Mighty Enterprises, Inc.

Trademark Trial and Appeal Board

Aug 21, 2000

No. 75287766 (T.T.A.B. Aug. 21, 2000)

Paper No. 10
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/21/00
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Mighty Enterprises, Inc.
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Serial No. 75/287,766
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Bill W. Lew for Mighty Enterprises, Inc.
Vivian M. First, Trademark Examining Attorney, Law Office
104 (Sidney Moskowitz, Managing Attorney).
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Before Hanak, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Mighty Enterprises, Inc. has appealed from the refusal
of the Trademark Examining Attorney to register the mark
ACURA SEIKI for goods which were subsequently identified by
amendment as “computer numerical control (cnc) machines,
namely cnc vertical machine centers, cnc horizontal machine
Ser No. 75/287,766
2
centers, cnc lathes, cnc mills; [and] metal working
machines, namely lathes, grinders and mills.”1
Registration has been finally refused pursuant to
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 AKIRA-SEIKI for
“machine tools, namely, computerized numerical control
machining centers and turning centers,”2 as to be likely to
cause confusion.
Briefs have been filed, but an oral hearing was not
requested. We affirm the refusal to register.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods.
Turning first to the goods, there is no dispute that
the goods of applicant and registrant are identical. As

1 Serial No. 75/287,766 filed April 35, 1997, alleging dates of
first use of February 1, 1994. The word SEIKI is disclaimed
apart from the mark as shown, and the application states: The
meaning of the words “ACURA SEIKI” in English is ACURA: accuracy
and SEIKI: mechanical.
2 Registration No. 2,058,333 issued April 29, 1997, claiming a
first use date of September 1, 1981. The registration states:
The English translation of “AKIRA” in the mark is “brightness”
and the English translation of “SEIKI” in the mark is “precision
machine tool”.
Ser No. 75/287,766
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such, they are presumed to travel in the same channels of
trade to the same classes of purchasers. Our principal
reviewing court, The Court of Appeals for the Federal
Circuit, has stated that, “When marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likelihood
of confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Turning then to the marks, it is applicant’s position
that the marks ACURA SEIKI and AKIRA-SEIKI are not similar
because they are spelled differently and have different
meanings.
When the goods are identical or closely related, it
has been held that: “Concerning the question of the
similarity of the marks, it is well established that
similarity in any one of the elements of sound, appearance
or meaning is sufficient to indicate likelihood of
confusion.” General Foods Corp. v. Wisconsin Bottling,
Inc., 190 USPQ 43, 45 (TTAB 1976). See also In re Mack,
197 USPQ 755 (TTAB 1977) [“It is also well settled that
similarity in any one of the elements of sound, appearance
or meaning is sufficient to indicate likelihood of
confusion.”] In this case, applicant’s mark ACURA SEIKI
Ser No. 75/287,766
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and registrant’s mark AKIRA-SEIKI are highly similar in
sound or pronunciation as well as appearance. The hyphen
in the registrant’s mark does little to distinguish the
marks and the marks otherwise differ by only two letters
(CU and KI). Because ACURA SEIKI and AKIRA-SEIKI have
similar prefixes, the identical suffix, and the same number
of syllables, the marks are extremely similar when spoken.
Given the fallibility of memory and that consumers often
retain only a general rather than specific recall of marks
to which they are exposed, the similarities in the marks
are such that, as applied to the identical goods herein,
confusion as to the origin or sponsorship of the goods is
likely to occur.
Two additional arguments made by applicant require
comment.
Applicant maintains that its mark should be registered
because its date of first use is earlier than the date of
first use alleged by registrant in the cited registration.
As pointed out by the Examining Attorney, priority is not a
consideration in an ex parte appeal. The cited
registration is entitled to certain presumptions under
Section 7(c) of the Trademark Act, and matters which
constitute a collateral attack on the cited registration
are not considered in an ex parte appeal. If applicant
Ser No. 75/287,766
5
believed it had superior rights by virtue of its prior use
of ACURA SEIKI, its remedy, as noted by the Examining
Attorney, was a petition to cancel the cited registration.
Finally, applicant asserts that it and the registrant
have used their marks concurrently without any evidence of
actual confusion, and that this shows that confusion is not
likely to occur. We are not persuaded by this argument.
Applicant has not provided any evidence as to the extent of
its use, such that we can determine whether there has been
an opportunity for confusion to occur.
Decision: The refusal to register is affirmed.
E. W. Hanak
P. T. Hairston
T. E. Holtzman
Administrative Trademark Judges
Trademark Trial and Appeal Board