Bou-Matic Technologies Corp.v.Alpha Products International Inc.

Trademark Trial and Appeal Board

May 18, 2009

No. 91178788 (T.T.A.B. May. 18, 2009)

Mailed: May 18, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Bou-Matic Technologies Corp.
v.
Alpha Products International Inc.
_____

Opposition No. 91178788
_____

Robert V. Petershack of Axley Brynelson, LLP, for Bou-Matic
Technologies Corporation.

Brett J. Trout, Esq., for Alpha Products International Inc.
_____

Before Cataldo, Wellington, and Ritchie, Administrative
Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Bou-Matic Technologies Corp. (“opposer”) has filed this
opposition to the registration by Alpha Products
International Inc. (“applicant”) of the mark THERMOSTAR for
“portable air conditioners, portable ice making machines,
portable refrigerators, clothes drying machines,” in
International Class 11.1 Opposer brings this action on the
grounds of priority and likelihood of confusion under

1 Application Serial No. 78927307, filed July 11, 2006, under
Section 1(b) of the Trademark Act, 15 USC §1051(b), claiming a
bona fide intent to use the mark in commerce.
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91178788
2
Section 2(d) of the Trademark Act; 15 USC §1052(d). In the
notice of opposition, opposer asserted that it is the owner
of a federal trademark registration for the mark THERMA-
STOR, for “heat recovery arrangement for use in a
refrigeration system to provide for the heating of water by
interchanging heat with the cooling apparatus,”2 in
International Class 11, as well as of common-law rights in
the THERMA-STOR mark for “air conditioning,
dehumidification, heat recovery and refrigeration products”
that predate applicant’s constructive use date for
THERMOSTAR. (Notice of Opposition, para. 1).
In its answer, applicant denied the salient allegations
of the notice, and alleged as an affirmative defense that
the “THERM” and “STOR” components of opposer’s mark are
“highly suggestive.” Both parties filed trial briefs.
Opposer filed a reply brief.
The Record and Pending Motion to Strike
The record in this case includes the pleadings and the
file of the involved application. The record further
includes the following, as stipulated by both parties in
their respective briefs:

2 Registration No. 1114867, issued March 13, 1979, based on
Section 1(a) of the Trademark Act, 15 USC §1051(a), alleging
first use and first use in commerce on July 6, 1976. Section 8
and 15 affidavits accepted and acknowledged respectively.
Renewed.
Opposition No. 91178788
3
1. Testimonial deposition of Todd R. DeMonte, manager
of opposer’s licensee, Therma-Stor LLC.
2. Certified status and title copy of opposer’s
pleaded registration 1114867 for THERMA-STOR.
3. Third-party registrations containing the term
“THERM” for products related to heat or
refrigeration systems.
4. Dictionary definitions for “THERM,” “THERMAL,”
“STAR,” “STOR,” and “STORE.”
5. “One hundred five (105) records of contracting
licenses for heating, ventilation, air conditioning
and refrigeration service providers issued by four
states, and a declaration supporting their
collection.”3
Standing and Priority
As a result of opposer’s submission of a status and
title copy of its pleaded registration for THERMA-STOR (No.
1114867), opposer has established its standing as well as
its priority in this proceeding as to the goods identified
therein. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy Co. v.

3 The quoted text is from applicant’s trial brief. It is not
clear whether these items qualify as “official records”
appropriate for submission via notice of reliance pursuant to 15
CFR § 2.122(e). However, since opposer stipulated them into the
record via opposer’s trial brief which refers to them as “records
of contracting licenses from several states,” we deem the listed
items to be of record in this proceeding.
Opposition No. 91178788
4
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Furthermore, opposer has established common-law rights
in the THERMA-STOR mark in connection with various related
products that it has manufactured and sold since before
applicant’s earliest priority date, that is the July 11,
2006 filing date of its involved intent-to-use application.
See Levi Strauss & Co. v. R. Josephs Sportswear Inc., 36
USPQ2d 1328, 1332 (TTAB 1998), quoting Alliance
Manufacturing Co., Inc. v. ABH Diversified Products, Inc.,
226 UPSQ 348, 351 (TTAB 1985)(“an applicant is entitled to
rely upon the filing date of its application as a
presumption of use of the mark subject of the application as
of that date”). In particular, opposer has testified that
it sold dehumidifiers since 1990 (DeMonte depo. at 15); HEPA
air filters and filter vents since 1997 (Id. at 16-17); and
air movers since 2004 (Id. at 16). The THERMA-STOR mark
appears on the packaging, the owner’s manual, the serial
plate, and the warranty information for these, as well as
opposer’s other, products. Id. at 17. Oral testimony, even
of a single witness, if “sufficiently probative,” may be
sufficient to prove priority. Powermatics, Inc. v. Glebe
Roofing Products Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA
1965)); 4U Co. of America, Inc. v. Naas Foods, Inc., 175
UPSQ 251, 253 (TTAB 1972). We find that Mr. DeMonte’s
Opposition No. 91178788
5
testimony is credible and it has not been contradicted.
Accordingly, Mr. DeMonte’s testimony satisfies opposer’s
burden of proof in showing, by a preponderance of the
evidence, that opposer has common-law priority of use in
connection with dehumidifiers, HEPA air filters and filter
vents, and air movers.
Accordingly, we find that in addition to establishing
priority via its trademark registration as to the goods
identified therein, opposer has established priority via its
common-law rights in dehumidifiers, HEPA air filters, filter
vents, and air movers.
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997). 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,
Opposition No. 91178788
6
29 (CCPA 1976) (“The 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”). We consider each of the factors as to which
applicant or opposer presented arguments or evidence.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). In comparing the marks, we are
mindful that 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 impression so that
confusion as to the source of the goods and/or services
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Opposition No. 91178788
7
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Visually, applicant’s mark is nearly identical to
opposer’s. Both contain the same letters. Both have the
same order, with the sole exception of applicant’s switching
of the letters “a” and “o” in the middle, and opposer’s
addition of a hyphen. We deem the hyphen in opposer’s mark
to have no source-identifying significance. Goodyear Tire &
Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978)
(FAST-FINDER with hyphen is substantially similar to
FASTFINDER without a hyphen). Phonetically, the marks are
almost identical as well, again with only the difference of
the “a” and the “o” in the middle of applicant’s mark.
Applicant has submitted dictionary definitions from the
Merriam-Webster Online Dictionary of the terms contained in
the parties’ marks. We set forth the relevant portions
below:
THERM: 1. “heat.”
STOR: abbreviation, “storage”4
STAR: 1a. “a natural luminous body visible in the sky
especially at night.” 3a. “a conventional figure with five
or more points that represents a star; especially: ASTERISK.

4 Applicant also submitted a definition of the visually similar
and phonetically identical “store,” defined in relevant part as:
“accumulate,” “supply” “hold” or “warehouse.”
Opposition No. 91178788
8
4. “something resembling a star.” 5c. “an outstandingly
talented performer.”
Applicant argues that these definitions show opposer’s
mark to be “very weak,” since the mark suggests “heat
storage” or warehousing for goods that manipulate or store
heat energy. To further support its argument, applicant
submitted copies of third-party registrations with marks
containing the term “THERM” for heat or cooling-related
products, as follows: THERMO KING; THERMO KING and design;
THERMO-FILM; THERMOFICIENT; DUO.THERM and design; THERMAL
MASS; INTERTHERM; THERMO-KOOL; K THERMO-KOOL and design;
THERMASTAK, and design; MARATHERM; THERMALZONE and design;
THERMACHILL; THERMO CHILLER; ADVANCED THERMAL TECHNOLOGIES;
TRANSTHERM; THERMAL STAR; DANTHERM; DANTHERM HMS and design;
THERMASYS; ROBATHERM; THERMAFRIDGE; THERMA FRIDGE and
design; THERMO-PLY; THERMALRITE, and design; THERMOMAX;
NITE NO-IDLE THERMAL ENVIRONMENT and design; THE THERMO
ADVANTAGE; THERMFRESH; THERMPAK; THERMAL ZONE; THERMAL ZONE
and design; COOLTHERM and design; TRANSTHERM; THERMATIS;
ISOTHERM, and design; THERMOTANK.
We note that the third-party registrations submitted by
applicant contain only the term “THERM” without “STOR.”
Accordingly, they do not approximate opposer’s mark in its
entirety. Furthermore, in terms of demonstrating the
strength of a mark, absent evidence of actual use, third-
Opposition No. 91178788
9
party registrations have little probative value because they
are not evidence that the marks are in use on a commercial
scale or that the public has become familiar with them. See
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462m 463 (CCPA 1973) (the purchasing public is not
aware of registrations reposing in the U.S. Patent and
Trademark Office).
Likewise, the search results applicant garnered from
various state licensing boards do not convince us that
opposer’s mark is so weak as to obviate a likelihood of
confusion with applicant’s mark. First, most of the results
submitted by applicant are simply lists of companies.
Second, we typically deem truncated search results to be of
little probative value. In re Bayer Aktiengesellschaft, 488
F.3d 960, 82 USPQ2d 1818, 1833 (Fed. Cir. 2007) (“Search
engine results – which provide little context to discern how
a term is actually used on the webpage that can be accessed
through the search result link – may be insufficient to
determine the nature of the use of a term or the relevance
of the search results to registration considerations.”)
Third, applicant searched only for “THERM” but again not for
“STOR.”
Finally, we note that applicant has not submitted
argument or evidence to show that opposer’s mark as a whole
is generic or descriptive for the goods for which opposer
Opposition No. 91178788
10
claims trademark rights. Indeed, applicant cannot make such
an argument as a collateral attack in this proceeding (at
least not as to the goods identified in opposer’s
registration), since applicant did not bring a counterclaim
for cancellation of that registration. Accordingly, we
construe applicant’s argument to be that opposer’s mark is
so weak as to be entitled to little or no protection outside
the exact display of its registered THERMA-STOR for the
goods specified in Registration No. 1114867.
However, even a weak mark is entitled to protection
from registration of confusingly similar marks. Giant Food
Inc. v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982).
As discussed supra, applicant’s mark is highly similar to
opposer’s. There is no evidence of record that applicant’s
THERMO would have a different meaning or commercial
impression than opposer’s THERMA. To the contrary,
dictionary definitions refers to both as being of the stem
THERM-, meaning “heat.”5 Accordingly, the only difference
in meaning would be the second part, between opposer’s “-
STOR” and applicant’s “STAR.” Applicant argues that
opposer’s mark connotes “storage” whereas applicant’s mark

5 “THERMA” from Webster’s New World College Dictionary (2009);
“THERMO” from Webster Dictionary, 1913 (p 1497). The Board may
take judicial notice of dictionary definitions. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982, aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Opposition No. 91178788
11
connotes “outstanding excellence.” We find applicant’s
argument to be unavailing. Even if we accept applicant’s
argument as to the descriptive nature of “-STOR” and the
laudatory nature of “STAR,” such difference is insufficient
to overcome the highly similar look and sound of the marks
in their entireties. Overall, the marks are highly similar.
Accordingly, this du Pont factor weighs in favor of finding
a likelihood of confusion.
The Goods and Channels of Trade
Preliminarily, we note that the greater the degree of
similarity between the marks, the lesser the degree of
similarity between the goods or services necessary to
support a finding of likelihood of confusion. In re Opus
One, Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia
Int’l Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983).
Furthermore, it is well-established that the goods or
services of the parties need not be similar or competitive,
or even offered through the same channels of trade, to
support a holding of likelihood of confusion. It is
sufficient that the respective goods or services of the
parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods or services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
Opposition No. 91178788
12
the mistaken belief that they originate from the same
source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); and In re
Int’l Telephone & Telephone Corp., 197 USPQ 910, 911 (TTAB
1978). The issue, of course, is not whether purchasers
would confuse the goods or services, but rather whether they
would be confused into believing that they derive from the
same source. In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Opposer has a registration for THERMA-STOR for “heat
recovery arrangement for use in a refrigeration system to
provide for the heating of water by interchanging heat with
the cooling apparatus,” whereas applicant’s THERMOSTAR
identifies “portable air conditioners, portable ice making
machines, portable refrigerators, clothes drying machines.”
There appears to be an association between, at a minimum,
opposer’s reference to “refrigeration systems” and
applicant’s “portable refrigerators” and between opposer’s
“cooling apparatus” and applicant’s “portable air
conditioners.” In a sales brochure generated in 2002,
several years before applicant’s earliest priority date of
July 11, 2006, opposer referred to the benefits of using its
trademarked THERMA-STOR heat recovery system alongside air
conditioning:
“Many businesses can benefit from the Therma-Stor
heat recovery system. Commercial air conditioning
systems, coolers, freezers, ice machines, and
Opposition No. 91178788
13
other refrigeration systems have enough waste
energy for large-scale water heating.”
(Demonte deposition at 24, Ex 1).

Although it may be argued that this discussion of waste
energy does not apply to applicant’s portable appliances,
opposer has also established common-law rights in various
air-quality products that may be used in a complementary
manner to portable air conditioners. As discussed above,
opposer has sold dehumidifiers since 1990 (Id. at 15); HEPA
air filters and filter vents since 1997 (Id. at 16-17); and
air movers since 2004 (Id. at 16, explaining “an air mover
is a fan pretty much that blows air across the ground to dry
things or to evaporate materials.”) Several of these
devices are marketed and sold as complementary to air-
conditioning systems. In a 2002 brochure, opposer touted
its “Indoor Air Quality Products Catalogue” including, among
other things, opposer’s dehumidifiers and ventilation
systems. Id., Ex. 11.
Although opposer began marketing and selling its air
conditioners in 2007, after applicant’s filing date, it is
still an apparent expansion of opposer’s related
dehumidifier and other indoor air quality goods. Applicant
alleges that opposer began selling air conditioners in “bad
faith,” to flout this application. (Appl’s brief at 11).
Opposer replies that it did not add air conditioners “to
spite Applicant, but rather because it flows from the
Opposition No. 91178788
14
technology and the expertise.” (Reply at 9). We find that
opposer’s addition of air conditioners merely demonstrates
what is already clear from the evidence, that opposer has
priority on similar, and in some cases, complementary goods
to those for which applicant seeks to register its mark.
This du Pont factor weighs in favor of finding a likelihood
of confusion.
As we have found the goods at issue to be similar, we
also find that they are (or will be, in the case of the
intent-to-use application) sold through the same and similar
channels of trade. Both opposer’s and applicant’s
identifications of goods are broadly worded, without any
limitations as to channels of trade or classes of
purchasers. We must presume, then, that opposer’s “heat
recovery arrangement for use in a refrigeration system to
provide for the heating of water by interchanging heat with
the cooling apparatus,” will be sold in all normal channels
of trade to all usual purchasers for goods of the type
identified. See Canadian Imperial Bank v. Wells Fargo, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). We must make the
same presumption for applicant’s “portable air conditioners,
portable ice making machines, portable refrigerators,
clothes drying machines.” Id.
Furthermore, we find that the evidence shows that the
products for which opposer has established common-law rights
Opposition No. 91178788
15
with priority over applicant, such as dehumidifiers, HEPA
air filters and vents and air movers, will move in some of
the same and similar channels of trade, to some of the same
consumers, as applicant’s portable air conditioners. As a
result, this du Pont factor also favors finding a likelihood
of confusion.
Conclusion
We have carefully considered all of the testimony and
evidence pertaining to the relevant du Pont factors, as well
as all of the parties’ arguments with respect thereto. We
conclude that opposer has established priority of use of a
highly similar mark. We have also found the goods for which
opposer has established priority to be similar to
applicant’s “portable air conditioners, portable ice making
machines, portable refrigerators, clothes drying machines,”
and to move in the same and similar channels of trade. To
the extent we have any doubts, we resolve them, as we must,
in registrant’s favor. In re Hyper Shoppes (Ohio), Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988). Accordingly,
we find a likelihood of confusion.
Decision: The opposition is sustained.