Millipore Corp.v.APS Water Services Inc.

Trademark Trial and Appeal Board

Aug 12, 2003

No. 91122225 (T.T.A.B. Aug. 12, 2003)

Mailed: August 12, 2003
Hearing: Paper No. 17
June 3, 2003 BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Millipore Corporation
v.
APS Water Services Inc.
_____
Opposition No. 122,225
to application Serial No. 75/935,347
filed on February 16, 2000
_____
Susan G.L. Glovsky of Hamilton, Brook, Smith & Reynolds,
P.C. for Millipore Corporation.
Charles H. Melville of Strauss & Troy for APS Water Services
Inc.
______
Before Seeherman, Hohein and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
An intent-to-use application has been filed by APS
Water Services Inc. (a California corporation) to register
the mark LABWATER.COM for “laboratory water purification
units and filters” in International Class 9.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 122225
2
Millipore Corporation (a Massachusetts corporation) has
opposed the application, alleging that opposer is the owner
of the mark LAB WATER for use on laboratory water
purification units and filters; that opposer has
continuously used the mark LAB WATER in connection with
laboratory water purification units and filters since prior
to 1997; that opposer’s “LAB WATER trademark is of
significant value to Opposer as an identification of source
in connection with the promotion and offering of its goods
and services” (paragraph 4); that opposer’s LAB WATER mark
distinguishes its goods and services from those of others;
that “Applicant’s products include replacement purification
units for Opposer’s apparatus” (paragraphs 6); that
Applicant is marketing its LABWATER.COM products to
customers of Opposer’s products” (paragraph 7); and that
applicant’s mark, when used on or in connection with its
goods, would so resemble opposer’s previously used mark as
to be likely to cause confusion, mistake, or deception.
Applicant, in its answer, admits that “its products
include replacement purification units for Opposer’s
apparatus,” but denies the remaining salient allegations of
the notice of opposition. Applicant also asserts the
Opposition No. 122225
3
“affirmative defenses” of (i) opposer’s failure to establish
its standing, and (ii) “laches and acquiescence.”1
The record consists of the pleadings; the file of the
opposed application; opposer’s testimony, with exhibits, of
(i) Patricia A. Nassau, opposer’s marketing services manager
for the Americas, Lab Water Division, and (ii) Gary A.
O’Neill, Ph.D., opposer’s director of clinical and OEM
business; and applicant’s testimony, with exhibits, of
Mitchell Wilson, applicant’s founder and president, who is
also a former employee of opposer.
Both parties have filed briefs on the case; and both
parties were represented at the oral hearing held before the
Board on June 3, 2003.
Preliminary Matters
First, we will determine applicant’s objection on the
basis of hearsay to the testimony of opposer’s witness Dr.
Gary O’Neill with regard to two asserted instances of actual
confusion.2 (Applicant’s brief, p. 13, footnote 5). Dr.
O’Neill testified that the two involved instances were
reports entered into opposer’s computerized customer
1 The issue of opposer’s standing, being an element of opposer’s
case, will be determined later in this decision. Applicant’s
defenses of laches and acquiescence were not tried, and were not
argued by applicant in its brief. Thus, these defenses are
considered to have been waived by applicant.
2 Although there were objections made during each of the
testimony depositions taken in this proceeding, neither party
preserved any other objection in its brief (except the one set
forth above). Thus, all other objections are considered waived.
See TBMP §707.04 (2d ed. 2003).
Opposition No. 122225
4
complaint system by opposer’s telephone support personnel;
and that he receives electronic copies of these reports
daily regarding customer complaints and problems. Inasmuch
as opposer has an internal routine customer complaint
reporting system, and the witness oversees the complaints
(at least for the division in which he works) by receiving
and reviewing all customer complaints daily, we find that
the testimony about these reports is admissible. See Fed.
R. Evid. 803(6). (However, as a practical matter, this
ruling is of little consequence as will be clear from our
decision on the issue of likelihood of confusion, infra.)
Another matter to be determined initially is what
specific issues are before the Board. Opposer pleaded only
use of “LAB WATER” as a mark used by opposer for goods and
services. In its brief and at the oral argument, opposer
argued that it had established trade name use and/or use
analogous to trademark use. Upon review of the entire
record, it is clear that these issues were tried (i.e.,
opposer’s use of the trade name “Lab Water” as a division of
opposer corporation, and opposer’s use thereof in a manner
analogous to trademark use). These issues were also argued
by both parties in their briefs on the case and at oral
argument. Thus, the notice of opposition is deemed amended
to conform to the evidence pursuant to Fed. R. Civ. P. 15(b)
to include a claim of opposer’s prior trade name use and of
Opposition No. 122225
5
use analogous to trademark use. See TBMP §507.03(b) (2d ed.
June 2003). To be clear, opposer’s claim is likelihood of
confusion based on prior common law rights in “LAB WATER” as
a trademark, service mark, trade name and use analogous to
trademark use.
Applicant did not plead as an affirmative defense that
opposer’s asserted mark is merely descriptive. However,
again it is clear that the issue was tried by the parties
and was argued in their briefs as well as at oral argument.
Accordingly, applicant’s answer to the notice of opposition
is deemed amended to conform to the evidence pursuant to
Fed. R. Civ. P. 15(b) to include an affirmative defense that
opposer’s mark is merely descriptive. Specifically, we
consider applicant’s answer to include the affirmative
defense that opposer’s mark and trade name “LAB WATER” is
neither inherently distinctive nor has it acquired
distinctiveness for laboratory water purification units and
filters and, thus, because opposer has only a merely
descriptive term, it lacks rights on which it can base a
claim of priority and likelihood of confusion.
The Parties
Opposer, Millipore Corporation, is a high-tech
corporation with divisions such as Analytical, BioProcess,
Opposition No. 122225
6
Lab Water, and Microelectronics.3 According to Dr. Gary
O’Neill, when he joined the company in 1990 there was a
3 The Microelectronics Division was sold in April 2001 (Nassau
dep., pp. 112-113, 160).
Opposition No. 122225
7
product line within the Analytical Division called “the lab
water products,” which were “a series of products, systems,
consumables and services that were sold to users of high
purity water in the laboratory.” (Dep., pp. 18-19.) Over
time this single product line within a division became its
own separate operating division, with the announcement of
the formation of the Lab Water Division on December 30,
1994. (Opposer’s Exhibit 42.) This division of opposer
corporation designs and manufactures water purification
products, consumables and accessories. The products (e.g.,
water systems, filters, UV lamp accessories, storage
reservoirs, spare parts) are used by opposer’s customers
“for the production of varying qualities of pure water.”
Opposer also offers “validation services” and “field
service.” (Nassau dep., pp. 17, 18 and 21.) Opposer does
not sell water.
The customers for opposer’s involved goods and services
are “in general lab markets [and] clinical lab markets” and
“end users, lab managers, lab supervisors, facilities
managers, and purchasing agents” (Nassau dep., p. 14).
“Scientists and researchers in university, pharmaceutical,
and environmental research settings, both university and
industry settings; and ... clinical laboratory personnel,
laboratory managers and laboratory supervisors in hospital
Opposition No. 122225
8
settings” are all customers for the involved goods and
services. (O’Neill dep., pp. 72-73.)
According to opposer’s two witnesses, opposer has used
“LAB WATER” as a mark for products and services sold to
users of high purity water in the laboratory since 1990
(O’Neill dep., p. 19); and as the name of a corporate
division since 1994. Again, according to these witnesses,
the term “LAB WATER” is used in all mailings to customers,
at trade shows, in articles written for journals, in
“Applications Notes” issued by opposer’s various divisions,
and on opposer’s Internet web site (which was developed in
1994, with the Lab Water products being the first products
listed thereon) (O’Neill dep. pp. 21 – 22). “Millipore Lab
Water Systems” appears on the back of t-shirts sent to
customers in North America who responded to an offer in
opposer’s “Waterline” publication. (O’Neill dep., p. 61.)
“MILLIPORE Lab Water” appears on shirts worn by opposer’s
employees at the trade show where opposer launched its “new
Milli-Q ultrapure water systems” in 2001. (Nassau dep., p.
67.)
Applicant, APS Water Services Inc., was founded in 1991
by Mitchell Wilson after he left the employ of opposer,
Millipore Corporation. Mr. Wilson worked for opposer from
1984 until 1991, working in the Analytical Division in
various jobs, including service technician, field engineer,
Opposition No. 122225
9
sales representative, customer service manager, and regional
operations manager. While at Millipore Corporation, Mr.
Wilson was responsible for “selling and installing and
maintaining water purification equipment.” (Wilson dep., p.
10.)
Applicant corporation provides “laboratory water
purification products for scientific and high technology
industries.” (Wilson dep., p. 14.)
Applicant obtained the domain name “LABWATER.COM” on
August 29, 1999 from InterNIC Registration Services.
(Wilson dep., pp. 15-16, Exhibit B). Subsequent to that
date, applicant used the mark on the website and also began
using it on its products. Mr. Wilson testified that
applicant used the term “LABWATER.COM” in these ways prior
to the filing date of its intent-to-use based application on
February 16, 2000. However, his testimony does not
precisely establish earlier dates of first use of the mark.
(Wilson dep., p. 41. See also, dep., pp. 19 and 47-50.)
Applicant has given away promotional items such as hats and
t-shirts with, inter alia, the words “LabWater.com” thereon,
all sometime after August 29, 1999.
Standing
There is no issue as to standing. Applicant
acknowledges that opposer and applicant “are competitors in
the business of supplying products, systems, and consumables
Opposition No. 122225
10
to users of high purity water in the laboratory.”
(Applicant’s brief, p. 3.) In addition, in its answer,
applicant admits that its products include replacement
purification units for opposer’s systems.4
Priority
Opposer pleaded prior common law trademark and service
mark rights in the term “LAB WATER.” Prior trade name use
as well as use analogous to trademark use were added as
claims under Fed. R. Civ. P. 15(b), as explained above.
Applicant’s affirmative defense that opposer’s use of the
term “LAB WATER” is merely descriptive and has not been
shown to be inherently distinctive or to have acquired
distinctiveness was also added under Fed. R. Civ. P. 15(b).
Finally, opposer contended that its mark and trade name is
not merely descriptive, but if the Board finds that it is
descriptive, then opposer asserted that its mark and trade
name “LAB WATER” have acquired distinctiveness.
4 Applicant did not plead but argued in its brief that opposer
cannot be damaged by any registration to applicant because
opposer’s use of “lab water” and “laboratory water” is “merely
descriptive of high purity water for use in the laboratory
environment -- the environment in which (or for which) the
products of Opposer are used, and hence clearly falls within the
definition of ‘fair use....’” as that doctrine is codified in
Section 33(b)(4) of the Trademark Act, 15 U.S.C. §1115(b)(4).
To the extent that applicant is asserting that opposer lacks
standing because of this “lack of damage,” we find this argument
to be unpersuasive. The defenses set forth in Section 33 of the
Trademark Act apply to civil actions regarding use, not
registrability. Moreover, whether or not opposer could assert
this defense if it were sued for trademark infringement has no
effect on its standing to bring this opposition.
Opposition No. 122225
11
In order to demonstrate priority opposer must establish
common law rights in a mark or trade name or use analogous
to trademark/service mark use, and if the term is held to be
merely descriptive, then opposer must establish the term had
acquired distinctiveness, prior to applicant’s first use or
constructive use date.
Applicant obtained a domain name on August 29, 1999,
and filed its intent-to-use based application on February
16, 2000. While applicant contends that it began using
“LABWATER.COM” as a trademark “shortly after” the web site
went up on the Internet (Wilson dep., p. 49), there is no
evidence of any specific date of such use. See Martahus v.
Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846,
1851-1852 (Fed. Cir. 1993). Inasmuch as the acquisition of
a domain name is not, by itself, evidence of use of the term
as a trademark, and because applicant has not proven use of
“LABWATER.COM” as a mark as of any specific date, applicant
is entitled only to the filing date of its application,
February 16, 2000, as the earliest date upon which it can
rely in this proceeding.
A party asserting a claim under Section 2(d) of the
Trademark Act must establish prior use of a trademark, or
service mark, or trade name or other indication of origin.
See Towers v. Advent Software Inc., 913 F.2d 942, 16 USPQ2d
Opposition No. 122225
12
1039 (Fed. Cir. 1990); and Otto Roth & Co. v. Universal
Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981).
Under the case of Otto Roth & Co. v. Universal Foods
Corp., supra, 209 USPQ at 43, a plaintiff opposing
registration of a trademark on the ground of likelihood of
confusion with the plaintiff’s own unregistered term cannot
prevail unless the plaintiff shows its term is distinctive
of its goods, either inherently, or through acquired
distinctiveness, or through “whatever other type of use may
have developed a trade identity.”
We consider first whether, and if so, when, opposer
established common law trademark/service mark, trade name or
use analogous to trademark/service mark use. The record
shows that opposer offered to laboratory users of high
purity water a line of “lab water products” (consisting of
“products, systems, consumables and services”) (O’Neill
dep., pp. 18-19) through its Analytical Products Division in
1990. Further, opposer created a Lab Water Division which
was publicly announced on December 30, 1994.
However, having carefully reviewed all of the
documentary and testimonial evidence, we find that “LAB
WATER” is a merely descriptive term for laboratory water
purification units and filters, and that opposer’s uses
would not be viewed by the consuming public as a trademark
for such goods. Further, there is no evidence of opposer’s
Opposition No. 122225
13
asserted service mark of “LAB WATER,” and there is no
convincing evidence of use analogous to trademark use.
First, the term “lab water” is merely descriptive of
opposer’s goods. Although we are aware that opposer does
not sell water, it is clear that opposer sells systems and
products used by its customers to achieve various grades of
purity in the water used in their laboratories, and that
“lab water” is a term used to refer to such products or
systems and to the water that is produced by the use of such
equipment.5 See, for example, the following uses by
opposer:
The time is right to buy a new water
purification system for your lab. If
you act now, any Millipore lab water
system purchase you make will be
discounted by an additional 8% beyond
your already low GSA pricing.
Opposer’s Exhibit No. 3 (a GSA pricing
flier);
More than 75 percent of Millipore’s
products are consumables. Take this new
lab water purification system. ...; All
laboratories need pure water. ... Over
the past twenty-five years we have built
a strong brand name with our Milli-Q
Water Purification systems. ... Every
laboratory needs a lab water
purification system. ....
Opposer’s Exhibit No. 16 (excerpts from
annual reports);
Pure Science It’s our total dedication
to improving productivity, whether
you’re developing assays or
5 We have emphasized uses which are seen by customers and
potential customers, rather than uses which are for internal use
at opposer corporation.
Opposition No. 122225
14
decontaminating fluids. It’s our focus
on fitting a system to your application,
from designing screening plates
compatible with your robots to
customizing lab water systems to your
particular process....
Opposer’s Exhibit No. 30 (opposer’s
1999/2000 catalog);
Milli-Q Ultrapure Water Systems
... Millipore’s new Explore Data
software allows users to access their
lab water system through a computer
interface, and is incorporated in both
Milli-Q and Elix systems.
Opposer’s Exhibit No. 34 (opposer’s
2001-2002 catalog); and
Millipore offers you a free luncheon
invitation...Get all the pure water you
need...Millipore has the right
purification systems for your high-
purity lab water applications....
Dear Colleague,
...We would like the opportunity to
share our knowledge of lab water with
you and help identify the best water
purification system for your
application....
Sincerely,
Glen Gagnon
Director of Sales and Service
Lab Water Division
(Exhibit No. 37 introduced in cross-
examination at Nassau dep., copy of a
promotion-direct mailer/flier, and a
copy of a fulfillment letter sent with
literature as a follow up to the
promotion).
In these examples, opposer does not use the term in the
manner of a trademark. Even in those examples in which
opposer has capitalized the term, the use is, at best,
ambiguous. That is, it is more likely that consumers will
Opposition No. 122225
15
view the term “lab water” as merely describing the purpose
of the system. See, for example:
Millipore’s new generation of laboratory
water systems utilize a range of
traditional and emerging technologies...
Millipore’s Lab Water Specialists have a
wealth of information you won’t find
anywhere else. Dial 1-800-MILLIPORE ...
to speak with a Millipore lab water
expert.
Opposer’s Exhibit No. 28 (opposer’s 1999
U.S. price list);
You can count on Millipore Lab Water
Experts. ... We’re Your Source for Pure
Lab Water. ...Millipore systems combine
the latest water purification
technologies. Milli-Q ultrapure water
systems incorporate... . Contact a lab
Water expert today....
Opposer’s Exhibit No. 33 (opposer’s
Spring 2000 catalog);
as well as the following wording on displays at opposer’s
trade show booths (e.g., the Experimental Biology Trade
Show, PITTCON, and “table-top” booths at local one-day trade
shows or customer events):
“MILLIPORE Your Lab Water Application
Specialists” and “MILLIPORE Your Life
Science Applications Specialists”
(Opposer’s Exhibit No. 9);
“MILLIPORE
Engineered Lab Water Systems” and
“New! Milli-Q Element for ICP-MS
Water for Ultra Trace Analysis” and
“New! Simplicity
Personal Water Systems”
(opposer’s Exhibit No. 10);
Opposition No. 122225
16
“MILLIPORE
New Lab Solutions” and
“Lab Water Solutions
Biotech Applications”
(Opposer’s Exhibit No. 11);
“Lab Water Product Selection Guide”
(Opposer’s Exhibit No. 12); and
“Engineered Lab Water Systems
-Turnkey A7E Lab Designs from the Water
Experts
...
-General Lab to Ultrapure Water Quality”
(Opposer’s Exhibit No. 13).
The testimony of the various witnesses also militates
against a finding that opposer has either regarded or
promoted “LAB WATER” as a trademark. Ms. Patricia Nassau,
opposer’s marketing services manager for the Americas Lab
Water Division, employed by opposer since 1994, was asked on
cross-examination if there were any instances where she,
being responsible for correct usage of the symbols “TM,”
“SM” and “,” used any of these symbols with “Lab Water.”
The answer was “No.” (Nassau dep., p. 154). She was also
asked if she knew of any instance where opposer included
“lab water” or “laboratory water” in the legend on any of
its publications listing trademarks, and she testified that
she could not recall any. She also testified that opposer
did not use a “TM” or “SM” or “” by the words “lab water”
or “laboratory water.” (Nassau dep., pp. 202-204.)
Dr. Gary O’Neill, opposer’s director of clinical and
OEM business, employed by opposer since 1990, testified that
Opposition No. 122225
17
part of his job is selecting trademarks and checking with
legal counsel thereon; that he never checked with legal
counsel about “lab water” or “laboratory water” as
trademarks (O’Neill dep., pp. 85-87); and that he had no
knowledge of any instance where “lab water” or “laboratory
water” appeared on any of opposer’s packaging or boxes or
labels (O’Neill dep., pp. 98-99).
Applicant’s witness, Mitchell Wilson, applicant’s
founder and president, testified that during his six years
working for opposer, Millipore Corporation (1984-1991), he
wrote sales literature, gave quotations, and wrote
narratives on system designs; that Millipore had a policy
regarding use of trademarks and signifying a term as a
trademark and giving credits at the bottom of the documents;
and that during his time at Millipore, “lab water” was
frequently used but never as a trademark. (Wilson dep., pp.
11-13.) Although it is not clear to what extent opposer
used the term “LAB WATER” prior to Mr. Wilson’s departure,
his testimony does show that opposer had a settled policy
regarding trademark use, and the testimony of opposer’s
witnesses shows that this policy was apparently not followed
for the term “LAB WATER.”
In view of this evidence, we find that “LAB WATER” is a
merely descriptive term, and that consumers would not regard
opposer’s use of the term as a trademark. Thus, we find
Opposition No. 122225
18
that opposer has failed to demonstrate that “LAB WATER” has
acquired distinctiveness as opposer’s trademark.
With respect to opposer’s claim of service mark rights
in “LAB WATER,” there is no evidence in the record of any
service mark use whatsoever. As for use analogous to
trademark use, in order to establish use analogous to
trademark use, opposer must establish that “the analogous
use is of such a nature and extent as to create public
identification of the target term with the opposer’s product
or service.” T.A.B. Systems v. PacTel Teletrac, 77 F.3d
1372, 37 USPQ2d 1879, 1881 (Fed. Cir. 1996). When the
evidence falls short of establishing the critical inference
of identification in the mind of the relevant consumers,
then analogous use has not been established. See Old Swiss
House, Inc. v. Anheuser-Busch, Inc., 569 F.2d 1130, 196 USPQ
808 (CCPA 1978). For the same reasons we have found there
is no trademark use, we find that opposer has not
demonstrated use analogous to trademark use. That is,
opposer’s uses of “LAB WATER” are either merely descriptive
uses or are ambiguous uses at best.
In summary, we find that this record does not support
trademark use, or service mark use (there being virtually no
evidence of use of the term as a service mark), or use
analogous to trademark use, and thus opposer has not
established common law rights in “LAB WATER” as a mark.
Opposition No. 122225
19
Further, we find that opposer’s use of the term “LAB WATER”
on its involved goods to be merely descriptive of the
purpose or function of opposer’s products, i.e., producing
grades of purified water for use in the laboratory. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 1215
(CCPA 1978.)
Turning then to opposer’s claim of prior trade name
use, we find that opposer has established trade name use of
the term “LAB WATER” through its continuous use since
December 30, 1994 of the term as the name of its “Lab Water
Division.” See Swingline, Inc. v. Ardco, Inc., 215 USPQ 436
(TTAB 1982). We recognize that this trade name use has not
been totally consistent. Specifically, opposer has
sometimes used “Laboratory Water Division” (see e.g.,
opposer’s Exhibit No. 17-pages M 00207, M 00213, M 00219 and
M 00226 (fulfillment letters), and opposer’s Exhibit Nos.
53-55 (“Waterline” newsletters). Nonetheless, we find this
record establishes that opposer organized a “Lab Water
Division” in late 1994 and has continuously used “Lab Water”
as the name of one of opposer’s divisions.
Because we find that opposer has established trade name
use, we must now determine, due to the mere descriptiveness
of the name “LAB WATER,” whether opposer has established
acquired distinctiveness of its descriptive trade name prior
to the filing date of applicant’s application. This has not
Opposition No. 122225
20
been done. Opposer has the burden of establishing a prima
facie case that its trade name has become distinctive. See
Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). There is
no specific rule as to the exact amount or type of evidence
necessary at a minimum to prove acquired distinctiveness.
However, the more highly descriptive the term, the greater
the evidentiary burden to establish acquired
distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha, supra at 1008. See also, 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §15:28 (4th
ed. 2001).
Opposer points to several facts it contends establish
it has acquired distinctiveness in “Lab Water/Lab Water
Division.” These include use of the term for ten years
prior to the filing date of applicant’s application, annual
sales figures, annual advertising costs, and the scope of
its publicity. However, although Dr. O’Neill testified that
when he joined opposer they had a product line called the
lab water products (O’Neill dep., p. 19), there is no
evidence of trademark or service mark or trade name use of
“Lab Water” in 1990, and in fact, the products under this
line were referred to as “product line L1.” (O’Neill dep.,
Opposition No. 122225
21
p. 25.) The Lab Water Division was not established until
December 30, 1994.
Dr. O’Neill also testified that “the total revenues of
the Lab Water Division in North America are in the tens of
millions of dollars.” (O’Neill dep., p. 29.) Advertising
costs for North America for products and services sold by
opposer’s Lab Water Division were $405,000 in 1995, grew to
$1,161,000 in 1998, fell to $810,000 in 2000 and were
budgeted at $1,045,000 for 2001. About 90% of the
advertising figures relate to the United States, and 10% to
Canada. (O’Neill dep., p. 28-29.)
The question here is acquired distinctiveness of the
trade name “Lab Water Division.” The evidence shows no use
of the trade name on packaging and labels; and, in fact, Dr.
O’Neill testified he had never seen the term on packaging,
boxes or labels. (O’Neill dep., pp. 98-99.) Several of
opposer’s documents are internal corporate documents which
utilize “Lab Water Division,” but such documents do not
establish purchaser perception and acquired distinctiveness.
Other uses, such as those showing an executive’s name and
title above either “Lab Water Division” or “Laboratory Water
Division” are simply not convincing that this trade name has
acquired distinctiveness. Simply put, based on the evidence
of record, we cannot conclude that opposer’s sales and
Opposition No. 122225
22
advertising figures prove acquired distinctiveness of the
trade name.
Opposer characterizes the scope of publicity as
“extensive” and including “promotions, trade shows, and
seminars” and “mailings” as well as personnel wearing shirts
and t-shirts bearing “Lab Water” at trade shows (brief, p.
25). However, the evidence of record does not support
opposer’s contention. That is, this record does not reflect
significant publicity regarding opposer’s use of the trade
name “Lab Water Division.” The evidence submitted may show
some popularity or success of opposer’s overall sales of all
products offered under all of its numerous trademarks (e.g.,
Milli-Q, Elix, RiOs, Milli-RX, Milli-RO, Super-Q,
Simplicity) sold through its Lab Water Division, but it does
not establish that the trade name “Lab Water Division”
identifies and distinguishes the goods offered by opposer in
the minds of relevant purchasers and users. Opposer has
provided no evidence that its publicity and/or sales efforts
have resulted in the purchasing public regarding “Lab Water”
or “Lab water Division” as opposer’s trade name and not a
merely descriptive term.
We find that opposer’s trade name “Lab Water Division”
did not acquire distinctiveness prior to February 16, 2000.
Therefore, opposer has not established priority in this
case.
Opposition No. 122225
23
Likelihood of Confusion
We have found that opposer has not established use of
“LAB WATER” as a trademark, a service mark, or use analogous
to trademark use; that while opposer has established use of
“Lab Water Division” as a trade name, it is merely
descriptive; and that opposer has not established acquired
distinctiveness of its trade name prior to applicant’s
filing date (February 16, 2000). Inasmuch as opposer has
not established priority of use, it cannot prevail herein.
Nonetheless, in the interest of rendering a complete
decision, we will determine the issue of likelihood of
confusion. The marks are essentially identical (the
appearance of “.com” in applicant’s mark is of no trademark
significance,6 and the lack of a space between the words
“lab” and “water” in applicant’s mark likewise creates no
significant difference in the marks), and the parties’ goods
include identical (laboratory water purification units and
6 We are aware of applicant’s argument that “the addition of the
‘.com’ to a contemplated mark for a product is arbitrary and does
constitute a significant difference” (brief, p. 5). However,
based on the evidence of applicant’s use of the “.com”
designation in this record, we cannot agree that that portion of
applicant’s mark carries any trademark significance. Rather, the
“.com” portion of applicant’s mark is merely part of a domain
address, and as a top level domain (TLD), it lacks trademark
significance. See 555-1212.com, Inc. v. Communication House
International, Inc., 157 F.Supp. 2d 1084, 59 USPQ2d 1453 (N.D.CA.
2001); In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002);
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002); and In
re Page, 51 USPQ2d 1660 (TTAB 1999). See also, TMEP §§1209.03(m)
and 1215.04 (3d ed. 2002)(Revised May 2003); and 1 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition, §7:17.1
(4th ed. 2001).
Opposition No. 122225
24
filters) and closely related goods. We therefore find that
there is a likelihood of confusion in this case where the
virtually identical mark is used by both opposer and
applicant on the same goods. See 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); and Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000).
Trademark Rule 2.131 Remand of Applicant’s Application
As applicant acknowledges in its brief (p. 3):
[Applicant and opposer] are competitors
in the business of supplying products,
systems, and consumables to users of
high purity water in the laboratory.
Applicant readily acknowledges that
Millipore (and everyone else in the
business) has used the words “laboratory
water” and its shorthand “lab water” to
describe what they do. These companies
do not supply products to produce
“drinking water,” but rather products to
produce very high purity “lab water” –
that is, water for use in the laboratory
where a much higher level of purity is
required.
During the testimony of applicant’s witness, Mitchell
Wilson, exhibits showing applicant’s uses were submitted.
These include such uses as the following:
Laboratory Water Purification filters
and membranes for all popular laboratory
water purification systems
...
GOT LAB WATER? http://www.labwater.com
Opposition No. 122225
25
(Applicant’s Exhibit I, sales
literature); and
One stop shopping for all your
laboratory water needs.
...
At LabWater.Com we supply high quality
laboratory water purification products
to top universities, hospitals,
pharmaceutical companies and other high
tech industries across the globe.
APS ULTRA Brand products can save you up
to 50% on replacement filters and
membranes for your Millipore, Barnstead
or other laboratory water system. We
also offer a complete range of
laboratory grade water systems.
(Emphasis in original.)
Click here for APS ULTRA brand
replacement filter catalog for
Millipore, Barnstead and Continental
Modulab water systems in PDF format.
(Applicant’s Exhibit D, pages from
applicant’s website)
In view of applicant’s acknowledgment that “LAB WATER”
is a merely descriptive term for its goods, and inasmuch as
we have found that “LAB WATER” is merely descriptive for
laboratory water purification units and filters, we hereby
remand applicant’s application Serial No. 75/935,347 seeking
to register the mark “LABWATER.COM” for “laboratory water
purification units and filters” to the Examining Attorney
pursuant to Trademark Rule 2.131 for consideration of a
refusal to register the mark under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1). See Midland
International Corp. v. Midland Cooperatives, Inc., 434 F.2d
1399, 168 USPQ 107 (CCPA 1970); and First International
Opposition No. 122225
26
Services Corp. v. Chuckles Inc., 5 USPQ2d 1628, n. 6 (TTAB
1988). See also, TBMP §805 (2d ed. June 2003).
In addition to applicant’s acknowledgement that the
term “LAB WATER” is merely descriptive of its goods, as we
have previously stated, the term “.COM” in applicant’s mark
is a reference to the TLD portion of its domain name and has
no source-indicating significance. (See footnote 6, infra.)
As TMEP §1215.04 (3d ed. 2002) states, “[i]f a proposed mark
is composed of a merely descriptive term(s) combined with a
TLD, the examining attorney should refuse registration under
Trademark Act §2(e)(1), 15 U.S.C. §2(e)(1), on the ground
that the mark is merely descriptive.”
Decision: The opposition is dismissed. However, the
application will be remanded to the Examining Attorney under
Trademark Rule 2.131 at the appropriate time (i.e.,
following the expiration of the time for appeal, or if an
appeal is filed, following the final decision thereon, if it
remains appropriate to remand).