Sun Chlorella Corp.

Trademark Trial and Appeal Board

Aug 19, 2015

No. 85256221 (T.T.A.B. Aug. 19, 2015)

Mailed:
August 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sun Chlorella Corp.
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Serial No. 85256221
_____

Mark B. Harrison and Jeremy M. Klass of Venable LLP for Sun Chlorella Corp.

Susan K. Lawrence, Trademark Examining Attorney, Law Office 116 (Christine H.
Cooper, Managing Attorney).
_____

Before Kuhlke, Wolfson and Masiello, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Sun Chlorella Corp., filed an application to register on the
Principal Register the standard character mark DYNO-MILL PULVERIZED
PROCESS for goods identified as “Dietary supplements; nutritional supplements,”
in International Class 5.1
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 with the

1 Application Serial No. 85256221 was filed on March 2, 2011, 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). On March 11, 2014, Applicant filed a statement of use alleging March
3, 2013 as the date of first use and first use in commerce.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
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identified goods, so resembles the stylized mark registered on
the Principal Register for “grinding mills and pulverizers for dyes and
pharmaceuticals, especially for the dispersion of suspensions” in International Class
7,2 as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed, and Applicant and the
Examining Attorney filed briefs.
PROSECUTION HISTORY
By way of background, during examination, the original Examining Attorney
required and obtained from Applicant a disclaimer of the wording “PULVERIZED
PROCESS.” The application was approved for publication on July 14, 2011 and
published for opposition on August 23, 2011. After clearing the publication period,
the USPTO issued a notice of allowance on October 18, 2011. Subsequently, on
March 11, 2014, Applicant filed its statement of use accompanied by its specimen
shown below:

2 Registration No. 0988852, issued on July 23, 1974, Sections 8 and 15 accepted and
acknowledged, renewed.

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Although difficult to discern in this reproduction of the specimen, the ®
symbol is next to the word DYNO and ™ is next to the word PROCESS. This is
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similar to an example of Applicant’s packaging submitted by the Examining
Attorney shown below:3

In the April 2, 2014 Office action, the Examining Attorney noted that the
statement of use is acceptable, but issued a new refusal under Section 2(d). The
appearance of the registration symbol for the word DYNO alone in the specimen of
use and the manner of use on the specimen likely prompted the additional search
for any existing registrations for the word DYNO, including in Class 7, and any
connection to the assertions in Applicant’s proposed mark, i.e., that its goods are
manufactured or “pulverized” by a DYNO brand mill. It was not until the
registration symbol appeared in the specimen of use submitted with the statement
of use that the prior registration was found.
The Applicant notes that no oppositions were filed and it filed four extension
requests after the notice of allowance issued and a statement of use. Applicant
requests that in the event the refusal is not withdrawn that “all USPTO fees paid
following issuance of the Notice of Allowance” be refunded because “the USPTO did

3 September 30, 2014 Office action, TSDR p. 5.
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not raise the issue on appeal until after filing fees for four extensions of time and
the statement of use fee had been paid, even if Office practice technically permits
such piecemeal and prejudicial prosecution.” App. Br. p. 10, 4 TTABVUE 14.
The statute expressly prohibits registration of a mark that is likely to cause
confusion, 15 U.S.C. § 1052(d). The Trademark Manual of Examining Procedure
(TMEP) provides that an Examining Attorney may not make a new refusal after the
filing of a statement of use not related to matters concerning the statement of use,
unless it would result in issuance of a registration in violation of the Act. TMEP §
1109.08 (July 2015); see In re Driven Innovations, Inc., 115 USPQ2d 1261, 1264-5
(TTAB 2015) (applicant may not directly challenge examining attorney’s clear error
determination, either by petition to Director or on appeal to Trademark Trial and
Appeal Board). Further, “if the examining attorney determines that, based on use
on the specimen, for example, a second search [for conflicting marks] is necessary,
the examining attorney will conduct a second search and take any action that is
appropriate.” TMEP § 1109.08.
There is no provision in the law or Trademark Rules to refund fees paid for
filing extensions of time, or for ultimately filing a statement of use, even one that
results in issuance of a necessary refusal after the filing of the statement of use. In
particular, under these circumstances, where a specimen may prompt a wider
search that resulted in the discovery of the prior registration (about which
Applicant appears to evidence its knowledge by placing the registration symbol on
its packaging), there is no basis upon which to refund fees.
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LIKELIHOOD OF CONFUSION
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Further, “[a]lthough
confusion, mistake or deception about source or origin is the usual issue posed
under Section 2(d), any confusion made likely by a junior user’s mark is cause for
refusal; likelihood of confusion encompasses confusion of sponsorship, affiliation or
connection.” Hilson Research, Inc. v. Society for Human Resource Management, 27
USPQ2d 1423, 1429 (TTAB 1993); see also Majestic, 65 USPQ2d at 1205
(“...mistaken belief that [a good] is manufactured or sponsored by the same entity ...
is precisely the mistake that Section 2(d) of the Lanham Act seeks to prevent”).
SIMILARITY OF THE MARKS
We consider the marks DYNO-MILL PULVERIZED PROCESS and
, and compare them “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) quoting du Pont, 177 USPQ at 567.
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The Examining Attorney points out that the dominant element of Applicant’s
mark is the term DYNO and is identical to the entirety of Registrant’s mark. She
argues that “Applicant’s addition of the descriptive wording, MILL and
PULVERIZED PROCESS, to the already-registered mark does not obviate a finding
of confusion.” Ex. Att. Br., 6 TTABVUE 6. Rather she contends that consumers are
likely to focus on the non-descriptive, first portion of the mark, which will “lead to
the mistaken belief that the marks identify a common source for the goods.” Id.
In addition, the Examining Attorney contends that the term DYNO in
Applicant’s mark “is a clear reference to registrant’s goods.” Id. In support of this
argument she submitted examples of Applicant’s packaging (reproduced above)
which show that Applicant uses the registration symbol after the term DYNO. She
argues that use of the symbol “is a concession by applicant that a part of its mark is
registered by another.” Id. She continues that in addition to owning the registration
for the term DYNO, Registrant also uses the term DYNO®-MILL to refer to its
goods, as shown below:4

4 (www.wab.ch), September 30, 2014 Office action, TSDR p. 22. The pertinent text at the
top reads Willy A. Bachofen (Registrant) and makes reference to the DYNO®-Mill grinder
throughout.
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The Examining Attorney also includes in the record examples from
Applicant’s website, shown below, “where the wording DYNO-Mill is consistently
used with the registration symbol after DYNO (e.g., ‘DYNO®-Mill is a unique
method of processing chlorella,’ and The Dyno®-Mill is the only method of
processing chlorella that maintains its vital nutrients.).” She argues this shows an
intent to refer to Registrant’s goods. Id. at 7.
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5
From this evidence, the Examining Attorney concludes that “the known
circumstances surrounding applicant’s use of its mark in the marketplace
demonstrate that the inclusion of the term DYNO is intended, not only to refer to
registrant’s goods, but to suggest a relationship with registrant.” Id. at 7.
The Examining Attorney also points to third-party websites where
Applicant’s goods are marketed with a reference to “our patented pulverization
process utilizing the DYNO-Mill machine.” The Examining Attorney contends that
all of these aspects of the use of Applicant’s mark “[a]t a minimum, … suggest[ ] a
connection between applicant and registrant …” Id. at 8.
Applicant responds that:

5 (www.sunchlorellausa.com), September 30, 2014 Office action, TSDR p. 2.
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In the present case, it is not the term DYNO alone which
creates the commercial impression of Applicant’s mark. It
is the combination of the term DYNO with the terms
MILL and PULVERIZED PROCESS that creates the
commercial impression of the Applicant’s mark. Further,
the overall design element in the registered mark is not
De minimis. Rather, it is significant in prominence. With
respect to the Examining Attorney’s allegation that
Applicant’s use of the term DYNO is a clear reference to
Registrant, there is absolutely no support for the
presumption that if that is so, it is sufficient to lead to a
likelihood of confusion. There still needs to be a basis for
finding a likelihood of confusion, i.e., a class of consumers
that is likely to be confused.
App. Br. pp. 4-5, 4 TTABVUE 8-9.
We view Applicant’s failure to deny that its use of DYNO is a direct reference
to Registrant as a concession that it is. Indeed based on this record, it would be
difficult, if not impossible, to dispute this. We note, however, that reliance on an
intentional reference to Registrant’s mark is not needed to find these marks
confusingly similar.
We agree that the DYNO portion of Applicant’s mark is the dominant portion
of the mark as the other features of Applicant’s mark are merely descriptive. In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). It is the
DYNO portion that commands the source-identifying aspect of the proposed entire
mark. In addition, its placement at the beginning of the mark enhances that
dominance. Palm Bay Imports Inc., 73 USPQ2d at 1692. Moreover, because
Applicant seeks registration in standard characters, its mark is not limited to any
particular depiction. The rights associated with a mark in standard characters
reside in the wording and not in any particular display. In re RSI Systems, LLC, 88
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USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012,
2015 (TTAB 1988). The stylization in Registrant’s mark cannot serve to distinguish
the marks, inasmuch as we must consider Applicant’s mark “regardless of font
style, size, or color.” Citigroup Inc. v. Capital City Bank Group Inc., 98 USPQ2d
1253, 1258-59 (Fed. Cir. 2011). See also In re Viterra Inc., 101 USPQ2d at 1908.
Thus, the dominant portion of Applicant’s mark, DYNO, is identical to the entirety
of Registrant’s mark. It is well established that the addition of other matter to the
entirety of another’s mark may not be sufficient to distinguish the marks and even
more so if the addition comprises non-distinctive matter. The Wella Corporation v.
California Concept Corporation, 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(“When one incorporates the entire arbitrary mark of another into a composite
mark, inclusion in the composite mark of a significant, nonsuggestive element will
not necessarily preclude a likelihood of confusion. And inclusion of a merely
suggestive or descriptive element, of course, is of much less significance in avoiding
a likelihood of confusion.” Citations omitted). See also Stone Lion Capital Partners,
L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014)
(STONE LION CAPITAL confusingly similar to LION CAPITAL where LION
dominant portion of the mark and applicant’s mark incorporates the entirety of
opposer’s mark).
With regard to the connotation and commercial impression, for the term
DYNO it is the same for both marks. The addition of the wording MILL
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PULVERIZED PROCESS simply provides additional meaning to Applicant’s mark
but does not change the meaning or commercial impression of the word DYNO.
In addition, in this unusual case, the meaning of the additional wording in
Applicant’s mark takes on special importance. A reasonable interpretation of the
meaning of Applicant’s mark is “the manufacture of this product involves use of the
DYNO brand mill machine.” This interpretation of the meaning of the mark is
confirmed by the marketing materials of Applicant.6 Thus, the mark delivers the
unmistakable message that there is some type of connection or affiliation with the
owner of the DYNO brand. In this ex parte proceeding, the owner of the DYNO
brand appears to be Registrant, as the cited registration indicates that Registrant is
the owner of the mark for grinding mills. 15 U.S.C. § 1057(b).
We make our ultimate conclusion on our “consideration of the marks in total.”
In re Viterra Inc., 101 USPQ2d at 1908. Here, we find that the marks are similar, in
particular in meaning, and this du Pont factor weighs heavily in favor of a finding of
likelihood of confusion.
SIMILARITY OF THE GOODS/CHANNELS OF TRADE/CONSUMERS
With regard to the goods, channels of trade and classes of consumers, we
must make our determinations under these factors based on the goods as they are
identified in the registration and application. See In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1161; Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom

6 (www.sunchlorellausa.com) September 30, 2014 Office action, TSDR pp. 2, 5.
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Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
The goods and/or services do not have to be identical or even competitive in
order to find that there is a likelihood of confusion. In re Iolo Techs., LLC, 95
USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366,
1368 (TTAB 2009). “[E]ven if the goods in question are different from, and thus not
related to, one another in kind, the same goods can be related in the mind of the
consuming public as to the origin of the goods. It is this sense of relatedness that
matters in the likelihood of confusion analysis.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000). See also In re Shell Oil Co., 992
F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Safety-Kleen Corp. v.
Dresser Indus., Inc., 518 F.2d 1399, 1403–04, 186 USPQ 476, 480 (C.C.P.A. 1975);
In re Ass’n of the U.S. Army, 85 USPQ2d 1264, 1270 (TTAB 2007). It is sufficient
that the goods and/or services of the applicant and the registrant are related in
some manner or that the conditions surrounding their marketing are such that they
are likely to be encountered by the same persons under circumstances that, because
of the marks used in connection therewith, would lead to the mistaken belief that
they originate from the same source. See, e.g., On-line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
Weider Publ'ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347 (TTAB 2014).
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The Examining Attorney, to support her contention that the goods are
related, points to Applicant’s website and third-party websites showing that
Registrant’s goods are used to pulverize chlorella, one of Applicant’s dietary
supplements. For example, the “DYNO-Mill Process” is explained on Applicant’s
website in the following text:
DYNO-Mill Process
Chlorella’s tough cell protects the potency of this ancient,
delicate life form, which has allowed it to flourish on the
Earth for 540 million years. It also inhibits its digestion
and the absorption of its nutrients in the human body.
This is because the body lacks an enzyme needed to digest
cellulose – the compound that makes up chlorella’s cell
wall. In this way, the tough cell wall of chlorella is a
barrier to absorption of its nutrients by the body.
Improved Digestion With Pulverized Cell Wall
Chlorella
Our proprietary technology pulverizes the cell wall of
chlorella, making a dramatic improvement in its
digestibility. This cell wall pulverization technology is an
ideal physical method in accordance with natural law, not
using any chemicals, enzymes, or heat. Compared with
other chlorella manufacturing methods (methods that
crack the cell wall by heat, the so-called blanching
method, or a method that dissolves fibers by enzyme) the
digestibility of our pulverized cell wall Sun Chlorella, the
digestibility of Sun Chlorella improves dramatically,
reaching 85%.
Natural Detox With Sun Chlorella
DYNO®-Mill is a unique method of processing chlorella,
engineered by select research scientists under the
guidance of the late Mr. Hideo Nakayama of the Sun
Chlorella Corporation.
This method was designed to maximize total digestibility
of chlorella’s nutrients as well as its cell walls, which, if
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kept intact, compromise the bioavailability of key
purification constituents within the algae.
The DYNO®-Mill is the only method of processing
chlorella that maintains its vital nutrients, as it is heat
and chemical-free, using only mechanical means to
pulverize the cell wall.
Sun Chlorella is the only chlorella on the market to
achieve 85% pulverized cell wall, allowing for maximum
digestibility of its exceptional nutrients as well as its
purifying cell wall. Other methods prevent your body from
fully utilizing the nutritious cell wall. Our DYNO®-Mill
pulverization process has been recognized as the industry
leader, exclusive to Sun Chlorella.7
The Examining Attorney contends that, because Applicant touts using
Registrant’s machines on its website, as does the material from third-party websites
selling Applicant’s goods, “demonstrating applicant’s reliance on the DYNO-Mill
machine to process its goods, … there can be no doubt that the conditions
surrounding the marketing of applicant’s goods are such that a connection or
relatedness is established between the goods so that consumers will mistakenly
believe they come from the same source.” Ex. Att. Br., 6 TTABVUE 12.
As to channels of trade, the Examining Attorney argues that while “the goods
in question do not travel through the same channels of trade, the effect of
applicant’s use of its mark in the marketplace unambiguously establishes a
relationship between its goods and those of registrant.” 6 TTABVUE 13.
Applicant admits that the evidence shows that “goods of the type sold by the
Registrant may be used by supplement manufacturers such as the Applicant”; but

7 September 30, 2014 Office action, TSDR p. 2.
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argues that “It does not show that goods of the type produced by the Applicant and
goods of the type produced by the Registrant often, or even ever, emanate from a
common source.” App. Br. pp. 5-6, 4 TTABVUE 8-9.
Applicant asserts that:
Whether or not Applicant indicates that its goods are
manufactured utilizing the goods of the Registrant is
irrelevant. Consumers still need to be exposed to the
goods of each party under such circumstances as would
lead to a likelihood of confusion as to source.
App. Br. pp. 7-8, 4 TTABVUE 11-12.
As to channels of trade, Applicant points out that the goods do not travel
through the same channels of trade. In addition, Applicant asserts the respective
goods are not impulse purchases.
In its reply brief, Applicant essentially retreats to the position that it does not
matter that Applicant has appropriated Registrant’s mark and touts the use of
Registrant’s goods in making its dietary supplements, because there is no evidence
to support “(1) any overlap in the parties’ respective trade channels (2) the existence
of a class of consumers who encounter both Applicant’s dietary supplements and
Registrant’s manufacturing equipment; or (3) the contention that manufacturing
equipment and dietary supplements emanate from a single source, let alone under
the identical mark from such single source.” App. Reply Br. pp. 1-2, 7 TTABVUE 3-
4. To summarize Applicant’s ultimate position, Applicant uses Registrant’s mark
DYNO with the registration symbol and tacks onto it merely descriptive wording.
By applying for registration, Applicant is seeking to register, as part of its mark, the
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already registered mark for the machine used by Applicant to make its goods. By
Applicant’s logic, any purveyor of any good that does not own the manufacturing
apparatus, may tack on the manufacturer’s equipment mark, and claim it as its own
merely because the machine is involved in the creation of the good.8
The goods at issue are obviously different in nature. However, we agree with
the Examining Attorney that the intended effect of Applicant’s mark is an
important factor in this case. Every iteration of Applicant’s mark, as well as much of
Applicant’s marketing materials, points out to the consumer a connection between
the DYNO milling machine and Applicant’s goods, clearly conveying the message
that the DYNO milling machine is used in manufacturing Applicant’s goods. The
mark itself also strongly suggests to consumers that they should have an interest in
the type of milling machine used in making the goods. Applicant’s mark, by its very
words, educates the consumer as to the connection between the milling machine and
Applicant’s goods and urges the consumer to care about it. This is a highly
significant degree of product relatedness.
In addition, it is clear from the record that Applicant’s goods are of a type
which may be produced by Registrant’s type of grinders, and Registrant’s broad
identification of goods encompasses such grinders. Cf. Weider Publications, LLC v.
D&D Beauty Care Co., 109 USPQ2d 1347 (TTAB 2014) (applicant’s services are of a
type which are normally featured in opposer’s magazine). Even without the
evidence of Applicant’s use and reference to Registrant’s mill, taking into account

8 To the extent this does not cause confusion but rather points to another source, it cannot
function as a mark for Applicant.
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“the practicalities of the commercial world,” we find the goods to be related such
that confusion is likely, and that it is not a “mere theoretical possibilit[y].”
Electronic Design & Sales, Inc. v. Electronic Data Systems Corporation, 954 F.2d
713, 21 USPQ2d 1388 (Fed. Cir. 1992).
In view thereof, the du Pont factor of the similarity of the goods favors a
finding of likelihood of confusion.
With regard to trade channels, Applicant, in selecting its mark, has
essentially created a common channel through which the DYNO brand milling
machine is advertised with dietary and nutritional supplements, such that every
package and label on which the mark appears functions to raise the awareness of
the public with respect to DYNO brand milling machines. Every product of
Applicant on which Applicant’s mark appears in this record advertises the goods of
Registrant. The same is true of every advertisement of Applicant that touts the use
of the DYNO brand mill in manufacturing Applicant’s goods. Thus, these goods
travel in the same advertising and marketing trade channel.
With regard to the customers for the two different products, they are not from
wholly separate groups. Applicant’s customers, when they see Applicant’s mark, are
taught to care about the type of mill that was used in making the goods. Its
customers will view the DYNO brand as a sign of the quality of mill used in
manufacturing the purchased goods. If customers are dissatisfied with the quality of
Applicant’s goods, they may attribute such unsatisfactory quality to the DYNO
brand of mill used in making the goods. By Applicant’s own doing -- i.e., Applicant’s
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chosen manner of marketing its goods – Registrant’s reputation is laid before
Applicant’s customers for consideration. Applicant’s customers are therefore a class
of customers that matter to Registrant. In addition, those who purchase milling
machines would include both purchasers of dietary supplements, i.e., general
consumers, and other producers of dietary supplements using milling machines who
would be exposed to Applicant’s confusingly similar mark.
The law of likelihood of confusion “encompasses confusion of sponsorship,
affiliation or connection.” Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d at 1429. As is often stated, it is not necessary that the
goods and/or services be similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of confusion. In this case,
Applicant’s mark, which inherently references a milling machine through the
wording “MILL PULVERIZED PROCESS,” and the conditions and activities
surrounding the marketing of Applicant’s goods are such that the respective
reputations of Applicant and Registrant are inextricably intertwined: customers are
informed by the wording of Applicant’s mark that the quality of Applicant’s goods
depends upon the quality of Registrant’s goods. At a minimum, Applicant’s
customers are likely to perceive some form of association between the respective
goods of Applicant and Registrant. In addition, Registrant’s customers in the food
and supplement industry (dietary and nutritional supplement manufacturers using
milling machines), if exposed to the competitor’s mark, may mistakenly believe
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there is an association between Applicant and Registrant, which could affect their
decision to purchase Registrant’s grinding mill.
In setting forth the du Pont factors, the court cautioned that, with respect to
determining likelihood of confusion, “[t]here is no litmus rule which can provide a
ready guide to all cases.” du Pont, 177 USPQ at 567. Not all of the factors are
relevant and only those relevant factors for which there is evidence in the record
must be considered. Id. at 567-68; see also In re Mighty Leaf Tea, 601 F.3d 1342,
1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont factors are
relevant to every case, and only factors of significance to the particular mark need
be considered.”); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d
1201, 1204 (Fed. Cir. 2003) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1406-07,
41 USPQ2d 1531, 1533 (Fed. Cir. 1997)). Furthermore, the significance of a
particular factor may differ from case to case. See du Pont, 177 USPQ at 567-68;
Dixie Rests., 41 USPQ2d at 1533 (noting that “any one of the factors may control a
particular case”). In addition, to the extent the facts of a case fall outside the first
twelve du Pont factors, they may fall within the thirteenth factor, “[a]ny other
established fact probative of the effect of use.” du Pont, 177 USPQ at 567.
In this case, we hold that because the marks are highly similar, the meaning
of Applicant’s mark creates a clear association with the cited registered mark
DYNO, and the goods are related, in particular through the conditions and
activities surrounding their marketing, confusion is likely between Applicant’s
mark DYNO-MILL PULVERIZED PROCESS and the mark in
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the cited registration. Not only is likely confusion not de minimis here, given
Applicant’s marketing strategy it is a foregone conclusion.
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.