Haraeus Kulzer GmbH & Co. KG

Trademark Trial and Appeal Board

Mar 30, 2005

No. 76298884 (T.T.A.B. Mar. 30, 2005)

Mailed: March 30, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Haraeus Kulzer GmbH & Co. KG
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Serial No. 76298884
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Nathaniel D. Kramer of Kirschstein, Ottinger, Israel &
Schiffmiller, P.C. for Haraeus Kulzer GmbH & Co. KG.

Toni Y. Hickey, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
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Before Quinn, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application has been filed by Haraeus Kulzer GmbH &
Co. KG (a German corporation) to register the mark shown
below,

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76298884
2
for “dental impression materials and dental alginates.”1
The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to its goods, so
resembles the previously registered mark KRONOS (typed
drawing) for “dental instruments, namely, drills and
burrs,”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the case. No oral hearing was requested.
The examining attorney maintains that applicant’s mark
and the cited mark are confusingly similar in terms of
overall commercial impression. Further, with respect to
applicant’s and registrant’s goods, the examining attorney
argues that they are closely related inasmuch as they are
dental products that travel in the same channels of trade
to the same purchasers, namely dentists and their
assistants. In this regard, the examining attorney
submitted copies of four use-based third-party
registrations for marks that cover dental impression

1 Application Serial No. 76298884, filed August 14, 2001, based
on an allegation of a bona fide intention to use the mark in
commerce. Applicant asserted a second basis for filing, namely a
right of priority under Section 44 of the Act based on a German
application that eventually matured into German Registration No.
30112837.
2 Registration No. 1,240,152 issued May 31, 1983; renewed.
Ser No. 76298884
3
materials, on the one hand, and dental instruments, on the
other hand. Also, the examining attorney submitted a
printout of a web page from the Sullivan-Schein dental
supply company which shows that dental impression materials
and dental instruments are among the dental products the
company offers for sale.
Applicant, in urging reversal of the refusal to
register, argues that its mark and the cited mark are
dissimilar in their entireties and that the cited mark is
weak and entitled to only a limited scope of protection.
With its request for reconsideration, applicant submitted a
list of third-party registrations of marks consisting of
KRONOS as well as copies of nine individual third-party
registrations of KRONOS marks. Further, applicant argues
that the respective marks have different connotations, that
is, applicant’s mark is a coined term “whose spelling and
design conjure up time and timepieces,” whereas
registrant’s mark is the name of a Greek god in mythology.3
(Brief, p. 3). Further, applicant argues that the
respective marks differ in sound and appearance. Lastly,
applicant argues that purchasers of applicant’s and

3 Applicant submitted the following two excerpts from the online
version of The Random House Dictionary:
Kronos: Cronus
Cronus: a Titan, son of Uranus and Gaea, who was
dethroned by his son Zeus. Cf. Saturn.
Ser No. 76298884
4
registrant’s goods are sophisticated, and thus are not
likely to be confused.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the likelihood of confusion factors set forth
in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976), in any likelihood of
confusion analysis, two key considerations are the
similarity of the goods and the similarity of the marks.
With respect to the marks, when we consider the marks
in their entireties, as we are obliged to do, we find that
there are specific differences in the marks. In
particular, applicant’s mark begins with the letter “C,”
ends in “O” and includes a prominent cross hairs design
within the first “O.” The cited mark, on the other hand,
begins with the letter “K” and ends in “S” and contains no
design feature. This results in a mark that, when
considered in its entirety, is different in overall
commercial impression from applicant’s mark.
In reaching our decision, we have accorded little
weight to applicant’s argument that the cited mark is weak
and entitled to only a limited scope of protection. As
Ser No. 76298884
5
previously indicated, applicant submitted a list of third-
party registrations of KRONOS marks. As the examining
attorney correctly noted, a mere list of third-party
registrations is insufficient to make such registrations of
record. Also, applicant submitted copies of nine third-
party registrations for KRONOS marks which cover goods and
services in the medical and health fields. None of these
third-party registrations, however, covers dental products
or services.4 Moreover, seven of the registrations are
owned by a single entity. In short, the evidence submitted
by applicant does not establish that the cited mark is weak
in the dental products field.
Further, with respect to the alleged connotations of
the marks, there is no evidence that a significant number
of purchasers of dental products are acquainted with Greek
mythology and the god Kronos such that they would associate
registrant’s mark with this Greek god. Also, we are not
persuaded on this record that purchasers will view
applicant’s mark as connoting “time.” Rather, we believe
that purchasers would view both marks simply as coined
terms.

4 For example, Registration No. 2,773,058 for the mark KRONOS
COMPOUNDING PHARMACY covers retail pharmacy services;
Registration No. 2,226,344 for the mark KRONOS SKINCARE covers
the services of providing skin care treatments; and Registration
No. 2,774,493 for the mark KRONOS cover latex condoms.
Ser No. 76298884
6
Insofar as the goods are concerned, while they are
clearly commercially related in that they are dental
products, there are, nonetheless, specific differences
between dental drills and burrs, on the one hand, and
dental impression materials and dental alginates, on the
other hand. Dental drills and burrs are instruments
whereas dental impression materials and dental alginates
are chemical compositions. Moreover, neither applicant’s
nor registrant’s goods are impulse products, but rather
these are the kinds of goods that are marketed to and
bought by sophisticated purchasers, namely, dentists and
their assistants or office personnel. Such purchasers
would typically be knowledgeable and discriminating
consumers who would exercise care in the selection of
applicant’s and registrant’s goods.
Based on the ex parte record before us, and in view of
the cumulative differences between the involved marks and
the respective goods, and the care exercised by purchasers
of such goods, we find that there is no likelihood of
confusion in this case.
Decision: The refusal to register under Section 2(d)
is reversed.