Ideal Living Holdings Limited

Trademark Trial and Appeal Board

Apr 23, 2013

No. 85219794 (T.T.A.B. Apr. 23, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ideal Living Holdings Limited
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Serial No. 85219794
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Irene Y. Lee of Russ August & Kabat,
for Ideal Living Holdings Limited.
Tracy Cross, Trademark Examining Attorney, Law Office 109,
Dan Vavonese, Managing Attorney.
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Before Quinn, Bucher and Adlin,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
Ideal Living Holdings Limited filed, on January 18, 2011, an intent-to-use
application, under Section 1(b) of the Trademark Act, 15 U.S.C. 1051(b), to register
the mark PRISTIVA (in standard characters) for “filters for drinking water; tap-
water purifying apparatus” in International Class 11.
The trademark examining attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when
applied to applicant’s goods, so resembles the previously registered mark PRISTIVA
Serial No. 85219794
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(in standard characters) for “water treatment chemicals for use in swimming pools
and spas” in International Class 111 as to be likely to cause confusion.
When the refusal was made final, applicant appealed. Applicant and the
examining attorney filed briefs.
Before turning to the substantive merits of the appeal, we will consider an
evidentiary matter. Applicant, in its Office action response filed August 24, 2011,
made reference to several third-party registrations by listing the registration
number, registered mark and the goods in the identification; however, applicant did
not provide copies of the registrations. The examining attorney, in the responsive
final refusal, did not mention the references in any fashion. Applicant, in its appeal
brief, repeats the same information. In response, the examining attorney states
that applicant “has submitted a list of third-party registrations without entering
copies of the actual registrations into the record,” and requests “that the Board
disregard the third-party registrations referenced by applicant in its appeal brief.”
The examining attorney’s objection is too late. If the applicant, during the
prosecution of the application, provided a listing of third-party registrations,
without also submitting actual copies of the registrations, and the examining
attorney did not object or otherwise advise the applicant that a listing is insufficient
to make such registrations of record at a point when the applicant could cure the
insufficiency, the examining attorney will be deemed to have waived any objection
as to the admissibility of the list. TBMP § 1207.03 (2012).

1 Registration No. 3677513, issued September 1, 2009. The registration indicates that
“[t]he mark ‘Pristiva’ has no meaning in a foreign language.”
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The examining attorney’s failure to advise applicant of the insufficiency of the
list of registrations when it was proffered during examination, at a point when
applicant could have cured the insufficiency, constituted a waiver of any objection to
consideration of that list. Accordingly, the examining attorney’s objection is
overruled, and we will consider the referenced registrations for whatever limited
probative value such evidence may have. See In re City of Houston, 101 USPQ2d
1534, 1536 (TTAB 2012).
Applicant argues that the goods are specifically different in function, purpose
and use, and that the examining attorney’s evidence is not probative to show
otherwise. More specifically, although both types of goods relate to treating water,
applicant points to the fact that applicant’s goods treat drinking water whereas
registrant’s goods treat water used in swimming pools and spas. Applicant also
contends that the respective goods are bought by sophisticated purchasers who
make their decisions to buy these types of goods only after careful deliberation. As
indicated above, applicant relied on a list of third-party registrations to support its
view that water treatment chemicals do not emanate from the same source as filters
and apparatus for drinking water for human consumption.
The examining attorney maintains that the marks are identical and the goods
are “closely related” and “complementary.” The examining attorney states that
“[b]roadly, both parties provide goods that ultimately treat or purify water.” In
support of the refusal the examining attorney introduced eight third-party
Serial No. 85219794
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registrations, and excerpts from registrant’s website and third-party online
retailers’ websites.
Our determination of the issue of likelihood of 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).
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).
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005). The focus is on the recollection of the average purchaser, who normally
retains a general rather than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Applicant’s mark and registrant’s mark are both PRISTIVA in standard
character form. The marks are identical in every respect, and applicant does not
contend otherwise. The marks apparently have no meaning, and are arbitrary as
used in connection with the involved goods. The identity between these arbitrary
marks is a du Pont factor that weighs heavily in favor of a finding of likelihood of
confusion.
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The du Pont factor involving the similarity/dissimilarity between the goods is at
the heart of this appeal. As to the goods, it is well-settled that the question of
likelihood of confusion must be determined based on an analysis of the goods recited
in applicant’s application vis-à-vis the goods identified in the cited registration. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); and
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed.
Cir. 1992).
Accordingly, we compare applicant’s “filters for drinking water; tap-water
purifying apparatus” to registrant’s “water treatment chemicals for use in
swimming pools and spas.” Where the goods in the application at issue and/or in
the cited registration are broadly identified as to their nature and type, such that
there is an absence of any restrictions relating to the channels of trade and no
limitation relating to the classes of purchasers, it is presumed that in scope the
identification of goods encompasses not only all the goods of the nature and type
described therein, but that the identified goods are offered in all channels of trade
which would be normal therefor, and that they would be purchased by all potential
buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In considering this du Pont factor, we especially note that where identical
marks are involved, as is the case here, the degree of similarity between the goods
that is required to support a finding of likelihood of confusion declines. In re Shell
Oil Co., 26 USPQ2d at 1688-1689 (“even when the goods or services are not
competitive or intrinsically related, the use of identical marks can lead to the
Serial No. 85219794
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assumption that there is a common source”); Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650 (TTAB 2002); and In re Opus One Inc., 60 USPQ2d 1812
(TTAB 2001). It is only necessary that there be a viable relationship between the
goods to support a finding of likelihood of confusion. In re Concordia International
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The issue here, of course, is
not whether purchasers would confuse the goods, but rather whether there is a
likelihood of confusion as to the source of these goods. In re Rexel Inc., 223 USPQ
830 (TTAB 1984).
We note, as the examining attorney points out, that both types of goods are used
to treat or purify water. However, given the different purposes of filters for
purifying water for human consumption (applicant’s goods) and chemicals for
purifying water for pools and spas (registrant’s goods), we must carefully consider
the examining attorney’s evidence relating to this factor.
With respect to the relatedness of the goods, the examining attorney introduced
eight third-party registrations. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Serial No. 85219794
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We recognize that each of the registrations shows that the same entity has
registered the same mark for both water treatment chemicals and for water
filtration or purification products. It is significant to note, however, that in six of
the registrations, the chemicals and the filtering products are identified as having a
common purpose or use; as for example, the two types of goods are used for pools,
ponds, waste water, aquariums or industrial purposes. To that extent, the
examining attorney is correct to say that such goods are “complementary”; but, they
are complementary for the principal reason that the goods are intended for the
same use or function. That is not the case here with the involved goods, however,
because applicant’s filters and registrant’s chemicals serve different purposes.
Thus, we do not find these registrations to be as probative as the examining
attorney does. Likewise, applicant’s third-party registration evidence shows that
the different types of products are intended for a common purpose or use.
The examining attorney’s evidence includes two registrations, however, showing
use of the same mark for products involving the purification of water for human
consumption on the one hand, and a filtering product designed for some other use,
as for example, in connection with a pool or spa on the other. We note the following
registrations that tend to support the examining attorney’s position: Reg. No.
2640321 for “water treatment chemicals” and “water treatment equipment, namely,
water purifiers, pumps, controllers and tanks”;2 and Reg. No. 3493937 for “chemical
additives for water treatment, namely, water purifying chemicals for swimming

2 The identification is broad enough to cover goods for treating water for human
consumption and/or for other uses, such as for pools or spas.
Serial No. 85219794
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pools and spas, and chemicals for potable water treatment” and “dispensing units
for water treatment chemicals for use in swimming pools and spas and potable
water treatment.”
In sum, while the number of registrations weighs in applicant’s favor, we cannot
ignore the two instances where the goods may be used both for treating water for
human consumption and for other filtering uses, such as in pools and spas.
Also of record is registrant’s website showing that it offers water treatment
chemicals for pools, as well as chemicals for residential water softening units. The
examining attorney further introduced excerpts of third-party websites showing
that the same online retailers sell products both for treating water for human
consumption and for treating water for pools and spas. The evidence shows no less
than four online retailers selling both types of products for use in connection with
drinking water and pool/spa water. In saying this, we acknowledge that the goods
are not sold under the same marks, but the evidence shows that the two different
types of goods may emanate from the same source, travel in the same trade
channels and are marketed to the same classes of purchasers. As summarized by
the examining attorney: “The evidence illustrates that companies that manufacture
swimming pool and spa chemicals also manufacture potable water chemicals.
Companies that manufacture drinking water purifiers also manufacture swimming
pool purifiers. Companies that provide water treatment chemicals also provide
water filters and water purifiers. Retail companies that sell drinking water filters
also sell swimming pool chemicals.”
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The similarities between the goods, trade channels and purchasers are factors
that weigh in favor of a finding of likelihood of confusion.
Applicant claims that the purchase of the goods requires sophistication and a
careful purchasing decision. According to applicant, purchasers of its goods “care
about their health” and are “environmentally conscientious enough” to have a filter
or purification apparatus for their drinking water.
First, this allegation is not supported by any evidence; prospective purchasers of
the involved goods would appear to include ordinary consumers. Second, and in any
event, even assuming that a careful selection is involved, it is settled that even
sophisticated purchasers are not immune from source confusion, especially in cases
such as the instant one involving identical marks and related goods. See In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ
110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are
not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988). We find
that the identity between the marks and the relatedness of the goods sold
thereunder outweigh any presumed sophisticated purchasing decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). Thus, this factor is neutral.
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We have carefully considered all of the evidence made of record pertaining to
the issue of likelihood of confusion, as well as all of the arguments related thereto,
including any evidence and arguments not specifically discussed in this opinion. As
indicated earlier, that identical arbitrary marks are involved is a significant factor
in determining the merits of the likelihood of confusion refusal. We conclude that
consumers familiar with registrant’s “water treatment chemicals for use in
swimming pools and spas” sold under the mark PRISTIVA (in standard characters)
would be likely to mistakenly believe, upon encountering applicant’s identical mark
PRISTIVA (in standard characters) for “filters for drinking water; tap-water
purifying apparatus,” that the goods originated from or are 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. 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 1565, 223
USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.