. According to Mr. Etheridge,
applicant makes, sells and installs laboratory furniture
and furnishings, countertops for laboratories and fume
hoods, and provides related services, and has done so since
1995.
Fume hoods are made of sheet metal, glass and a
chemically resistant media and are designed to exhaust
potentially hazardous fumes and thereby protect users
thereof. They vary in price but, on average, cost several
thousand dollars. Typically, the fume hood may comprise up
to 40 percent of the cost of the project. Applicant sells
its goods as complete systems primarily through its own
sales force but also through a few distributors.
Applicant’s products are sold mainly to architects but also
Opp. Nos. 116,763 and 118,040
9
to research and development personnel for use in
laboratories. Concerning the sales process of applicant’s
goods, Mr. Etheridge testified, at 18-19, as follows:
Designing lab space is a specialty.
Usually you have architects that
specialize in the area of laboratory
environment because it is a critical
space. It is dangerous. So very
rarely would you find someone that
would just go buy a hood. They have
got to really think about the space,
the application and integrate the
entire building to it. So there is an
incredible amount of talent involved in
order to make it work properly.

The ultimate purchasers of applicant’s goods are,
primarily, colleges and universities. However, applicant
also sells to high schools and to research personnel in
private companies (pharmaceutical, biotechnology, and
industrial). Applicant began selling its goods in the
states of Oklahoma, Texas, Louisiana and Mississippi, but
now sells its goods throughout the United States. Mr.
Etheridge testified that there are six or seven fume hood
manufacturers in this country.
Mr. Etheridge also testified that applicant does not
sell the goods listed in opposer’s registrations; that
applicant’s primary purchasers--architects--do not purchase
or use opposer’s goods; that opposer’s products are not
used in fume hood systems; and that applicant does not sell
Opp. Nos. 116,763 and 118,040
10
its goods to original equipment manufacturers. If
applicant’s fume hoods need to be replaced, applicant
sometimes receives calls directly from the chemist or
researcher needing the replacement. Etheridge dep., 110-
111.
Applicant’s goods do use air flow valves, air flow
monitors, pneumatic valves and flow sensors, and its fume
hoods have needle valves. Mr. Etheridge testified,
however, that opposer’s valves and fittings are used for
different applications. The testimony is contradictory on
whether applicant sells separately the component parts
which are included in its fume hoods. See Etheridge dep.,
76-77, 100, 106 and 118.
Applicant itself installs the fume hoods which it
sells but contractors may install the fittings (needle
valves) needed for the installation.
Concerning the selection and significance of
applicant’s mark, Mr. Etheridge testified, at 102:
And it complemented the products we
sold, it presents air which is what
drives the hood in a logical approach
to fume hood operation, and that’s what
we thought we needed to do…

Mr. Etheridge testified that he was not aware of opposer or
its mark when applicant’s application was filed.
Opp. Nos. 116,763 and 118,040
11
Applicant does not advertise in any of the trade
magazines in which opposer advertises, and applicant does
not display its goods at any of the trade shows where
opposer appears. Applicant is aware of no instances of
actual confusion.
Arguments of the Parties
It is opposer’s position that there is a likelihood of
confusion because of the substantial similarity of the
marks and the relationship of the goods. With respect to
the marks, while opposer acknowledges that the marks must
be compared by their general overall impressions rather
than side-by-side, opposer contends that even a side-by-
side comparison shows that the marks are substantially
similar.

Opposer points to the fact that both marks are in “stacked
logo” form with the word “AIR” appearing above the word
Opp. Nos. 116,763 and 118,040
12
“LOGIC” with the “L” of both marks extending under the “O”
of the word “LOGIC.”
Opposer argues that its air flow system components are
sold to laboratories (in the medical and educational
fields) as well as to manufacturers in the semiconductor,
general industrial and HVAC fields. According to opposer,
applicant’s goods “impermissibly extend into the family” of
opposer’s goods (reply brief, 8), because the goods of both
parties relate to the “air flow industry.” Opposer notes
that applicant’s goods use pneumatic valves, needle valves
and air flow modulators while its own goods are suitable
for “the HVAC industry in laboratory settings.” Reply
brief, 15. While opposer states that its goods are
inexpensive and that purchasers may be unsophisticated,
applicant’s high-cost products include inexpensive
components similar to opposer’s components. That is to
say, opposer’s components are of a type, opposer argues,
that could be found in applicant’s goods. Moreover,
opposer points out that parties need not be competitors for
there to be a likelihood of confusion. Opposer also notes
that the respective goods are sold by similar means--trade
magazines, trade shows, Web sites.
Opposer also contends that, while the mark AIR LOGIC
has inherent strength, opposer has developed considerable
Opp. Nos. 116,763 and 118,040
13
renown in the mark through over twenty-five years’ use and
promotional efforts including current advertising in
seventeen trade publications and at 10 to 20 trade shows
per year. Opposer discounts the lack of actual confusion
because, until recently, applicant had sold its goods in
only a four-state area. Opposer contends that we should
resolve doubt in its favor since it is an established prior
user, and contends that purchasers are likely to believe
that the goods of the parties come from the same source or,
at least, that some of the components of applicant’s goods
emanate from opposer.
Applicant, of course, contends that confusion is
unlikely. First, applicant notes specific differences in
the marks--opposer uses initial capitals while applicant
displays its mark in all capitals, the marks are in
different fonts, the “L” in opposer’s mark is placed under
the “I” of the word “AIR,” while the “L” in applicant’s
mark is placed under the “A” of the word “AIR,” that only
the “L” in applicant’s mark is slanted and that the base of
the “L” in applicant’s mark has an arrow.
Applicant emphasizes that its goods are sold to
architects that design laboratories, while opposer’s goods
are not specifically designed for laboratories. Applicant
points out that opposer sells its pneumatic controls and
Opp. Nos. 116,763 and 118,040
14
other goods to original equipment manufacturers such as
manufacturers of HVAC equipment, of laboratory analysis
equipment and of hospital and dental equipment. Opposer’s
goods could be used in the manufacture of laboratory
equipment but applicant’s fume hood is laboratory equipment
itself, applicant maintains. Applicant argues that
although both products can be described as related to the
air flow industry, this fact alone is not sufficient for
one to conclude that the respective goods are similar, and
that over the years opposer has made only minimal sales of
components to laboratories. Therefore, it is only
theoretically possible that opposer’s goods would end up in
the same laboratories that purchase applicant’s fume hoods.
Also, applicant sells its expensive goods to educational
institutions for research and to other laboratories for use
by doctors and PhDs, which sophisticated purchasers acquire
these goods only after careful consideration. Applicant
also notes that while it seeks to register its mark for
goods and services, opposer does not offer any services
under its mark.
Finally, applicant notes that there have been no
instances of actual confusion despite over six years of
contemporaneous use. It is applicant’s position,
therefore, that the potential for confusion is de minimus.
Opp. Nos. 116,763 and 118,040
15
Opinion
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood-of-confusion analysis, two key
considerations are the similarity of the marks and the
similarity of the goods and/or services. We find that
applicant’s mark for its goods and services so resembles
opposer’s almost identical mark for its goods that
confusion is likely.
Turning first to the marks, there can be no doubt that
applicant’s typed mark AIR LOGIC as well as its AIR LOGIC
and design mark are substantially identical to opposer’s
registered mark AIR LOGIC and to the mark in the stylized
form which opposer uses. All of these marks are very
similar in pronunciation and appearance. While there are
minor differences in the “stacked logo” appearance of the
respective marks, there are also the striking similarities
noted by opposer in its brief, including the tail of the
letter “L” extending under the letter “O” of the word
Opp. Nos. 116,763 and 118,040
16
“LOGIC.” The substantial similarity of the marks weighs
heavily against applicant. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
Furthermore, not only are the marks extremely similar,
but in addition they appear to be totally arbitrary, a fact
which only enhances the likelihood of confusion. In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1469 (TTAB 1988),
aff’d 88-1444 (Fed. Cir. 1988).
We note also that opposer’s mark has been in use since
1975 and that its goods have been the subject of
considerable sales and advertising over the years.
Although we do not find opposer’s mark to be a famous one,
it certainly has achieved some degree of renown. In this
connection, we observe that there is no evidence of the use
of similar marks by third parties.
Because the marks are nearly identical, their
contemporaneous use can lead to the assumption that there
is a common source “even when [the] goods or services are
not competitive or intrinsically related.” In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)
and In re Concordia International Forwarding Corp., 222
USPQ 355 (TTAB 1983). That is to say, the greater the
degree of similarity between applicant’s mark and opposer’s
Opp. Nos. 116,763 and 118,040
17
mark, the lesser the degree of similarity between
applicant’s goods and services and opposer’s goods that is
required to support a finding of likelihood of confusion.
Turning now to the goods of the parties, it is well
settled that goods and/or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods and/or services are related in some manner or that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, 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 the
goods and/or services. See In re Martin’s Famous Pastry
Shoppe, Inc., supra, and In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001). That is, likelihood of confusion may
exist even if the parties are not direct competitors, and
the rights of the owner of a mark extend to any goods and
services that potential purchasers might think are related
or put out by the same producer.
We note that applicant is not only seeking
registration of its mark for fume hoods but also for other
goods including air flow measuring devices, fans and
Opp. Nos. 116,763 and 118,040
18
exhaust vents. In this regard, it is well settled that the
issue of likelihood of confusion must be determined in
light of the goods set forth in the opposed application and
pleaded registration and, in the absence of any specific
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution for such
goods. See In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997); Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Applicant’s
argument, therefore, that opposer’s goods are sold only to
OEMs for use in other equipment while its goods are sold
only to laboratories is of little persuasive value. We
must presume that opposer’s pneumatic parts such as valves
and amplifiers, as well as its gauges, pressure switches
and plastic fittings, and applicant’s air measuring
devices, fans and exhaust vents, as well as its other
goods, are sold in all normal channels of trade for those
goods. Moreover, the record in fact demonstrates that
opposer’s goods are displayed at HVAC trade shows where
applicant’s competitors have appeared. Also, opposer’s air
flow parts may be sold to the same laboratories that
Opp. Nos. 116,763 and 118,040
19
purchase applicant’s fume hoods and other goods. In
addition, while fume hoods are relatively expensive, some
of applicant’s other products are lower-priced, as are
opposer’s goods, and purchasers may exercise less care and
discrimination in the purchase of those goods.
The fact that opposer sells a variety of goods ranging
from pneumatic valves to gauges, pressure switches and
plastic fittings is another factor which tends to increase
the likelihood of confusion. That is to say, potential
purchasers seeing the mark AIR LOGIC on applicant’s air
flow measuring devices, fume hoods, exhaust fans, etc., may
well believe that opposer has expanded into those products.
Although opposer’s registration and its testimony fail
to reflect any use of opposer’s mark with respect to
related services, we believe that applicant’s use of the
AIR LOGIC mark in connection with consulting services and
training classes in maintaining laboratories, clean rooms
and critical spaces is also likely to cause confusion with
opposer’s mark. Purchasers and recipients of applicant’s
services may well believe that these services are offered
by the provider of opposer’s AIR LOGIC products.
While there have apparently been no incidents of
actual confusion, evidence of actual confusion is
notoriously difficult to come by and, in any event, such
Opp. Nos. 116,763 and 118,040
20
evidence is not required in order to establish likelihood
of confusion. See Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992); Block Drug v. Den-Mat Inc.,
17 USPQ2d 1315, 1318 (TTAB 1989); and Guardian Products Co.
Inc. v. Scott Paper Co., 200 USPQ 738, 743 (TTAB 1978).
The absence of evidence of actual confusion in this case is
somewhat offset by the absence of sufficient evidence upon
which we might base a conclusion that there has been any
meaningful opportunity for actual confusion to have
occurred. As opposer has pointed out, until recently
applicant has only offered its goods and services in a
four-state area.
Finally, to the extent we have any doubts on the issue
of likelihood of confusion, we must resolve them in favor
of the prior user and registrant. Kenner Parker Toys v.
Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453, 1458
(Fed. Cir. 1992). See also CAE, Inc. v. Clean Air
Engineering, Inc., 267 F.3d 660, 60 USPQ2d 1449 (7th Cir.
2001)(reversing the Board’s decision and finding likelihood
of confusion of the mark CAE for opposer’s aircraft
simulators, air traffic control equipment and other goods
and services and applicant’s environmental consulting
services).
Opp. Nos. 116,763 and 118,040
21
Decision: The oppositions are sustained and
registration to applicant is refused in each application.