Trumpf GmbH + Co. KG

Trademark Trial and Appeal Board

Oct 23, 2007

No. 79015005 (T.T.A.B. Oct. 23, 2007)

Mailed:
23 October 2007
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Trumpf GmbH + Co. KG
________

Serial No. 79015005
_______

Peter L. Costas of Pepe & Hazard LLP for Trumpf GmbH + Co.
KG.

Colleen Kearney, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Holtzman, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On July 25, 2005, Trumpf GmbH + Co. KG (applicant)
applied to register the mark (stylized) on the
Principal Register for goods ultimately identified as:
Operating tables and parts thereof, namely operating
table pedestals and table tops supported thereon;
operating table accessories, namely pelvis supports,
buttock supports, arm supports, leg supports, knee
supports, foot supports, lateral supports, head
supports, shoulder supports and rectal positioning
devices for medical use; transporters and lifts for
transporting patients and table tops to, and from,
operating table columns and for lifting patients onto
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79015005
2
and from, operating tables, and for lifting table tops
onto and from columns in Class 10.

The application (extension of protection) was filed under
the provision of 15 U.S.C. § 1141f(a), Section 66(a) of the
Trademark Act. Serial No. 79015005.
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
because of a registration of the mark MERCURY (in typed or
standard character form) for a “full line of medical
equipment and supplies identified by a housemark” in Class
10.1 15 U.S.C. § 1052(d).
After the examining attorney made the refusal final,
this appeal followed.
We affirm.2
The examining attorney argues that applicant’s “mark
MERKUR is the foreign equivalent of the registered mark

1 Registration No. 1557794 issued on September 26, 1989.
Affidavits under Sections 8 and 15 have been accepted or
acknowledged.

2 The examining attorney also relied on a second registration,
owned by the same entity, for the mark MERCURY MEDICAL in typed
form for “medical and surgical equipment and supplies; namely,
anesthesia and respiratory apparatus, suction devices, needles,
stethoscopes, sphygmomanometers, laryngoscopes, medical hose
assemblies and adjustable medical chairs” in Class 10.
Registration No. 1694194, renewed. The registration contains a
disclaimer of the term “Medical.” In view of our conclusion that
there is a likelihood of confusion with the ‘794 registration, we
do not reach the confusion issue for the ‘194 registration. If
it were subsequently concluded that there was no likelihood of
confusion with the ‘794 registration, there would similarly not
be a likelihood of confusion with the ‘194 registration.
Ser No. 79015005
3
MERCURY… Specifically the German word MERKUR translates to
MERCURY in English.” Brief at unnumbered p. 5. Regarding
the goods, the examining attorney maintains that
applicant’s “goods, namely operating tables, parts thereof,
and lifts for transporting patients to and from operating
tables, are undoubtedly within the scope of a full line of
medical equipment and supplies. A full line is just that.
All conceivable medical equipment and supplies are covered
under registrant’s identification.” Brief at unnumbered p.
7.
Applicant argues that the “marks are different
visually and phonetically.” Reply Brief at unnumbered p.
1. Regarding the foreign translation, applicant maintains
that “there is no English meaning for the German word
“MERKUR” which is applied for registration. The German
word is not commonly known in the United States.” Id. It
“is the special nature of the goods concerned (goods for
reestablishing and/or preserving human health) which urges
the consumer to take marks which are used for marking those
goods as they are.” Reply Brief at unnumbered pp. 1-2.
Finally, “purchasers of the goods of the prior registrant
and those of Applicant are discerning and discriminating
buyers who recognize that the respective goods come from
different sources.” Brief at 9.
Ser No. 79015005
4
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). 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 [or services] and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by discussing whether the involved goods are
related. We must consider the goods as they are identified
in the application and registration. Paula Payne Products
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods”); In re Dixie
Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (punctuation in original) (quoting
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987))
(“‘Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services [or goods]
recited in applicant’s application vis-à-vis the … services
Ser No. 79015005
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[or goods] recited in [a] … registration, rather than what
the evidence shows the … services [or goods] to be’”).
In this case, applicant’s goods include medical
supplies and equipment such as operating tables and
accessories and transporters and lifts for transporting
patients and for lifting patients onto and from, operating
tables. Registrant’s goods are identified as a full line
of medical equipment and supplies. We agree with the
examining attorney that applicant’s goods would be included
within registrant’s full line of medical supplies and
equipment.3 See, e.g., In re Dakin's Miniatures Inc., 59
USPQ2d 1593, 1595 (TTAB 1999) (“[A]pplicant's figurines
must be considered to be encompassed by registrant's
broadly described ‘full line of toys,’ notwithstanding
applicant's restriction of its own goods to wooden
figurines and its claim that the figurines are
‘collectibles rather than toys’”).
Inasmuch as the goods of applicant and registrant are
overlapping, when “marks would appear on virtually
identical goods or services, the degree of similarity

3 We add that even if the goods were not at least legally
identical in part, the examining attorney has submitted evidence
in the nature of third-party registrations, see, e.g., Nos.
0404862, 1400234, 1456370, and 1889205, to suggest that operating
tables and other medical equipment are related because various
entities have registered these goods under a common mark. See In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
Ser No. 79015005
6
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). Furthermore, in cases where the goods are
overlapping, we must assume that the purchasers and
channels of trade are the same. 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 and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers”). Therefore, the factors
concerning the relatedness of the goods and the overlap in
the channels of trade and potential purchasers all favor a
conclusion that confusion is likely.
The next factor we address requires an examination of
the marks’ similarity or dissimilarity 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
Ser No. 79015005
7
1689, 1691 (Fed. Cir. 2005). In this case, the comparison
of the marks is relatively straightforward. Registrant’s
mark consists in its entirety of the word MERCURY.
Applicant’s mark consists of the word MERKUR with a slight
stylization. This stylization is not significant in our
likelihood of confusion analysis inasmuch as the cited mark
is depicted in typed form and we must consider that it can
be displayed in any style including applicant’s
stylization. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1847 (Fed. Cir. 2000) (“Registrations
with typed drawings are not limited to any particular
rendition of the mark and, in particular, are not limited
to the mark as it is used in commerce”); Phillips Petroleum
Co. v. C. J. Webb, Inc., 442 F.2d 1376, 1378, 170 USPQ 35,
36 (CCPA 1971) ("The drawing in the [opposed] application
shows the mark typed in capital letters, and … this means
that [the] application is not limited to the mark depicted
in any special form").
The words themselves are somewhat similar in sound and
appearance inasmuch as the words MERCURY and MERKUR begin
with the same letters “Mer” and are followed by what can be
a phonetically similar “Kur” or “Cur” sound. Obviously,
there are also some differences because registrant adds a
Ser No. 79015005
8
“Y” to its mark, which changes both the pronunciation and
appearance somewhat.
Regarding the meaning of the marks, applicant and the
examining attorney agree that the term MERKUR is translated
as “Mercury.” Response dated August 21, 2006 at 2;
Examining Attorney’s Brief at unnumbered p. 5. As such,
the marks have identical meanings, albeit in different
languages. The Federal Circuit has explained that: “Under
the doctrine of foreign equivalents, foreign words from
common languages are translated into English to determine
genericness, descriptiveness, as well as similarity of
connotation in order to ascertain confusing similarity with
English word marks.” Palm Bay, 73 USPQ2d at 1696. See
also In re Sarkli, Ltd., 721 F.2d 353, 220 USPQ 111, 113
(Fed. Cir. 1983) (“The test to be applied to a foreign word
vis-a-vis an English word with respect to equivalency is
not less stringent than that applicable to two English
words”). Furthermore, the Federal Circuit has explained
that the doctrine of foreign equivalents “should be applied
only when it is likely that the ordinary American purchaser
would ‘stop and translate [the word] into its English
equivalent.’” Palm Bay, 73 USPQ2d at 1696, citing In re
Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)
Ser No. 79015005
9
(Purchasers unlikely to stop and translate LA POSADA into
its English equivalent, “the inn”).
In this case, “Merkur” would be a term that potential
customers would stop and translate. It is similar to the
English word Mercury, and potential purchasers familiar
with German would have no reason not to recognize the term
as the equivalent of the English term. Moreover, we cannot
agree with applicant that the “special nature” of
applicant’s and registrant’s goods “urges the consumer to
take the marks … as they are.” Reply Brief at unnumbered
p. 2. In certain situations, the board has held that
customers would not translate a mark into its English
equivalent. For example, the board stated:
[I]t is unlikely to expect that a person encountering
“AUNT MARY’S” canned fruits and vegetables in a
supermarket or other establishment where goods of this
type are customarily sold would translate “AUNT
MARY’S” into “TIA MARIA,” and then go one step further
and associate these food products with applicant's
restaurant.

In re Tia Maria, Inc., 188 USPQ 524, 526 (TTAB 1975).
However, there is no similar reason in this case why
purchasers would not translate MERKUR as MERCURY. When
potential purchasers encounter the marks MERCURY and MERKUR
for the same goods, purchasers familiar with the German
language would simply recognize that the terms are foreign
equivalents. Unlike the terms TIA MARIA and AUNT MARY,
Ser No. 79015005
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which have different connotations in English especially in
light of the fact that first names are often not
translated, persons familiar with both the English and
German languages are likely to translate the terms MERCURY
and MERKUR. Thus, the present case presents us with a
situation that is more akin to In re Thomas, 79 USPQ2d
1021, 1025 (TTAB 2006) (“MARCHE NOIR and BLACK MARKET
MINERALS not only have the same literal meaning, but they
create the same overall commercial impression in relation
to the respective goods and services”). See also In re
Accumulatorenfabrik Sonnenschein GMBH, 160 USPQ 341, 342
(TTAB 1968) (“The prime and distinguishing element of the
registered mark is the term ‘SUNSHINE.’ The German word
‘sonnenschein’ not only sounds like the word ‘sunshine’ but
is the equivalent thereof”).
Applicant also argues that “[p]urchasing agents in
hospitals exercise great care in purchasing and the expense
there militates against the likelihood of an assumption
that the goods are related.” Brief at 9. However, we are
not dealing with goods that are merely related; we must
assume that the goods are overlapping. Furthermore, while
these medical supplies and equipment would likely be
purchased by medical professionals, that fact does not mean
that these purchasers would not be confused when it would
Ser No. 79015005
11
come to distinguishing trademarks that involve similar
marks with identical meanings in German and English for the
same goods. 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”). We also note that this case is unlike Astra
Pharmaceutical Products, Inc. v. Beckman Instruments, Inc.,
718 F.2d 1201, 220 USPQ 786 (1st Cir. 1983) and Electronic
Design & Sales Inc. v. Electronic Data Systems Corp., 954
F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992). In those cases,
as applicant’s own brief (pp. 10-11) points out, the goods
were not the same. Indeed, in Electronic Design, 21 USPQ2d
at 1391, the Federal Circuit noted that the board found
that “applicant’s goods are specifically different and
noncompetitive.” Here, the goods are at least in part the
same and the channels of trade and purchasers are also
assumed to be the same. Therefore, the Astra and
Electronic Design cases are not on point.
In this case, we take into consideration the fact that
the purchasers of applicant’s and registrant’s goods are
likely to be sophisticated purchasers, but, when we balance
Ser No. 79015005
12
that factor with the overlapping nature of the goods and
the fact that the purchasers and channels of trade are the
same, we conclude that there would be a likelihood of
confusion if the marks MERCURY and its German translation,
MERKUR, were used on the identified goods.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.