Kendro Laboratory Products GmbH

Trademark Trial and Appeal Board

May 16, 2003

No. 75435249re (T.T.A.B. May. 16, 2003)

Mailed:
May 16, 2003
Paper No. 23
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kendro Laboratory Products GmbH
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Serial No. 75/435,249
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Request for Reconsideration
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Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant has requested reconsideration of the Board’s
October 29, 2002 decision affirming the Trademark Examining
Attorney’s Section 2(d) refusal in the above-captioned
application. We have carefully considered applicant’s
arguments, but we are not persuaded that our previous
decision was in error. Specifically, and notwithstanding
applicant’s arguments to the contrary in its request for
reconsideration, we remain of the opinion that applicant’s
identified goods (“incubators for laboratory purposes” and
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/435,249
2
“temperature and climatic cabinets for general industrial
applications”) and registrant’s identified goods
(“autoclaves”) are sufficiently related that confusion is
likely to result from use of the highly similar marks
involved in this case (CYTOMAT (stylized) and CITOMAT).
Applicant, citing In re Donnay International, Societe
Anonyme, 31 USPQ2d 1953 (TTAB 1994), argues that the two
third-party registrations upon which we relied (under In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993), and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB
1988)) are an insufficient evidentiary basis for finding
that applicant’s and registrant’s goods are related.
However, we do not read Donnay as holding that there is a
minimum number of third-party registrations which is
required, in all cases, to support a finding of likelihood
of confusion. Although two third-party registrations was
found to be an insufficient number to support a likelihood
of confusion finding in Donnay, that case is readily
distinguishable from this case because the applicant in
that case had obtained and submitted a consent to register
from the owner of the cited registration. The Board found
that the consent “tipped the scales” in applicant’s favor,
and that it trumped the usual rule that doubts as to the
existence of likelihood of confusion must be resolved
Ser. No. 75/435,249
3
against the applicant. Clearly, the key to the Board’s
determination of no likelihood of confusion in Donnay was
the existence of the consent, not the fact that there were
only two third-party registrations. No such consent exists
in the present case to tip the scales in applicant’s favor,
or to preclude our application of the general rule that
doubts as to the existence of likelihood of confusion must
be resolved against the applicant.
Applicant also argues that its incubators and
registrant’s autoclaves are dissimilar and unrelated
because they serve different purposes and are not
complementary or competitive. Applicant notes that
incubators are used to “cultivate life,” while autoclaves
are used for sterilization and thus to “destroy life.” We
are not persuaded. First, as a legal matter, it is settled
that the respective goods need not be competitive or
complementary in order to find that they are related under
the second du Pont factor. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); In re International Telephone & Telegraph Corp., 197
USPQ2d 910 (TTAB 1978).
Second, as a factual matter, the evidence of record
belies applicant’s contention that “life-cultivating”
Ser. No. 75/435,249
4
laboratory instruments would not originate from the same
source as “life-destroying” laboratory instruments. As
noted in footnote 9 of the Board’s decision, there are four
third-party registrations in the record which include in
their respective identifications of goods both “incubators”
and “sterilizers.” This evidence suggests that these types
of goods may originate from a single source under a single
mark, notwithstanding the fact that one “cultivates life”
while the other “destroys life.”1
It is settled that the greater the degree of
similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between the applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983). We remain of the opinion that, given the high
degree of similarity between applicant’s and registrant’s
1 We did not expressly rely on these four additional third-party
registrations in our decision, because we could not assume that
the “sterilizers” identified therein necessarily included
autoclaves. Nonetheless, although these additional registrations
might not directly support our finding that applicant’s
incubators and registrant’s autoclaves are sufficiently
commercially related to support a determination that confusion is
likely, they certainly do not detract from that finding.
Ser. No. 75/435,249
5
marks, the evidence of record establishes that applicant’s
goods and registrant’s goods are sufficiently related that
confusion is likely to result. Any doubt as to that
conclusion must be resolved against applicant. See In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
(Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: Applicant’s request for reconsideration is
denied.2
2 The time for filing an appeal of the Board’s decision in this
case expires two months from the mailing date of this decision
denying applicant’s request for reconsideration. See TBMP
§§902.02 and 903.04.