Indek Corp.

Trademark Trial and Appeal Board

Jul 13, 2004

No. 76335229 (T.T.A.B. Jul. 13, 2004)

Mailed: July 13, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Indek Corporation
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Serial No. 76335229
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Joseph L. Strabala of Law Offices of Joseph L. Strabala for Indek
Corporation.
Idi Aisha Clarke, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Hanak, Walters and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Indek Corporation has appealed from the final refusal of the
trademark examining attorney to register the mark shown below for
the following goods, as amended: "Non-chemical silicon rubber
treatments for thermal management of computer parts" in Class 4.1
1 Application Serial No. 76335229, filed November 7, 2001, based upon
an assertion of a bona fide intention to use the mark in commerce. The
application includes applicant's claim of ownership of Registration No.
2247270 for the mark THERM-A-PIPE for "electronic cooling apparatus,
namely, a heat pipe for use in conveying heat away from the central
processing unit or other areas in a computer."
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76335229
2

The Examining Attorney has refused registration under
Section 2(d) of the Trademark Act on the basis of Registration
No. 1417454 for the mark THERMAPAD for goods identified as
"silicone [sic] rubber press pads for use with electronics
manufacturing equipment" in Class 17.2
When the refusal was made final, applicant appealed. Briefs
have been filed. An oral hearing was not requested.
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
2 Issued November 18, 1986; affidavits under Sections 8 and 15 accepted
and acknowledged, respectively.
In the first Office action, the examining attorney also refused
registration on the basis of Registration No. 1777088 (issued to EMC
Technology, Inc.) for the mark THERMOPAD for "temperature variable
attenuators," and cited an earlier-filed application, Serial No.
75612480 (filed by Thermal Corporation) for the mark THERMAPAD for
"components and parts for the cooling and heating of equipment -
namely, heat pipes and heat exchangers." In addition, the examining
attorney requested that applicant submit information about its goods,
if available. In response to the Office action, applicant submitted
printouts of pages from its own website as well as information obtained
from the websites of EMC Technology, Inc. and Thermal Corporation.
Both the refusal and the cited reference were subsequently withdrawn by
the examining attorney.
Ser No. 76335229
3
192 USPQ 24 (CCPA 1976). The factors deemed pertinent in this
proceeding are discussed below.
We turn first to the marks. Applicant acknowledges that its
mark, THERM-A-PAD (and design), and registrant's typed mark,
THERMAPAD, while not identical, are similar. In fact, the marks
are identical in several significant respects. The marks are
identical in sound, both consisting of the identical word,
"thermapad." In addition, the marks convey the same meaning and
create the same commercial impressions.
There are visual differences in the marks. The lettering in
applicant's mark is slightly stylized, the syllables are
hyphenated, and a barely discernable geometric figure forms the
cross bar in the letter "A." However, these differences are
insignificant and are not sufficient to distinguish the marks or
the commercial impressions the marks create. When the marks are
viewed as a whole, it is the similarities that are striking, not
the differences.
Moreover, registrant's mark, as the typed word THERMOPAD,
could reasonably be displayed in the same stylized format as
applicant uses thereby rendering the marks visually almost
identical. See Phillips Petroleum v. C.J. Webb, 442 F.2d 1376,
170 USPQ 35 (CCPA 1971); and INB National Bank v. Metrohost, 22
USPQ2d 1585 (TTAB 1992).
Ser No. 76335229
4
While registrant's mark THERMAPAD is suggestive of its
identified goods, there is no evidence that the mark is weak or
entitled to anything less than a relatively broad scope of
protection.
We turn then to a consideration of the goods. Applicant's
goods are "non-chemical silicon rubber treatments for thermal
management of computer parts" Registrant's goods are "silicone
rubber press pads for use with electronics manufacturing
equipment."
The Examining Attorney argues that the goods are related in
that "they are both silicon rubber materials for use in
electrical components in the same industry." (Brief, unnumbered
p. 4.) Continuing, the examining attorney states:
The registrant's goods are used during the manufacturing
process of circuit boards. (Applicant's Brief page 7). The
applicant's goods are used in the thermal management or
cooling or insulating of finished electronic components.
Circuit boards are electronic components. Id. The applicant
claims its goods are used on finished computer parts, but
not on finished computers. Therefore, both parties' goods
are the type used in the building or assembly of
electronics, such as computers. (Brief, unnumbered p.4.)
Applicant, on the other hand, argues that "[p]ress pads,
used in the manufacture of circuit boards and the like, serve an
entirely different purpose than the goods of the applicant"
(Brief, p. 6, italics in original); that while registrant's goods
are used in the manufacture of electronic components, applicant's
Ser No. 76335229
5
goods "are employed for thermal management of finished computer
parts after the manufacture of these electronic components are
completed" (Brief p. 7, parentheses omitted); that registrant's
goods "are used to distribute mechanical pressure in a
manufacturing process for electronic components" (Reply Brief, p.
3); and that press pads are used at the beginning of manufacture
and thermal control in computers is not necessary until after the
manufacture is complete. (Reply Brief, p .6.)
To support its position that the goods are not related,
applicant submitted, for the first time with its appeal brief, an
exhibit consisting of pages from registrant's website containing
information about registrant's THERMAPAD product.3 While the
examining attorney objected to this evidence as untimely, at the
same time, the examining attorney relied in its own brief on
information applicant obtained from these materials (i.e., that
registrant's goods are used in the manufacture of circuit
boards). Under the circumstances, the examining attorney's
objection is waived and the evidence will be considered.
It is not necessary that the goods of the applicant and
registrant be similar or even competitive to support a finding of
likelihood of confusion. It is sufficient if the respective
3 A copy of this exhibit was submitted by fax at the Board's request on
June 25, 2004 as the original exhibit was missing from the application
file.
Ser No. 76335229
6
goods are related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that could,
because of the similarity of the marks used thereon, give rise to
the mistaken belief that they emanate from or are associated with
the same source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).
Generally, the greater the degree of similarity between the
marks, the lesser the degree of similarity required in the
respective goods to support a finding of likelihood of confusion.
See In re Wilson, 57 USPQ2d 1863 (TTAB 2001). Where, as here,
the marks are highly similar, with identical words and identical
commercial impressions, it is only necessary that there be a
viable relationship between the goods in order to support a
holding of likelihood of confusion. See In re Wilson, supra; and
In re Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
We find that there is a viable relationship between these
goods. Registrant's "silicon rubber press pads" and applicant's
"silicone rubber treatments" are both silicone rubber products.4
Both of these silicone products are used during the manufacture
4 We must assume the word "treatment" in applicant's identification
refers to a product rather than a process or technique because a term
designating a process or technique would not be registrable. We also
note that applicant had originally described its goods as "silicone
rubber composite products... ."
Ser No. 76335229
7
of computer parts.5 Registrant's silicone product is used with
the equipment that makes the computer parts and applicant's
silicone product is installed on the computer parts during the
manufacturing process.
Applicant claims that its product is only used on
"finished" computer parts and that the product is not "employed"
until after the manufacturing process is complete. However, as
identified, applicant's goods are not restricted to "finished"
computer parts. Moreover, it would seem that a computer part
would not logically be considered "finished" until the heat
control mechanism is installed. Finally, it appears from
applicant's literature that this type of product would, in fact,
be installed or applied on the computer part during the
manufacturing or assembly process.
Applicant's counsel argues, without support, that thermal
control in computers is not necessary until after the manufacture
is complete. In fact, registrant's website materials indicate
that along with uniformity in applied pressure, heat control
during the manufacturing process is a critical function of
5 Electronics manufacturing obviously includes the manufacture of
computer parts and registrant's product literature confirms this.
Relying on registrant's website materials, however, applicant claims
that registrant's press pad is "a very narrow product used in
manufacturing of laminates" (Brief, p. 9). Applicant cannot use
extrinsic evidence to limit the scope of registrant's goods. See In re
Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990). The identification of
registrant's goods is broad enough to encompass the manufacture of all
computer parts.
Ser No. 76335229
8
registrant's goods. These two functions of registrant's goods
are variously described in its materials as follows: "Thermapad
presspads [provide uniform] cushioning and heat rise, time after
time"; "Uniform heat rise - use after use"; and "Thermapads
provide uniform cushioning and more precise control over heat-
rise."
Applicant's and registrant's goods may not be identical or
even competitive products, but a viable relation exists between
them. Both are silicone rubber products, both have heat
management functions, and both are used during the manufacture of
the same products, computer parts, albeit at different stages of
the manufacturing process.
Moreover, the goods would be sold in the same channels of
trade, including the Internet, to overlapping classes of
purchasers. Both products would be directed to manufacturers of
computers and computer parts.
It is reasonable to assume that the purchasers for
applicant's and registrant's goods would be sophisticated and
knowledgeable about those products. However, even such persons
would be susceptible to source confusion, particularly under
circumstances where, as here, the goods are related and are sold
under substantially similar marks. See In re Total Quality Group
Inc., 51 USPQ2d 1474 (TTAB 1999).
Ser No. 76335229
9
In view of the above, we find that purchasers familiar with
registrant's goods provided under its THERMAPAD mark, would be
likely to believe, upon encountering applicant's mark THERM-A-PAD
(and design) for related goods, that the goods originated with or
are associated with or are sponsored by the same entity.6
To the extent that there is any doubt on the issue of
likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register is affirmed.
6 Applicant's apparent claim of an alleged family of "THERM-A- X" marks
(Response, March 17, 2003) is of no persuasive effect since applicant
has not established any such family and because, in any event, the
"family" name would do nothing to prevent consumers from mistakenly
assuming that registrant is associated with applicant or that there is
at least some relationship between them.