Samsung Electronics Co., Ltd.

Trademark Trial and Appeal Board

Sep 6, 2019

87285538 (T.T.A.B. Sep. 6, 2019)

This Opinion is Not a
Precedent of the TTAB
Mailed: September 6, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Samsung Electronics Co., Ltd.
________

Serial No. 87285538
_______

Diane J. Mason of LeClairRyan LLP for Samsung Electronics Co., Ltd.

Shelby Niemann, Trademark Examining Attorney, Law Office 125,
(Heather Biddulph, Managing Attorney).1
_______
Before Cataldo, Wellington and Lynch,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Samsung Electronics Co., Ltd., filed an application to register on the
Principal Register the mark INVISIBLE CONNECTION (in standard characters,
CONNECTION disclaimed) identifying “Electric cables, wires, conductors and

1 The involved application was reassigned to the Trademark Examining Attorney listed above
after the appeal was instituted.
Serial No. 87285538

- 2 -
connection fittings therefor; Connecting devices for televisions, namely, cable
connectors; Cable connectors” in International Class 9.2
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 of
likelihood of confusion with the cited registered mark INVISIBLE WIRE (in standard
characters, WIRE disclaimed) identifying,
Electrical current-carrying media, namely, standard electrical wiring
for industrial, commercial and residential applications, flat electrical
wiring, multipurpose electrical wiring, telephone wiring, loud speaker
wiring, low voltage electrical wiring, under surface electrical wiring,
video wiring, cable television wiring, multimedia wiring, optical signal
transmission media in the nature of cables, bundled electrical wiring,
signal-carrying media in the nature of electrical signal transmission
cables, non-uniform transmission line in the nature of audio cables,
video cables, data transmission cables and power transmission cables;
protective electrical wiring; electrical extension cords; telephone cords

in International Class 9.3
After the Examining Attorney made the refusal final, Applicant appealed and
requested reconsideration. The appeal resumed after the Examining Attorney denied
the request for reconsideration. Applicant and the Examining Attorney filed briefs.
We affirm the refusal to register.

2 Application Serial No. 87285538 was filed on December 30, 2016, amended to seek
registration under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), asserting May 8,
2017 as a date of first use of the mark in commerce, and asserting a claim of priority under
Trademark Act Section 44(d), 15 U.S.C. § 1126(d) based upon European Union Application
No. 16201171, filed on December 23, 2016.
Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
3 Registration No. 4920795 issued on the Principal Register on March 22, 2016.
Serial No. 87285538

- 3 -
I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. In re Guild Mortg. Co., 129 USPQ2d at 1162 (“In every case turning
on likelihood of confusion, it is the duty of the examiner, the board and this court to
find, upon consideration of all the evidence, whether or not confusion appears likely.
(Citation omitted) … In discharging this duty, the thirteen DuPont factors ‘must be
considered’ ‘when [they] are of record.’ (Citations omitted). This is true even though
‘not all of the DuPont factors are relevant or of similar weight in every case.’
(Citations omitted).”
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the relatedness of the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (the
Serial No. 87285538

- 4 -
“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.”); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
A. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration.” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the
consuming public may perceive [the respective goods or services of the parties] as
related enough to cause confusion about the source or origin of the goods and
services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir.
2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004).
The identified goods need not be identical or even competitive to find likelihood of
confusion. See, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000). “[L]ikelihood of confusion can be found ‘if the
respective goods are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.’” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Serial No. 87285538

- 5 -
Applicant’s goods include “electric cables, wires, conductors and connection
fittings therefor.” The goods in the cited registration include “standard electrical
wiring for industrial, commercial and residential applications, flat electrical wiring,
multipurpose electrical wiring, low voltage electrical wiring, under surface electrical
wiring,” and wiring for video, cable television and multimedia uses along with various
types of cables for optical and electrical signal transmission, audio, video, data and
power transmission.
The Examining Attorney contends that the respective goods are legally identical,
inasmuch as Applicant’s broadly identified electric cables and wires encompass the
more specifically identified cables and wires used for various purposes identified in
the cited registration. We find that Applicant’s electric cables and wires, without
limitation as to their application, encompass the more narrowly identified electrical
cables and wires used for various applications identified in the cited registration. In
other words, Registrant’s cables and wires used, e.g., for industrial, commercial and
residential applications, telephones, loud speakers, audio, video and data
transmission are subsumed under the more generally identified cables and wires
identified in the involved application. See In re Hughes Furniture Indus., Inc., 114
USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”). As a result, the goods in the cited registration are presumed
to be included among the goods in the application and are, in part, legally identical
thereto. Because the goods in the application and cited registration are legally
Serial No. 87285538

- 6 -
identical in part, there is no need for us to further consider the relatedness of the
goods.4 See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir.
1983) (holding that a single good from among several may sustain a finding of
likelihood of confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion must be found if there is
likely to be confusion with respect to any item that comes within the identification of
goods or services in the application).
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the goods identified in the
application and the cited registration are, in part, legally identical, we must presume
that the channels of trade and classes of purchasers for these goods are the same. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Genesco
Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and
in-part related nature of the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers through the same channels of
trade”); In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel in the same channels of

4 Notwithstanding, the Examining Attorney included with the July 8, 2018 Office Action at
.pdf 15-126 website evidence of Applicant’s goods and Registrant’s goods marketed, often
under the same mark, by third parties in their physical locations and webpages.
Serial No. 87285538

- 7 -
trade, and be sold to the same class of purchasers”). See also Octocom Sys., Inc., 16
USPQ2d at 1787 (“The authority is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the identification of goods set forth
in the application regardless of what the record may reveal as to the particular nature
of an applicant’s goods, the particular channels of trade or the class of purchasers to
which the sales of goods are directed.”).5
We find that the in-part legal identity of the goods, and their overlapping channels
of trade and consumers weigh heavily in favor of likelihood of confusion.
B. Strength of the Cited Mark / Number and Nature of Similar Marks
We next evaluate the strength of the registered mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the “fame” or strength of the prior
mark, and the sixth factor is the number and nature of similar marks in use for
similar goods or services. DuPont, 177 USPQ at 567. In determining strength of a
mark, we consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”).
Turning first to inherent strength, the Examining Attorney submitted with the
July 8, 2018 Office Action6 the following definition:

5 The Examining Attorney’s evidence noted above further supports this finding.
6 At .pdf 11-12 (ahdictionary.com).
Serial No. 87285538

- 8 -
• wire – metal that has been drawn out into a strand or rod, used chiefly
for structural support, as in concrete, and for conducting electricity,
when it is usually insulated with a rubber or plastic cladding; a strand
or rod of such material, or a cable made of such strands twisted together.
Applicant submitted with its January 7, 2019 Request for Reconsideration7 the
following definition:
• invisible – incapable of being seen; not perceptible by vision; inaccessible
to view.
Based upon these definitions, the registered mark INVISIBLE WIRE suggests a
feature or characteristic of the identified goods, namely, that they consist of or include
metal strands that conduct electricity and are inaccessible to view or incapable of
being seen. There is no evidence regarding the registered mark’s commercial or
marketplace strength.8 Further, there is no evidence of third-party use. Cf. In re
FabFitFun, Inc., 127 USPQ2d at 1673-4. Neither is there evidence of third-party
registration of similar marks for related goods. Cf. Juice Generation, Inc. v. GS Enters
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015). In addition, the disclaimed

7 At .pdf 6-7; 7 TTABVUE 6-7 (merriam-webster.com).
8 Because of the nature of the evidence required to establish the fame of a registered mark,
the Board normally does not expect an examining attorney to submit evidence as to the fame
of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11
(TTAB 2006).
Serial No. 87285538

- 9 -
term WIRE appears, at best, to be highly descriptive of the goods identified in the
cited registration. We therefore find that the registered INVISIBLE WIRE mark is
to be accorded a somewhat narrower scope of protection than that to which arbitrary
and strong marks are entitled due to the suggestive nature of the term INVISIBLE
and the highly descriptive nature of the term WIRE. See Joseph Phelps Vineyards,
LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir.
2017) (stating that likelihood of confusion fame varies along a spectrum from very
strong to very weak).
C. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”) (citation omitted). In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018). “The proper test is not a side-by-side
comparison of the marks, but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons who encounter the marks
Serial No. 87285538

- 10 -
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 101 USPQ2d at 1721 (internal quotation marks omitted).
See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB
2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Consumers may
not necessarily encounter the marks in proximity to one another and must rely upon
their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d at 1468.
Applicant’s mark INVISIBLE CONNECTION and Registrant’s mark INVISIBLE
WIRE are similar inasmuch as they share the term INVISIBLE as the first term in
both marks. Applicant argues9
The Examining Attorney’s rejection focuses on the term INVISIBLE
shared by both marks. “INVISIBLE” has the meaning of “incapable by
nature of being seen” or “of such small size or unobtrusive quality as to
be hardly noticeable.” (Internal citations omitted.) “Invisible” therefore
has a laudatory connotation in connection with goods such as “electrical
wiring for industrial, commercial and residential applications,” as it is
meant to communicate that such products will have the positive
attribute of not being seen or noticeable. Accordingly, “invisible” is a
highly suggestive term that is weak and entitled to only narrow
protection.

As discussed above, we agree with Applicant that INVISIBLE is suggestive of a
feature or characteristic of Registrant’s identified goods, namely, that they are
unobtrusive and hardly noticeable. However, Applicant’s argument overlooks the
highly descriptive, if not generic, nature of the disclaimed term WIRE in the
registered mark, identifying numerous types of “wiring.”

9 7 TTABVUE 6.
Serial No. 87285538

- 11 -
With regard to Applicant’s mark, the Examining Attorney submitted with the
April 3, 2017 Office Action10 and July 8, 2018 Office Action11 the following definition:
• connection – a physical link, such as by wire or fiber-optic cable, between
two or more points in a telecommunications system; the placing of parts
of an electric circuit in contact so that a current may flow.
The disclaimed term CONNECTION in the applied-for mark is, at best, highly
descriptive of Applicant’s goods, including “connection fittings,” “connecting devices”
and “cable connectors.” It is well-settled that disclaimed, descriptive matter may have
less significance in likelihood of confusion determinations. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985));
In re Dixie Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”). There is 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 a consideration of the marks in
their entireties. In re Nat’l Data Corp., 224 USPQ at 751.

10 At .pdf 88-91 (oxforddictionaries.com)
11 At .pdf 11-12 (ahdictionary.com).
Serial No. 87285538

- 12 -
Thus, the registered INVISIBLE WIRE mark consists of the suggestive term
INVISIBLE followed by the highly descriptive or generic term WIRE. Similarly, the
applied-for INVISIBLE CONNECTION mark consists of the suggestive term
INVISIBLE followed by the highly descriptive term CONNECTION. Even if we agree
with Applicant that INVISIBLE should be accorded a narrower scope of protection
than an arbitrary term, it remains the sole distinctive term in both marks.
Further highlighting the importance of the term INVISIBLE in both Applicant’s
mark and the registered mark is its location as the first part thereof. See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994) (upon encountering the marks,
consumers will first notice the identical lead word); Presto Prod. Inc. v. Nice-Pak
Prod., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
“[I]f the dominant portion of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB
1985). The peripheral differences in this case, Applicant’s addition of the wording
CONNECTION and the presence in the registered mark of the following term WIRE
fail to sufficiently distinguish the marks. CONNECTION and WIRE, defined above,
are similar in meaning. Connection is defined, inter alia, as a link, such as by wire,
Serial No. 87285538

- 13 -
in an electrical or telecommunication system. The registered mark suggests an
unobtrusive electrical wire and Applicant’s mark similarly suggests an unobtrusive
wire link. Thus, one familiar with goods identified by the registered mark INVISIBLE
WIRE may believe that Applicant’s goods under its INVISIBLE CONNECTION mark
are compatible components in an “invisible” or less conspicuous wiring system.
Based upon the above analysis, we find that INVISIBLE CONNECTION is more
similar than dissimilar to INVISIBLE WIRE in terms of appearance, sound, and
especially connotation and overall commercial impression. As a result, consumers
encountering INVISIBLE CONNECTION likely would mistakenly believe that it
represents a variation on the registered mark used to identify cables, wires,
conductors and connectors emanating from the same source. This is particularly the
case because, “[w]hen marks would appear on virtually identical ... [goods or] services,
the degree of similarity [of the marks] necessary to support a conclusion of likely
confusion declines.” See Century 21 Real Estate Corp. v. Century Life of America, 23
USPQ2d at 1700. See also ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In view thereof, the du Pont factor of the similarity of the marks favors a finding
of likelihood of confusion.
D. Consumer Sophistication
The fourth DuPont factor is the conditions under which and buyers to whom sales
are made. Applicant argues that
Here, consumers are likely to use a high degree of care when purchasing
either Registrant’s or Applicant’s products. Both Registrant and
Serial No. 87285538

- 14 -
Applicant sell products used to connect or attach sophisticated and/or
expensive equipment such as televisions or audio and video equipment.
This means Registrant’s and Applicant’s products will most likely be
purchased either by audio-visual professionals or consumers closely
attuned to the technical specifications and capabilities of the products.
For instance, consumers for this class of products will likely inspect the
products to determine their technical specifications such as connector
type, compatibility, voltage, insulation, length and other requirements.
Thus, any likelihood of confusion between use of INVISIBLE WIRE and
INVISIBLE CONNECTION will be minimized.12

Because the wires, cables, conductors and connectors identified in the involved
application and cited registration are not restricted by price point, we must presume
that they include wires, cables and connectors at all price points and offered to the
full range of usual consumers for such goods. Stone Lion, 110 USPQ2d at 1162
(stating that registrability must be decided based on the identification of goods or
services “‘regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
sales of the goods are directed’”) (quoting Octocom, 6 USPQ2d at 1787); In re Hughes
Furn. Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). That is, Applicant’s and
Registrant’s wires, conductors and connectors must be presumed to includes both
modestly priced wires and connectors subject to casual purchase by less sophisticated
buyers as well as more expensive and specialized wires and connectors directed
toward more technically oriented end consumers and audio-visual technicians. We
find that the fourth DuPont factor is neutral.

12 7 TTABVUE 9.
Serial No. 87285538

- 15 -
E. Conclusion
When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, we conclude that consumers familiar
with Registrant’s goods offered under its mark would be likely to believe, upon
encountering Applicant’s mark, that the goods originated with or are associated with
or sponsored by the same entity.
Decision: The refusal to register Applicant’s proposed mark is affirmed under
Section 2(d) of the Trademark Act.