Kaeser Kompressoren SE

Trademark Trial and Appeal Board

Sep 18, 2017

No. 79147499 (T.T.A.B. Sep. 18, 2017)

Mailed: September 18, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Kaeser Kompressoren SE
_____

Serial Nos. 79147498, 79147499, and 791482341
_____

Stewart J. Bellus and Sara M. Dorchak of Collard & Roe PC
for Kaeser Kompressoren SE.
Jeanie H. Lee, Trademark Examining Attorney, Law Office 105,
Jennifer Williston, Managing Attorney.
_____

Before Mermelstein, Wolfson and Shaw,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Kaeser Kompressoren SE (“Applicant”) seeks registration on the Principal
Register of the marks OMEGA (in standard characters),2 OMEGA PROFIL (in

1 The Board granted the Examining Attorney’s request for consolidation of the appeals on
May 23, 2017, following Applicant’s filing of its appeal briefs in the cases. References to the
record are to the record in Serial No. 79147498 unless otherwise indicated.
2 Application Serial No. 79147499 for the mark OMEGA was filed on March 14, 2014, under
Section 66(a) of the Trademark Act, 15 U.S.C. 1141(f), requesting extension of protection on
the basis of International Reg. No. 1204518, filed March 14, 2014.
This Opinion is not a
Precedent of the TTAB
Serial Nos. 79147498, 79147499, and 79148234
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standard characters),3 and 4 for the following goods in
International Class 7:
Machines and mechanical apparatus for the generation of
compressed air, vacuum and air flow, namely, compressed
air machines, vacuum pump machines, and air suction
machines; Compressors being machines, namely, air
compressors, axial flow compressors, centrifugal
compressors, compressors as parts of machines and
engines, compressors for dehumidifying machines,
compressors for machines, electric compressors, gas
compressors, reciprocating compressors, refrigerator
compressors, rotary compressors; Blowing machines
blowers [sic] for the compression, exhaustion and transport
of gases, namely, axial flow blowers, centrifugal blowers,
rotary blowers, power operated blowers, electric fans [sic]
ventilators and blowers for machines and engines; air
suction machines; Machine housings, namely, housings for
compressed air machines, vacuum pump machines,
compressors, blowing machines, and air suction machines,
except for food processing machines; Parts for compressed
air machines, namely, central screw compressor units or
central reciprocating compressor units.

The Trademark Examining Attorney refused registration of Applicant’s marks
under Trademark Act Section 2(d); 15 U.S.C. § 1052(d), based on two registrations
owned by the same entity, Omega Engineering, Inc.:

3 Application Serial No. 79147498 for the mark OMEGA PROFIL was filed on March 14,
2014, under Section 66(a) of the Trademark Act, 15 U.S.C. 1141(f), requesting extension of
protection on the basis of International Reg. No. 1204517, filed March 14, 2014. The English
translation of “profil” in the mark is “profile.”
4 Application Serial No. 79148234 for the mark OMEGA and design was filed on March 14,
2014, under Section 66(a) of the Trademark Act, 15 U.S.C. 1141(f), requesting extension of
protection on the basis of International Reg. No. 1206480, filed March 14, 2014.
Serial Nos. 79147498, 79147499, and 79148234
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• Registration No. 2276934 for the mark for a wide
variety of goods in International Classes 1, 2, 7, 9, 11 and 16; in particular,
electric motors for fluid flow pumps, motor valves; carboy
drum pumps, centrifugal pumps, chemical dosing pumps,
gear pumps, hand pumps, magnetic drive centrifugal
pumps, peristaltic pumps, [and] rubber impeller pumps

in International Class 7;5 and

• Registration No. 2412722 for the mark OMEGA.COM (typed drawing)6 for
a wide variety of goods and services in International Classes 2, 7, 9, 11, 16
and 42; in particular,
crimpers; mechanically operated hand-held punches,
machine-held punches and hole saws, and punch tools and
saw tools therefore [sic]; panel punches, and saws for
meters and connectors; mechanically operated hand-held
or machine-held wire strippers and wire stripper tools
therefor; fluidised sand bath machines; temperature
controlled, mechanically operated circulating bath
machines; air blowers; stirring machines; pumps, namely,
carboy drum pumps, chemical dosing pumps, drum pumps,
gear pumps, hand pumps, rubber impeller pumps, fluid
pumps, peristaltic pumps, fluid pump motors, vacuum
pumps, hand-operated vacuum pumps, centrifugal pumps,
gear pumps, rubber impeller pumps, drum pumps, and
hand-held portable transfer pumps, sealed magnetic
centrifugal pumps, hand pneumatic control valves,
pneumatic valves for controlling pneumatically operated
machines, actuated valves, ball valves, diaphragm valves,
check valves -held [sic] dispensing pumps, diaphragm type
injector motor pumps, injection pumps, chemical dosing
pumps; valves being parts of machines, namely, pneumatic
control valves, pneumatic valves for controlling
pneumatically operated machines, actuated valves, ball
valves, diaphragm valves, check valves; hand-held

5 Reg. No. 2276934, issued September 14, 1999; renewed.
6 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
Serial Nos. 79147498, 79147499, and 79148234
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mechanically operated pH/conductivity meter tools;
mechanically operated electrode holders; motors for
machines; tubing, being parts of machines; electric motors;
mixing machines; transducers for distance, displacement,
and angular velocity; machine couplings

in International Class 7.7

After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board and filed a request for reconsideration. The request was
denied, and appeal proceedings were resumed. Both Applicant and the Examining
Attorney filed briefs.8 We affirm the refusals to register.
Likelihood of Confusion
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); see
also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). We have considered each du Pont factor that is relevant and for which there is
evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114
USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which
we have evidence, we focus our analysis on those factors we find to be relevant.”). In

7 Reg. No. 2412722, issued December 12, 2000; renewed.
8 Trademark Rule 2.126, 37 CFR § 2.126, requires all submissions made to the Board to be
filed in at least 11-point type and be double-spaced. Applicant’s brief is single-spaced. While
we have considered Applicant’s brief in this instance, Applicant is apprised that it is within
the sole discretion of the Board whether to disregard or accept any improper filings. See
Trademark Trial and Appeal Board Manual (TBMP) § 106.03.
Serial Nos. 79147498, 79147499, and 79148234
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any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods or services. See In re
Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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 in the essential characteristics of the goods [and services] and
differences in the marks.”); see also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409
(TTAB 2015).
A. The Similarity or Dissimilarity of the Marks.
We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E.I. du Pont, 177 USPQ at 567. “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild Inc. v. LJOW Holdings
LLC, 82 USPQ2d 1901, 1905 (TTAB 2007); see also San Fernando Elec. Mfg. Co. v.
JFD Elec. Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d
1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the marks. Geigy Chem.
Serial Nos. 79147498, 79147499, and 79148234
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Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); In
re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); L’Oreal S.A. v. Marcon,
102 USPQ2d 1434, 1438 (TTAB 2012).
Applicant is seeking to register the marks OMEGA, OMEGA PROFIL, and
.
The cited marks are OMEGA.COM and .
1. OMEGA Serial No. 79147499
We first compare Applicant’s OMEGA mark to Registrant’s OMEGA.COM mark
and find them to be nearly identical in appearance, sound, meaning and commercial
impression. Because a comparison of the marks is determined based on the marks in
their entireties, our analysis cannot be predicated on dissecting the marks into their
various components; that is, the decision must be based on the entire marks, not just
part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233,
234 (CCPA 1981). The “touchstone of this factor is consideration of the marks in
total.” Jack Wolfskin Ausrustung Fur Draussen GmbH v. New Millenium Sports,
S.L.U., 707 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015). Nonetheless, one
feature of a mark may be more significant than another, and it is not improper to give
more weight to this dominant feature in determining the commercial impression
created by the mark. In re Nat’l Data, 224 USPQ at 751 (“There is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
Serial Nos. 79147498, 79147499, and 79148234
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feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”).
Applying these principles, we find that the term OMEGA forms the dominant part of
Registrant’s mark OMEGA.COM. Whereas the “.COM” suffix is commonly known as
a top-level domain designation usually used in trademarks by companies to announce
their presence on the Internet,9 the term OMEGA is the 24th and last letter of the
Greek alphabet, and is thus arbitrary when applied to the goods.10 Accordingly,
purchasers of Registrant’s goods are likely to focus on the OMEGA portion of the
mark. Applicant’s mark consists entirely of the term OMEGA. Registrant’s mark
would be perceived as a trademark in the form of a domain name for a company
named “Omega,” and Applicant’s mark OMEGA would be perceived as an alternate
brand for that same company’s goods. Overall, the marks are similar in appearance,
pronunciation, connotation and commercial impression.
Comparing Applicant’s mark with Registrant’s design registration, we again find
the similarity of the marks outweighs their differences. The design element is
subordinate to the literal portion, which is the word OMEGA. When a mark comprises
both a literal portion and a design, the wording is normally accorded greater weight

9 According to The American Heritage New Dictionary of Cultural Literacy, Third Ed., “.com”
is “part of the Internet address of many companies and organizations. It indicates that the
site is commercial, as opposed to educational or governmental.” The Board may take judicial
notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co.,
213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including
online dictionaries that exist in printed format or regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
10 From the online Merriam-Webster dictionary at https://www.merriam-webster.com/
dictionary/omega, accessed September 15, 2017. The term is also defined as “the extreme or
final part : end.”
Serial Nos. 79147498, 79147499, and 79148234
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because the literal portion of a mark is far more likely to be impressed upon a
purchaser’s memory and to be used when requesting the goods. Joel Gott Wines, LLC
v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); In re Appetito Provisions Co.,
3 USPQ2d 1553 (TTAB 1987); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (“In the case of a composite mark containing both words
and a design, ‘the verbal portion of the mark is the one most likely to indicate the
origin of the goods to which it is affixed.’”) (citing CBS Inc. v. Morrow, 708 F. 2d 1579,
1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). The design in Registrant’s mark
consists of a stylized Greek omega symbol coupled with a stylized 3-bar design that
could represent the English letter “E,” or the Greek letter epsilon (Ε ε), or the Greek
letter xi (Ξ ξ). Although three bars can be observed in the design (possibly forming
another letter), the omega symbol is larger and in the front position. In addition to
being more visually prominent than the background “E,” the omega symbol also
reinforces the perception of OMEGA as a source indicator. Accordingly, this cited
registration is also similar in sight, sound, meaning and commercial impression to
Applicant’s OMEGA mark.
Applicant argues that the term OMEGA is diluted, or so weak that the additional
elements in the Registrant’s marks sufficiently distinguishes them. We disagree. In
support of its position, Applicant submitted copies of the results of three searches it
conducted of the Trademark Electronic Search System (TESS) database for OMEGA
Serial Nos. 79147498, 79147499, and 79148234
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marks.11 The copies are listings of marks, not full printouts of the registrations. The
first listing is of 100 live and dead applications and registrations (out of 2486 records)
of marks in which the term OMEGA was found in the “Word Mark” field either as a
word or as part of a word (e.g., CRYOMEGA12). The second listing is of 100 live
registrations (out of 1335 records) of marks containing the term OMEGA either as a
word or as part of a word. The third listing is of 57 live and dead registrations (out of
57 records) of marks in International Class 7 containing the term OMEGA either as
a word or as part of a word.
In her brief, the Examining Attorney objected to our consideration of the listings.
However, the Examining Attorney did not object to the listings in her denial of
Applicant’s request for reconsideration, and further discussed in her brief the list of
57 registrations, noting that 29 of them were marked as “dead.”13 Regardless of the
admissibility of the lists, they have virtually no probative value, and we do not take
judicial notice of the underlying registrations. See, e.g., In re Jonathan Drew Inc., 97
USPQ2d 1640, 1644 n.11 (TTAB 2011) (“the Board’s well-established practice is not
to take judicial notice of registrations that reside in the USPTO”); Beech Aircraft
Corp. v. Lightning Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986); see also TBMP §
1208.02. (“[T]he Board will not consider more than the information provided by the
applicant. Thus, if the applicant has provided only a list of registration numbers

11 November 18, 2016 Response to Office Action, TSDR 2-9.
12 Reg. No. 4847528.
13 Denial of request for reconsideration, 7 TTABVUE 3.
Serial Nos. 79147498, 79147499, and 79148234
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and/or marks, the list will have very limited probative value.”). The probative value
of the list of 57 registrations (the most relevant listing) is further reduced by the fact
that five of the listed marks do not contain the term OMEGA at all, two of the marks
are the cited registrations, and twenty-nine are marked “dead.” A cancelled or expired
registration is not evidence of anything except that it issued. See Action Temp. Servs.
Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989); TBMP
§ 704.03(b)(1)(B) (June 2017). As to the remainder, we are not privy to the records of
any of these registrations, no information as to the goods or services involved is
included, and additional design elements, if any, do not appear as part of the marks
in the “Word Mark” column.14 Accordingly, the lists do not evidence dilution or
weakness of the term OMEGA.
In addition to the lists, Applicant submitted copies of 12 third-party registrations
for various goods in International Class 7 for OMEGA or marks that include OMEGA
as part of the mark.15 Applicant has not shown by these registrations that the term
OMEGA has a descriptive or suggestive meaning and would therefore be considered
conceptually weak for goods in International Class 7. None of the registrations is for
goods that bear any relation to the goods at issue in this case, but rather cover

14 We hasten to add that the two other lists suffer from the same infirmities as the list of 57,
and in addition refer to pending applications. Third-party applications are evidence only of
the fact that they have been filed. Interpayment Servs. Ltd. v. Docters & Thiede, 66 USPQ2d
1463, 1468 n.6 (TTAB 2003).
15 November 18, 2016 Response to Office Action, TSDR 10-25. Although reference is made in
the briefs to 13 copies, Reg. No. 1980557 was submitted twice.
Serial Nos. 79147498, 79147499, and 79148234
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unrelated goods, such as tools for automobiles,16 printing plates,17 electric juice
extractors18 and coffee grinders.19 One of the registrations has been cancelled.20
Moreover, Applicant has not shown that any of the marks are in use on a commercial
scale. Absent evidence of actual use, third-party registrations generally have little
probative value in assessing the market strength of a mark because they are not
evidence that the marks are in use on a commercial scale or that the public has
become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations
reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A.
de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011). See
also Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545
(Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not
be given any weight.”). Cf. Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d
1671, 1673 n.1 (Fed. Cir. 2015) (at least twenty-six relevant third-party uses or
registrations of record).

16 Reg. No. 1848979 for the mark OMEGA LIFT EQUIPMENT.
17 Reg. No. 2096291 for the mark OMEGA.
18 Reg. No. 1844118 for the mark OMEGA.
19 Reg. No. 4434326 for the mark OMEGA. Only one, Reg. No. 4531251 for the mark OMEGA
for “dispersion mills,” would suggest functions similar to compressors or blowers, but such
functions are specifically excluded in the identification: “machines and machine
arrangements for grinding, dispersing and emulsifying for industrial and laboratory
applications, namely, dispersion mills and replacement parts therefore, excluding such
machine parts that can be used in machines and devices for the production of compressed air,
vacuum and air flow.”
20 Reg. No. 3045796 for the mark OMEGA.
Serial Nos. 79147498, 79147499, and 79148234
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“[I]n any event, the Board is not bound by the actions of examining attorneys in
allowing those marks for registration. It has been said many times that each case
must be decided on its own facts.” In re Eagle Crest Inc., 96 USPQ2d 1227, 1229
(TTAB 2010); see also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001); Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122
USPQ2d 1030 (TTAB 2016) (“Suffice it to say that the Board is not bound by
examination actions taken (or not taken) by an examining attorney.”).
We find the first du Pont factor favors a finding of likelihood of confusion with
respect to Applicant’s OMEGA mark, Serial No. 79147499.
2. OMEGA PROFIL Serial No. 79147498
In considering Applicant’s OMEGA PROFIL mark, we again find the mark to be
similar to Registrant’s OMEGA.COM and OMEGA and design marks. Both word
marks start with the term OMEGA as its dominant element. See, e.g., Palm Bay
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark
VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word
to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers will first notice the identical lead word); Presto Prods. Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered.”).
As noted supra, the term OMEGA is also the dominant portion of Registrant’s design
Serial Nos. 79147498, 79147499, and 79148234
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mark as it is the only literal portion of the mark and the design element reinforces
the connotation of the word OMEGA.
Although Applicant’s mark terminates in an unusual term, “profil,” Applicant
has clarified that the term is translated as “profile,” which is a common English word
meaning “a representation of something in outline; especially : a human head or face
represented or seen in a side view;”21 it can also mean “degree or level of public
exposure” as in “trying to keep a low profile [or] a job with a high profile” or “a set of
data often in graphic form portraying the significant features of something” such as
“a corporation’s earnings profile.”22 Given these connotations, the mark OMEGA
PROFIL suggests a portrayal or representation of an “omega” quality (a fanciful
concept) that underscores the prominence of the first word, OMEGA, in Applicant’s
mark. Due to this shared element, the marks are similar in sight, sound, meaning
and overall commercial impression.
We find the first du Pont factor favors a finding of likelihood of confusion with
respect to Applicant’s OMEGA PROFIL mark, Serial No. 79147498.
3. OMEGA and design, Serial No. 79148234
Applicant’s design mark features an image that has not
been described in the application. It is reminiscent of propellers, fans, turbines, or
gears. The Examining Attorney refers to the design as “two fans.”23 Regardless of how

21 At https://www.merriam-webster.com/dictionary/profile, accessed September 6, 2017.
22 Id.
23 13 TTABVUE 7.
Serial Nos. 79147498, 79147499, and 79148234
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it is described, the design is suggestive of those goods in the identification that are
designed to rotate or turn, such as “rotary compressors” and “rotary blowers.”
Registrant’s marks are OMEGA.COM and . Each of these marks
is dominated by the term OMEGA and none of the additional elements in either mark
of the cited registrations sufficiently distinguishes it from Applicant’s mark. In the
mark OMEGA.COM, the “.com” portion is not source-identifying and imbues the
mark with the character of a domain name. Prospective purchasers would be likely
to mistakenly believe that Applicant’s OMEGA and design mark identifies goods that
come from the OMEGA entity identified by the domain name. Regarding the design
features, while they change somewhat the appearance of the marks, this factor is
outweighed by the similarity in sound, connotation and commercial impression due
to the presence of the shared term OMEGA in each mark. See, e.g., In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (Presence of an additional
term in a mark “does not necessarily eliminate the likelihood of confusion if some
terms are identical.”) (citing China Healthways Inst., Inc. v. Wang, 491 F.3d 1337, 83
USPQ2d 1123 (Fed. Cir. 2007)). Similarity in any one of these factors may be a
sufficient basis upon which to conclude that confusion would be likely, and any
difference in the sound and appearance of the marks at issue in this case is more than
overcome by their similarity in connotation and commercial impression. In re White
Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In appropriate cases, a finding of
similarity as to any one factor (sight, sound or meaning) alone ‘may be sufficient to
support a holding that the marks are confusingly similar.’”) (citing Trak, Inc. v. Traq
Serial Nos. 79147498, 79147499, and 79148234
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Inc., 212 USPQ 846, 850 (TTAB 1981)); see also In re Lamson Oil Co., 6 USPQ2d
1041, 1042 (TTAB 1987).
We find the first du Pont factor favors a finding of likelihood of confusion with
respect to Applicant’s OMEGA and design mark, Serial No. 79148234.
The first du Pont factor favors a finding of likelihood of confusion with respect to
Applicant’s design mark.
B. The Relatedness of the Goods
We turn next to a comparison of the goods. We make our determination regarding
the similarity of the goods, channels of trade and classes of purchasers based on the
goods as they are identified in the involved application and cited registration. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1161 (Fed. Cir. 2014); Octocom Sys. Inc. v. Hous. Computers Servs., Inc., 918 F.2d
937, 16 USPQ2d 17893, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
Under this du Pont factor, the Examining Attorney need not prove, and we need
not find, similarity as to each and every item listed in the description of goods. It is
sufficient for a refusal based on likelihood of confusion that relatedness is established
for any item encompassed by the identification of goods. Tuxedo Monopoly, Inc. v.
General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re
i.am.symbolic, llc, 116 USPQ2d at 1409; Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014).
Serial Nos. 79147498, 79147499, and 79148234
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Applicant’s goods include “vacuum pump machines” and Registrant’s goods
include “hand pumps, vacuum pumps and hand-operated vacuum pumps.”
Applicant’s “vacuum pump machines” are essentially identical to Registrant’s
“vacuum pumps.” And “vacuum pump machines” encompass Registrant’s more
narrowly worded “hand-operated vacuum pumps.” Conversely, Registrant’s “hand-
pumps” encompass “vacuum pump machines” that are hand-operated. Moreover, the
goods of Reg. No. 2412722 include “air blowers,” which encompass Applicant’s more
narrowly worded types of blowers (axial flow blowers, centrifugal blowers, rotary
blowers, power operated blowers). To this extent, the goods are partially identical and
in part legally identical.
Applicant argues that its goods are designed for purposes different from those to
which Registrant’s goods are put, in that Applicant’s goods “are suitable for
applications such as pneumatic conveying, waste water treatment, air knives,
vacuum, and soil remediation. In contrast, the products and services of the Registrant
are used to measure, control, and/or regulate a variety of components (including
temperature, humidity, pressure, etc.).”24 However, there are no such limitations in
the identifications of the goods, and an applicant may not restrict the scope of the
goods covered in its application or in a cited registration by argument or extrinsic
evidence. In re Midwest Gaming & Ent. LLC, 106 USPQ2d 1163, 1165 (TTAB 2013),
In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008), In re Bercut-
Vandervoort & Co., 229 USPQ2d 763, 764 (TTAB 1986). Any specific differences

24 Appeal Brief, 9 TTABVUE 7.
Serial Nos. 79147498, 79147499, and 79148234
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between the actual nature of the goods (and none have been shown to exist) are
irrelevant in our analysis because none of the identifications of goods includes any
limitations in trade channels, classes of purchasers, prices, or intended purpose of the
goods.
On the other hand, the Examining Attorney has submitted evidence of third-party
registrations and websites showing that many of the goods of the application and
cited registrations are related. For example, Gardner Denver Ltd. advertises
“compressors and pumps,” including air compressors, “regenerative, reciprocating,
rotary lobe and centrifugal” blowers, and vacuum pumps.25 Gardner Denver’s
advertising explains on its website that a blower “is a rotary, positive displacement
type of machine used to move gas and air and is used in a variety of methods,”26
thereby equating blowers, such as Applicant’s, which transport gases, with air
blowers, such as are listed in Registrant’s registration for the OMEGA.COM mark.27
Republic Manufacturing provides “air movement technology solutions,” including
pumps and blowers.28 They also sell motors.29

25 At http://www.gardnerdenver.com/product_types/blowers/, January 25, 2017, Denial of
request for reconsideration, 6 TTABVUE 3-8 and 7 TTABVUE 7-21, see also May 20, 2016
Office Action, TSDR 4, 6.
26 7 TTABVUE 7. Emphasis supplied.
27 We do not take the advertising as proof that gas and air blowers are, in fact, used for the
same purpose, only that the advertising shows that relevant purchasers may have been
exposed to advertising equating the two. Moreover, Webster’s Dictionary defines a “blower”
as “a device for producing a current of air or gas.” At https://www.merriam-webster.com,
accessed September 13, 2017.
28 At https://republic-mfg.com/, January 25, 2017, Denial of request for reconsideration, 6
TTABVUE 9-14.
29 Id.
Serial Nos. 79147498, 79147499, and 79148234
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Tuthill Vacuum & Blower Systems sells “pumps, motors, blowers and plastics” as
well as remanufactured vacuum pumps and blowers.30 It advertises:
Tuthill Vacuum & Blower Systems, manufacturer of
Kinney® vacuum pumps and M-D Pneumatics™ blowers
& vacuum boosters, is a leader in the design and
manufacture of high performance, reliable positive
displacement blowers, mechanical vacuum pumps, vacuum
boosters and engineered systems ready to install and run.31

In addition, the Examining Attorney has submitted copies of third-party
registrations for marks registered in connection with goods found in both Applicant’s
application and Registrant’s registrations. For example, FILTER MINDER is
registered for inter alia, “industrial machinery, namely,…vacuum pumps…vacuum
compressors, and vacuum blowers.”32 BLUELINE is registered for, inter alia,
“vacuum pumps, and parts and fittings therefor;…pumps and compressors for
delivering and recovering gas.”33 BOM-EV is registered for, inter alia, “compressed
air machines; compressed air pumps; electric compressors; electric motors, not for
land vehicles; fans for motors and engines; power-operated blowers; pumps as parts
of machines, motors and engines; pumps for machines; vacuum pumps.”34 Third-party
registrations which individually cover a number of different items and which are
based on use in commerce serve to suggest that the listed goods and/or services are

30 At http:/ /www.tuthillvacuumblower. com/, January 25, 2017, Denial of request for
reconsideration, 5 TTABVUE 2-6, 15.
31 At http:/ /www.tuthillvacuumblower. com/, January 25, 2017, Denial of request for
reconsideration, 5 TTABVUE 2-6.
32 Reg. No. 4554184; attached to June 26, 2014 Office Action, TSDR 27.
33 Reg. No. 4532431; attached to June 26, 2014 Office Action, TSDR 58.
34 Reg. No. 4555037; attached to June 26, 2014 Office Action, TSDR 66.
Serial Nos. 79147498, 79147499, and 79148234
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of a type which may emanate from a single source. In re Aquamar, Inc., 115 USPQ2d
1122, 1126 n.5 (TTAB 2015) (citing 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 (TTAB 1993).
We find the goods are in-part identical and otherwise commercially related. The
second du Pont factor favors a finding of likelihood of confusion.
C. Channels of Trade and Classes of Consumers
Because the goods are identical and legally identical in part, and neither
Applicant’s application nor the cited registration contain any limitations on the
channels of trade or classes of purchasers for any of the overlapping items, we must
presume that the channels of trade and classes of purchasers for these goods are the
same. See Stone Lion Capital Partners, 110 USPQ2d at 1161; In re Yawata Iron &
Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Am. Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011). See also Viterra, 101 USPQ2d at 1908 (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion).
Applicant argues that the goods “are offered to consumers who are entirely
different than the consumers who would purchase Applicant’s products”35 and “would
not be encountered by the same people in any level of production or marketing.”36

35 9 TTABVUE 7.
36 Id., 10.
Serial Nos. 79147498, 79147499, and 79148234
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However, Applicant provides no corroborating evidence from which we may affirm
Applicant’s contentions. On the other hand, the Examining Attorney has submitted
evidence showing that companies sell the goods of both Applicant and Registrant
under the same mark.
The third du Pont factor, the similarity or dissimilarity of established, likely to
continue trade channels, and the similarity of classes of consumers, also favors a
finding of likelihood of confusion.
D. Conditions of Sale
Because the goods as listed in Applicant’s application and the cited
registrations include specialized machines and their parts, the average purchaser of
these goods likely has some expertise in the mechanics of such machines. However,
we must base our decision “on the least sophisticated potential purchasers” at issue.
Stone Lion Capital Partners, 110 USPQ2d at 1163. Not all the items listed in the
identifications of either Applicant’s application or the cited registrations would
necessarily be purchased by sophisticated purchasers. For example, Applicant’s
“power operated blowers” and Registrant’s “air blowers” are broad enough to include
leaf blowers used by household gardeners. To that extent, the purchasers would not
be sophisticated or particularly discerning consumers. Further, even sophisticated
purchasers can be confused as to source where similar marks are used on closely
related goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434
Serial Nos. 79147498, 79147499, and 79148234
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F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)) (“Human memories even of
discriminating purchasers … are not infallible.”).
Accordingly, this du Pont factor is neutral or slightly favors Applicant.
Summary
We have considered all of the arguments and evidence of record as they pertain to
the du Pont likelihood of confusion factors. To the extent that any other du Pont
factors for which no evidence was presented by Applicant or the Examining Attorney
may nonetheless be applicable, we treat them as neutral.
Applicant’s marks OMEGA, OMEGA PROFIL, and are similar in
sight, sound, meaning and commercial impression to Registrant’s OMEGA.COM and
marks due to the shared term OMEGA in the marks. The goods are
partially identical, and the channels of trade and classes of purchasers overlap. The
fact that some purchasers may exercise care in their purchases does not change our
conclusion. On balance, we find that consumers familiar with Registrant’s goods
offered under the marks OMEGA.COM and would be likely to
believe, upon encountering Applicant’s goods offered under its marks OMEGA,
OMEGA PROFIL, and that the goods originate from the same entity.

Decision: The refusals to register application Serial Nos. 79147498, 79147499,
and 79148234 under Trademark Act Section 2(d) are affirmed.