Microcal, Inc.

Trademark Trial and Appeal Board

Sep 20, 1999

No. 75075318 (T.T.A.B. Sep. 20, 1999)

Paper No. 18
BAC
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF
THE TTAB SEPT. 20,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Microcal, Inc.
________
Serial No. 75/075,318
_______
Donna M. Weinstein of Fish & Richardson P.C. for Microcal,
Inc.
Cheryl L. Steplight, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Cissel, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Microcal, Inc. has filed an application to register on
the Principal Register the mark MICROCAL for “scientific
instruments, namely, calorimeters; computer software
Ser. No. 75/075318
2
programs for the collection, analysis, and presentation of
scientific data, and user manuals sold as a unit.”1
Registration has been finally 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 goods, so
resembles the registered mark MICROCAL for “laboratory
measuring equipment, namely multifunction processor and
calibrator for use in measuring and simulating temperature
signals, thermocouples, platinum thermometers, resistance
measurements, milliampres and millivolts,”2 as to be likely
to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.3
Both applicant and the Examining Attorney filed a brief.
Applicant did not request an oral hearing.

1 Application Serial No. 75/075,318, filed March 20, 1996. The
application was filed based on a claimed date of first use and
first use in commerce (for calorimeters) of April 4, 1978.
2 Reg. No. 1,454,932, issued September 1, 1987, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed dates of first use and first use in commerce are October
23, 1983.
3 Subsequent to applicant’s filing of its brief, the newly-
assigned Examining Attorney requested a remand under Trademark
Rule 2.142(d) in order to place additional evidence in the
record. The Board granted the request; and the Examining
Attorney issued a further Office action on July 28, 1998. The
Board resumed the appeal, and allowed applicant time to submit a
supplemental brief and rebuttal evidence to that submitted by the
Examining Attorney. Applicant did not file anything in response.
The Examining Attorney filed her brief, and applicant did not
file a reply brief.
Ser. No. 75/075318
3
We affirm the refusal to register. In reaching our
decision we have considered all of the relevant du Pont4
factors.
The involved marks are identical. “The greater the
similarity in the marks, the lesser the similarity required
in the goods or services of the parties to support a
finding of likelihood of confusion.” 3 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §23:20.1
(4th ed. 1999). See also, In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
We turn to a consideration of the cited registrant’s
goods and applicant’s goods. Applicant’s position is that
the goods are not closely related as “Registrant’s MICROCAL
goods deal with the measurement of temperature, whereas
Applicant’s MICROCAL calorimeters measure heat, not
temperature” (brief, p. 1); and that registrant’s mark is
highly suggestive of its goods and therefore is entitled to
a narrow scope of protection, as evidenced by two third-
party registrations for the mark MICROCAL in Class 9.5
Applicant submitted (i) the Merriam-Webster’s
Collegiate Dictionary (10th ed.) definition of “micro” as

4 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
5 Applicant did not properly make the two third-party
registrations of record. Rather, applicant merely listed the two
Ser. No. 75/075318
4
“1. very small; esp.: microscopic 2. involving minute
quantities or variations”; and (ii) the Van Nostrand’s
Scientific Encyclopedia (8th ed.) definition of
“calorimetry” which opens with “The study of heat as
contrasted with temperature....”
The Examining Attorney argues that the parties’ goods
are clearly related inasmuch as registrant’s goods include
processors and calibrators which measure temperature, and
one of the items listed in applicant’s identification of
goods is calorimeters, which measure heat; that both of
these are scientific instruments which can be used together
by the same consumers in a laboratory; that even if the
purchasers and users of these goods are scientists,
technically sophisticated purchasers are not immune from
source confusion; and that the channels of trade are not
restricted in either the application or the cited
registration.
In support of this position, the Examining Attorney
submitted (i) the McGraw-Hill Concise Encyclopedia of
Science & Technology (2nd ed.) definition of “heat” which
reads, in part, as follows: “heat is that form of energy
in transit due to a temperature difference between the

registrations in the body of papers filed in this case. See In
re Smith and Mehaffey, 31 USPQ2d 1531, footnote 3 (TTAB 1994).
Ser. No. 75/075318
5
source from which the energy is coming and the sink toward
which the energy is going.”; (ii) copies of several third-
party registrations, which issued on the basis of use in
commerce, to show that a single entity has adopted a single
mark for both calorimeters and thermometers; (iii) copies
of numerous excerpted stories from the Nexis database to
demonstrate the close connection between calorimeters and
temperature measurements; and (iv) copies of pages from
applicant’s website wherein applicant extensively discusses
temperature in relation to calorimetry.
It is well settled that goods need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods are related in some manner or that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons in situations
that would give rise, because of the marks used thereon, to
a mistaken belief that they originate from or are in some
way associated with the same producer or that there is an
association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Ser. No. 75/075318
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The record before us establishes that the respective
goods of the parties are related. Specifically,
registrant’s products are “laboratory measuring equipment,
namely, multifunction processor and calibrator for use in
measuring and simulating temperature signals,
thermocouples, platinum thermometers, resistance
measurements, milliampres and millivolts” measures (at
least in part) temperature; whereas one of applicant’s
listed items is “scientific instruments, namely,
calorimeters” which measure heat.
The fact that applicant has shown the scientific
definition of calorimetry [Van Nostrand’s Scientific
Encyclopedia (8th ed.)] to be the study of heat (not
temperature), does not persuade us that these goods are
unrelated for purposes of our analysis of whether confusion
is likely. In any event, we note that the same dictionary
definition of “heat” includes the following statement:
To determine the heat of
combustion of a fuel, a representative
sample is burned in a high-pressure
oxygen atmosphere within a metal bomb
or pressure vessel. The energy
released by this combustion is
absorbed within the calorimeter and
measured in terms of temperature
change within the calorimeter. The
heat of combustion of the sample is
obtained by multiplying the
temperature rise of the calorimeter by
a previously determined energy
Ser. No. 75/075318
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equivalent or heat capacity for the
instrument. (Emphasis added.)
In addition, applicant’s website includes the
following representative statements:
Differential Scanning Calorimetry
(DSC) is an instrumental method used
to measure conformational energy in
macromolecules. This is accomplished
by ‘scanning up’ in temperature and
measuring the difference in heat
generated in a sample and reference
cell.;
...the superb stability of the
VP-DSC permits constant temperature
use over extended time periods thus
opening new uses and applications
using the system in its isothermal
mode.; and
During a DSC experiment, a sample
is heated over a range of
temperature....
Moreover, while third-party registrations are not
evidence of commercial use of the marks shown therein, or
that the public is familiar with them, the third-party
registrations submitted by the Examining Attorney which
individually cover a number of different items and which
are based on use in commerce, have some probative value to
the extent they suggest that the listed goods emanate from
a single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988).
Ser. No. 75/075318
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While the involved goods clearly are not identical,
the record shows that both applicant’s calorimeters and
registrant’s calibrators and thermometers are related
scientific/laboratory equipment (the former used to measure
heat by changing the temperature and the latter used to
measure temperature).
Applicant has included no restriction to trade
channels or purchasers in its identification of goods.
Thus, the Board must consider that the parties’ respective
goods could be offered and sold to the same classes of
purchasers through all normal channels of trade. See In re
Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Even assuming that the purchasers and users of the
goods in question in the instant case are technically
sophisticated, and may readily understand any differences
between the functions of these different devices, this does
not mean that such purchasers and users are immune from
confusion as to the origin of the respective goods,
especially when sold under the identical mark. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); Aries Systems Corp. v. World
Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB 1992); In re
Pellerin Milnor Corporation, 221 USPQ 558 (TTAB 1984); and
Ser. No. 75/075318
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Aerojet-General Corporation v. American Standard, Inc., 171
USPQ 439 (TTAB 1971).
Based on the relatedness of registrant’s goods with
one of the items listed in applicant’s identification of
goods,6 and the similarity of the trade channels and
purchasers, we find that there is a likelihood that the
purchasing public would be confused when applicant uses the
identical mark for scientific instruments, namely,
calorimeters.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
B. A. Chapman
C. M. Bottorff
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

6 Likelihood of confusion must be found if the purchasing public,
aware of the registrant’s mark for its goods, and seeing the mark
on any item that is in the applicant’s identification of goods,
is likely to believe that registrant is the source of such item.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981).
Ser. No. 75/075318
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