Scientific Solutions, Inc.v.Scientific Solutions, LLC

Trademark Trial and Appeal Board

Mar 30, 2012

No. 92051031 (T.T.A.B. Mar. 30, 2012)

Mailed: March 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Scientific Solutions, Inc.
v.
Scientific Solutions, LLC
_____

Cancellation No. 92051031
_____

Scientific Solutions, Inc., pro se.

Jacques Catafago of The Catafago Law Firm PC for Scientific
Solutions, LLC.
______

Before Seeherman, Holtzman and Kuhlke, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:
Petitioner, Scientific Solutions, Inc., filed a petition to
cancel a registration owned by Scientific Solutions, LLC
(respondent) for the mark shown below on the Principal Register
for "dietary and nutritional supplements" in Class 5.1 The

1 Registration No. 3564203; issued January 20, 2009 from an application
filed on June 10, 2008. “The color(s) blue, green, black, and grey
is/are claimed as a feature of the mark.”

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Cancellation No. 92051031
2
wording SCIENTIFIC SOLUTIONS is disclaimed.2

As its ground for cancellation, petitioner asserts
likelihood of confusion under Section 2(d) of the Trademark Act.3
Petitioner alleges that respondent's mark when applied to
respondent's goods so resembles petitioner's previously used and
registered marks consisting of or including the term SCIENTIFIC
SOLUTIONS as to be likely to cause confusion. Petitioner has
pleaded ownership of Registration No. 2406359 for the mark
SCIENTIFIC SOLUTIONS and Registration No. 2406360
for the mark SCIENTIFIC SOLUTIONS (and design), both for the
following goods in Class 9:
Computer hardware and software for use in the fields of
industrial automation and scientific and engineering data
acquisition, control and analysis and for controlling,
monitoring and emulating scientific and engineering
instruments and instrumentation systems, and for performing
instrumentation functions, and instruction manuals sold
therewith.

Respondent filed an answer denying the salient allegations
in the petition.

2 The disclaimer was included in respondent’s original application.
3 Petitioner’s pleaded claim of dilution was neither tried nor argued,
and it will be given no further consideration.
Cancellation No. 92051031
3
The record includes the pleadings and the file of the
involved registration. In addition, petitioner submitted the
testimony, with exhibits, of Ellen E. Reardon, petitioner’s sales
account manager and Dean B. Cawthon, petitioner’s president. The
exhibits consist of printouts of petitioner’s pleaded
registrations obtained from the USPTO's TESS electronic database
and the affidavits of each witness attesting to purported
instances of actual confusion.4
Respondent did not attend the deposition of petitioner's
witnesses; nor did respondent introduce any testimony or other
evidence in its own behalf. Only petitioner filed a brief.
Standing and Priority
Petitioner has shown through the TESS printouts made of
record that petitioner is the owner of its pleaded registrations
and that the registrations are valid and subsisting.
Registration No. 24063595 is for the typed mark SCIENTIFIC
SOLUTIONS and Registration No. 24063606 is for the mark shown
below.

4 The witnesses testified as to the truth and accuracy of the
statements made in their affidavits and, accordingly, the affidavits
are properly of record.
5 Issued November 21, 2000; renewed.
6 Issued November 21, 2000; renewed. “The lining is a feature of the
mark and does not indicate color.”
Cancellation No. 92051031
4
Both marks are registered for "computer hardware and software for
use in the fields of industrial automation and scientific and
engineering data acquisition, control and analysis and for
controlling, monitoring and emulating scientific and engineering
instruments and instrumentation systems, and for performing
instrumentation functions, and instruction manuals sold
therewith," in Class 9.
The word SCIENTIFIC is disclaimed in Registration No.
2406360 only.
Because petitioner’s registrations are of record, petitioner
has established its standing. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ
185, 189 (CCPA 1982).
In a cancellation proceeding, where both parties own
registrations, petitioner must prove priority of use. See
Brewski Beer Co. v. Brewski Brothers, Inc., 47 USPQ2d 1281 (TTAB
1998) and cases cited therein. Because petitioner's
registrations are of record, petitioner may rely on the
registrations as proof that the mark was in use as of the filing
date of the underlying applications. See J. C. Hall Company v.
Hallmark Cards, Incorporated, 340 F.2d 960, 144 USPQ 435, 437
(CCPA 1965).
Both of petitioner’s registrations issued from applications
filed on January 10, 2000. This date is long prior to the June
Cancellation No. 92051031
5
10, 2008 filing date of respondent's underlying application,
which is the earliest date on which respondent is entitled to
rely given the absence of any evidence of earlier use. Thus,
petitioner has established its priority.
Likelihood of Confusion
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 issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”).
In our analysis we will focus on petitioner’s mark which can
be considered closest to the mark in the subject registration,
namely Registration No. 2406359 for the typed mark SCIENTIFIC
SOLUTIONS.
The Marks
We turn first to a comparison of respondent’s mark
SCIENTIFIC SOLUTIONS (and design) with petitioner’s mark
SCIENTIFIC SOLUTIONS and a determination of the similarity or
Cancellation No. 92051031
6
dissimilarity of the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
While marks must be compared in their entireties, one
feature of a mark may have more significance than another in
creating a commercial impression, and in such a case there is
nothing improper in giving greater weight to that more
significant feature. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
The wording SCIENTIFIC SOLUTIONS is petitioner’s entire mark
and that same wording is the entire literal portion of
respondent's mark. Thus, the marks are identical in sound. In
terms of appearance, the marks differ to the extent that
respondent’s mark includes a design element which is not present
in petitioner’s mark. However, the wording SCIENTIFIC SOLUTIONS
makes a strong visual impression apart from the design, and the
design does not detract from that impression. It is also the
wording itself, rather than the design, that is likely to have a
greater impact on purchasers and be remembered by them. See CBS,
Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)
("in a composite mark comprising a design and words, the verbal
portion of the mark is the one most likely to indicate the origin
of the goods to which it is affixed"). The word portion of a
composite word and design mark is generally accorded greater
Cancellation No. 92051031
7
weight because it would be used by purchasers to request the
goods. See In re Appetito Provisions Co., 3 USPQ2d 1553, 1554
(TTAB 1987). Furthermore, with or without the design, the two
marks have the same meaning and create the same commercial
impression. The design in respondent’s mark may add to the
commercial impression created by the words SCIENTIFIC SOLUTIONS,
but it does not change the commercial impression in any
significant way.
We also point out that although the wording is disclaimed in
respondent’s mark, it remains the most significant part of the
mark. It is well settled that a disclaimer "has no legal effect
on the issue of likelihood of confusion." National Data, 224
USPQ at 751. The disclaimed words “still form[] a part of the
mark and cannot be ignored in determining likelihood of
confusion.” Giant Food, Inc. v. Nation's Foodservice, Inc., 710
F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (finding GIANT to
be the dominant portion of a mark consisting of the words GIANT
HAMBURGERS with a large background design, even though the
wording GIANT HAMBURGERS was disclaimed).
Because the literal portions of the marks are identical, the
marks as a whole are very similar in sound, appearance, meaning
and commercial impression.
The du Pont factor regarding the similarity of the marks
favors petitioner.
Cancellation No. 92051031
8
Goods/Channels of Trade/Purchasers
The greater the degree of similarity in the marks, the
lesser the degree of similarity that is required of the goods on
which they are used in order to support a finding of likelihood
of confusion. See Helene Curtis Industries Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618 (TTAB 1989); and In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
However, the goods must still be related in some viable
manner such that they would be encountered by the same persons
under circumstances that could, because of the similarity of the
marks used thereon, give rise to the mistaken belief that they
emanate from or are associated with the same source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Even if
the marks are identical, if these conditions do not exist, we
have held that confusion is not likely. See In re Unilever
Limited, 222 USPQ 981 (TTAB 1984) and In re Fesco, Inc., 219 USPQ
437 (TTAB 1983).
Respondent’s goods are “dietary and nutritional
supplements.” Petitioner’s goods comprise computer hardware and
software and they are identified as follows:
Computer hardware and software for use in the fields
of industrial automation and scientific and
engineering data acquisition, control and analysis
and for controlling, monitoring and emulating
scientific and engineering instruments and
instrumentation systems, and for performing
instrumentation functions, and instruction manuals
sold therewith.

Cancellation No. 92051031
9
Respondent’s dietary and nutritional supplements, which are
ordinary consumer goods, and petitioner’s computer goods with
highly technical and specialized functions and purposes, are
vastly different products. Furthermore, these goods appear
wholly unrelated on their face, and petitioner has failed to
show, or even explain, any commercial relationship between them.
In addition, these vastly different products, by their very
nature, would be sold in completely different marketing channels.
The customary channels of trade for nutritional supplements might
include drug stores and grocery stores. These would not be the
customary channels of trade for computer hardware and software
used for controlling scientific instrumentation systems.
Petitioner, however, maintains that the channels of trade
for the respective goods overlap in that both parties market
their products over the Internet. There is no evidence of record
showing how petitioner’s goods are marketed or sold,7 and its
evidence regarding respondent’s trade channels is unpersuasive.
Petitioner refers to respondent’s specimen label which displays
the product mark “Sports Oxyshot”8 and includes a reference to
the website “scientificsolutions.com” as part of the company

7 Petitioner points in its brief to information contained in the file
for its pleaded registration. Petitioner made the registration itself
of record, but not the contents of the registration file, and therefore
this evidence cannot be considered. The Board does not take judicial
notice of registration files. See Beech Aircraft Corp. v. Lightning
Aircraft Co., 1 USPQ2d 1290, 1293 (TTAB 1986).
8 Respondent’s mark SCIENTIFIC SOLUTIONS (and design) appears as a
house mark on the label.
Cancellation No. 92051031
10
address. While the label mentions a website, there is nothing to
indicate that the product can be purchased at the website or even
that the product is advertised on the website. In any event,
“the mere fact that goods and services may both be advertised and
offered through the Internet is not a sufficient basis to find
that they are sold through the same channels of trade.”9 Parfums
de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012, 1021 (TTAB 2007). Nor
would the common presence of the parties’ marks on the Internet
prove that the goods offered under the marks would be perceived
as emanating from a common source.
The parties’ goods would also be offered to different
classes of purchasers. Respondent’s nutritional supplements
would be purchased by ordinary consumers. Petitioner’s goods, in
contrast, are sold to “end users, OEM’s, universities, research
labs, pharmaceutical companies, drug and nutritional companies.”
Reardon Test., p. 3. The “end users” who would purchase
petitioner’s highly specialized computer products, for example,
scientists and engineers, are not ordinary consumers.
Nevertheless, petitioner maintains that both products are
marketed “to nutritional consumers and marketplace.”

9 Contrary to petitioner’s contention, the mere fact that a media
representative mistakenly contacted petitioner instead of respondent as
a potential candidate for advertising in his publication is not
evidence that the respective goods are commercially related or that
they travel in the same trade channels. This evidence, along with
petitioner’s other asserted evidence of actual confusion will be
addressed later in this opinion.
Cancellation No. 92051031
11
While it is possible that the scientists and engineers who
may purchase or use petitioner’s goods would also purchase
dietary and nutritional supplements, the likelihood for any kind
of confusion as to the source or sponsorship of the parties'
goods is de minimis. See, e.g., Electronic Design & Sales Inc.
v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388,
1392-93 (“[O]pposer urges that persons who use opposer's data
processing and telecommunications services at work and who buy
batteries at retail stores would be confused as to source....
[T]he potential for confusion appears a mere possibility not a
probability”).
Furthermore, to the extent that the purchasers for the
respective goods overlap, this group of purchasers would be
highly sophisticated and knowledgeable in their purchasing
decisions. Considering the highly technical and specialized
nature of petitioner’s goods, it is very unlikely that such
purchasers would believe, upon seeing respondent’s nutritional
supplements, that they were in any way connected with the
computer products of petitioner. See Electronic Design & Sales,
21 USPQ2d at 1392 (“sophistication is important and often
dispositive because sophisticated consumers may be expected to
exercise greater care.”).
We find that the du Pont factor regarding the similarity or
dissimilarity of the goods weighs heavily in favor of respondent,
Cancellation No. 92051031
12
and that the factors regarding the trade channels and purchasers
for the goods weigh in favor of respondent as well.
Actual Confusion
Petitioner argues that actual confusion has already occurred
between petitioner’s and respondent’s marks. In support of this
contention, petitioner points to four misdirected phone calls
which it received between 2008 and 2009, the period during which
both parties were using their marks. Two of the misdirected
calls were received by Ms. Reardon, and she recounts her
conversations with those callers:
●I received a telephone call from a rather
embarrassed gentleman looking to purchase our male
enhancement product. When I indicated that we do not
have this product, he wanted to know if he had
reached Scientific Solutions, which I indicated he
had. He then asked if it was a different department
or division of the company that distributed our
medical products.

●I received a telephone call from a woman wanting to
purchase vitamins from us. Again, I had to explain
that she did not have the correct company. The woman
then asked how to get in contact with the Scientific
Solutions that sold vitamins.

The two other calls were received by Mr. Cawthon. He
describes those conversations as follows:
●This individual was angry about his order and
subsequent credit card charges by Scientific
Solutions and wanted the charges reversed. ... Only
after a prolonged conversation did I determine the
individual was confused regarding the source of the
goods he had purchased. The individual indicated he
had purchased a male enhancement pill called
Viraplex. When I informed the individual that we did
not sell that product nor charge his card, he became
even more angry and thought I was trying to deceive
him. He then asked to talk to someone else who
Cancellation No. 92051031
13
worked in the division of the company that sold the
pills. ... [Ultimately] he said he would contact
his credit card company and we would have to deal
with them and then ended the call.

●[“a National Account Executive of Bluff media”]
called us...and indicated they had done research on
Scientific Solutions and thought we would be good
candidates for advertising in their publication. As
I was not familiar with Bluff media, I asked the
executive to send me information, advertising rates
and closing dates. ... The executive followed up
with a number of calls emails [sic] to which I
indicated I would have to review the information
after the first of the year. Only after further
discussions, and after the executive had mentioned
the OxyShot product, did I become aware that the
executive had confused Petitioner with the Applicant
[sic] regarding the source of goods.

We find this evidence of no probative value on the question
of confusion as to the source of respondent’s nutritional
supplements. These individuals were clearly confused, but the
nature of that confusion is entirely unclear from the testimony.
Mr. Cawthon’s judgments regarding the callers’ confusion “as to
source” are his own assessment and they are unsupported by any
underlying facts or details. Indeed, petitioner has offered no
testimony as to what caused these individuals to contact
petitioner instead of respondent. There could be any number of
reasons for the mistake other than confusion as to source for
respondent’s and petitioner’s goods. They may have mistaken one
mark for the other, which would account for their misdirected
calls, but there is no indication that mistake occurred because
of any belief that respondent’s nutritional supplements came from
the same source as petitioner’s computer goods. In fact, it is
Cancellation No. 92051031
14
not even clear that the callers were aware of petitioner’s goods.
We simply cannot infer from the vague and limited information
provided by the witnesses that these individuals were prompted to
call petitioner as a result of any confusion due to the source of
the parties’ goods, particularly considering the complete lack of
similarity between the goods.10
Because we find that petitioner’s evidence of actual
confusion is not entitled to any probative value, this du Pont
factor is neutral.
Conclusion
Notwithstanding the close similarity of the parties’ marks,
when we consider the respective goods of the parties, which are
so fundamentally dissimilar and sold in different trade channels
to different classes of purchasers, we find that a likelihood of
confusion does not exist.
Decision: The petition to cancel is denied.

10 We also point out that the media executive who mistakenly tried to
sell petitioner advertising space in his publication is not a potential
purchaser for either party’s goods, and any confusion on the part of
this individual is irrelevant.