Netzsch-Geratebau GmbH

Trademark Trial and Appeal Board

Sep 30, 2015

No. 79144452 (T.T.A.B. Sep. 30, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Netzsch-Geratebau GmbH
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Serial No. 79144452
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Wesley W. Whitmyer, Jr. of Whitmyer IP Group,
for Netzsch-Geratebau GmbH.
Maureen Dall Lott, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
_____

Before Zervas, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
Netzsch-Geratebau GmbH (“Applicant”) seeks registration on the Principal
Register of the mark CORONA (in standard characters) for
Machines for dynamic differential calorimetry and their
parts, machines for thermogravimetric analysis and their
parts in International Class 7, and
Scientific instruments for dynamic calorimetry, namely,
calorimeters; scientific instruments for the method of
dynamic differential calorimetry and for
thermogravimetric analysis, namely, calorimeters and
thermogravimetric measurement devices; laboratory
apparatus and instruments for use in calorimetry and
thermogravimetry being parts of calorimetry and
Serial No. 79144452
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thermogravimetry devices, namely, sample holders in the
nature of crucibles and pans for use while conducting
measurements and for use in the storage of samples in
International Class 9.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark, when used on its identified goods, so resemble the registered
marks
(1) CORONA (in standard characters) for “laboratory instruments, namely
HPLC (high pressure liquid chromatography) analyzers and parts and fittings
therefor” in International Class 9,2 and
(2) CORONA (in standard characters) for “spectrometers, and for spectrum
sensors used to determine, evaluate or measure the contents, colors, moisture
and other properties of various products and materials” in International Class
9,3
as to be likely to cause confusion, mistake or deception.
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.

1 Application Serial No. 79144452 was filed on December 7, 2013, based upon a request for
extension of protection under Section 66(a) of the Trademark Act, 15 U.S.C. § 1142(f).

2 Registration No. 3066786, owned by Dionex Corporation, registered on March 7, 2006.
Section 8 accepted, Section 9 granted; renewed.
3 Registration No. 3025261, owned by Carl Zeiss AG, registered on December 13, 2005.
Section 8 accepted, Section 9 granted; renewed.
Serial No. 79144452
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The Examining Attorney objects to evidence that Applicant submitted for the
first time with its brief on the basis that it is untimely. Applicant asserts that the
Examining Attorney has waived this objection because she discussed this evidence
in her brief. Inasmuch as the Examining Attorney discussed in her brief only
Applicant’s arguments regarding this evidence, but not the evidence itself, we find
no waiver. We therefore grant the objection and have given this evidence no further
consideration. See Trademark Rule 2.142(d), 15 U.S.C. § 2.142(d); In re Luxuria
s.r.o., 100 USPQ2d 1146, 1147-48 (TTAB 2011); In re Giovanni Food Co., 97
USPQ2d 1990, 1990-91 (TTAB 2011); see also TBMP § 1207.01 (2015).
II. Applicable Law
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the probative facts in evidence that are relevant to the factors set forth in In
re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See
also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905 (Fed. Cir. 2012); and In re
Majestic Distilling Co., 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. See Federated Foods,
Inc. v. Fort Howard Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods and differences in the marks.”). We
consider each of the factors as to which Applicant or the Examining Attorney
presented arguments or evidence. The others, we consider to be neutral.
Serial No. 79144452
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A. Comparison of the Marks
Applicant’s mark and the cited registered marks consist entirely of the word
CORONA in standard characters. The marks are identical, and Applicant does not
dispute this.
The first du Pont factor strongly favors a finding of likelihood of confusion.
B. Comparison of the Goods and Channels of Trade
With this in mind, we next consider the similarity of the goods and channels of
trade. We base our evaluation on the goods as they are identified in the application
and registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d
1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002).
Applicant argues that the goods identified in the application differ, and operate
independently, from the goods identified in each of the registrations, and that
“[n]owhere is there evidence that states once a scientist or laboratory uses a
calorimeter it must then re-evaluate its results and findings by looking to
techniques of chromatography or spectroscopy.”4 However, our primary reviewing
court instructs that “[w]hen analyzing the similarity of the goods, ‘it is not
necessary that the products of the parties be similar or even competitive to support
a finding of likelihood of confusion.’” Coach Services Inc. v. Triumph Learning LLC,

4 4 TTABVUE 38-39.
Serial No. 79144452
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668 F.3d 1356, 101 USPQ2d 173, 1722 (Fed. Cir. 2012) (citation omitted). The goods
need only be sufficiently related that consumers would be likely to assume, upon
encountering the goods under similar marks, that the goods originate from, are
sponsored or authorized by, or are otherwise connected to the same source. Id. at
1722.
In addition, the greater the degree of similarity between the marks, the lesser
the degree of similarity between the goods necessary to support a finding of
likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Where the marks are identical, as they are here, it is only necessary that there be a
viable relationship between the goods to support a finding of likelihood of confusion.
In re Concordia Int’l Forwarding Corp., 225 USPQ 355, 356 (TTAB 1983). It is
sufficient for a finding of likelihood of confusion if confusion is likely with respect to
use of the mark on any item that comes within the description of goods in the
application or registrations. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.net, Inc.,
90 USPQ2d 1393, 1397 (TTAB 2007).
As noted above, the goods identified in the application include “machines for
dynamic differential calorimetry and their parts, machines for thermogravimetric
analysis and their parts” in Class 7, and “calorimeters and thermogravimetric
measurement devices” in Class 9. We compare these goods with the “spectrometers”
identified in Registration No. 3025261 and the “laboratory instruments, namely
Serial No. 79144452
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HPLC (high pressure liquid chromatography) analyzers” identified in Registration
No. 3066786.
In support of the refusal to register, the Examining Attorney introduced into the
record with the March 31, 2014 and August 26, 2014 Office Actions evidence from
commercial Internet websites suggesting that spectrometers or chromatographic
devices on the one hand and calorimeters and/or thermogravimetric measurement
devices on the other are sold by a single source, are used in the same scientific
fields, or are complementary products in terms of purpose or function. Indeed,
Applicant’s own website discusses its
thermogravimetric measurement devices, differential scanning calorimeters,
chromatographs and spectrometers, all of which Applicant presumably offers for
sale.5
Other commercial websites include the following:
• – offering for sale thermogravimetric analyzers, and
various chromatography, calorimetry and spectrometry devices.6
• – listing “Spectroscopy,” “Chromatography” and “Thermal
Gravimetric Analysis” under “Instrumentation & Resources.” The
screenshot for the “Thermal Gravimetric analysis” webpage states: “[o]ur
system includes Thermogravimetric Analysis (TGA) coupled with Mass

5 August 26, 2014 Office Action at 58-64.
Record citations are to TTABVUE, the Trademark Trial and Appeal Board’s publicly
available docket history system. See Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476
n.6 (TTAB 2014). Citations to the prosecution history, such as the above, are displayed by
date and page number.
6 March 31, 2014 Office Action at 18-25 and 65-66; August 26, 2014 Office Action at 18-35.
Serial No. 79144452
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Spectrometry (MS). Thermal analysis combined with compositional
analysis is a powerful tool to identify evolved gas during thermal
processes.”7
• – offering for sale thermogravimetric analyzers,
calorimeters, spectrometers, chromatography devices, and chromatograph
mass spectrometer systems.8
• – discussing custom chromatography systems,
spectrophotometers and calorimeters.9
• – offering for sale various chromatographic, spectroscopic
and calorimetric devices.10
• – stating “[t]hermal gravimetric analysis can be
interfaced with a mass spectrometer RGA to identify and measure the
vapors generated ….”11
• – discussing thermogravimetric analyzers
and thermal analyzers that use spectrometers.12
• – listing thermal analysis equipment, calorimeters and
spectroscopy devices.13

7 March 31, 2014 Office Action at 29-32.
8 March 31, 2014 Office Action at 33-61; August 26, 2014 Office Action at 36-53.
9 August 26, 2014 Office Action at 70-77.
10 August 26, 2014 Office Action at 81-97.
11 March 31, 2014 Office Action at 26.
12 August 26, 2014 Office Action at 54-57.
13 March 31, 2014 Office Action at 83-91.
Serial No. 79144452
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In addition, the Examining Attorney made of record an article entitled Size-
exclusion chromatography and differential scanning calorimetry of low molecular
weight resigns used as varnishes for painting from PROGRESS IN ORGANIC COATINGS,
Volume 52, Issue 1, January 1, 2005, displayed on the
website,14 and an excerpt from the JOURNAL OF MATERIALS SCIENCE (1995) entitled
Modulated-temperature differential scanning calorimetry and Raman spectroscopy
studies displayed on the website.15 These scientific articles
demonstrate that calorimeters may be used with chromatographs and
spectroscopes.
The Examining Attorney also submitted copies of several third-party use-based
registrations which include chromatographic and/or spectroscopic apparatus on the
one hand, and calorimetric and/or thermogravimetric apparatus on the other. The
following examples are illustrative:
• Reg. No. 2322819 for various spectroscopic apparatus, gas and liquid
chromatographs, differential scanning calorimetry systems, and micro-
macro thermogravimetry systems;
• Reg. No. 3521156 for various spectrometers, chromatography apparatus
and thermal cyclers;
• Reg. No. 3778908 for various chromatographs, mass spectrometers and
differential scanning calorimeters; and

14 March 31, 2014 Office Action at 67-77.
15 March 31, 2014 Office Action at 62-64.
Serial No. 79144452
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• Reg. No. 3556835 for chromatography apparatus for laboratory use,
calorimeters, spectrometers and chromatographs.
These third-party registrations suggest that Applicant’s calorimeters and
thermogravimetric measuring devices and the goods in each of the cited
registrations (chromatographs and spectrometers) are of a kind that emanate from
a single source. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re
Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Based on the evidence of record, we find that there is a viable relationship
between the calorimeters or thermogravimetric devices identified in the application,
and the chromatographic and spectrometric devices identified in the registrations.
We further find that the “machines for dynamic differential calorimetry” and
“machines for thermogravimetric analysis” identified in Class 7 of the application
are inherently related (and possibly even identical) to the calorimeters and
thermogravimetric devices identified in Class 9 of the application. It therefore
follows that there also is a viable relationship between Applicant’s Class 7 goods
and the chromatographic and spectrometric devices identified in the registrations.
As to the channels of trade, because the identifications of goods in the
application and registrations contain no limitations as to channels of trade and
classes of purchasers, it is presumed that the goods identified therein move in all
channels of trade normal for those goods, and that they are available to all classes
of purchasers for those goods, such as scientists and laboratories. See Stone Lion,
Serial No. 79144452
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110 USPQ2d at 1161; In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). As neither
the application nor the registrations contain limitations as to the channels of trade
or classes of purchasers, and in light of the evidence of third party commercial
websites which sell the types of goods identified in the application and registrations
(see, e.g., , ), we find them to be the same
or similar. See Anderson, 101 USPQ2d at 1920.
Therefore, the second and third du Pont factors also support a finding of
likelihood of confusion.
C. Conditions of Sale and Sophistication of Purchasers
Applicant argues that its goods are expensive, and are marketed to scientists
and laboratories who are highly sophisticated and who therefore will exercise great
care in their selection. Applicant did not submit any evidence in support of these
contentions; however, we recognize that given the specialized nature of the goods,
they are likely to be not inexpensive, and subject to careful purchase. Nonetheless,
even if we accept that consumers of Applicant’s goods are knowledgeable and
sophisticated purchasers, that does not necessarily mean that they are immune
from source confusion because the marks are identical and the goods are related. In
re Decombe, 9 USPQ2d 1812 (TTAB 1988). In view thereof, while this du Pont factor
slightly favors Applicant, the identity of the marks and the similarity of the goods
identified in the application and in each registration outweigh this factor.
Serial No. 79144452
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D. Strength of the Mark
The mark CORONA appears to be arbitrary with respect to the goods identified
in the application and the registrations. Applicant has not indicated that there is
any significance to the mark, and we are not aware of any. The mark therefore
appears to be inherently strong.
Applicant argues that the existence of two identical registrations for the mark
CORONA for laboratory equipment is evidence that the mark is weak for those
goods. However, we agree with the Examining Attorney, who points out that the
two cited registered marks are the only registrations for the mark CORONA for
laboratory equipment similar to Applicant’s identified goods, and we have no way to
know if, for example, the Registrants had entered into a coexistence agreement. The
mere existence of two identical registrations for CORONA for laboratory equipment
does not mean that the mark CORONA is weak for laboratory equipment. Further,
in addition to being limited in number, the registrations are of limited probative
value because they do not establish that the registered marks identified therein are
in actual use in the marketplace or that consumers are accustomed to seeing them.
See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973); In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
Even if we were to agree with Applicant that the mark CORONA is weak for
laboratory equipment (which we do not), we note that even weak or merely
descriptive marks are entitled to protection against the registration by a
subsequent user of a similar mark for closely related goods or services. See King
Serial No. 79144452
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Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109
(CCPA 1974); In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982). In
addition, each case is decided on its own facts, and each mark stands on its own
merits. See AMF Inc., 177 USPQ at 269.
Thus, in this case, where the marks appear to be arbitrary with respect to any of
the goods identified in the application or registrations, and there is no evidence of
third party uses of the word CORONA for any of those goods, this du Pont factor
favors a finding of likelihood of confusion.
E. House Marks
Applicant argues that consumers can distinguish the source of its products from
the source of the goods identified in the cited registrations because Applicant and
both Registrants use their house marks with the mark CORONA in association with
their own goods.16 However, this argument is inapposite because our likelihood of
confusion determination with respect to the registrability of the applied-for mark
must be based solely on the marks as they are set forth in the application and each
of the registrations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000); Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774
F.2d 1144, 227 USPQ 541, 543 (Fed. Cir. 1985); Vornado, Inc. v. Breuer Elec. Mfg.
Co., 156 USPQ 340, 342 (CCPA 1968); Hercules Inc. v. Nat’l Starch & Chem. Corp.,
223 USPQ 1244, 1248 (TTAB 1984).

16 To the extent Applicant relies on the extrinsic evidence attached to its brief to support
this argument, we have given this evidence no consideration for the reasons discussed
above.
Serial No. 79144452
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Finally, in its reply brief, Applicant argues that none of the CORONA marks is a
house mark, and all three “are only used on products relating to one (or two
machines).”17 However, these arguments are misplaced. With respect to the ninth
du Pont factor concerning the variety of goods on which a mark is or is not used
(house mark, “family” mark, product mark), this Board recently noted:
although we have not considered [registrant] Optimize’s
marks under the rubric of a “family” of marks, it is,
nonetheless, appropriate to note that consumers who may
be familiar with various products in the Optimize product
line, when confronted with applicant’s mark, would be
likely to view the goods marked therewith as additional
products from registrant. One of the circumstances
mentioned in the ninth du Pont factor is the variety of
goods on which a prior mark is used. See, e.g., In re
Wilson, 57 USPQ2d 1863, 1867 (TTAB 2001) (use on a
wide variety of goods weighs in favor of likelihood of
confusion). While we have previously applied this factor to
assess the variety of goods used under the same mark, we
think it appropriate in the circumstances presented here
to note the variety of chromatography-related goods
offered under Optimize’s various OPTI-formative marks.
In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774 (TTAB 2014).
While use on a wide variety of goods (such as with a “house mark” or “family of
marks”) weighs in favor of likelihood of confusion, see, e.g., Wilson, 57 USPQ2d at
1867, Applicant has cited no cases, and we are not aware of any, that stand for the
reverse proposition.
III. Conclusion
We have considered all of the du Pont factors for which Applicant and the
Examining Attorney have introduced evidence and arguments. The rest we treat as

17 7 TTABVUE 8.
Serial No. 79144452
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neutral. After considering all of the evidence properly of record, including any
evidence not specifically discussed herein, and arguments pertaining to the du Pont
likelihood of confusion factors, we find that the marks are identical, the goods are
related, and the goods appear to be offered in the same or similar channels of trade
and to the same classes of purchasers. We further find that the conditions of sale
and sophistication of the purchasers do not outweigh the other factors. In view
thereof, we find that Applicant’s mark, when used on the goods identified in the
application, is likely to cause confusion with the registered marks used on the goods
identified in each registration.
Decision: The refusal to register Applicant’s mark CORONA is affirmed in each
class.