Glasfloss Industries, Inc.

Trademark Trial and Appeal Board

Sep 23, 1999

No. 75178365 (T.T.A.B. Sep. 23, 1999)

Paper No. 10
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 9/23/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Glasfloss Industries, Inc.
________
Serial No. 75/178,365
_______
H. Matthews Garland of Jenkens & Gilchrist for Glassfloss
Industries, Inc.
Vivian Micznik First, Trademark Examining Attorney, Law
Office 104 (Sidney Moscowitz, Managing Attorney).
_______
Before Cissel, Hohein and Bottorff, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On Octber 8, 1996, applicant applied to register the
mark "PURACELL" in on the Principal Register for "air
filters," in Class 11. The application was based on
applicant’s claim that it had used the mark in connection
with these goods in interstate commerce since September 24,
1996.
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The Examining Attorney refused registration under
Section 2(d) of the Act on the ground that applicant’s
mark, when used on or in connection with the goods set
forth in the application, so resembles the mark "PURECEL,"
which is registered1 for "air filters," in Class 11, that
confusion is likely.
The Examining Attorney also advised applicant that the
identification-of-goods clause required clarification.
Applicant was directed to amend the clause to specify the
field in which the goods are used. The Examining Attorney
suggested the wording "for industrial installations."
Applicant adopted the suggestion of the Examining
Attorney and amended the application to identify its
products as "air filters for industrial installations."
Applicant also responded with argument that confusion
is not likely between applicant’s mark and the cited
registered mark. Applicant argued that the products with
which it uses its mark are quite different from the
products which are sold under the registered mark.
Applicant explained that its filter uses a wet laid
fiberglass media in a pleated configuration to capture

1 Reg. No. 868,398 issued on the Principal Register to Cambridge
Filter Corp. on April 22, 1969, and was renewed twenty years
later.
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solid particles in an airstream, whereas the filter on
which the registered trademark is used "incorporates
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activated carbon granules which are used to absorb odorless
gasses from the airstream."
Applicant submitted with its response an advertising
and specification sheet for one of the filters sold under
the registered mark. Applicant contended that this
evidence demonstrates that the characteristics of the
filters sold by applicant and registrant are substantially
different. Further, applicant argued that the purchasers
of applicant’s filters and registrant’s filters are
technically knowledgeable, sophisticated buyers who know
the products they are buying and are not confused by
trademarks which may sound similar.
The Examining Attorney was not persuaded by
applicant’s arguments, however. In the second Office
Action, she made the refusal to register final.
Applicant timely filed a Notice of Appeal. Both
applicant and the Examining Attorney filed briefs, but
applicant did not request an oral hearing before the Board.
The sole issue before the Board in this appeal is
whether confusion is likely. Based on careful
consideration of the record and arguments before us, we
hold that it is, because the marks are quite similar in
pronunciation, appearance and connotation, and the goods
Ser No. 75/178,365
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specified in the application are encompassed within the
identification-of-goods clause in the cited registration.
Our determination of whether a refusal to register
under Section 2(d) the Act is appropriate is based on
analysis of all of the probative facts in evidence that are
relevant to the factors the Court identified as bearing on
the issue of likelihood of confusion in In re E. I. duPont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods. Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
In the case before us, the marks are extremely
similar. Notwithstanding applicant’s arguments to the
contrary, "PURACELL" and "PURECEL" look alike, are likely
to be pronounced in similar ways, and, as applied to air
filters, have the same suggestive connotation.
In order for confusion to be found likely, it is not
necessary for the marks at issue to be similar in
appearance, in sound and in connotation. Similarity in any
one of these factors may be sufficient, if the goods are
closely related, to find that confusion is likely. In the
instant case, however, the marks are similar in each of
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these three categories. Plainly, their use in connection
with related goods would be likely to cause confusion.
The goods in this case are not just closely related;
the broad description of goods in the cited registration
must be interpreted to include the products identified in
the application, i.e., the "air filters" with which the
registered mark is used include the types of air filters
which applicant more narrowly describes as "air filters for
industrial installations." Confusion is clearly likely
when these very similar marks are both used on the same
products, air filters for industrial installations.
Applicant’s arguments to the contrary are not
persuasive. Applicant contends that confusion is not
likely because the marks do not look alike; because the
marks would not be pronounced in a similar fashion; because
the actual goods on which registrant’s mark is used are not
similar to the products with which applicant actually uses
its mark; and because be purchasers of applicant’s and
registrant’s filters are technically knowledgeable,
sophisticated purchasers who are unlikely to be confused by
the use of these trademarks in connection with these
products.
As discussed above, these marks are similar in
appearance, sound and connotation. Each consists of two
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terms which are suggestive as applied to air filters.
"PUR" is the phonetic equivalent of the word "pure," which
connotes the fact that these products purify the air. The
second term in each mark is a variant of the word "CELL,"
which is also suggestive as applied to these goods, in that
it suggests the structure of the filters. As applied to
air filters, the combination of these two terms in each
mark creates the same suggestion of a cell which purifies
the air.
The fact that applicant’s mark combines these terms
with the letter "A," whereas the registered mark uses the
letter "E" between the two components and omits the second
letter "L" at the end of the combination term does not
result in differences that would lead purchasers of these
products to distinguish between the two marks. Further
contrary to applicant’s arguments, this record does not
establish that these differences between the marks are not
likely to result in one mark being pronounced differently
from the other.
Applicant’s argument that the actual goods with which
its mark is used are different from the products on which
the registered mark is actually used is similarly not well
taken. In determining whether confusion is likely, the
Board must compare the goods as they are identified in the
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application and the cited registration, respectively,
without limitations or restrictions that are not reflected
therein. Toys "R" Us, Inc., v. Lamps R Us, 219 USPQ 340
(TTAB 1983). When this principle is applied to the case at
hand, as noted above, we must conclude that the broad
identification-of-goods clause in the cited registration
includes the more narrowly specified products set forth in
the application.
Applicant argues that the purchasers of these goods
are sophisticated, knowledgeable professionals who would
not be confused by these marks on these goods even though
they may sound alike when they are pronounced. There is no
evidence in this record, however, concerning the
sophistication or education levels of the purchasers of
these goods. As the Examining Attorney points out, just
because purchasers may be sophisticated or knowledgeable in
a particular technical field does not necessarily mean that
they also possess knowledge or sophistication in the field
of trademarks, or that they are immune from source
confusion. Carlisle Chemical Works, Inc., v. Hardman &
Holden, Ltd., 434 F.2d 1403, 167 USPQ 110 (CCPA 1970).
In summary, we hold that applicant’s mark, as used on
the air filters specified in the application, so resembles
the registered mark for air filters that confusion is
Ser No. 75/178,365
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likely. If we had any doubt on this issue, and we do not,
such doubt would necessarily be resolved in favor of the
prior user and registrant, and against applicant, who had a
duty to select a trademark which is not similar to the mark
already in use in the same field. Burroughs Wellcome Co.
v. Warner-Lambert Co., 203 USPQ 191 (TTAB 1979).
Accordingly, the refusal to register under Section
2(d) of the Act is affirmed.
R. F. Cissel
G. D. Hohein
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial & Appeal Board
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