Buhler Technologies GmbH

Trademark Trial and Appeal Board

Feb 12, 2009

No. 79034792 (T.T.A.B. Feb. 12, 2009)

Mailed: February 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Buhler Technologies GmbH
________

Serial No. 79034792
_______

Friedrich Kueffner of Law Office of Friedrich Kueffner for
Buhler Technologies GmbH.

Charisma Hampton, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Walsh, Cataldo and Mermelstein,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Buhler Technologies GmbH
to register the following mark on the Principal Register:
1

1 Application Serial No. 79034792 was filed on July 12, 2006,
seeking an extension of protection under Section 66(a) of the
Trademark Act based upon its International Registration No.
0914230, issued on July 12, 2006. Color is not claimed as a
feature of the mark.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 79034792
2
for the following goods:
Couplings and gearing for power transmission for
machines that are not land crafts; filters,
especially gas filters; partial air flow filters
as parts of machines; oil draining pumps, all the
above goods for use in connection with fluid-
technical systems as well as systems for analysis
of gases and liquids

in International Class 7;
Analyzing systems composed of scientific and
laboratory instruments, essentially consisting of
devices for extracting, conveying, recycling and
analyzing of gases, gas mixtures and fluids from
experiments from the environment, namely gas
meters, gas chromatography apparatus, gas
detectors for detecting the presence of gas, gas
meters, residual gas analyzers, apparatus for
testing gas and liquids and probes for gas
detection; apparatus for indicating malfunctions
in gas and liquid handling equipment, namely,
level switchers, devices for temperature-
monitoring, devices for filling level monitoring,
humidity monitors incorporating transmitters for
use in connection with fluid-technical systems as
well as systems for analysis of gases and liquids

in International Class 9; and
Machines for purification, distribution and
filtering of gases used in fluid technologies
systems, namely, fibers filtering media for
general industrial use and the purification of
industrial fluids in water purification tanks;
instruments for cooling, drying and ventilation,
namely, pumps sold in combination for use in hot
tubs, cooling recovery systems, comprising gas
coolers, gas condensers other than parts of
machines; mixture faucets for water pipes and
replacement part thereof, heat exchangers not
being parts of machines, air filters for air
conditioning units for use in connection with
fluid-technical systems as well as systems for
analysis of gases and liquids

Ser No. 79034792
3
in International Class 11.
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as sought to be protected in connection
with its goods, so resembles the marks
BUHLER2
(in typed or standard characters) issued to Buhler-Miag,
Inc. for the following goods and services:
roller mills; mechanical sieves and sifters; coal
processing plants; cocoa processing plants; grain
separators; mixing machines; extruding presses;
pneumatic conveying equipment; chain conveying
equipment; shipboard and port equipment for
loading and unloading bulk materials; macaroni
presses; ink and color processing machines; and
machines for grinding and treating garbage and
refuse and for waste disposal

in International Class 7;
filters and air cleaners for industrial use;
drying and air-conditioning installations for
industrial use

In International Class 11;
constructing and repairing plants for flour, corn
and rye mills, breweries, oil mills, malting, for
the manufacture of macaroni, chocolate, cocoa,
paints, printing inks, mixed animal foods,
chemical products, food products, rice milling,
the treatment of rice and cereals, for silos (of
the non-prefabricated type), for material
handling, for the treatment of garbage and refuse
and for waste disposal

2 Registration No. 0857430 issued on September 24, 1968. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
Ser No. 79034792
4

In International Class 37;
BUHLER3
(in typed or standard characters) issued to Buhler AG for
“electrical control panels and consoles for process
control” in International Class 9;

4
issued to Buhler AG for the following goods and services:
machines, namely machines for cleaning,
controlling dust, grinding, sorting, mixing,
reducing size, processing, hulling,
degerminating, sifting, bolting, flaking, and
pulverizing, and for and bagging of all kinds of
raw materials, intermediate products and finished
products, for use in the flour-milling industry,
in the baked-goods industry, in the manufacture
of pasta, snacks, cous-cous, dry soup mixes,
infant food, starches, and other foods, in the
candy and chocolate industry, in the coffee
industry, in the rice industry, in the edible-oil
industry, in malting houses and breweries and in
the feed industry; mechanical and pneumatic
conveying systems comprising elevators, chain
conveyors, conveying pipes, airslide conveyors
for piece goods; ship unloading and loading
systems comprising cranes with pneumatic suction
conveying; filter systems comprising dust
collection filters for industrial use; systems

3 Registration No. 1047573 issued on September 7, 1976. Section
8 affidavit accepted; Section 15 affidavit acknowledged.
Renewed.
4 Registration No. 1952342 issued on January 30, 1996. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.

Ser No. 79034792
5
for utilization or disposal of solid and liquid
waste, namely composting and fermentation
machines; machines for the chemical industry,
namely paint manufacturing machines, plastic
coating manufacturing machines, laundry and
cleaning detergent manufacturing machines, toilet
and household soap manufacturing machines,
cosmetic product manufacturing machines,
insulating material and filler manufacturing
machines, metal die-casting machines and metal
injection molding machines

in International Class 7;
controls, controllers and control systems
comprising electronical control units, sensors
and measuring devices and automation systems
comprising computers, computer peripherals and
computer programs as well as electrical control
panels for operating and controlling industrial
machinery; measuring instruments and controlling
devices, namely temperature, humidity, pressure
for acquisition and processing of measured
values; weighing and metering devices, namely
weighers, gravimetrical weighers, flowweighers,
fluid-weighers for industrial machinery;
laboratory equipment, namely roller stands,
partical-and material-analysis equipment for
testing grains and flour; and analysis equipment,
namely measuring and optical apparatus,
instruments and spectrometers in the near
infrared; instruments for analyzing, data
processors for measuring and evaluating data,
software and hardware for analyzing organic
substances; machines for metering and weighing
all kinds of raw materials, intermediate products
and finished products, for use in the flour-
milling industry, in the baked-goods industry, in
the manufacture of pasta, snacks, cous-cous, dry
soup mixes, infant food, starches, and other
foods in the candy and chocolate industry, in the
coffee industry, in the rice industry, in the
edible-oil industry, in malting houses and
breweries and in the feed industry

in International Class 9;

Ser No. 79034792
6
drying, desiccating, heating and cooling
installations for raw materials and semi-
manufactured goods of all kinds; filtering
systems and equipment, namely bag filters, dust
collectors and dust separators

in International Class 11;

business consultation in financial questions;
financing of third party projects for the
construction of industrial equipment and
machinery

in International Class 36;

construction planning, construction supervision,
maintenance and repairing of industrial plants,
control units and machinery for flour mills,
plants and machinery for the baked-goods
industry, for the dry-soup production, for the
infant food production, for the cous-cous
production, for the production of starch and
other foodproducts, for the edible-oil industry,
for the waste treatment and recycling industry,
for the chemical industry (paints, varnishes,
detergents and soaps), for feed mills, for the
snack production, for the pasta production, for
rice mills, for breweries and malting houses, for
coffee processing, for candy and chocolate
factories, for the ink production, for pneumatic
conveying systems, for filter systems for
industrial use, for plastic and rubber
industries, for loading and unloading of ships
and for silo equipment, for mechanical and
pneumatic conveying systems, for injection-
molding and die-casting systems

in International Class 37;

educational services, namely conducting seminars,
conferences and classes in the field of managing
and supervising of our plants in the flour
milling industry, in the baked good industry, in
the manufacture of pasta, snacks, cous-cous, dry
soup mixes, infant food, starches, and other
foods, in the candy and chocolate industry, in
the coffee industry, in the rice industry, in the
Ser No. 79034792
7
edible-oil industry, in malting houses and
breweries and in the feed industry, publication
of books, brochures and periodicals

in International Class 41;

technical consultation engineering analysis;
engineering services; editing of books, brochures
and periodical; creating programs for data
processing for third parties; expert witness
services

in International Class 42;

and

5
issued to Buhler Motor GmbH for the following goods:
Machine parts, namely electric motors, in
particular brushless direct current motors, small
direct current motors, direct current fractional
horse power motors, small direct current gear
motors, alternating current fractional horse
power motors, small alternating current gear
motors, linear motors, synchronous motors, small
synchronous gear motors, planetary gear motors,
stepper motors; machine parts, namely
electronically operated fans for machine engines,
in particular small direct current fans; machine
parts, namely small gears, electronically
operated curtain drawing devices for machine

5 Registration No. 2714907 issued on May 13, 2003.
Ser No. 79034792
8
engines, speed governor for machines, engines and
motors, dynamos, generators of electricity, and
electric motors other than for land vehicles;
blowing machines for the compression, exhaustion
and transport of gasses; alternators; gears,
other than for land vehicles; transmissions for
machines; transmission other than for land
vehicles; compressors for refrigerators; fans for
motors and engines of machines; pumps for
machines, industrial engines and motors for
pumping liquids or air; industrial machine pumps
for pumping liquids or air; electricity
armatures, namely, rotors for electric motors;
reduction gears other than for land vehicles; air
suction machines; suction machines for industrial
purposes; lubricating pumps; machine parts,
namely reels; stands for machines; machine parts,
namely starters; current generators; machine
parts, namely vacuum pumps; machine parts, namely
valves for regulating liquid or air flow;
centrifugal pumps

in International Class 7;

Electric control mechanisms for machines, engines
or motors; encoders, namely electronic devices
for measurement of the rotation of revolving
parts like shafts and the like used in the
generation of electrical signals; self regulating
fuel pumps; revolution counters; electromagnetic
coils; electric anti-interference devices, namely
interference suppressors or radio shielding
units; automatic steering apparatus for vehicles,
namely electro-hydrolic gear systems or parking
assistance direct drives; electro-dynamic
apparatus for the remote control of signals,
namely hall sensors and photoelectric barriers;
electric locks; electric coils; electricity
transformers, electric closers; electricity
armatures, namely rotors for electric motors

in International Class 9;

Electromotively operated fans, in particular
small direct current fans; heat pumps; air
conditioning fans; parts of air conditioning
installations, namely fans; level controlling
Ser No. 79034792
9
valves in tanks and heat pumps; oil pumps for
heating installations

in International Class 11.

When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In most likelihood of
confusion analysis, two key, though not exclusive,
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 27 (CCPA 1976).
However, in this case, we have a third key
consideration, namely, letters of consent from the owners
of the cited registrations to allow registration and use of
applicant’s involved mark. The agreements provide in their
entirety as follows:
Ser No. 79034792
10
LETTER OF CONSENT
We, the undersigned

Buhler AG, Bahnhofstrasse, CH-9240 UZWIL/
Switzerland

are owners of the US-Trademark registrations
numbers: 857430, 1952342 and 1047573.6

We hereby consent to the registration and use of
the trademark “Buhler” US-Trademark Application
No. 79/034792 by Buhler Technologies GmbH, a
German corporation without limitation, of
Harkortstrasse 29, 40880 Ratingen, Germany, in
the USA.

Letter of Consent

We,
Buhler Motor GmbH
Anne-Frank-Str. 33-35
D-90459 Nurnberg
Germany

are owner of the US-Trademark “Buhler”,
registration no. 2714907. We hereby consent to
the registration and use of the trademark
“Buhler” international registration no. 914230,
US application no. 79034792, filed by Buhler
Technologies GmbH, Hartkortstr. 29, 40831
Ratingen, Germany, in the USA except for the
registration and use of the just mentioned
trademark for the goods “motors (except motors
for landcrafts)” in class 07.7

6 Applicant asserts that Buhler-Miag, Inc., record owner of
Registration No. 0857430, is a wholly-owned subsidiary of Buhler
AG, record owner of Registration No. 1952342. The examining
attorney does not dispute this assertion.
7 Applicant subsequently deleted the goods identified as “motors”
from its identification of Class 7 goods.
Ser No. 79034792
11
In its brief on appeal, applicant concedes that “the
marks of the cited Registrations and of the present
application are essentially identical” (brief, p. 2).
However, applicant argues that “the goods and/or services
are sufficiently different for avoiding a confusion between
the marks” (Id.) Applicant argues in addition that the
goods in question are sold in different channels of trade,
and that the goods “are relatively expensive items and the
level of sophistication of the relevant purchasers must be
considered high” (Id. at 4). Applicant further argues that
its consent agreements with the owners of the cited
registrations, even if found to be naked consents, possess
“some weight as evidence in determining the likelihood of
confusion issue” (Id. at 3). Finally, applicant argues
that “the marks are primarily merely surnames and,
therefore, are afforded a narrow degree of protection”
(Id.).
In her brief on appeal, the examining attorney
contends that the marks are confusingly similar and that
applicant’s goods as well as those of registrant are
broadly identified and may encompass one another. The
examining attorney further contends that there are no
limitations as to the trade channels for either applicant’s
goods or registrants’ goods and services. The examining
Ser No. 79034792
12
attorney contends in addition that there is no evidence
that either applicant’s or registrants’ goods will be sold
only to professionals. Finally, the examining attorney
contends that the consent agreements proffered by applicant
are naked consents that are insufficient to overcome the
likelihood of confusion in this case.
Other than the letters of consent described above,
neither applicant nor the examining attorney has made any
evidence of record in support of their respective
positions.8
Letters of Consent
We begin our consideration of applicant’s letters of
consent by observing that our primary reviewing Court has
on numerous occasions demanded that this Board give “great
weight” to consent agreements which are not merely
naked consent agreements. See, for example, Bongrain
International v. Delice de France, 811 F.2d 1479, 1 USPQ2d
1775, 1778 (Fed. Cir. 1987). In this case, however, the
owners of the three cited registrations have merely
consented to the registration and use of applicant’s

8 We note that with its June 2, 2008 notice of appeal, applicant
indicated that it “is in the process of obtaining consent
agreements from the owners of the cited registrations which are
not merely naked consents but are drafted in accordance with the
guidelines set out by the Examining Attorney….” However, no such
additional consent agreements are of record.

Ser No. 79034792
13
involved mark. Further, because the subject application is
based solely upon treaty rights and not use in commerce,
there is neither evidence of use of the mark nor any real
basis for the affected parties to determine that, based
upon prior experience, confusion is unlikely to occur.
See, for example, In re Mastic, Inc., 829 F.2d 1114, 4
USPQ2d 1292 (Fed. Cir. 1987). Nor do the letters of
consent contain any additional information regarding the
underlying facts which led the parties to conclude that
confusion is not likely. See Id. As such, and as
acknowledged by applicant in its notice of appeal, the
letters of consent are “naked” consents that fail to
establish either the factual basis for the parties’
recognition of each other’s right to use and register their
respective marks, or their agreement to restrict their uses
to the goods and/or services identified thereby to avoid
confusion. See Id. Cf. Bongrain, supra, at 1482, USPQ2d
at 1776.
Nonetheless, the letters of consent, while not
conclusive on the issue of likelihood of confusion, are
entitled to some probative value. Specifically, we may
infer from the fact that consent was given by both
registrants that the owners of the cited registrations do
not believe confusion is likely. See In re Donnay
Ser No. 79034792
14
International Societe Anonyme, 31 USPQ2d 1953, 1956 ( TTAB
1994).
The Marks
We now turn our attention to a comparison of the
marks. In determining the similarity or dissimilarity of
the marks, we must compare the marks in their entireties as
to appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source
of the goods and services offered under the respective
marks is likely to result.
In this case, and as noted above, applicant has
conceded that its mark is “essentially identical” to the
marks in the cited registrations. We agree that the word
portion of applicant’s mark, BUHLER, is identical to the
marks in cited Registration Nos. 0857430 and 1047573 and
identical to the word portion of the marks in cited
Registration Nos. 1952342 and 2714907.
Further, we find that BUHLER is the dominant element
of both applicant’s mark and the cited marks, and
Ser No. 79034792
15
accordingly it is entitled to more weight in our analysis.
It is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of
likelihood of confusion, 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. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In
applicant’s mark, as well as the marks in Registration Nos.
1952342 and 2714907, the relatively simple designs are
visually less significant and contribute less to the
overall commercial impressions thereof than the word
BUHLER. This is because when a mark comprises both a word
and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request
the goods or services. See In re Appetito Provisions Co.,
3 USPQ2d 1553 (TTAB 1987). For these reasons, we consider
BUHLER to be the dominant feature of all the involved
marks. The term BUHLER as it appears in applicant’s mark
as well as the mark in all four cited registrations, is
identical in sound and connotation and highly similar in
appearance.
Ser No. 79034792
16
Thus, we find that, when viewed as a whole,
applicant’s mark is highly similar to the marks in the
cited registrations in appearance, sound, and connotation,
and that the marks convey highly similar commercial
impressions.
Strength of the Marks
Turning next to our consideration of the strength of
the marks in the cited registrations, we note that
applicant argues, with no evidentiary support, that BUHLER
is a surname and thus entitled to a narrow scope of
protection. We further note that neither the involved
application nor any of the cited registrations contains a
disclaimer of BUHLER or a claim of acquired distinctiveness
under Section 2(f) of the Trademark Act as to that term.
As such, we find applicant’s unsupported argument that
BUHLER is a surname to be unpersuasive.
However, we note that at least two separate entities
have obtained registration of marks that include the term
BUHLER as their sole or most distinctive element. In
addition, both of those entities have consented to the
registration of the mark in the involved application, which
also includes the term BUHLER as its most distinctive
element. In the absence of any other evidence directed
toward the relative strength of the marks in the cited
Ser No. 79034792
17
registrations, we find that by their actions the
registrants have contributed to the weakening of their
marks such that they are entitled only to a somewhat
narrowed scope of protection that is less than that to
which a stronger mark may be entitled.
The Goods
We next turn to the similarity or dissimilarity
between applicant’s goods and the goods and services in the
cited registrations. We note at the outset that the
examining attorney has presented neither arguments nor
evidence that applicant’s goods are similar or otherwise
related to the services recited in Registration Nos.
0857430 and 1952342. Nor do we find that, as recited,
there is an obvious relation between applicant’s goods and
the services in those registrations.
Turning then to registrants’ goods, we note the
examining attorney’s assertion that because applicant’s and
registrants’ goods are “identified broadly” (brief, p. 10)
“it is presumed that they encompass all goods of the type
described, that they move in all normal channels of trade,
and that they are available to all potential customers”
(Id.). However, applicant’s goods are all used in the
fields of filtering, analyzing, distributing and monitoring
fluids and gases. Registrants’ good are used in the fields
Ser No. 79034792
18
of food and waste processing, air cleaning and
conditioning, manufacturing, motors, engines and electrical
devices used with such motors. As identified, both
applicant’s and registrants’ goods are used for specific
purposes that are not clearly related or encompassed by one
another. Thus, we do not find that, for instance,
applicant’s “pumps sold in combination for use in hot
tubs,” which appear to be a component part of a finished
product, are related to the “heat pumps” identified in
Registration No. 2714907. Nor do we find that applicant’s
“air filters for air conditioning units” and “partial air
flow filters as parts of machines,” again component parts
of finished products, are related to the “filters and air
cleaners for industrial use” identified in Registration No.
0875430. Further, and as noted above, the examining
attorney has not submitted any evidence to support her
contention that the goods identified in the involved
application and cited registrations are related.
In short, in the present case, there is no evidence to
support the examining attorney’s conclusory statement that
registrants’ goods and applicant’s goods are related. Nor
are applicant’s goods, as identified, obviously related to
registrants’ goods such that we may find upon the face
thereof that they are complementary, that a viable
Ser No. 79034792
19
relationship exists between them, or that such goods would
move in the same or related channels of trade.
Based on this record and the mere conclusory statement
of the examining attorney, we see the likelihood of
confusion claim asserted by the examining attorney as
amounting to only a speculative, theoretical possibility.
Language by our primary reviewing court is helpful in
resolving the likelihood of confusion issue in this case:
We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake
or with de minimis situations but with the
practicalities of the commercial world, with
which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data
Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed.
Cir. 1992), citing Witco Chemical Co. v. Whitfield Chemical
Co., Inc., 418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA
1969), aff’g 153 USPQ 412 (TTAB 1967). Further, we are not
persuaded that applicant’s goods are within the normal
field of expansion for registrants’ recited goods or
services. Simply put, there is nothing in the record to
support a finding that purchasers are likely to believe
that registrants will expand their goods and/or services to
encompass the goods recited in the application at issue.
Cf. In re General Motors Corp., 196 USPQ 574 (TTAB 1977).
Accordingly, based upon the record before us this du Pont
Ser No. 79034792
20
factor weights heavily against a finding of likelihood of
confusion.
In reaching our decision on likelihood of confusion we
have not relied upon applicant’s arguments regarding
sophistication of purchasers. Applicant asserts that due
to the expense of its goods purchasers thereof are
sophisticated and capable of discriminating between its
goods and the goods and services of registrants. In that
regard, we note that, as identified, most, if not all
applicant’s goods appear to be the type that would be used
or purchased by sophisticated purchasers. However, there
is no evidence of record that registrant’s goods would be
purchased only by highly sophisticated persons. Further,
it is settled that even sophisticated purchasers are not
necessarily knowledgeable in the field of trademarks or
immune from source confusion. See In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988). Accordingly, we find this du
Pont factor neutral in this case.
Summary
In view primarily of the dissimilarity between
applicant’s goods and the goods and services recited in the
cited registrations, and giving some weight to the letters
of consent to the use and registration of applicant’s mark
executed by the owners of all of the cited registrations,
Ser No. 79034792
21
we find that the examining attorney has not met her burden
of demonstrating that a likelihood of confusion exists
between applicant’s goods and registrant’s goods and
services.
Decision: The refusal of registration is reversed.
Accordingly, the involved application will be forwarded for
registration in due course.