Labcon, North America

Trademark Trial and Appeal Board

Nov 26, 2018

No. 87026019 (T.T.A.B. Nov. 26, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: November 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Labcon, North America
_____

Serial No. 87026019
_____

Brian I. Marcus of Vierra Magen Marcus LLP,
for Labcon, North America.
Carolyn Wlodarczyk1, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Cataldo, Kuczma and Greenbaum,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Labcon, North America (“Applicant”) seeks registration on the Principal Register
of the mark ECLIPSE (in standard characters) for:
Laboratory equipment, namely pipette tips in
International Class 9.2

1 Julie Watson was the Examining Attorney during the pendency of the application. The
application has been reassigned to Carolyn Wlodarczyk, the Examining Attorney identified
above, for purposes of this appeal.
2 Application Serial No. 87026019 was filed on May 5, 2016, based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
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The Trademark Examining Attorney refused registration of Applicant’s mark
under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood of
confusion with the mark ECLIPSE in Registration No. 28171553 registered for:
Reagents for scientific and research use, namely,
biochemicals, oligonucleotides, oligonucleotide conjugates,
DNA primers, DNA, genetic, and oligonucleotide probes,
and quenchers; reagents for use as components in the
building of other reagents; chemicals for the synthesis of
DNA probes; chemicals used in the preparation of the
foregoing; and instruction manuals therefor, packaged as a
unit, in International Class 1, and
Reagents for medical diagnostic, clinical, or medical
laboratory use, namely, biochemicals, oligonucleotides,
oligonucleotide conjugates, DNA primers, DNA, genetic,
and oligonucleotide probes, and quenchers; and instruction
manuals therefor, packaged as a unit, in International
Class 5.
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Evidentiary Issue
Before proceeding to the merits of the refusal, we address an evidentiary matter.
With its Appeal Brief, Applicant submits screenshots of Internet websites and printed
materials that were not previously introduced into the record during prosecution (4
TTABVUE 10-67), and copies of previously submitted pages from TESS, the
Trademark Electronic Search System, (4 TTABVUE 68-82). The evidence Applicant
seeks to introduce with its brief appears to have been available during the prosecution
of its application; indeed the TESS pages were previously introduced into the record

3 Registration No. 2817155 issued on February 24, 2004; renewed.
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during prosecution and are part of the record. See 9/13/2017 Response to Office Action
at 7-21.4
Relying on Rule 2.142(d), 37 C.F.R. § 2.142(d), the Examining Attorney objects to
such evidence submitted by Applicant with its Appeal Brief. Rule 2.142(d) states:
The record in the application should be complete prior to
the filing of an appeal. Evidence should not be filed with
the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce
additional evidence after an appeal is filed, the appellant
or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application
for further examination.
As set forth in the Rule, the record should be complete prior to the filing of the
appeal. If Applicant desired to introduce additional evidence after the appeal was
filed, it should have submitted a request to the Board to suspend the appeal and to
remand the application for further examination. Thus, we sustain the Examining
Attorney’s objection and the evidence Applicant attempts to submit with its Appeal
Brief will not be considered. See In re Giovanni Food Co., 97 USPQ2d 1990, 1990-91
(TTAB 2011) (documents from file of cited registration submitted with applicant’s
appeal brief are late-filed and not considered; examining attorney’s objection
sustained); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) § 1207.01 (June 2018). To the extent that any of the evidence

4 Page references to the application record refer to the .pdf version of the USPTO’s Trademark
Status & Document Retrieval (TSDR) system. References to the briefs refer to the Board’s
TTABVUE docket system where the number preceding “TTABVUE” corresponds to the
docket entry number(s), and any number(s) following “TTABVUE” refer to the page
number(s) of the docket entry where the cited materials appear.
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was duplicative of evidence timely submitted by Applicant during prosecution of the
involved application, the timely submitted evidence has been considered.
II. Likelihood of Confusion
Our determination of likelihood of confusion under § 2(d) of the Trademark Act is
based on an analysis of all of the probative facts in evidence that are relevant to the
factors bearing on the 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
Co., 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 and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). “‘The likelihood of
confusion analysis considers all DuPont factors for which there is record evidence,
but may focus . . . on dispositive factors, such as the similarity of the marks and
relatedness of the goods.’” i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002)) (internal quotation omitted). We address these
factors and any others for which Applicant or the Examining Attorney presented
evidence or arguments, including the similarity of the trade channels and the
conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful,
sophisticated purchasing.
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We have considered all of the evidence as it pertains to the relevant du Pont
factors, as well as Applicant’s arguments (including any evidence and arguments not
specifically mentioned in this opinion). The other factors we treat as neutral.
A. Similarity of the Marks
Applicant’s mark is identical to Registrant’s mark in all respects and Applicant
has conceded the same.5 The identity of the marks weighs heavily in favor of finding
a likelihood of confusion.
B. Similarity and Nature of the Goods
The greater the degree of similarity between the parties’ marks, the lesser the
degree of similarity required in the parties’ goods to support a finding of likelihood of
confusion. Where Applicant’s mark is identical to the Registrant’s mark, there need
be only a viable relationship between the respective goods in order to find that a
likelihood of confusion exists. Even when goods or services are not competitive or
intrinsically related, the use of identical marks can lead to the assumption that there
is a common source. See In re Shell Oil, 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed.
Cir. 1993); In re Opus One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Wilson,
57 USPQ2d 1863, 1867 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222
USPQ 355, 356 (TTAB 1983).
The goods of the parties need not be identical to find a likelihood of confusion. See
On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed.

5 Applicant’s Appeal Brief p. 2 (4 TTABVUE 3).
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Cir. 2000); In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012). Rather, the
goods need only be related in a manner such that they could give rise to the mistaken
belief that they emanate from the same source. Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); In re Total Quality
Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). The proper inquiry is not whether
the goods could be confused, but whether the source of the goods is likely to be
confused. In re Shell Oil, 26 USPQ2d at 1690; In re Cynosure Inc., 90 USPQ2d 1644,
1646 (TTAB 2009).
The Examining Attorney contends that the Registrant’s goods are “highly related”
to Applicant’s goods “because it is common practice for the same entity to provide
both parties’ goods and market such goods under the same mark as complementary
laboratory equipment.”6 Applicant disagrees, arguing that its “pipette tips” are
sufficiently different from Registrant’s reagents so as to avoid any likelihood of
confusion.
Although the definitions and information about “pipettes” and “reagents”
submitted by Applicant have been excluded from evidence (as discussed above), we
take judicial notice7 of the definitions for those terms:
Pipette (noun): a small piece of apparatus which typically
consists of a narrow tube into which fluid is drawn by

6 Examining Attorney’s Appeal Brief at 6 TTABVUE 9-10.
7 The Board may take judicial notice of online dictionary definitions including online
dictionaries that exist in printed format or have regular fixed editions. In re Inn at St. John’s,
LLC, 126 USPQ2d 1742, 1747 n.15 (TTAB 2018); In re Red Bull GmbH, 78 USPQ2d 1375,
1378 (TTAB 2006).
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suction (as for dispensing or measurement) and retained
by closing the upper end.
Merriam-Webster Dictionary, .

Reagent (noun): a substance used (as in detecting or
measuring a component, in preparing a product, or in
developing photographs) because of its chemical or
biological activity.
Merriam-Webster Dictionary,
We agree with Applicant that, as confirmed by their definitions, pipettes and reagents
are different goods. However, that does not end our consideration as to whether those
goods are related for purposes of our likelihood of confusion determination.
The Examining Attorney submits evidence from three third-party websites which
offer products of the types listed in Registrant’s registration and Applicant’s
application under the same mark8:
• Webpage printouts from VWR show this entity offers
pipettes and reagents
(pp. 9-14, March 13, 2017 Office Action, ).
• Webpage printouts from Mettler Toledo show this
entity offers pipettes and pipette tips, and reagents

8 Webpage printouts from BIOLINE show this entity offers pipettes and reagents (pp. 6-8,
March 13, 2017 Office Action, ). However, the version of the
website submitted by the Examining Attorney was the U.K. version and has not been
considered as there is no basis to conclude that U.S. consumers were exposed to this website.
In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 n.9 (TTAB 2011) (no basis to conclude
U.S. consumers exposed to website for Australian brewery; those webpages not considered).
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(pp. 15-20, March 13, 2017 Office Action, ,).
• Webpage printouts from PerkinElmer show this
entity offers pipettes and disposable tips, and
reagents
(pp. 21-37, March 13, 2017 Office Action,
, ).
This evidence also supports that Applicant’s and Registrant’s goods are likely to
travel in the same channels of trade and be encountered by the same classes of
purchasers.
In addition, the Examining Attorney argues that Applicant’s pipette tips are
highly related to Registrant’s reagents because it is common practice for the same
entity to provide both parties’ goods and market them under the same mark as
complementary laboratory equipment, submitting copies of nine third-party marks
registered for use in connection with the goods of both Applicant and Registrant.9
Third-party registrations which cover a number of differing goods, 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, have probative
value to the extent that they may serve to suggest that such goods or services are of
a kind that may emanate from a single source under a single mark. See In re

9 Registration Nos. 5043538, 4670937, 4876768, 4834579, 4793245, 4604468, 4911982,
5157696, 5076452. See March 13, 2017 Office Action at 38-56.
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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)); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Thus, such registrations offer further
support of the relatedness of Applicant’s and Registrant’s goods.
Applicant points to four “sets” of third-party registrations to support its contention
that its mark and Registrant’s mark can coexist on the Trademark Register, arguing
that the USPTO has “repeatedly found marks capable of coexisting where the marks
differ only in that one is for reagents and the other is for pipettes.”10 A closer look at
the four sets of third-party registrations cited by Applicant reveals that they are
either not relevant to the subject application or distinguishable.
In the first and third sets of registrations, Registration Nos. 2146330 and 1569267
were cancelled more than 9, and 14 years respectively, well before the registrations
Applicant compared them to were registered. Thus, the marks registered in those
registrations never coexisted on the Register with the marks in the registrations to
which they were paired. See In re Datapipe, Inc., 111 USPQ2d 1330, 1336 n.11 (TTAB
2014) (“We have long held that cancelled or expired registrations are not evidence of
anything except that they issued.”).
The remaining two pairs of existing registrations also offer little support. Turning
to the second pair of registrations cited by Applicant, Registration Nos. 4953395 and
988374 for the mark BIOKIT, those registrations cover goods traveling in two

10 Applicant’s Appeal Brief pp. 7-8 (4 TTABVUE 8-9) citing Registration Nos. 4592827 and
2146330; Registration Nos. 4953395 and 988374; Registration Nos. 4199264 and 1569267;
and Registration Nos. 4524859 and 3968606.
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different trade channels. Registration No. 4953395 is for goods including diagnostic
reagents for medical or veterinary use while Registration No. 988374 covers kits used
for student study of biological functions of living organisms . . . including . . . pipettes.
Similarly, the fourth pair of registrations, Registration Nos. 4524859 and 3968606
for the mark RESOLUTION, also involve goods traveling in different trade channels.
Registration No. 4524859 covers goods including systems for detecting pathogens
including reagents, for non-medical purposes while Registration No. 3968606 covers
pathology specimen collection and diagnostic kits which include chemical reagents
and collection materials such as pipettes, for medical diagnostic use. Additionally,
Registration No. 3968606 includes “pathology specimen collection and diagnostic kits
for use in medical diagnostics comprising chemical reagents for medical purposes,
collection materials namely, . . . pipettes.” This registration cited by Applicant
includes medical diagnostic kits including chemical reagents and pipettes, which are
the same goods that Registrant’s registration Applicant’s application cover. Thus, this
registration further confirms the complementary relationship between Registrant’s
reagents and Applicant’s pipettes. The meager evidence submitted by Applicant falls
far short of supporting the registration of Applicant’s mark.
We find that the requisite relationship between Applicant’s and Registrant’s goods
exists in this case, such that a purchaser, familiar with Registrant’s product (or vice
versa), would believe that Applicant’s product was another product that was
associated with the same source. Registrant’s mark is registered for reagents used in
scientific, research, medical diagnostic, clinical, and medical laboratory uses which
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are closely related to Applicant’s “laboratory equipment, namely pipette tips.” The
fact that the parties’ goods are not identical is not determinative. The evidence
submitted by the Examining Attorney confirms that the parties’ goods used in
laboratories are complementary and related in a manner such that confusion is likely.
Here, Applicant’s mark is identical to the Registrant’s mark and is placed on related
goods. Thus, the second du Pont factor weighs in favor of a finding of likelihood of
confusion.
C. Trade Channels and Purchasers
Applicant contends its goods, which are different from Registrant’s goods, are
provided to different purchasers through different trade channels.11 Applicant argues
that “there is no overlap in the purchasing public for these goods” because of the
specialized knowledge of chemistry that is required for purchasing “reagents” vs.
purchasing “pipettes” such that those “purchasing pipettes would not be expected to
have this specialized knowledge of reagents” and “those purchasing reagents would
not be expected to have the specialized knowledge required to purchase pipettes.”12

11 Applicant’s Appeal Brief p. 2 (4 TTABVUE 3).
12 Applicant’s Appeal Brief, pp. 3-4 (4 TTABVUE 4-5). Inasmuch as the materials attached to
Applicant’s Brief have been excluded, Applicant’s arguments on pages 4-5 of its Brief
regarding the knowledge that purchasers of reagents and pipettes would have regarding such
goods are unsupported and disregarded. Attorney argument is no substitute for evidence.
Zheng Cai, d/b/a Tai Chi Green Tea Inc. v. Diamond Hong, Inc., ___ F.3d ___, 127 USPQ2d
1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 76
USPQ2d 1616, 1622 (Fed. Cir. 2005)).
Additionally, the two cases Applicant relies on in support of its argument that “[c]ourts have
often used a lack of overlap in [the] purchasing public as a basis for finding no relatedness of
goods and services, and no likelihood of confusion, despite a high similarity of the respective
marks” are not relevant to the facts of this case. Elec. Design & Sales, Inc. v. Elec. Data Sys.
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392-93 (Fed. Cir. 1992) and Edwards Lifesciences
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Despite Applicant’s argument, there is nothing that identifies who Registrant’s or
Applicant’s purchasers are.
Neither the identification of goods in Applicant’s application or in the cited
registration include any restrictions as to the nature, type, channel of trade, or classes
of purchasers of the goods. When the identification of goods does not include any
limitation as to the trade channels or class of purchasers for the listed goods, it is
presumed that the goods move in all channels of trade which would be normal
therefor, and that they would be purchased by all potential buyers thereof. See e.g.,
Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722; In re Jump Designs, LLC,
80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Given the relatedness of Applicant’s goods and Registrant’s goods and the lack of
any restrictions in their identifications as to trade channels or purchasers, it is more
likely than not that they would be offered to at least some of the same class of
purchasers through some of the same trade channels. In re Research & Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); In re Total Quality Grp., 51 USPQ2d
at 1477; In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988).

Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010), the cases cited by Applicant
at page 5, involved non-identical marks. Moreover, in those inter partes decisions unlike in
the present ex parte case, the Federal Circuit and the Board considered evidence introduced
regarding the purchasers of the goods of the parties. Similarly, the Hewlett-Packard Co. v.
Human Performance Measurement Inc., 23 USPQ2d 1390 (TTAB 1991) and Astra Pharm.
Prods., Inc. v. Beckman Instruments, Inc., 718 F.2d 1201, 220 USPQ 786, 790 (1st Cir. 1983),
cases discussed at page 6 of Applicant’s Brief also considered evidence relating to purchasers
of the goods. In this case however, the Board is limited to the identifications of goods set forth
in Applicant’s application and Registrant’s registration which do not identify the purchasers.
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Moreover, even if we were to find that the goods are somewhat expensive and/or
that some care would be taken in purchasing the goods, it is well-settled that even
careful purchasers who are knowledgeable as to the goods are not necessarily
knowledgeable in the field of trademarks or immune to source confusion arising from
the use of identical marks on or in connection with related goods. In re Davey Prods.
Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009); see also In re Wilson, 57 USPQ2d at
1866 (the sophistication and care of purchasers under the fourth du Pont factor is not
controlling in this case, and it does not render these purchasers immune to source
confusion arising from use of these highly similar marks on related goods); In re Total
Quality Grp., 51 USPQ2d at 1477 (“[E]ven careful purchasers are not immune from
source confusion”); In re Decombe, 9 USPQ2d at 1814-15 (being knowledgeable and/or
sophisticated in a particular field does not necessarily endow one with knowledge and
sophistication in connection with the use of trademarks); In re Hester Indus., Inc.,
231 USPQ 881, 883 (TTAB 1986) (“While we do not doubt that these institutional
purchasing agents are for the most part sophisticated buyers, even sophisticated
purchasers are not immune from confusion as to source where, as here, substantially
identical marks are applied to related products.”).
In view of the foregoing, Applicant’s and Registrant’s related goods are presumed
to travel in the same channels of trade to the same class of purchasers.
III. Conclusion
Applicant’s mark is identical to the cited mark, the goods of Applicant and the
cited Registrant are related and may be encountered and used together, and in the
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absence of any recited limitations they are presumed to be available to the same
purchasers in the same trade channels. Thus, the similarities between the marks and
the goods are so great as to create a likelihood of confusion.
Decision: The refusal to register Applicant’s mark ECLIPSE under § 2(d) of the
Trademark Act is affirmed.