Hitachi High-Technologies Corp.

Trademark Trial and Appeal Board

Feb 21, 2014

No. 79110412 (T.T.A.B. Feb. 21, 2014)

Mailed:
February 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hitachi High-Technologies Corp.
________

Serial No. 79110412
_______

Kumiko Ide of Westerman Hattori Daniels & Adrian, LLP, for
Hitachi High-Technologies Corporation.

Susan B. Allen, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Quinn, Ritchie, and Hightower, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Hitachi High-Technologies Corporation (“applicant”) filed
an application to register the mark OPTICROSS, in standard
character form on the Principal Register, for goods identified
as “liquid chromatography apparatus and parts thereof,” in
International Class 9.1
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of

1 Serial No. 79110412, filed February 1, 2012, pursuant to Section
66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), based on
International Registration No. 1110080, registered February 1, 2012.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Serial No. 79110412
2
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the following seven previously registered marks owned
by Optimize Technologies, Inc. (“Optimize”) as to be likely to
cause confusion, or to cause mistake, or to deceive when used on
or in connection with applicant’s identified goods:
1. OPTI, in typed drawing2 format, for “liquid transfer
components of chemical analysis equipment, namely High-
Performance Liquid Chromatography (HPLC) - pistons and
plunger seals for pumps; solvent reservoir filters; in-
line filters; tubing; check valves; prime and purge
valves; pump heads, precolumn filters; and fittings for
tubing;”3
2. OPTI-MAX, in typed drawing format, for “check valves for
High-Performance Liquid Chromatography (HPLC) pumps;”4
3. OPTI-SEAL, in typed drawing format, for “piston and
plunger seals for High-Performance Liquid Chromatography
(HPLC) pumps;”5

2 Prior to November 2, 2003, “standard character” drawings were known
as “typed” drawings. A typed mark is the legal equivalent of a
standard character mark. Trademark Manual of Examining Procedure
(TMEP) § 807.03(i) (October 2013).
3 In International Class 9, Registration No. 2048831, issued April 1,
1997. Sections 8 and 15 acknowledged and accepted. Renewed.
4 In International Class 9, Registration No. 2023739, issued December
17, 1996. Sections 8 and 15 acknowledged and accepted. Renewed.
5 In International Class 9, Registration No. 2023740, issued December
17, 1996. Sections 8 and 15 acknowledged and accepted. Renewed.
Serial No. 79110412
3
4. OPTI-GUARD, in typed drawing format, for “precolumn
filters and guard columns for High-Performance Liquid
Chromatography (HPLC);”6
5. OPTI-SOLV, in standard character format, for “scientific
instruments, namely, filters for sample preparation, and
other analytical techniques involving filtration of
solvents, mobile phases, and samples, for use in the
fields of Liquid Chromatography (LC) and Mass
Spectrometry (MS), as well as Liquid Chromatography/Mass
Spectrometry (LC/MS) and fluid transfer in scientific
instruments;”7
6. OPTI-PAK, in typed drawing format, for “scientific
instruments, namely, capillary trap cartridges for High-
performance Liquid Chromatography (HPLC) and other
analytical techniques involving analyte trapping and
sample purification;”8 and
7. OPTI-SOLV, in typed drawing format, for “scientific
instruments, namely, filters for High-Performance Liquid
Chromatography (HPLC), Mass Spectrometry, sample

6 In International Class 9, Registration No. 2100804, issued September
30, 1997. Sections 8 and 15 acknowledged and accepted. Renewed.
7 In International Class 9, Registration No. 3511235, issued October 7,
2008.
8 In International Class 9, Registration No. 2906256, issued November
30, 2004. Sections 8 and 15 acknowledged and accepted.
Serial No. 79110412
4
preparation, and other analytical techniques involving
filtration of solvents, mobile phases, and samples.”9

The registration was also refused on the same statutory
basis with respect to the previously registered mark OPTICHROM,10
in typed drawing format, owned by Siemens Industry, Inc. for
“chromatographic analyzers and control systems for same.”
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); see also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences

9 In International Class 9, Registration No. 2906257, issued November
30, 2004. Sections 8 and 15 acknowledged and accepted.
10 In International Class 9, Registration No. 0991331, issued August
20, 1974. Sections 8 and 15 acknowledged and accepted; twice renewed.
Serial No. 79110412
5
in the essential characteristics of the goods and differences in
the marks”).
We first address the refusal based on the seven marks owned
by Optimize. Each of the marks in the cited registrations owned
by Optimize contains the term “OPTI” or “OPTI”+[term]. In the
Office action dated May 22, 2012, the examining attorney
referred to these cited registrations as a “family,” stating:
“Consumers will likely perceive applicant’s mark, and
applicant’s goods, as belonging to registrant Optimize’s
existing family of ‘Opti-’ marks used with liquid chromatography
parts.” Applicant objected to the examining attorney’s reliance
on a “family” of marks. The examining attorney did not refer in
further Office actions to the marks as being part of a “family,”
and in the March 21, 2013 Denial of Request for Reconsideration
specifically retracted such reference, noting, however, that
even without evidence of a “family,” there was sufficient
evidence in the record to justify a refusal. (See also
examining attorney’s brief at unnumbered page 11 of 19).
A “family of marks” may be established in an inter partes
proceeding where there is evidence that a group of marks having
a shared characteristic are advertised and promoted together.
See J & J Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460,
18 USPQ2d 1889, 1891 (Fed. Cir. 1991); see also 4 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 23.61
Serial No. 79110412
6
(4th ed. 2013).11 The mere existence of similar registrations
does not establish a family, but rather there must be
recognition by the public that the shared characteristic (or
“family surname”) is indicative of a common origin. Id.
However, it is not appropriate for an examining attorney,
lacking the resources to establish a “family of marks,” to make
this reference during ex parte prosecution. See In re Mobay
Chem. Co., 166 USPQ 218, 219 (TTAB 1970) (“In determining
whether a ‘family of marks’ exists, it must be shown that a
proprietary interest in the family characteristic exists but
that depends upon fact and not supposition. Such facts are not
available to an examiner in the ex parte consideration of
registrability and the mere fact of registration does not prove
a ‘family of marks.’ . . . The conclusion by the examiner that
the cited registered marks comprehended a family of marks
constitutes error.”); TMEP § 1207.01(d)(xi) (Oct. 2013 ed.)
(“[E]xamining attorneys should refrain from invoking the family
of marks doctrine or from referring to a family of marks in a

11 The du Pont case mentions as its ninth confusion factor the variety
of goods on which a cited registered mark is used or whether a family
of marks exists. 177 USPQ at 567. When a “family” of prior marks
exists, this suggests consumers are more likely to be confused that an
applicant’s use of a similar mark is simply another member of the
existing owner’s “family.” Cf. In re Wilson, 57 USPQ2d 1863, 1867
(TTAB 2001) (registrant’s uses of its mark on a variety of different
fruits and vegetables suggested it was likely that purchasers, when
encountering applicant’s additional fruits would assume that a source,
sponsorship or other connection exists).

Serial No. 79110412
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likelihood of confusion analysis.”). That is because
establishing a “family” of marks requires a detailed assessment
of not just the registrations, but, more importantly, of how the
“family” is used in the marketplace.
Our primary reviewing court has noted that “[r]ecognition
of the family is achieved when the pattern of usage of the
common element is sufficient to be indicative of the origin of
the family. It is thus necessary to consider the use,
advertisement, and distinctiveness of the marks, including
assessment of the contribution of the common feature to the
recognition of the marks as of common origin.” J&J Snack Foods,
932 F.2d 1460, 18 USPQ2d at 1891-92. Such an assessment of use
in the marketplace is usually beyond the scope of an ex parte
examination. Accordingly, it was appropriate for the examining
attorney to retract the language referencing the various
Optimize marks as a family and treating them as such.
Each cited registration must stand on its own as a basis
for refusal under Section 2(d); and we note that the examining
attorney properly set forth and discussed the du Pont factors in
regard to Optimize’s OPTI mark and registration. We find this
mark to be the most relevant of Optimize’s cited registrations
for our du Pont analysis. Accordingly, if we find a likelihood
of confusion as to OPTI, we need not find it as to the others.
On the other hand, if we don’t reach that conclusion, we would
Serial No. 79110412
8
not find it as to the other cited registrations either. See
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Looking to the goods, we note that the application
identifies “liquid chromatography apparatus and parts thereof”
while the OPTI registration identifies “liquid transfer
components of chemical analysis equipment, namely High-
Performance Liquid Chromatography (HPLC) - pistons and plunger
seals for pumps; solvent reservoir filters; in-line filters;
tubing; check valves; prime and purge valves; pump heads,
precolumn filters; and fittings for tubing,” which is
encompassed by applicant’s “parts thereof” and otherwise
inherently related to applicant’s ”liquid chromatography
apparatus.” Applicant does not dispute that the goods are
related, and indeed overlap.
Because the goods described in the application and the
cited registration are legally identical, in that they overlap
in part, we must presume that the channels of trade and classes
of purchasers are the same. See In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (“The Board,
therefore, was entitled to rely on this legal presumption in
determining likelihood of confusion.”); see also In re Yawata
Iron & Steel Co., Ltd., 403 F.2d 752, 159 USPQ 721, 723 (CCPA
1968) (“Here, as noted, we have legally identical goods, hence
the same class of purchasers, and marks which are quite similar
Serial No. 79110412
9
in their essential features, as well as the fact that the goods
as identified in the application are not restricted to any
particular channel of distribution.”). Additionally, there is
nothing in the recital of goods in either the cited registration
or the application that limits, respectively, registrant’s or
applicant’s channels of trade. Hewlett Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002) (“absent restrictions in the application and registration,
goods and services are presumed to travel in the same channels
of trade to the same class of purchasers.”). Accordingly, we
find that these du Pont factors weigh heavily in favor of
finding a likelihood of confusion.
With regard to the marks, we note preliminarily that the
more similar the goods at issue, the less similar the marks need
to be for the Board to find a likelihood of confusion. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698 (Fed. Cir. 1992); see also In re Mighty Tea Leaf,
601 F.3d 1342, 94 USPQ2d 1257, 1261 (Fed. Cir. 2010). We
consider and compare the appearance, sound, connotation and
commercial impression of the marks in their entireties. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
In comparing the marks, we are mindful that the test is not
whether the marks can be distinguished when subjected to a side-
Serial No. 79110412
10
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
and/or services offered under the respective marks is likely to
result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d
683, 196 USPQ 1, 3 (CCPA 1977). The mark in the cited
registration consists solely of the term OPTI, in typed drawing
form. Applicant’s mark incorporates in full this term as the
first part of its mark OPTICROSS. Applicant argues that in fact
its mark is the telescoped mark of “OPTIC”+”CROSS” not
“OPTI”+”CROSS” and would thus be viewed and pronounced as such.
However, we find that consumers are more likely to view and
therefore pronounce applicant’s mark as “OPTI”+”CROSS.” In
saying this, we note that it is well-settled that there is no
correct way to pronounce a mark. In re Teradata Corp., 223 USPQ
361, 362 (TTAB 1984). Rather, applicant’s mark incorporates the
first term from the cited registration, and adds the word
“CROSS,” which does not appear to have a connotation in relation
to the identified goods. Our precedent instructs that adding a
term to a shared first term does not necessarily obviate
likelihood of confusion. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE
Serial No. 79110412
11
GASPAR GOLD); Cola-Cola Bottling Co. v. Joseph E. Seagrams &
Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL and
BENGAL LANCER); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376
F.2d 324, 153 USPQ 406 (CCPA 1967) (THE LILLY and LILLI ANN); In
re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” AND
“CREST CAREER IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985)
(“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”).
Applicant argues that the “OPTI” or “OPTIC” prefix is weak.
To this end, applicant has noted that the cited registrations,
i.e., the Optimize OPTI mark and the Siemens OPTICHROME mark,
both using the “OPTI” term, are owned by two separate
registrants. Applicant has also submitted third-party
registrations from two other registrants12 for the marks OPTIMA
WAXPLUS13 for “gas chromatography apparatus”; BIOOPTIX14 for
“chromatography instrument used for biochemical separations”;
and COMBIFLASH OPTIX15 for “chromatography instrument used for
flash chromatography.” There are also definitions of record for
“OPTI” and “OPTIC” as “optical”; “relating to the eye or
vision.”16 There is no indication that this small number of
third-party registrations, or ascribing this “optical” meaning

12 One other registration applicant submitted was not use-based.
13 Registration No. 4153314, owned by Macherey-Nagel & Co.
14 Registration No. 3054720, owned by Teledyne Isco, Inc.
15 Registration No. 3057575, also owned by Teledyne Isco, Inc.
16 See www.acronymfinder.com;
http//medicaldictionary.thefreedictionary.com.

Serial No. 79110412
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to the involved marks, would render the OPTI mark in the cited
registration to be unduly weak. The number of registrations,
especially in the absence of evidence of use of the registered
marks, is not such that we could conclude that consumers would
be conditioned to distinguish “Opti” formative marks based on
subtle differences. Nor does the arguably suggestive meaning of
“Opti” as a mark element necessarily limit the scope of
protection that should be accorded the Optimize OPTI mark.
We find that any differences in commercial impression
between applicant’s OPTICROSS mark and the OPTI mark in the
cited registration are outweighed by similarities in sight and
sound. This factor, too, weighs in favor of finding a
likelihood of confusion.
Finally, applicant urges us to consider the degree of care
that consumers will exercise in purchasing these goods. We note
that the evidence of record is not clear in this regard. The
evidence demonstrates that there are patents for parts and
apparatus for “liquid chromatography.” See U.S. Patent No.
5,572,328. The evidence also includes scientific articles
discussing liquid chromatography, as well as some websites
showing prices for parts therefore, indicating prices from
$1,495 to the tens of thousands of dollars. See
www.labmanager.com; www.analyticalinstruments.com. However,
applicant has not included with the evidence any declaration to
Serial No. 79110412
13
give us insight into the purchasing process. Cf. Edwards Life
Sciences v. Vigilanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010).
Even accepting that the goods may be marketed to more
careful purchasers, with some advanced knowledge of liquid
chromatography, we note that with in-part identical goods and
similar marks, even a careful, sophisticated consumer of these
goods is not likely to note the differences in the marks.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 948-49, 55 USPQ2d
1842, (Fed. Cir. 2000); Hydra Mac, Inc. v. Mack Trucks, Inc.,
507 F.2d 1399, 184 USPQ 351 (CCPA 1975) (“the high cost of the
goods does not necessarily decrease the likelihood of confusion
where the confusion found to be likely is not as to the products
but as to their source”). Furthermore, careful purchasers who
do notice the difference in the marks will not necessarily
conclude that there are different sources for the goods, but
will see the marks as variations of each other, pointing to a
single source. See, e.g., Kangol Ltd. v. Kangaroos U.S.A.,
Inc., 974 F.2d 161, 23 USPQ2d 1945, 1946 (Fed. Cir. 1992) (“What
is important is not whether people will necessarily confuse the
marks, but whether the marks will be likely to confuse people
into believing that the goods they are purchasing emanate from
the same source.”) (citations omitted). Accordingly, we deem
this du Pont factor to be neutral.
Serial No. 79110412
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Finally, we note that, although we have not considered
Optimize’s marks under the rubric of a “family” of marks, it is,
nonetheless, appropriate to note that consumers who may be
familiar with various products in the Optimize product line,
when confronted with applicant’s mark, would be likely to view
the goods marked therewith as additional products from
registrant. One of the circumstances mentioned in the ninth du
Pont factor is the variety of goods on which a prior mark is
used. See, e.g., In re Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001)
(use on a wide variety of goods weighs in favor of likelihood of
confusion). While we have previously applied this factor to
assess the variety of goods used under the same mark, we think
it appropriate in the circumstances presented here to note the
variety of chromatography-related goods offered under Optimize’s
various OPTI-formative marks.
In summary, we have carefully considered all of the
evidence and arguments of record relevant to the pertinent du
Pont likelihood of confusion factors. On balance, we find a
likelihood of confusion between the marks.17
Decision: The refusal to register is affirmed based on a
likelihood of confusion with the mark in Registration No.
2048831.

17 Due to this finding, we do not analyze likelihood of confusion as to
the remaining individual registrations owned by Optimize or the cited
Serial No. 79110412
15

registration owned by Siemens, Registration No. 0991331.