Vital Materials Co., LimitedDownload PDFTrademark Trial and Appeal BoardSep 6, 2018No. 86675720 (T.T.A.B. Sep. 6, 2018) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: September 6, 2018 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Vital Materials Co., Limited _____ Serial No. 86675720 _____ Paul H. Kochanski of Lerner David Littenberg Krumholz & Mentlik LLP, for Vital Materials Co., Limited. Diane Collopy, Trademark Examining Attorney, Law Office 107, J. Leslie Bishop, Managing Attorney. _____ Before Shaw, Adlin and Goodman, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Vital Materials Co., Limited (“Applicant”) seeks registration on the Principal Register of the mark shown below for the following goods: Chemicals used for industrial purposes, namely, additives used in glass and ceramics industry, chemicals used in the manufacture of thermoelectric electric devices, chemicals used in the manufacture of phase change memory, chemicals used in the reprography industry, chemicals used in the manufacture of photoelectric detectors, LED lighting, catalyst development, high temperature resistant materials, bearing metals, metallurgy, solar cells, and batteries, in International Class 1. Serial No. 86675720 - 2 - 1 The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark VITOL (standard characters)2 for, inter alia: Chemicals used for industrial purposes including the processing of gas, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels including motor spirit, coal, common metals and their alloys, sugar and crude sugar, all excluding in the field of textile industry, with the exception of polyester resins in International Class 1 that use of Applicant’s mark for Applicant’s goods would be likely to cause confusion. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. 1 Application Serial No. 86675720 was filed on June 26, 2015, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as August 10, 2010. The application includes this description of the mark: “[t]he mark consists of the design of an incomplete hexagon in the shape of the letter ‘C’ with a stylized ‘V’ inside a hexagonal design, all above the literal element ‘VITAL’ in stylized form with the letter ‘A’ depicted without a horizontal middle bar.” Color is not claimed as a feature of the mark. 2 Registration No. 4442614 issued December 3, 2013 under Section 44(e). The registration also includes goods and services in Classes 4 and 39. The Examining Attorney’s refusal is based on the Class 1 goods. Serial No. 86675720 - 3 - I. Arguments Applicant argues that the Examining Attorney has not properly considered the marks in their entireties and ignored the design element in Applicant’s mark, which Applicant contends is the dominant portion of the mark. 7 TTABVUE 12; 10 TTABVUE 5-9. Applicant also submits that the marks differ in meaning and pronunciation given that VITAL is a word found in the dictionary with a specific pronunciation while VITOL is a coined term. 7 TTABVUE 13. As to appearance, Applicant argues that the marks differ in appearance because in addition to the design, the letter “a” in VITAL is missing the middle bar and is different than the letter “o” used in VITOL. Id. at 13. As to the relatedness of the goods, Applicant submits that “there is no overlap;” they are not offered to the same industries, are for different industrial purposes, and move in different channels of trade. Id. at 14-15. Applicant also argues that the word “including” in Registrant’s identification is impermissible and indefinite under Office policies. Id. at 15. Lastly, Applicant argues that its goods and Registrant’s goods are not impulse purchases and that potential purchasers are sophisticated, aware of the chemicals and their industrial purposes, and fully familiar with the sources of the products. Id. at 16; 10 TTABVUE 9. The Examining Attorney, on the other hand, argues that the term VITAL is the dominant portion of Applicant’s mark and the addition of the design does not obviate confusion. 9 TTABVUE 6-7. The Examining Attorney submits that the marks are highly similar in appearance and indistinguishable in pronunciation and that the stylization of VITAL in Applicant’s mark does not avoid confusion, because Serial No. 86675720 - 4 - Registrant’s standard character mark can be displayed in any font or style. Id. at 7. As to the relatedness of the goods and channels of trade, the Examining Attorney submits that “the prefatory clause of the registrant’s identification of goods is sufficiently definite for identification and classification purposes,” that Registrant’s identification encompasses Applicant’s more narrowly-identified industrial chemicals, and that the parties’ goods move in the same channels of trade. Id. at 8- 9, 12. II. Analysis - 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. 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., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors, and the other relevant du Pont factors now before us, are discussed below. To the extent that any other du Pont factors for which no argument or evidence was presented may nonetheless be applicable, we treat them as neutral. A. The similarity or dissimilarity of the marks We first consider the similarity and dissimilarity of the marks “in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Serial No. 86675720 - 5 - 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). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751. Serial No. 86675720 - 6 - Applicant’s mark is and Registrant’s mark is VITOL. Although Applicant has argued that its mark and Registrant’s mark differ in appearance, sound and meaning, and that the design is the dominant feature of its mark, we find otherwise. The word portion of Applicant’s mark, VITAL, is substantially similar in appearance to Registrant’s mark VITOL. Although the word portion of Applicant’s mark uses stylized lettering, the cited mark is registered in standard characters, so we must assume that it could be displayed in any size, color, or font, including a size and font identical to Applicant’s mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012). The terms VITAL and VITOL differ by only one letter, a vowel, which is identically placed in each mark. These terms are likely to sound similar when spoken, given the similar structure, although we recognize there is no correct pronunciation of a mark. See, e.g., In re Viterra Inc., 101 USPQ2d at 1912. Also, because Registrant’s mark and the word portion of Applicant’s mark only differ by one letter and may be pronounced similarly, we find that the commercial impression of these terms is highly similar, if not the same. Although Registrant’s mark appears to be a coined term, given its close similarity to the known, common literal term in Applicant’s mark, prospective purchasers may view Registrant’s mark and the word portion of Applicant’s mark as having similar connotations. As to the design portion of Applicant’s mark, the stylized letter “V” is the first letter of the term VITAL and reinforces the wording. See In re Continental Graphics Corp., 52 USPQ2d 1374, 1376 (TTAB 1999) (“Indeed, the dominant role of the word Serial No. 86675720 - 7 - CONTINENTAL in the overall commercial impression created by the registered mark is reinforced, rather than negated, by the inclusion in the mark of the globe design depicting stylized continents and the inclusion of the large letter ‘C,’ which is the first letter of the word CONTINENTAL.”). The incomplete hexagon, which counsel describes as a stylized “open-sided benzene ring,” is suggestive of Applicant’s goods which are industrial chemicals, and thus entitled to less weight in our analysis. See e.g., In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987). Although Applicant’s mark incorporates a design, our cases “reflect the principle that if a mark comprises both a word and a design, the word is normally accorded greater weight because it would be used by purchasers to request the goods or services.” M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). See also In re Viterra Inc., USPQ2d at 1911 (“[T]he verbal portion of a word and design mark likely will be the dominant portion.”). We find this case to be typical, in that the wording of Applicant’s mark is its dominant feature, particularly given that the stylized letter “V” in the design merely reinforces the word VITAL. In short, notwithstanding the design element of Applicant’s mark, the marks, in their entireties, are more similar than dissimilar. This is because the literal and dominant portion of Applicant’s mark VITAL is highly similar in appearance, sound, meaning and commercial impression to Registrant’s mark VITOL. This factor weighs in favor of finding a likelihood of confusion. Serial No. 86675720 - 8 - B. The similarity or dissimilarity and nature of the goods and trade channels We turn next to the relationship between the goods and their channels of trade, based on the goods as set forth in the application and the cited registration. Octocom Sys. Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In comparing the goods, it is not necessary that they be identical or even competitive in order to support a finding of likelihood of confusion. The goods need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). The question is not whether purchasers can differentiate the goods themselves, but rather whether purchasers are likely to confuse the source of the goods. Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1305 (TTAB 2004). Applicant’s goods are identified as “[c]hemicals used for industrial purposes, namely, additives used in glass and ceramics industry, chemicals used in the manufacture of thermoelectric electric devices, chemicals used in the manufacture of phase change memory, chemicals used in the reprography industry, chemicals used in the manufacture of photoelectric detectors, LED lighting, catalyst development, high temperature resistant materials, bearing metals, metallurgy, solar cells, and batteries.” Registrant’s Class 1 goods are “[c]hemicals used for industrial purposes including the processing of gas, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels including motor spirit, coal, Serial No. 86675720 - 9 - common metals and their alloys, sugar and crude sugar, all excluding in the field of textile industry, with the exception of polyester resins.” Although Registrant’s identification excludes chemicals used in the textile industry, excepting polyester resins, the goods are otherwise broadly identified. Due to the use of the term “including” in the identification, Registrant’s goods are not limited to those chemicals recited, and as such, Registrant’s goods encompass Applicant’s goods, which are more specifically identified and do not identify chemicals used in the textile industry. We find therefore that Applicant’s and Registrant’s goods are, in part, legally identical.3 See e.g., In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant's broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.”’). Because Registrant’s identified goods and Applicant’s goods are legally identical in part, we must presume that the channels of trade are the same for those goods. See In re Viterra Inc., 101 USPQ2d at 1908 (finding Board entitled to rely on this legal presumption in determining likelihood of confusion); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016). The second and third du Pont factors thus support a finding that confusion is likely. 3 Although the term “including” in the identification is indefinite, the wording “chemicals for industrial purposes” which precedes this wording is sufficiently definite for us to find that Applicant’s and Registrant’s goods are legally identical in part. As the Examining Attorney points out, the Board may not read limitations into the identification or grant relief under Section 18 sua sponte. In re Solid State Design Inc., 125 USPQ2d 1409, 1414 (TTAB 2018). Serial No. 86675720 - 10 - C. The conditions under which and buyers to whom sales are made Applicant has argued that the conditions of purchase will preclude confusion. Although Applicant makes no showing that consumers are sophisticated with respect to its identified goods or Registrant’s, we agree that these goods are not impulse purchases, and that the purchasers will be sophisticated. We find that this du Pont factor weighs in Applicant’s favor. III. Conclusion We acknowledge Applicant’s point that potential purchasers of industrial chemicals are likely to be experienced and sophisticated in the trade. Although this is a factor that weighs in Applicant’s favor, it is outweighed by the highly similar marks, identical in-part goods and channels of trade. We find that Applicant’s mark is likely to cause confusion with the registered mark VITOL when used in connection with the identified goods. Decision: The refusal to register Applicant’s mark is affirmed. Copy with citationCopy as parenthetical citation