Bou-Matic Technologies Corp.v.Alpha Products International Inc.Download PDFTrademark Trial and Appeal BoardMay 18, 2009No. 91178788 (T.T.A.B. May. 18, 2009) Copy Citation 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. Copy with citationCopy as parenthetical citation