Otis Elevator Companyv.Schindler Aufzuge AG

Trademark Trial and Appeal Board

Jul 8, 1998

OPP (T.T.A.B. Jul. 8, 1998)

Oral Hearing:
June 10, 1997
Paper No. 26
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 8, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
Otis Elevator Company
v.
Schindler Aufzuge AG
_______
Consolidated
Opposition Nos. 93,526 and 95,936;
Cancellation No. 22,550
_______
Albert Robin and Howard B. Barnaby of Robin, Blecker, Daley
& Driscoll for opposer
Neil F. Greenblum of Greenblum & Bernstein for applicant
_______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Otis Elevator Company (Otis) filed its opposition to
two applications of Schindler Aufzuge AG (Schindler) to
register, respectively, the mark ESCALANT for “escalators;
moving pavements and walkways; continuous passenger
conveyors”1; and the mark SCHINDLER ESCALINE for

1 Opposition No. 93,526 to application Serial No. 74/298,696, filed in
International Class 7 on July 28, 1992, based both upon an alleged bona
fide intention to use the mark in commerce in connection with the
identified goods, under Section 1(b) of the Trademark Act, and upon
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
2
“escalators; moving pavements and walkways and other belt
conveying apparatus for persons; continuous passenger
conveyors.”2 Additionally, Otis has petitioned to cancel a
registration owned by Schindler for the mark SCHINDLER
ESCALANT for “escalators, passenger walkways, continuous
passenger conveyors.”3 These three proceedings were
consolidated by the Board, upon the motion of Otis with the
consent of Schindler, in its order of May 2, 1996.
Cancellation No. 22,550
In view of the cancellation under Section 8 of the
Trademark Act of Registration No. 1,613,545, the
registration which is the subject of Cancellation No.
22,550, the Board issued, on March 13, 1998, an order
allowing respondent time to show cause why judgment should

ownership of Swiss Registration No. 372,328, under Section 44(e) of the
Trademark Act. The record includes a claim of ownership of U.S.
Registration No. 1,613,545. We note that several papers are missing
from this application file, including page 1 of applicant’s response to
the Examining Attorney’s office action and the certified copy and
translation of the Swiss registration forming one basis for the
application. Should applicant ultimately succeed in defending against
this opposition, the application file should be reconstructed in its
entirety.
2 Opposition No. 95,936 to application Serial No. 74/301,117, filed in
International Class 7 on August 4, 1992, with a claim of priority, under
Section 44(d) of the Trademark Act, based on the filing on June 15,
1992, of an application in Switzerland. The Swiss application matured
into Registration No. 403,757, a certified copy of which has been filed
in this application. Thus, this application is based both upon an
alleged bona fide intention to use the mark in commerce in connection
with the identified goods, under Section 1(b) of the Trademark Act, and
upon ownership of the aforementioned Swiss registration, under Section
44(e) of the Trademark Act. The record includes a claim of ownership of
Registration Nos. 1,019,036; 1,428,097; 1,613,545; and 1,722,463.
3 Cancellation No. 22,550 regarding Registration No. 1,613,545, issued
in International Class 7 on September 18, 1990. The records of the
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
3
not be entered against respondent. As respondent did not
respond to this order, judgment is hereby entered against
respondent in Cancellation No. 22,550.
Opposition Nos. 93,526 and 95,936
As grounds for opposition, opposer asserts that
applicant’s marks, ESCALANT and SCHINDLER ESCALINE, when
applied to applicant’s goods, so resemble opposer’s
previously used and registered mark ESCAL-AIRE for “moving
stairways and parts therefor”4 as to be likely to cause
confusion under Section 2(d) of the Trademark Act. Also as
a ground of opposition, opposer asserts that applicant has
never used ESCALANT alone but only as part of the composite
mark SCHINDLER ESCALANT. Opposer alleges, further, that
since prior to July 28, 1992, opposer has been in the
business of designing, developing, manufacturing,
advertising, offering for sale, selling and maintaining a
variety of elevator, escalator and related products.
Applicant, in its answer, denies the salient
allegations of the likelihood of confusion claim. With
respect to opposer’s second ground of opposition, namely,
that applicant has never used ESCALANT alone but only as
part of the composite mark SCHINDLER ESCALANT, applicant

Patent and Trademark Office (PTO) indicate that this registration was
canceled, under Section 8 of the Trademark Act, as of March 24, 1997.
4 Registration No. 754,578, issued August 13, 1963, and renewed for a
period of twenty years from August 13, 1983. [Sections 8 and 15
affidavits accepted and acknowledged, respectively.]
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
4
admits this fact, but requests, affirmatively, that this
ground be dismissed for failure to state a claim upon which
relief can be granted.
The Record
The record consists of the pleadings; the files of the
involved applications; a title and status copy of opposer’s
pleaded Registration No. 754,578; and the testimony
depositions taken by opposer of Richard K. Pulling, Jr.,
applicant’s product manager for traction elevators, and
Dennis Barrow, the consulting archivist at Otis, both with
accompanying exhibits.5 Applicant did not submit testimony
or evidence in this case. Only opposer filed a brief and,
at the oral hearing on this case, only opposer was
represented.
The Parties
Opposer manufactures, installs and maintains “vertical
and horizontal transportation equipment,” including
elevators and escalators. According to the testimony of
Richard K. Pullings, Jr., opposer’s production manager for
traction elevators, opposer sells several types of

5 Two of the exhibits submitted by opposer in connection with the
testimony of Richard K. Pulling, Jr., No. 31 [title and status copy of
opposer’s pleaded registration] and No. 32 [a Thomson & Thomson search
report pertaining to ESCAL], were not identified or otherwise discussed
by the witness. However, we have considered these exhibits as applicant
has not objected to them. In fact, with respect to Exhibit No. 31, a
certified title and status copy of opposer’s registration, applicant
admits, in its answer, that opposer “appears” to own this valid and
subsisting registration. Although considered of record, the third-party
search report comprising Exhibit No. 32 is of little persuasive value as
it is not evidence of use of the marks therein.
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
5
escalators with varying characteristics, such as, the length
of the spanned rise. All of its units are custom
manufactured to the specifications of the purchaser. The
period from purchase to installation is approximately 14 to
18 weeks. Opposer markets its products to those persons
involved in specifying, purchasing, installing and/or
designing elevators and escalators for a building, in
particular, architects, building owners, developers and
general contractors. From 1987 to the date of trial,
opposer sold approximately 1500 ESCAL-AIRE escalators in the
United States, for a total dollar value of approximately
$110 million.
According to Mr. Pulling, while it has been the
practice of the industry to place the trademark for an
escalator on the escalator’s riser or landing plate,
customers now often specify that no trademark should appear
on the product. Where no specification is made in this
regard, opposer places its mark on the landing platform.
Opposer’s trademark does, in any case, appear on shipping
boxes for its products and on advertising brochures.
Mr. Pulling testified that opposer’s primary
competitors for the escalator business in the United States
are Montgomery-Kone, Fujitec, Ornstien and Kopple, and
Schindler, the applicant herein (which, according to
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
6
opposer, purchased Westinghouse and now provides escalators
in the United States for Westinghouse).
Analysis
Inasmuch as a certified copy of opposer’s registration
is of record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Furthermore,
opposer has submitted substantial evidence of its use of the
mark ESCAL-AIRE in connection with escalators since long
prior to the filing dates of the applications herein.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I.
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Two key considerations in this case are the
similarities between the goods and the similarities between
the marks. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). This is
especially true in cases where, as here, there is little
evidence bearing on the other factors enumerated in the
duPont case.
With respect to the goods of the parties, we observe
that there is a substantial overlap in the goods identified
in the application and in the pleaded registration. Both
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
7
identifications of goods are broadly worded. Therefore, we
must presume that the goods of the applicant and registrant
are sold in all of the normal channels of trade to all of
the normal purchasers for goods of the type identified. See
Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987). That is, we must presume that
the goods of applicant and registrant are sold through the
same channels of trade to the same classes of purchasers.
Opposer’s testimony that the parties are direct competitors
in the escalator field indicates that the parties sell at
least some of the same kinds of goods to the same
purchasers.
The evidence indicates, further, that the goods
involved in this case are very expensive and are purchased
after careful consideration by knowledgeable purchasers.
The fact that the goods are manufactured to the
specification of the purchaser for installation in a
particular building indicates that purchasers are likely to
discuss their specifications with the seller on at least
one, and probably numerous, occasions.
Turning to the marks, we note that we must base our
determination on a comparison of the marks in their
entireties. However, we are guided, equally, by the well-
established principle that, in articulating reasons for
reaching a conclusion on the issue of confusion, “there is
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
8
nothing improper in stating that, for rational reasons, more
or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Considering, first, applicant’s mark ESCALANT, we find
that opposer’s mark, ESCAL-AIRE and applicant’s mark,
ESCALANT, are substantially similar in sound, appearance,
connotation and overall commercial impression. Both marks
consist of the root ESCAL followed by a single syllable
beginning with “A.” We find the visual impression created
by the hyphen in opposer’s mark is minor and does not affect
the pronunciation, connotation or overall commercial
impression of opposer’s mark. While ESCAL would appear to
be derived from the word “escalator” there is no evidence
that it is more than suggestive in connection with the
parties’ goods or that it comprises part of any third-party
marks.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of opposer’s mark,
ESCAL-AIRE, and applicant’s mark, ESCALANT, their
contemporaneous use on the same or closely related goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
9
Similarly, considering opposer’s mark, ESCAL-AIRE, and
applicant’s mark, SCHINDLER ESCALINE, we find the ESCALINE
portion of applicant’s mark to be substantially similar in
sound, appearance and connotation to the ESCAL-AIRE portion
of opposer’s mark. We find that ESCALINE is the dominant
portion of applicant’s mark. We do not find that the
addition of SCHINDLER to ESCALINE significantly changes the
overall commercial impression of the mark. As such, we find
that the overall commercial impressions of opposer’s mark,
ESCAL-AIRE, and applicant’s mark, SCHINDLER ESCALINE, are
substantially similar. In view thereof, we find that the
contemporaneous use of the parties’ mark on the same or
closely related goods involved in this case is likely to
cause confusion as to the source or sponsorship of such
goods. We note that applicant, by failing to take testimony
or file a brief herein, has made no argument that confusion
is not likely.
While the goods are expensive goods purchased by
knowledgeable consumers after careful consideration, we do
not find such factors to obviate the likelihood of confusion
found herein.
Finally, we consider opposer’s allegation that
applicant has never used ESCALANT alone but only as part of
the composite mark SCHINDLER ESCALANT. We find that this
claim does not state a separate ground of opposition as the
Opposition Nos. 93,526 and 95,936; and
Cancellation No. 22,550
10
application to register the mark ESCALANT herein is not
based on use of the mark in commerce and, therefore, such a
fact, as admitted by applicant, is not a basis for granting
the opposition against that application.
Decision: Judgment is entered against respondent in
Cancellation No. 22,550. Regarding Opposition Nos. 93,526
and 95,936, the opposition in each case is sustained as to
the Section 2(d) ground and judgment is entered against
respondent. The opposition is dismissed in Opposition No.
93,526 as to the ground of non-use of the applied-for mark.
R. F. Cissel
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board