The Sy-Klone Company, Inc.v.Korea Industrial Design CorporationDownload PDFTrademark Trial and Appeal BoardApr 29, 2008No. 91164490 (T.T.A.B. Apr. 29, 2008) Copy Citation Mailed: April 29, 2008 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ The Sy-Klone Company, Inc. v. Korea Industrial Design Corporation _____ Opposition No. 91164490 to application Serial No. 76460165 filed on February 13, 2003 _____ Ronald J. Shore of Antonelli, Terry, Stout & Kraus, LLP for The Sy-Klone Company, Inc. Anthony J. Dain, Frederick K. Taylor and Frederic G. Ludwig III of Procopio Cory Hargreaves & Savitch LLP for Korea Industrial Design Corporation. ______ Before Quinn, Hohein and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Korea Industrial Design Corp. has filed an application to register on the Principal Register the mark CYCLONE (in standard character form) for an “intake and exhaust air flow THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91164490 2 vane assembly device for use in an internal combustion engine.” in Class 7.1 Registration has been opposed by the Sy-Klone Company, Inc. on the ground of a likelihood of confusion with its previously used mark SY-KLONE. Opposer specifically alleges, inter alia, that “since at least as early as 1988, [it] has been, and is now, using the term SY-KLONE as a trademark, as a trade name and in its corporate name in connection with the sale of air intake systems for the air intakes of engines” (Opposition ¶ 3); that opposer’s use of its SY-KLONE mark has been “valid and continuous from a time prior to the October 17, 2002 filing date of [the involved application], and has been valid and continuous since said date of first use and has not been abandoned” (Id.); that opposer has built up extensive good will and consumer recognition of its mark through a “substantial amount of time and effort in advertising and promotion” (Opposition at ¶ 6); and that “in view of the similarity of Applicant’s mark CYCLONE to Opposer’s trademark, trade name and corporate name and the related nature of the goods of the respective parties, it is alleged that Applicant’s mark so resembles Opposer’s mark, trade name and corporate name, previously used in the United States and not abandoned, as 1 Serial No. 76460165, filed on October 17, 2002, based on an allegation of a bona fide intention to use the mark in commerce. Opposition No. 91164490 3 to be likely to cause confusion, or to cause mistake, or to deceive.” (Id.) Applicant, in its answer, has denied the essential allegations of the notice of opposition.2 PRELIMINARY MATTERS First, during the course of the testimony deposition of opposer’s witness, Mr. James Murdock, applicant raised various objections. Because these objections were not maintained in applicant’s trial brief, they are considered waived. See Hard Rock Café International (USA) Inc. v. Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000) (objection to exhibit raised during deposition but not maintained in brief deemed waived); Reflange Inc. v. R-Con International, 17 USPQ2d 1124, 1125 n.4 (TTAB 1990) (objection to testimony and exhibits made during depositions deemed waived where neither party raised any objection to specific evidence in its brief). Last, opposer, in its reply brief, objects to evidence attached to applicant’s trial brief that was not offered during applicant’s testimony period.3 The objection is 2 Applicant also pleaded certain affirmative defenses, including that “Opposer’s ‘Sy-Klone’ mark, when used on or in connection with Opposer’s goods and services, is merely descriptive of the recited goods and services.” (Answer at Affirmative Defenses). However, the affirmative defenses were not pursued at trial and, accordingly, such defenses are considered waived. 3 This evidence consists of the amended declaration of Frederick Taylor with Exhibit A. Opposition No. 91164490 4 sustained. Exhibits and other evidentiary materials attached to a party’s brief on the case can be given no consideration unless they were properly made of record during the time for taking testimony. See e.g., Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 748 n.5 (TTAB 1986). See also TBMP § 704.05(b)(2d ed. rev. 2004). Moreover, with respect to Exhibit A, which applicant previously submitted in connection with its response to a motion for summary judgment filed by opposer, the parties were advised in the Board’s order denying that motion that the evidence submitted in connection therewith was of record for the purpose of that motion only. That is, in order to be considered at final hearing, such evidence must have been properly introduced during an appropriate testimony period. It was not. We therefore have declined to consider applicant’s improperly submitted evidence. We add, however, that even if we had considered this evidence, our decision would be the same. THE RECORD The record consists of the pleadings and the file of application Serial No. 76460165. In addition, opposer submitted the testimony deposition, with exhibits, of its president, Mr. James G. Moredock. The entire deposition and accompanying exhibits have been marked as confidential. However, the filing of an entire testimony deposition under Opposition No. 91164490 5 seal is improper, as the parties cannot shield from the public information that is not truly confidential. See Trademark Rule 2.27(d) and (e). Moreover, we note that in its brief, which is unredacted, opposer makes references to certain of the testimony and exhibits that were designated confidential. Accordingly, we have referred to selective portions of the record that were referenced in the brief and appear to us to be not truly confidential. Applicant did not take testimony or submit any evidence during its testimony period, but did file a brief on the case.4 FINDINGS OF FACT According to the record, since as early as 1988, opposer has continuously used the term SY-KLONE as a trademark, as a trade name and in its corporate name in connection with the sale of air intake systems for the air intakes of engines. Opposer’s air intake systems include precleaner products for use in internal combustion engines and other devices that require air prior to it entering into a filter. There are eight basic models of opposer’s primary product, the Series 9000, which are built for a range of engines from lawn mower engines to the largest diesel 4 Although applicant’s brief is incorrectly captioned as its response to opposer’s motion for summary judgment, applicant states therein that it “submits the following Trial Brief.” (Brief, p. 1). Opposition No. 91164490 6 engines, and particularly including those on highway trucks.5 Opposer applies its mark directly to the goods themselves and packaging for the goods. Opposer also uses its mark on letterhead, facsimiles, business cards, e-mail, envelopes, brochures and its web site. Opposer’s customers include large manufacturers, distribution companies, dealers and individual end-users. Opposer markets its air intake systems through advertisements in trade publications, at tradeshows, and by brochures and sales and marketing publications produced by opposer. 5 Opposer’s witness, Mr. Moredock, additionally testified as follows: Q Is the Series 9000 product sold under the mark Sy-Klone? A Yes. … Q What is that [product information sheet] referring to? A Well, our products sold by Sy-Klone are centrifugal devices, and so -- so for it to work, it draws air into the product and it enters into the vane area, which -- is the first step in creating the centrifugal force to -- to separate debris. And so that vane assembly is just that. It’s taking the air from the outside and putting it in a spinning or centrifugal motion as it inters into the separator chamber. … Q You stated that your products include air flow vanes. Then can your goods be properly referred to as an air flow vane assembly devise for use in an internal combustion engine? A Yes, absolutely. (Moredock dep., p. 24, lines 1-3 and 11-20, and p. 34, lines 13- 17). Opposition No. 91164490 7 Inasmuch as applicant did not take testimony or introduce any other evidence during its testimony period, there is no information about applicant or its business. ANALYSIS Standing The evidence of record shows that opposer is the source of air intake systems for the air intake of engines under the SY-KLONE mark. We find this fact, together with the fact that opposer’s likelihood of confusion claim is not frivolous, satisfies the requirements for standing in this case. See Richie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Priority To establish priority on a likelihood of confusion claim brought under Trademark Act §2(d), a party must prove that, vis-à-vis the other party, it owns "a mark or trade name previously used in the United States ... and not abandoned...." 15 U.S.C. § 1052(d). Priority is an issue in this case because opposer does not own a subsisting registration upon which it can rely under § 2(d). See King Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Opposer asserts common law rights in the SY-KLONE mark. In order for a plaintiff to prevail on a claim of likelihood Opposition No. 91164490 8 of confusion based on its ownership of common law rights in a mark, the mark must be distinctive, inherently or otherwise, and plaintiff must show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40 (CCPA 1981). As noted earlier, applicant effectively waived its claim that opposer’s SY-KLONE mark is merely descriptive. Indeed, applicant, in its brief, argues that “as to connotation and commercial impression … the mark SY-KLONE has no apparent connotation or commercial impression.” (Brief, p. 4). We accordingly find opposer’s SY-KLONE mark inherently distinctive. As regards priority, the record clearly establishes 19886 as the date that opposer first used SY-KLONE as a trade name, in its corporate name, and as a trademark in connection with air intake systems for the air intakes of engines. Inasmuch as applicant did not take testimony or otherwise submit proof that it has commenced use of the mark CYCLONE, the earliest date upon which applicant is entitled to rely in this proceeding for purposes of priority is the filing date of the involved intent-to use application, i.e., October 17, 2002, a date subsequent to opposer’s established first use date. See, e.g., Lone Star Mfg. Co., Inc. v. Bill Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974); 6 Given the indefiniteness of 1988, opposer’s first use date for purposes of priority is December 31, 1988. See generally, TBMP § 903.07. Opposition No. 91164490 9 Columbia Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d 192, 125 USPQ 406, 407 (CCPA 1960); and Zirco Corp. v. American Telephone & Telegraph Co., 21 USPQ2d 1542 (TTAB 1991). Priority thus rests with opposer. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all 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). In considering the evidence of record on these factors, we 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). Considering first the marks, we must determine whether applicant’s CYCLONE mark and opposer’s SY-KLONE mark are similar or dissimilar in terms of sound, appearance, connotation and commercial impression. The test 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 impressions that confusion as to the source of the goods Opposition No. 91164490 10 and/or services offered under the respective marks is likely to result. Applicant argues that the parties’ respective marks clearly are distinct in appearance. Applicant also argues that its mark implies a device that involves swirling the air whereas opposer’s mark has no apparent connotation or commercial impression. Applicant further contends that there is no evidence as to how actual customers pronounce opposer’s mark but, even if the marks are phonetically similar, “Opposer has presented no evidence that the goods are advertised by television or radio, or purchased by verbal order, rather than visually.” (Brief, p. 4). We find these arguments are not persuasive. Obviously, there are certain visual differences in the marks. Unlike applicant’s mark CYCLONE, opposer’s mark SY- KLONE incorporates a fanciful spelling of cyclone and there is a hyphen between the first and second syllables. However, these differences in appearance are not particularly significant when we consider the overall similarities. Both marks contain two syllables, share the majority of the letters and all of the vowels, and begin with either the letters “CY” or the phonetically equivalent letters “SY” and end with the letters “LONE.” In addition, CYCLONE and SY-KLONE may be pronounced the same. While the marks could be pronounced differently, as applicant urges, Opposition No. 91164490 11 it is settled that there is no correct pronunciation of a trademark, as it is impossible to predict how the public will pronounce a particular mark. Kabushiki Kaisha Hattori Tokeiten v. Acuotto, 228 USPQ 461 (TTAB 1985). Thus, even if SY-KLONE may be pronounced as two words, e.g., as someone’s first and last name or otherwise, it also may be pronounced “CYCLONE.” Therefore, for our purposes, the parties’ marks are phonetically identical. Further, as regards the connotation and commercial impression of the marks, opposer made of record a definition of the word “cyclone” from Webster’s New Collegiate Dictionary, (1979). “Cyclone” is defined as “any of various centrifugal devices for separating material (as solids from liquids).” (Brief, p. 21, Moredock test., exh. 11). Contrary to applicant’s contention, CYCLONE and SY-KLONE, when viewed in the context of the goods, namely, air intake devices for engines, have the identical meaning in relation to those goods, and they create the same or at least similar overall commercial impressions, specifically, that the air intake devices are centrifugal devices that separate solids from the air. We find that neither the fanciful spelling nor the hyphen in opposer’s mark in any way alters its substantial similarity in commercial impression to that of applicant’s mark. Opposition No. 91164490 12 Put simply, while we acknowledge that there are differences in the marks, we find that the identity in sound and meaning and the substantial similarity in commercial impression outweigh the slight differences in appearance. Thus, the du Pont factor of similarity of the marks favors opposer. Before we leave this discussion, we point out that applicant’s claim that opposer’s goods are not purchased by verbal order is not substantiated by the record. We next consider the du Pont factors which pertain to the similarity or dissimilarity of the goods, the channels of trade and the classes of purchasers. Applicant argues that its goods and opposer’s goods are dissimilar. Applicant specifically argues that: Applicant’s goods are small air swirling device [sic] for deployment in light car and truck air intake systems to improve performance, power and diminish air pollution. Opposer’s goods are large mounted air pre- cleaners for large engines, in extreme, hostile environments, including engines used in waste, construction, mining, military, forestry, and landfill environments. (Brief, p. 5). This argument is unavailing. The registrability of applicant’s mark must be determined on the basis of the identification of its goods as set forth in the involved application. This is so regardless of what the record may reveal as to the particular nature of the applicant’s goods, their actual or asserted channels of Opposition No. 91164490 13 trade, or the classes of purchasers to which they are in fact or intended to be directed. See e.g., Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank v. Wells Fargo Bank, supra. Here, applicant’s goods are identified in its application as “intake and exhaust air flow vane assembly device for use in an internal combustion engine.” The goods for which opposer has established prior rights are air intake systems for the air intakes of engines, such systems including a vane assembly.7 We find applicant’s goods as so identified are legally identical to, or at least, encompass opposer’s goods. Furthermore, since there are no limitations as to the class of purchasers or channels of trade, we must presume that applicant’s intake and exhaust air flow vane assembly device will be offered to a wide range of prospective consumers, including those seeking products for large engines, and in all the usual channels of trade for those products. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In addition, the record shows that opposer’s products not only include air intake systems for large engines, but also include those for small engines such as lawnmowers and trucks. 7 Because opposer relies on common law rights acquired through use of its mark, registrability is determined on the basis of the goods for which opposer has established prior rights. Opposition No. 91164490 14 We thus find that the du Pont factors of similarity of the goods, channels of trade and class of purchasers favor opposer. Finally, with respect to the conditions of sale, applicant argues that “buyers of its [opposer’s] goods would be sophisticated and discriminating. They would be looking for the particular good to fit the particular industrial or commercial need.” (Brief, p. 5). Even assuming that purchasers of opposer’s goods may need to exercise a degree of care or thought in choosing such goods, sophisticated and careful purchasers can still be confused as to source under circumstances where similar marks are used on legally identical goods. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of discriminating purchasers … are not infallible."). CONCLUSION When all of the relevant du Pont factors are considered, we conclude that contemporaneous use by applicant of the mark CYCLONE for intake and exhaust air flow vane assembly device for use in an internal combustion engine is likely to cause confusion with opposer’s use of its SY-KLONE mark with respect to air intake systems for the air intakes of engines. Opposition No. 91164490 15 Decision: The opposition is sustained and registration to applicant is refused. Copy with citationCopy as parenthetical citation