Spectrum Control, Inc.

Trademark Trial and Appeal Board

May 6, 2003

No. 76169361 (T.T.A.B. May. 6, 2003)

Mailed: 06 MAY 2003
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Spectrum Control, Inc.
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Serial No. 76/169,361
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Kenneth W. Wargo of Quinn, Buseck, Leemhuis, Toohey &
Kroto, Inc. for Spectrum Control, Inc.
Michele-Lynn Swain, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Cissel, Seeherman, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On November 22, 2000, Spectrum Control, Inc.
(applicant) filed an application to register the mark POWER
SAFE (in typed form) on the Principal Register for goods
ultimately identified as “computer controlled intelligent
power distribution units (PDUs) and basic PDUs for both
alternating current and direct current applications with
functions of remote control, sequential delivery of power
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/169,361
2
to outlets and monitoring of power load, voltage,
temperature and other variables” in International Class 9.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark POWERSAFE (in typed form) for “electric batteries”
in International Class 9.2 The examining attorney also
refused to register applicant’s mark because the
identification of goods uses a parenthesis for abbreviation
purposes.
When the refusals were made final, this appeal
followed.
The examining attorney argues that “[e]xcept for the
space in applicant’s mark, the marks are the same in sound
and appearance.” Brief at 2. The examining attorney also
found that applicant’s PDUs and registrant’s goods provide
power. In addition, the examining attorney maintains that
the goods are complementary because “PDUs may be used to
allocate power generated by electric batteries.” Brief at
3. Because the examining attorney found that purchasers
are likely to believe that POWER SAFE PDUs emanate from the
1 Serial No. 76/169,361. The application is based on an
allegation of applicant’s bona fide intent to use the mark in
commerce.
2 Registration No. 1,465,265, issued November 17, 1987,
Affidavits under Section 8 and 15 accepted or acknowledged.
Ser No. 76/169,361
3
same source as POWERSAFE electric batteries, the examining
attorney determined that there would be a likelihood of
confusion in this case. Regarding the identification of
goods, the examining attorney’s position is that, according
to TMEP § 1402.12, “the only time parentheses may be used
in an identification of goods is when the parentheses
merely explain or translate the matter preceding the
parenthetical phrase in such a way that it does not affect
the clarity of the identification. The parenthesis in
applicant’s identification is not used for explanation or
translation but for abbreviation purposes.” Brief at 6.
Applicant argues that the examining attorney “erred by
simply discounting the sophistication of the buyers” of its
products. Brief at 10. Applicant maintains that its goods
are “commercially-sold goods” and there is “not even
evidence to show that the same companies might be buying
the goods of the applicant and the registrant.” Id.
Finally, applicant points out that “‘power’ in connection
with PDUs and batteries or related items is not
particularly unusual.” Brief at 11. Applicant does not
discuss the requirement to amend its identification of
goods clause.3
3 Despite applicant’s failure to respond, we reverse this
requirement. We find that applicant’s use of the parenthetical
Ser No. 76/169,361
4
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
The first factors we consider in this case are the
similarities and dissimilarities of the marks. The marks
are POWER SAFE and POWERSAFE, both in typed form.
Therefore, the only difference between the marks in this
case is the absence of a space in registrant’s mark.
Obviously, the marks would be pronounced identically and
they would have the same meaning. The slight difference in
appearance that might be caused by the absence of a space
expression is helpful, logical, and grammatically correct. It
also provides “further information about the goods.” TMEP
§ 1402.12 (3rd ed. 2002) (The “power distribution units” are also
known as “PDUs”).
Ser No. 76/169,361
5
would not have any significant impact on their commercial
impressions. Stockpot, Inc. v. Stock Pot Restaurant, Inc.,
220 USPQ 52, 54 (TTAB 1983), aff’d, 737 F.2d 1576, 222 USPQ
665 (Fed. Cir. 1984) (“There is no question that the marks
of the parties [STOCKPOT and STOCK POT] are confusingly
similar. The word marks are phonetically identical and
visually almost identical”); In re Best Western Family
Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There
can be little doubt that the marks [BEEFMASTER and BEEF
MASTER] are practically identical”). Because the only
difference between these marks is that one contains a
space, the virtually identical nature of the marks is a
significant factor in our likelihood of confusion analysis.
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993) (“Without a doubt the word portions of the
two marks are identical, have the same connotation, and
give the same commercial impression. The identity of the
words, connotation, and commercial impression weighs
heavily against the applicant”). Finally, we agree with
applicant, who “concedes that the two marks are very
similar, and that this factor weighs against registration.”
Brief at 5.
Next, we look at the goods of applicant and registrant
to determine if there is a relationship between them. We
Ser No. 76/169,361
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must consider the goods as they are described in the
identification of goods in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“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”). The cited
registration contains no limitations so we must assume that
registrant’s electric batteries travel through all normal
channels of trade. Schieffelin & Co. v. Molson Companies
Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since
there are no restrictions with respect to channels of trade
in either applicant's application or opposer's
registrations, we must assume that the respective products
travel in all normal channels of trade for those alcoholic
beverages”). Therefore, we must assume that the registrant
is selling all types of electric batteries.
Furthermore, it is not necessary for the examining
attorney to show that the registrant and applicant are
competitors.
Ser No. 76/169,361
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[G]oods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such
that they would be likely to be seen by the same
persons under circumstances which could give rise,
because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties'
goods or services.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
See also Shell Oil, 25 USPQ2d at 1689 (“[E]ven when goods
or services are not competitive or intrinsically related,
the use of identical marks can lead to the assumption that
there is a common source”). Moreover, as discussed below,
the advertising indicates that the goods are likely to be
purchased by the same companies.
Applicant’s brochure states that: “To help our
customers distribute, control and monitor the power and
signals driving their networks and equipment, Spectrum
Control has formed the Advanced Systems Group.” The
examining attorney has included a definition of a battery
as a “device that produces electricity to provide power for
radios, cars, toys, etc.” Both applicant’s and
registrant’s goods are involved in providing power to
equipment. Applicant has admitted that its goods can be
used in conjunction with electric batteries. “Applicant’s
Ser No. 76/169,361
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goods act to distribute power which is produced elsewhere,
whether at the local electric company, an on-site
generator, or even an electric battery.” Response dated
September 28, 2001 at 2. Thus, PDUs and electric batteries
can be used in the same systems. This supports a finding
that the goods would be purchased by the same customers.
In addition, other evidence indicates that PDUs and
batteries are sold by the same companies. See Mega-Power
Power System Catalog (“Our product offerings include UPS
systems, DC rectifier systems, AC front-ends, batteries,
and power distribution systems”); DataCom Power, Inc. (On-
Line Power Power Distribution Units … We carry a full line
of Stationary Batteries”); Advanced Facilities, Inc.
(“Power Distribution Units (PDU)… Batteries”); Core Power,
Inc. (“Power Distribution Units (PDU) … Batteries”). This
evidence provides support for the argument that batteries
and power distribution systems would be sold to the same
purchasers from the same businesses and that the channels
of trade would overlap. Therefore, the goods of applicant
and registrant are related.
Applicant argues that purchasers of its goods are
sophisticated buyers based on the description of its goods
and its product information. However, when virtually
identical marks are used on complementary and related goods
Ser No. 76/169,361
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such as batteries and PDUs, even sophisticated purchasers
would likely be confused. In re Total Quality Group Inc.,
51 USPQ2d 1474, 1477 (TTAB 1999) (“[E]ven careful
purchasers are not immune from source confusion”). See
also In re Hester Industries, Inc., 231 USPQ 881, 883 (TTAB
1986) (“While we do not doubt that these institutional
purchasing agents are for the most part sophisticated
buyers, even sophisticated purchasers are not immune from
confusion as to source where, as here, substantially
identical marks are applied to related products”).
While applicant also argues that there is no evidence
that applicant’s mark is famous, there is no requirement
for an examining attorney to show that the cited mark is
famous before likelihood of confusion can be found. See
Majestic Distilling, 65 USPQ2d at 1205 (citation omitted)
(“Although we have previously held that the fame of a
registered mark is relevant to likelihood of confusion, we
decline to establish the converse rule that likelihood of
confusion is precluded by a registered mark’s not being
famous”). Finally, while applicant points to another
registration for the mark POW-R-SAFE for an electric tool
tester4 and that the term “power” is not an unusual term for
4 Registration No. 886,698.
Ser No. 76/169,361
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the goods of applicant and registrant, these facts do not
demonstrate that the cited registered mark is so weak that
the scope of protection to be afforded it would not extend
to prevent the registration of applicant’s mark.
Therefore, after considering all the relevant factors,
including the virtually identical nature of the marks and
the relatedness of the goods, we conclude that confusion is
likely.
Decision: The examining attorney’s requirement to
amend the identification of goods is reversed. The
examining attorney’s refusal to register applicant’s mark
POWER SAFE for the identified goods because of a prior
registration for the mark POWERSAFE for electric batteries
on the ground that it is likely to cause confusion is
affirmed.