R.O. Ultratec USA, Inc.

Trademark Trial and Appeal Board

Aug 6, 2010

No. 77560627 (T.T.A.B. Aug. 6, 2010)

Mailed: August 6, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re R.O. Ultratec USA, Inc.
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Serial No. 77560627
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Benjamin N. Diederich of Stetina Brunda Garred & Brucker
for R.O. Ultratec USA, Inc.

Barbara Brown, Trademark Examining Attorney, Law Office 116
(Michael W. Baird, Managing Attorney).
_______

Before Hairston, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

R.O. Ultratec USA, Inc. seeks registration on the
Principal Register of the standard character mark R.O.
ULTRATEC for goods ultimately identified as “water
filtration equipment, namely, reverse osmosis filtration
units and components utilized therewith, namely, membranes,
membrane housings, filters, and filter cartridges” in
International Class 11.1

1 Application Serial No. 77560627, filed September 2, 2008, based
on an allegation of a bona fide intention to use the mark in
commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77560627
2
Registration has been refused 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
resembles the registered mark (in stylized
form) for “industrial-water purifying apparatus;
ultraviolet lamps not for medical purposes; waste water
purification units; water treatment equipment, namely,
ultraviolet sterilization units,” in International Class 11
(Registration No. 3224537) to be likely to cause confusion,
mistake or deception.
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). In considering the evidence of record on
these factors, we keep in mind that “[t]he fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks.” Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976); and In re Azteca Restaurant Enterprises,
Inc., 50 USPQ2d 1209 (TTAB 1999) and cases cited therein.
Serial No. 77560627
3
We turn then to an analysis of the similarity or
dissimilarity of the marks when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. The test, under this du Pont
factor, is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result.
We find the marks to be quite similar. We begin by
observing that applicant’s mark incorporates the whole of
registrant’s mark. Likelihood of confusion is often found
where the entirety of one mark is incorporated within
another. See In re Denisi, 225 USPQ 624, 626 (TTAB 1985)
(PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM
for hairdressing and conditioner); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)
(LIL’LADY BUGGY for toy doll carriages and LITTLE LADY for
doll clothing).
Serial No. 77560627
4
Applicant argues that the examining attorney
improperly dissected the mark in her analysis by “deleting
the term R.O. from the mark when considering the phrase.”
Br. p. 8. We find no such error in the examining
attorney’s analysis. There is no dispute that R.O. stands
for reverse osmosis and, as such, is descriptive of the
goods. It is well settled that one feature of a mark may
be more significant than another, and it is not improper to
give more weight to this dominant feature when evaluating
the similarities of the marks. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Moreover, descriptive or disclaimed portions typically play
a less significant role in a comparison of the marks. Id.;
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1533 (Fed. Cir. 1997). We agree that the dominant
and most memorable and source-identifying aspect of
applicant’s mark is the term ULTRATEC which is phonetically
identical to registrant’s mark and differs only in
appearance by the absence of the single letter H at the
end.
Applicant further argues that the marks convey
different commercial impressions.2 Relying on the line of

2 By its argument applicant appears to collapse the two separate
elements of meaning and commercial impression into a single
Serial No. 77560627
5
Board cases where the Board found the marks to convey
different meanings or commercial impressions when applied
the to the parties’ respective goods, applicant contends
that, “the term R.O. (completely lacking in the Cited Mark)
when used in conjunction with the remainder of Appellant’s
mark, ‘ULTRATEC’ creates a commercial impression that
suggests reverse osmosis filtration and components. This
same commercial impression is not created at all by the
Cited Mark. Accordingly, this difference in commercial
impression is believed to preclude a finding of likelihood
of confusion.” Br. p. 10. To support its position,
applicant relies on In re Sears, Roebuck and Co., 2 USPQ2d
1312 (TTAB 1987) (CROSS-OVER for bras suggestive of the
construction of applicant’s bras versus CROSSOVER for
ladies’ sportswear likely to be perceived by purchasers
either as an entirely arbitrary designation or as being
suggestive of sportswear that “crosses over” the line
between informal and more formal wear when applied to
ladies’ sportswear); In re British Bulldog, Ltd., 224 USPQ
854 TTAB 1984) (PLAYERS implies a fit, style, color, and
durability adapted to outdoor activities when applied to
shoes, but “implies something else, primarily indoors in

analysis. In our determination, we have considered them
separately. See Palm Bay Imports Inc. v. Veuve Clicquot
Serial No. 77560627
6
nature” when applied to men’s underwear); and In re Sydel
Lingerie Co., Inc., 197 USPQ 629 (TTAB 1977) (BOTTOMS UP
connotes the drinking phrase “Drink Up” when applied to
men’s suits, coats, and trousers, but does not have this
connotation when applied to ladies’ and children’s
underwear). The facts here are not similar to Sydel and
its progeny. Here, the commercial impression and
connotation of the common elements ULTRATEC and ULTRATECH
remain the same when used in connection with the parties’
respective goods. The effect of the addition of the R.O.
to applicant’s mark is simply to provide the consumer with
information about a specific characteristic of the goods.
In view of the above, when we compare the marks in
their entireties we find that on the whole they are similar
in appearance, sound, connotation and commercial
impression, and that the addition of the descriptive term
R.O. to applicant’s mark and the H to the end of
registrant’s mark along with the minimal stylization are
not sufficient to distinguish the marks when used on
related goods.
With regard to the goods, applicant acknowledges that
the goods “are related to water purification and/or

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005).
Serial No. 77560627
7
filtration” but argues that “they are explicitly directed
to different aspects of water treatment.” Br. pp. 11-12.
The examining attorney argues that “the goods are closely
related because they are both water treatment products [and
t]he purpose of the applicant’s reverse osmosis filtration
units and the registrant’s industrial water purifying
apparatus, waste water purification units and ultraviolet
sterilization units is the same, to purify water.” Br. p.
10.
In support of her position, the examining attorney
submitted several third-party registrations which show
third-party marks registered in connection with the same or
similar goods as those of the applicant and registrant.
See, e.g., Reg. No. 3473682 for the mark GREAT WATER for
“water filtration and purification equipment, namely,
filters made of fiber for water filtration...water
purification units”; Reg. No. 3633168 for the mark
LAGOONGUARD for “water treatment systems, namely,
wastewater purification units comprising reactors and
treatment tanks utilizing polyethylene media and aeration
systems, treatment apparatus, effluent filters, pumping
stations, filtration devices and electronic control units”;
and Reg. No. 3324629 for the mark LIFE IONIZER for, inter
alia, “industrial-water purifying apparatus; ... water
Serial No. 77560627
8
purification units; ... water treatment equipment, namely,
reverse osmosis filtration units; water treatment
equipment, namely, ultraviolet sterilization units.” She
further argues that the third-party registrations
“demonstrate that water filtration units and water
purification apparatus and/or units are of a kind that may
emanate from a single source [and i]t is clear from this
evidence that it would be likely for registrant to expand
its water treatment products business to include reverse
osmosis units.” Br. pp. 11-12.
Applicant attempts to minimize the impact of the
third-party registrations by arguing that because the
identifications in its application and the cited
registration do not include each other’s respective goods
they “do not compete.” However, the point is not whether
applicant’s and registrant’s specific goods are
competitive, rather the third-party registrations serve to
suggest that because many entities provide both types of
goods under the same mark identifying a single source for
the two types of goods, consumers in the marketplace have
become accustomed to such overlap and would presume a
single source when confronted with confusingly similar
marks applied to the separate goods. It is clear that the
respective goods are used for water purification. Any
Serial No. 77560627
9
differences in the goods are simply the method employed,
namely, reverse osmosis versus ultraviolet light. First,
in the identification as written, not all of registrant’s
goods are limited to ultraviolet sterilization, e.g.,
“waste water purification units.” Further, even if we were
to interpret the goods in the registration as being limited
to products employing ultraviolet light, the record
includes an example of a third-party registration listing a
range of water purification products, including one for
reverse osmosis and one for ultraviolet sterilization.3
Further, as to the goods in the cited registration
limited to industrial and waste water treatment, because
the application contains no such limitation we must presume
it includes the ordinary channels of trade for industrial
and waste water treatment products. In addition, the
registration includes goods which are not limited by trade
channels, such as “water treatment equipment, namely,
ultraviolet sterilization units.” Thus, because the goods
are so closely related we must presume that they travel in
the same channels of trade and are available to the same
classes of purchasers. See Hewlett-Packard Co. v. Packard

3 The addition of the term R.O. to applicant’s mark could be
perceived by consumers as an indication that this is the
registrant’s reverse osmosis water purification unit as opposed
to its other water purification units.

Serial No. 77560627
10
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
and Octocom Systems Inc. v. Houston Computer Services Inc.,
918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1987).
In view of the above, we find that the goods are
closely related, travel in the same channels of trade and
are sold to the same classes of purchasers.
Applicant’s unsupported argument that the involved
goods would be purchased by sophisticated consumers is not
persuasive. There is nothing in the identification of
goods to indicate that applicant’s goods are offered at
only very high prices and purchased only by consumers with
specialized knowledge. The registrant’s identification
does provide such an indication by its limitations to
“industrial” and “waste water” with respect to some of the
goods. However, even assuming the overlap in the customer
base is restricted to the more knowledgeable consumer,
there is nothing in the record to support a finding that
the goods and purchasing process are of such a nature that
purchasers could distinguish such similar marks for closely
related goods. Cf. Electronic Design & Sales, Inc. v.
Electronic Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388
(Fed. Cir. 1992) (record confirms that opposer’s services
are expensive and are purchased only by experienced
corporate officials after significant study and contractual
Serial No. 77560627
11
negotiation and that the evaluation process used in
selecting applicant’s products requires significant
knowledge and scrutiny). As is frequently stated, even if
consumers are knowledgeable in a particular field that does
not necessarily mean that they are immune from source
confusion. In re Decombe, 9 USPQ2d 1812 (TTAB 1988).
In conclusion, we find that because the marks are very
similar, the goods are closely related, and the channels of
trade and purchasers overlap, confusion is likely between
applicant’s mark R.O. ULTRATEC and the mark ULTRATECH in
the cited registration. To the extent there is any doubt,
we resolve it, as we must, in registrant’s favor. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.