Life Enhance-ment Tech-nologies, Inc.

Trademark Trial and Appeal Board

Apr 13, 2004

No. 75571172 (T.T.A.B. Apr. 13, 2004)

Mailed: April 13, 2004
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Life Enhancement Technologies, Inc.
________
Serial No. 75571172
_______
Edward S. Wright of Law Offices of Edward S. Wright for
Life Enhancement Technologies, Inc.
Katherine Stoides, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______
Before Quinn, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 15, 1998, Life Enhancement Technologies,
Inc. (a California corporation) filed an application to
register on the Principal Register the mark ISOWEAR for
goods amended to read “garments with heat exchangers
through which a fluid is circulated to warm or cool the
body, namely, shirts, pants, vests, jackets and caps.” The
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75571172
2
application is based on applicant’s assertion of a bona
fide intention to use the mark in commerce.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark ISOSPORT for “slippers, hats,
gloves and scarves,”1 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (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. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
1 Registration No. 2349044, issued May 9, 2000 to “totes Isotoner
Corporation.”
Ser. No. 75571172
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The Examining Attorney essentially argues that the
word “ISO” is the dominant portion of both the cited
registered mark and applicant’s mark, with the descriptive
words “sport” and “wear” having little, if any, trademark
significance; that the marks are similar in sound,
appearance and connotation, and they create similar
commercial impressions; that one item of the registrant’s
and applicant’s respective goods (“hats” and “caps”) is
legally identical and the remainder are related clothing
items; and that the goods are sold to the same classes of
purchasers through the same channels of trade.
Applicant contends that the marks share only the
prefix “‘ISO’ which in the English language is a common
prefix which indicates an equality in temperature when used
in a thermal context” (brief, p. 2 -- referring to
Webster’s Third New International Dictionary of the English
Language (Unabridged) (1993)); that when considered in
their entireties, the marks are quite different in sound
and appearance, they connote different things, and they
create different commercial impressions; that “there are
literally hundreds of ‘ISO’ marks which are the subject of
current registrations or pending applications” in the USPTO
Ser. No. 75571172
4
trademark database (brief, p. 3); that the Examining
Attorney has overlooked a critical difference in the goods,
namely, that applicant’s garments have heat exchangers
through which a fluid is circulated to cool or warm the
body; and that applicant’s goods are marketed to people
“looking for something beyond ordinary gloves and scarves
and therefore move in different channels of trade” (brief,
p. 3).
Preliminarily, we note two evidentiary matters.
First, in applicant’s February 15, 2002 response to an
Office action (p. 1) and in its brief (p. 2), applicant
referred to a Webster’s Third New International Dictionary
of the English Language (Unabridged) (1993) definition with
reference to “isotherm,” but no copy thereof is included in
the record. However, the Board has a copy of that
particular dictionary, and we take judicial notice of the
following definitions found therein: (i) “isothermal” as
“adj. 1: of, relating to or marked by equality of
temperature…”; and (ii) “iso” as “adj. : isomeric; esp:
having a branched chain <~ acids with branching methyl
groups> -- compare IS.”
Second, applicant contends that there are numerous
other “ISO” marks, but this assertion is unsupported as
applicant did not submit the results of any search of the
Ser. No. 75571172
5
USPTO database. Applicant asserts that there are hundreds
of “ISO” registrations and applications, but applicant did
not assert they were in the clothing field; and in fact,
the Examining Attorney contends that “the [cited]
registrant owns all of the marks bearing the ‘ISO’ prefix
for use on clothing.” (Brief, unnumbered p. 7.) Whether a
term is a weak mark must be determined in the context of
the particular line or field of merchandise in connection
with which the mark is used. See In re Bayuk Cigars
Incorporated, 197 USPQ 627 (TTAB 1977). Thus, while a term
may be weak or commonly used in one field, the same word
may be unique and possess strong trademark significance in
another field. (We point out that even if applicant had
submitted a printout of a USPTO database list, applications
are not probative evidence except to show that each
application was filed on a particular date; and any mere
listing of registrations does not make the registrations of
record. See Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB
1992); and In re Duofold Inc., 184 USPQ 638 (TTAB 1974).)
Looking first to the marks, it is obvious that they
are not identical. However, both involved marks are
constructed in a similar manner. Specifically, both marks
share the beginning term “ISO” followed by a suggestive or
descriptive term relating to clothing. The first part of a
Ser. No. 75571172
6
mark is often the part impressed upon the mind of the
purchaser, and the most likely to be remembered. See
Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895 (TTAB 1981). These marks are similar in sound and
appearance.
Relevant purchasers may note the difference in the
second syllable of these marks (“wear” and “sport”), but
they would still think these goods come from the same
source because of the parallel construction of the marks,
specifically “ISO” followed by a term relating to clothing.
That is, purchasers familiar with registrant’s slippers,
hats, gloves and scarves sold under the registered mark
ISOSPORT, upon seeing applicant’s mark ISOWEAR on shirts,
pants, vests, jackets and caps (all with heat exchangers
that carry a fluid), would assume that applicant’s goods
come from the same source as registrant’s goods, and merely
refers to a line of clothing made by registrant which
includes heat exchangers.
We do not agree with applicant that the marks carry
different connotations. The prefix in both marks is “iso”
not “isothermal.” Thus, whatever the public perceives
“iso” to mean in relation to clothing would presumably be
similar for both applicant’s and registrant’s items of
clothing.
Ser. No. 75571172
7
It is the impression created by each of the involved
marks, each considered as a whole, that is important. See
In re Dixie Restaurants Inc., supra; Kangol Ltd. v.
KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992); and Franklin Mint Corp. v. Master Manufacturing
Co., 667 F.2d 1005, 212 USPQ 233 (CCPA 1981). See also, 3
J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §23:41 (4th ed. 2001). These marks do not
create separate and distinct commercial impressions.
The minor difference is not likely to be recalled by
purchasers seeing the marks at separate times. Under
actual market conditions, consumers do not have the luxury
of a side-by-side comparison of the marks; and further, we
must consider the recollection of the average purchaser,
who normally retains a general, rather than a specific,
impression of the many trademarks encountered. Thus, the
purchaser’s fallibility of memory over a period of time
must also be kept in mind. See Grandpa Pidgeon’s of
Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573
(CCPA 1973); and Spoons Restaurants Inc. v. Morrison Inc.,
23 USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June
5, 1992).
Ser. No. 75571172
8
We find that the marks, considered in their
entireties, are similar in sound, appearance, connotation
and commercial impression.
Turning next to a consideration of the goods involved
in this case, we start with the well-settled principle that
the question of likelihood of confusion in Board
proceedings regarding the registrability of marks, must be
determined based on an analysis of the goods or services
identified in applicant’s application vis-a-vis the goods
or services recited in the registration. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N. A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). Further, it is also well
settled that goods or services need not be identical or
even competitive to support a finding of likelihood of
confusion. Rather, it is enough that the goods or services
are related in some manner or that the circumstances
surrounding their marketing are such that they would likely
be seen by the same persons under circumstances which could
give rise, because of the marks used therewith, to a
mistaken belief that they emanate from or are in some way
associated with the same producer or that there is an
association between the producers of each party’s goods or
Ser. No. 75571172
9
services. See In re Peebles Inc., 23 USPQ2d 1795, 1796
(TTAB 1992); and In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991).
In this case, applicant’s identification of goods
includes the item “caps” and registrant’s identification of
goods includes the item “hats.” Thus, the registrant and
applicant share one item that is legally identical.2 There
are also closely related items such as applicant’s “vests,
jackets” and registrant’s “gloves.”
It is true that applicant’s identification of goods
makes clear that applicant’s items of clothing all include
“heat exchangers through which a fluid is circulated to
warm or cool the body.” While purchasers would not assume
that all clothing contains heat exchangers, nonetheless,
registrant’s identification of goods is not limited to
exclude such feature, and could include the same feature as
that found in applicant’s identified goods.
We find that applicant’s clothing items with heat
exchangers and registrant’s clothing items are related
goods. See Hewlett-Packard Company v. Packard Press, Inc.,
2 Our primary reviewing Court has stated that “when marks would
appear on virtually identical goods or services, the degree of
similarity [of the marks] necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992).
Ser. No. 75571172
10
281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002)(“even
if the goods and services in question are not identical,
the consuming public may perceive them as related enough to
cause confusion about the source or origin of the goods and
services”); and Recot Inc. v. M.C. Becton, 214 F.3d 1332,
54 USPQ2d 1894, 1898 (Fed. Cir. 2000)(“even if the goods in
question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind
of the consuming public as to the origin of the goods. It
is this sense of relatedness that matters in the likelihood
of confusion analysis.”).3
These goods, as identified, would be sold in the same
or at least overlapping channels of trade to the same or
overlapping classes of purchasers.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
3 The issue is not whether purchasers would confuse the goods,
but rather whether there is a likelihood of confusion as to the
source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB
1984).