PumpTek Asia

Trademark Trial and Appeal Board

Jul 16, 2015

No. 85849486 (T.T.A.B. Jul. 16, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: July 16, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re PumpTek Asia
________

Serial No. 85849486
_______

Sunisha S. Choksi of Law Office of Sunisha S. Choksi for PumpTek Asia Ltd.

Maureen Dall Lott, Trademark Examining Attorney, Law Office 105 (Susan
Hayash, Managing Attorney).
_______

Before Cataldo, Lykos and Greenbaum,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

PumpTek Asia Ltd. (“Applicant”) seeks registration the Principal Register of the
mark GENTEK (standard characters) for the following goods, as amended: “mobile
electric power generators for use in oil and gas exploration, drilling and production”
in International Class 7.1
The Trademark Examining Attorney has issued a final refusal of registration of
Applicant’s mark on the ground of a likelihood of confusion under Section 2(d) of the

1 Application Serial No. 85849486 was filed on February 14, 2013, based upon Applicant’s
assertion of its bona fide intent to use the mark anywhere and in commerce.
Serial No. 85849486

- 2 -
Trademark Act, 15 U.S.C. §1052(d), in view of three registrations owned by Gentec
Equipment Manufacturing Canada Inc.:
Registration No. 3264995 for the mark GENTEC (standard characters) for
Water pumps for removing standing water from pools, ponds, and
construction sites; electric generators; power washers, namely pressure
washing machines; construction equipment namely, plate compactors;
attachments for construction equipment, namely excavator grapples,
excavator thumbs (Class 7);2

Registration No. 3720490 for the mark for
installation, repair, maintenance, reconditioning and servicing of
water pumps, electric generators, power washers, construction
equipment, namely, plate compactors, excavator grapples and
excavator pumps and of parts for the service, maintenance, repair,
reconditioning and general overhaul of the above; installation, repair,
maintenance and servicing of parts, fittings or components for the
above; rental and leasing of the above (Class 37);3 and

Registration No. 3302626 for the mark for the same goods identified
in Registration No. 3264995;4 as well as Registration No. 3205602, owned by Gen-

2 Issued on the Principal Register on July 17, 2007. Section 8 affidavit accepted; Section 15
affidavit acknowledged.

3 Issued on the Principal Register on December 8, 2009. Section 8 affidavit accepted; Section
15 affidavit acknowledged.
Color is not claimed as a feature of the mark. The mark consists of stylized 3-dimensional
letters of the word “GENTEC”.

4 Issued on the Principal Register on October 2, 2007. Section 8 affidavit accepted; Section
15 affidavit acknowledged.
Color is not claimed as a feature of the mark. The mark consists of stylized 3-dimensional
letters of the word “GENTEC”.
Serial No. 85849486

- 3 -
Tech LLC, for the mark for “hydraulically driven electric generators”
(Class 7).5
Applicant filed a request for reconsideration and appealed the final refusal to
register. The Examining Attorney denied the request for reconsideration. The
refusal has been fully briefed by Applicant and the Examining Attorney.6
Likelihood of Confusion
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 Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003).
Registration No. 3264995
For purposes of the du Pont factors that are relevant to this appeal we will
consider Applicant’s involved application and cited Registration No. 3264995. If
likelihood of confusion is found as to the mark and goods in this registration, it is
unnecessary to consider the other cited registrations because the mark and goods in

5 Issued on the Principal Register on February 6, 2007. Section 8 affidavit accepted; Section
15 affidavit acknowledged.
Color is not claimed as a feature of the mark.

6 Applicant submitted its reply brief in single-spaced format. All printed submissions to the
Board, including briefs, must be double-spaced. Trademark Rule 2.126(a)(1), 37 C.F.R. §
2.126(a)(1). See also TBMP § 801.03 (2015) and authorities cited therein. Nonetheless,
Applicant’s reply brief is of sufficient brevity that, if double-spaced, it would fall within the
applicable page limit. See Trademark Rule 2.142(b)(2), 37 C.F.R. § 2.142(b)(2). Accordingly,
we will exercise our discretion to consider Applicant’s reply brief.

Serial No. 85849486

- 4 -
Registration No. 3264995 are more similar to the mark and goods in the involved
application than the marks and goods or services in the other cited registrations.
Conversely, if likelihood of confusion is not found as to the mark and goods in this
registration, we would not find likelihood of confusion as to the mark and goods in
the other cited registration. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d
1243, 1245 (TTAB 2010).
Relationship of the Goods
We turn now to the du Pont factor involving the similarity or dissimilarity of
Applicant’s “mobile electric power generators for use in oil and gas exploration,
drilling and production” and Registrant’s goods, including “electric generators.”
It is settled that in making our determination, we must look to the goods as
identified in the application vis-à-vis those recited in the cited registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computers Servs., Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni Food Co., 97
USPQ2d 1990, 1991 (TTAB 2011). It is not necessary that the respective goods be
competitive, or even that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that the respective goods are
related in some manner, or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be encountered by the
same persons under circumstances that could give rise to the mistaken belief that
they originate from the same producer. Coach Servs., Inc. v. Triumph Learning
Serial No. 85849486

- 5 -
LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991).
In this case, Registrant’s broadly identified “electric generators” are not limited
as to their purpose or use. We therefore must presume that Registrant’s “electric
generators” encompass Applicant’s more narrowly identified “mobile electric power
generators for use in oil and gas exploration, drilling and production.” See, e.g., In re
Thor Tech, Inc., 90 USPQ2d 1634 (TTAB 2009) (finding “recreational vehicles,
namely, travel trailers and fifth wheel trailers” to be encompassed by and legally
identical to “trailers”); In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992) (finding
“computer software for data integration and transfer” to be encompassed by and
legally identical to “computer programs recorded on magnetic disks”). As noted
above, in our comparison of Applicant’s goods and Registrant’s goods, “it is the
identification of goods that controls…” In re La Peregrina Ltd., 86 USPQ2d 1645 at
1646 (TTAB 2008).
In addition, the Examining Attorney introduced into the record with her June 7,
2013 Office Action7 and January 8, 2014 Office Action8 evidence from commercial
Internet websites suggesting that third parties provide both Applicant’s goods and
certain of Registrant’s goods, namely, electric generators, under the same marks.
The foregoing evidence further supports a finding that certain of Registrant’s goods
may emanate from the same sources as those of Applicant, and may be provided
under the same marks.

7 Pages 18-28.

8 Pages 20-94.
Serial No. 85849486

- 6 -
Based upon the goods as identified in the involved application and cited
registration, we find that Applicant’s goods are encompassed by Registrant’s electric
generators, and thus are legally identical thereto. In addition, the evidence of record
supports a finding that these goods are provided by third parties under the same
marks.
Channels of Trade and Classes of Purchasers
Where the goods in an application or cited registration are broadly described,
such that there are no restrictions as to trade channels and purchasers, it is
presumed that the identification of goods encompasses not only all goods of the
nature and type described therein, but that the identified goods are offered in all
the normal channels of trade, and that they would be purchased by all the usual
customers. See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant’s goods, as identified in its application, are “for use in oil and gas
exploration, drilling and production.” However, Registrant’s “electric generators”
are not limited as to type, and thus we must assume they are available in all trade
channels, including those in which goods used for oil and gas exploration, drilling
and production may be found, and also are available to all usual consumers of such
goods. In other words, even if Applicant’s goods move in discrete trade channels, the
trade channels for Registrant’s goods are unlimited and must be presumed to
include those in which Applicant’s goods may be found. Id.

Serial No. 85849486

- 7 -
Similarities and Dissimilarities of the Marks
Now we turn to the du Pont factor of the similarity or dissimilarity of the marks
at issue as to appearance, sound, meaning, and overall commercial impression.
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Regarding the first du Pont
factor, we recognize that the similarity or dissimilarity of the marks is determined
based on the marks in their entireties, and the analysis cannot be predicated on
dissecting the marks into their various components; that is, the decision must be
based on the entire marks, not just part of the marks. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. V.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) In addition, we
observe that while we have placed the two marks next to one another for
comparison purposes, consumers may not necessarily encounter the marks in such
proximity and must rely upon their recollections thereof.
As noted above, Applicant’s mark is GENTEK in standard characters and the
mark in the cited registration is GENTEC in standard characters. The marks are
nearly identical in appearance, differing only in the presence of the letter “K” in
Applicant’s mark in place of the letter “C” in that of Registrant. Furthermore, the
substitution of the letter “K” in Applicant’s mark for the “C” in the cited mark has
little, if any, effect on their pronunciation such that the marks are likely to sound
identical when pronounced. Regarding connotation, both marks suggest a source of
Serial No. 85849486

- 8 -
generator technology or a generator created by technology. In its main brief,
Applicant acknowledges the similarities between the marks:
Though the marks in the Cited Registrations are not identical to
Applicant’s Trademark, there are similarities among the marks, in
that each mark incorporates the word elements “GEN” and a formative
of “TECH”, including “TEC” or “TEK”.9

In its reply brief, however, Applicant argues
that the “gen-” word element is suggestive of “generators” as identified
in the identification of goods in the Cited Registrations, and that the “-
tec” and “-tech” word elements are suggestive of the term “technology”.
The Applicant’s [sic] request the Board to take judicial notice of the
definition of the term technology, provided from the online version of
the Merriam-Webster dictionary [internal citations omitted] that
includes one definition of the term, technology to mean “a machine,
piece of equipment, method, etc., that is created by technology”. In
light of the identification of goods in each of the Cited Registrations,
the Applicant respectfully states that the word elements “tec” and
“tech” are suggestive of the machines and pieces of equipment
identified in each Cited Registration. In light of the suggestive nature
of the word elements “gen” “tec” and “tech” in relation to the referenced
goods identified in the underlying registrations, the marks in the Cited
Registrations are weak marks entitled to a marrow [sic] scope of
protection.10

Furthermore, in its request for reconsideration, Applicant argues that the mark in
the cited registration is entitled only to a narrow scope of protection as a result of

9 11 TTABVUE 6. Record citations are to TTABVUE, the Trademark Trial and Appeal
Board’s publically available docket history system, by entry and, where applicable, page
number. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB 2014).
Citations to the prosecution history are by date and page numbers.

10 22 TTABVUE 4, 7.
Applicant’s request for judicial notice is granted. The Board may take judicial notice of
dictionary definitions, including those in online dictionaries which exist in printed format.
In re Premiere Distillery, LLC, 103 USPQ2d 1483, 1484 (TTAB 2012); University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

Serial No. 85849486

- 9 -
registration of numerous “gen” and “tek” or “tec(h)” formative marks.11 In support of
this contention, Applicant made of record with its request for reconsideration copies
of seven “gen” formative registrations and two “gen” formative applications for
various electrical goods including generators, and nine “tek,” “tec” or “tech”
formative registrations for similar goods.12
We do not find Applicant’s evidence persuasive. First, the applications made of
record have no probative value because they evidence only the fact that they were
filed. See Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468
n.6 (TTAB 2003) (“[T]hird-party applications are evidence only of the fact that they
were filed; they have no other probative value.”). Second, the third-party
registrations made of record by Applicant display marks containing only “gen” or
“tec(h)” and “tek” formative marks; none display marks containing “gen” and
“tec(h)” or “tek.” Thus, none of the marks registered by third parties are as close to
the marks at issue herein as the marks in the cited registration and involved
application are to each other. Finally, the third party registrations contain no
evidence of the extent to which marks identified thereby are in use such that we
may find consumers are accustomed to seeing marks similar to Applicant’s mark
and Registrant’s mark in the marketplace.
Viewing the evidence of record as a whole, we agree with Applicant that its
GENTEK mark and the registered GENTEC mark both suggest generator

11 4 TTABVUE 9-14.

12 4 TTABVUE 18-48.

Serial No. 85849486

- 10 -
technology and, as a result, are suggestive of the goods identified in the involved
application and cited registration. However, even if we accept that the cited mark is
suggestive and entitled to a somewhat narrow scope of protection, even suggestive
or weak marks are entitled to protection from the use of a nearly identical mark for
legally identical goods, as is the case herein. See In re Chica Inc., 84 USPQ2d 1845,
1850 (TTAB 2007) (quoting In re Colonial Stores, 216 USPQ 793, 795 (TTAB 1982)):
if the word CORAZON, and its English translation, was
considered to be highly suggestive of jewelry, it
nonetheless is entitled to protection from the use of a very
similar mark on jewelry products. “[E]ven weak marks
are entitled to protection against registration of similar
marks, especially identical ones, for related goods and
services.”.13

In this case, Applicant’s mark is nearly identical to the mark in the cited
registration in appearance, sound and connotation. As a result, we find that the
marks convey commercial impressions that are nearly identical.
Conditions of Sale and Sophistication of Purchasers
Applicant argues that its goods are marketed to sophisticated consumers who
will exercise care in their selection. Applicant did not submit any evidence in
support of this contention; however, we recognize that given the specialized nature
of the goods, they are likely to be 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

13 We observe that one of the cited registrations is owned by a different entity than the
other three. However, we are not privy to the facts surrounding the registration of these
marks, including any agreements that may exist between the owners thereof.

Serial No. 85849486

- 11 -
confusion because the marks are nearly identical and the goods are legally identical.
In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
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
neutral. After considering all of the evidence 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 nearly identical, and the goods are
legally identical and may be offered to the same class of purchasers. While
Applicant’s goods are offered in discrete trade channels, Registrant’s unlimited
trade channels are presumed to include those of Applicant, and evidence of record
suggests the goods are offered in some of the same channels of trade. While the
purchasers of Applicant’s goods may be sophisticated, they are still likely to be
subject to confusion due to the near identity of the marks and legal identity of the
goods. In view thereof, we find that Applicant’s mark, if used in association with the
goods identified in the application, is likely to cause confusion with the mark in
Registration No. 3264995 used in connection with the goods recited in the
registration.
Decision: The likelihood of confusion refusal to register Applicant’s mark is
affirmed.