NovAtel Inc.

Trademark Trial and Appeal Board

Mar 22, 2007

No. 78454750 (T.T.A.B. Mar. 22, 2007)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed:
March 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NovAtel Inc.
________

Serial No. 78454750
_______

Gregory W. Carr of Carr LLP for NovAtel Inc.

Miriam Aziz Mahmoudi, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney)
_______

Before Seeherman, Walsh, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

NovAtel Inc. filed a use based application to register
the mark FLEXPAK, in standard character form, for “global
positioning receivers.”1 Registration was refused under
Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d).
Registration No. 1,884,731 for the mark FLEXPAC for an
“electrical interconnection system; namely, electrical

1 Application Serial No. 78454750, filed July 22, 2004, claiming
July 1, 2003 as its dates of first use anywhere and first use in
commerce.
Serial No. 78454750
2
cable, connectors, sockets and pins” was cited as a bar to
registration.2 When the refusal was made final, applicant
appealed. The appeal has been fully briefed.3 We affirm.
The examining attorney contends that there is a
likelihood of confusion because the marks FLEXPAC and
FLEXPAK are virtually identical and the goods are related
(i.e., “global positioning devices” and electrical cables,
connectors, sockets and pins may emanate from a single
source) and they move in the same channels of trade. The
examining attorney submitted the following evidence in
support of her likelihood of confusion refusal:
1. Excerpts from the websites of RadioShack, Best
Buy, and CompUSA advertising the sale of
connectors, cable, and GPS receivers;

2. Excerpts from the websites of manufacturers of
GPS receivers advertising the sale of GPS
receivers, cable, and connectors. The following
manufacturers’ websites were attached:

A. Garmin (garmin.com);

B. Navman (navman.co.uk);4

2 Registration No. 1,884,731 issued March 21, 1995; renewed.

3 With its reply brief, applicant filed a motion for leave to
file a late reply brief. As grounds for the motion, applicant
explained that it never received the examining attorney’s brief.
Applicant discovered the examining attorney’s brief through a
routine status check. Applicant’s motion is granted.

4 Applicant did not object to the foreign website. Also, we note
that the “iCN 320 Multi-Region Power Sup” write-up states that it
“Include (sic) UK, European, and US plug adaptors.” This
indicates that Navman is selling (or at least advertising to
Serial No. 78454750
3
C. Magellan (Magellangps.com)

D. Tyco Electronics (tycoelectronics.com);5

E. Lowrance (lowrance.com)

F. Pharos (pharosgps.com); and,

3. Eleven (11) third-party registrations for GPS
receivers (or GPS systems) and cable, connectors,
and/or sockets.

Applicant argues that there is no likelihood of
confusion because the goods are different, the trade
channels are different, consumers exercise a high degree of
care, registrant’s mark is weak and, therefore, entitled to
a narrow scope of protection, and there have been no
reported instances of actual confusion. In support of its
argument, applicant submitted copies of the following three
(3) third-party registrations:
Reg. No. Mark Goods

1,077,311 FLEXPAK Variable speed D-C drives

2,419,309 FLEXPAK Rechargeable battery pack for use
in connection with a radio-
controlled toy vehicle

2,993,783 FLEX-PAK Portable, body-worn, form-fitting
radios housed in flexible nylon
holsters

sell) in the United States. Accordingly, we will consider this
website for whatever probative value it has.

5 This appears to be the registrant.
Serial No. 78454750
4
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 UPSQ2d
1201, 1203 (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. Han Beauty Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 57 UPSQ2d 1557, 1559 (Fed. Cir.
2001); Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Since Applicant
has conceded that the marks are similar,6 a concession with
which we agree, our analysis focuses on the other
likelihood of confusion factors.

A. The similarity or dissimilarity of the goods.
In analyzing the similarity or dissimilarity of the
goods, we start with the well-settled proposition that
where, as here, the marks of the parties are substantially
similar, the goods need not be as close to support a
finding of likelihood of confusion. In re Opus One, Inc.,

6 Applicant’s Brief, p. 5.
Serial No. 78454750
5
60 UPSQ2d 1812, 1815 (TTAB 2001); In re Concordia
International Forwarding Corp., 222 USPQ 355, 356 (TTAB
1983). See also, In re Shell Oil Co., 992 F.2d 1024, 26
USPQ2d 1687, 1689 (Fed. Cir. 1993)(even when goods are not
intrinsically related, the use of identical marks can lead
to the assumption that there is a common source).
It is also well settled that the goods of the
applicant and the registrant need not be similar or even
competitive to find likelihood of confusion. Likelihood of
confusion may be found if the respective goods are related
in some manner and/or if the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under conditions that could
give rise to the mistaken belief that they emanate from the
same source. In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1469 (TTAB 1988); Monsanto Co. v. Enviro-Chem Corp., 199
USPQ 590, 595-596 (TTAB 1978). In this regard, the
question is not whether consumers would mistake the
products, but whether they would mistake the source of the
products.
Finally, our determination of likelihood of confusion
is based on the identification of goods as they are recited
in the application and registration without regard to what
the evidence may show about the exact nature of the goods.
Serial No. 78454750
6
We do not read limitations into the description of goods
set forth in the application and registration. See,
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 UPSQ2d 1001 (Fed. Cir. 2002); Octocom Systems Inc. v.
Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1987); In re Elbaum, 211 USPQ 639 (TTAB
1981).
Applicant argues that a “global positioning receiver”
is so significantly different from an “electrical
interconnection system; namely, electrical cable,
connectors, sockets and pins” that consumers would not
expect them to come from a single source. Applicant’s
rationale is that “Applicant’s goods are highly
sophisticated, active and expensive technical equipment”
while registrant’s goods are “decidedly unsophisticated,
passive and common goods.”7
However, the evidence shows that cable and connectors
and global positioning receivers are complementary products
in that cable, connectors and sockets can be used to
connect or mount sophisticated electronic equipment such as
applicant’s “global positioning receivers.” This is shown
by the specimen filed with the application and the website

7 Applicant’s Brief, p. 6.
Serial No. 78454750
7
evidence submitted by the examining attorney. The specimen
filed with the application is a “specification sheet”
shipped with applicant’s “global positioning receivers”
which sets forth technical information about the products.
The specification sheet indicates that the “global
positioning receiver” has communication ports and
input/output connectors for power, antenna, and
communications.
In addition, the website evidence submitted by the
examining attorney shows the following:
1. The Garmin website displays GPS units and cable
used to “hardwire your GPS directly to a DC power
source or some other electronic device”;

2. The Navman website displays GPS units and cables
and connectors used for connecting the GPS units
to cigarette lighters and other power supplies;

3. The Magellan website promotes its GPS units and
related accessories, including connection cables;

4. The Lowrance website displays accessories for GPS
units such as cables and connectors;

5. The Tyco Electronics web page is a table of
products, including GPS receivers, cables, and
connectors; and,

6. The Pharos website displays GPS receivers and
extension cable.

Registrant’s “electrical interconnection system;
namely, cable, connectors, sockets and pins” could be used
to connect applicant’s “global positioning receiver” to a
Serial No. 78454750
8
power source, antenna, or other electronic equipment. For
example, registrant’s product could be purchased and used
as a replacement part for connecting applicant’s “global
positioning receivers” to a power source, antenna or
computer.8
In view of the foregoing, we find that “global
positioning receivers” and an “electrical interconnection
system; namely, electrical cable, connectors, sockets and
pins” are related products.

B. The similarity or dissimilarity of trade channels.
Applicant contends that the goods move in distinctly
different markets because “Applicant’s goods are typically
provided to the OEM and system integration market” and
“[t]o the extent cables, connectors, sockets and pins are
required for operation of Applicant’s sophisticated and
expensive global positioning receivers, such accessories
would be provided along with the system and not purchased

8 We note that the examining attorney also submitted eleven (11)
third-party registrations for both global positioning receivers
and cables, connectors, and/or sockets as evidence that such
products emanate from a single source and may be sold under a
single mark. However, the cited registration is for an
“electrical interconnection system” and the third-party
registrations do not specifically identify an “electrical
interconnection system.” Accordingly, we have not relied on the
third-party registrations in reaching our decision.
Serial No. 78454750
9
separately.”9 On the other hand, applicant asserts that
registrant’s “rudimentary cables, connectors, sockets and
pins . . . are marketed, distributed, and sold largely
through hardware stores for other purposes than use with
global positioning receivers.”10
Applicant’s argument is not well taken. The channels
of trade factor concerns how and to whom the respective
products are sold and distributed. In other words, this
factor focuses on whether the same class of persons are
exposed to the marks at issue under circumstances likely to
give rise to the mistaken belief that the products emanate
from a single source. Jeanne-Marc, Inc. v. Cluett, Peabody
& Co., Inc., 221 UPSQ 58, 61 (TTAB 1984). Consumers who
purchase or use a global positioning receiver may also
purchase or use an electrical interconnection system to
connect the receiver to an antenna, power source or other
equipment. Accordingly, the same class of persons are
likely to be exposed to the marks when users of global
positioning receivers need to connect the receiver to an
antenna, power source, or other piece of equipment.

9 Applicant’s Brief, p. 7.

10 Applicant’s Brief, p. 8.
Serial No. 78454750
10
As indicated supra, our determination of likelihood of
confusion is based on the identification of goods as they
are recited in the application and registration, and we do
not read limitations into those descriptions. See,
Hewlett-Packard Co. v. Packard Press Inc., supra; Octocom
Systems Inc. v. Houston Computer Services Inc., supra; In
re Elbaum, supra. Because there are no restrictions as to
the channels of trade or classes of purchasers in either
applicant’s or registrant’s description of goods, we
consider applicant’s and registrant’s products as if they
were being sold in all of the normal channels of trade and
to all of the normal purchasers for such products.
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987); Toys R Us
v. Lamps R Us, 219 USPQ 340, 343 (TTAB 1983). Applicant’s
“global positioning receivers” are not limited to original
equipment manufacturers and system integrators, but may be
purchased and used by any person who has use for such as
device (e.g., boaters, automobile drivers, truckers, etc.).
Registrant’s electrical interconnection systems comprising
cable, connectors, sockets and pins are not restricted to
sale in hardware stores, nor are they precluded from use
with global positioning receivers. As indicated above,
consumers might purchase registrant’s electrical
Serial No. 78454750
11
interconnection systems as a replacement part for
connecting “global positioning receivers” to a power
source, antenna or computer.
We find, therefore, that the channels of trade and
classes of consumers are the same.

C. Degree of consumer care.
Applicant argues that its customers exercise a high
degree of care in making their purchases because
applicant’s goods are “for special applications such as
precision agriculture, marine, mining and machine control,
unmanned vehicles and sports media.”11 However, applicant’s
goods are not restricted to such special applications. As
noted, they may be purchased by members of the general
public, such as car and truck drivers and boaters. Such
customers, even if they were to exercise some degree of
care in purchasing a global positioning receiver, may not
pay as much attention to the cable, connectors,
sockets and pins that they purchase to connect the global
positioning receivers to other equipment or to mount the
receiver. Thus, applicant’s customers familiar with

11 Applicant’s Brief, p. 8. Again, we note that applicant’s
description of goods is not limited to “special applications such
as precision agriculture, marine, mining and machine control,
unmanned vehicles and sports media.”

Serial No. 78454750
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applicant’s FLEXPAK global positioning receiver may,
because of reverse confusion, purchase FLEXPAC cable,
connectors, sockets and pins because of the similarity of
the marks.
In any event, even if applicant’s customers are
sophisticated about technology does not provide assurance
that they are sophisticated and knowledgeable about
trademarks, or that they have such good memories for minute
differences, that they could differentiate between
applicant’s mark and registrant’s mark or appreciate that
similarity between the marks does not imply some kind of
business relationship or affiliation. Hydrotechnic
Corporation v. Hydrotech International, Inc., 196 USPQ 387,
392 (TTAB 1977).
We find the degree of care factor is neutral.

D. The number and nature of similar mark in use on
similar goods.

Applicant argues that the three (3) third-party
“Flexpak” registrations that it submitted are evidence of
third-party use of the mark on related goods and,
presumably, that registrant’s FLEXPAK mark is a weak mark
entitled to a narrow scope of protection.12 Contrary to

12 Applicant’s Brief, p. 9.
Serial No. 78454750
13
applicant’s argument, third-party registrations, absent
evidence of actual use of those marks, are entitled to
little weight on the question of likelihood of confusion.
Third-party registrations are not evidence of use of the
marks shown therein. Without evidence of use, the third-
party registrations prove nothing about the impact of the
third-party marks on purchasers in terms of conditioning
consumers as to the existence of similar marks in the
marketplace. AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268 (CCPA 1973); In re Hub
Distributing, Inc., 218 USPQ 284, 285-286 (TAB 1983).
Third-party registrations may, of course, have probative
value in the manner of a dictionary definitions to show
that a term has a significance in a particular industry.
However, the limited number of registrations submitted by
applicant, and the differences in the goods identified in
those registrations and those at issue herein, do not
indicate that FLEXPAC or FLEXPAK has a common significance
that would restrict registrant’s mark to a limited scope of
protection vis-à-vis FLEXPAK for related goods.
We find that the number and nature of similar marks in
use on similar goods is factor that favors finding a
likelihood of confusion.

Serial No. 78454750
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E. The fame of registrant’s mark.
Applicant contends that registrant’s mark is not
famous and, therefore, the fame factor mitigates against a
likelihood of confusion. The examining attorney did not
submit any evidence regarding whether registrant’s mark is
famous. Although, if a registrant’s mark is famous, it may
play a dispositive role in the likelihood of confusion
analysis, the fact that a mark is not famous does not favor
a finding of no likelihood of confusion. Accordingly, the
fame of registrant’s mark is a neutral factor.

F. The nature and extent of any actual confusion.
Applicant argues that the absence of any reported
instances of any actual confusion over the past three (3)
years proves that there is no likelihood of confusion.
However, the fact that an applicant in an ex parte
proceeding is unaware of any instances of actual confusion
is generally entitled to little probative weight in the
likelihood of confusion analysis, inasmuch as the Board has
no way of knowing whether the registrant is unaware of any
instances of actual confusion. In addition, we have no
evidence of the extent of applicant’s use or registrant’s
use of their respective marks, so it is not possible to
determine whether there has been any significant
Serial No. 78454750
15
opportunity for actual confusion to have occurred. In re
Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Jeep
Corporation, 222 USPQ 333, 337 9TTAB 1984); In re Barbizon
International, Inc., 217 USPQ 735, 737 (TTAB 1983).
Accordingly, this factor is neutral.
Based on a balancing of the likelihood of confusion
factors, and in particular the virtual identity of the
marks, the relatedness of the goods, and the similarity of
trade channels, we find that applicant’s use of the mark
FLEXPAK for “global positioning receivers” so resembles the
mark FLEXPAC for an “electrical interconnection system;
namely, electrical cable, connectors, sockets and pins” as
to be likely to cause confusion.
Decision: The refusal to register is affirmed.