Lucent Technologies, Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 75045569 (T.T.A.B. Mar. 30, 1999)

Paper No. 9
DEB
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Lucent Technologies, Inc.
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Serial No. 75/045,569
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R. A. Ryan for Applicant.
Deborah E. Lobo, Trademark Examining Attorney, Law Office
107 (Thomas S. Lamone, Managing Attorney).
_______
Before Simms, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Lucent Technologies, Inc., by assignment from NS-MPG
Inc., is the owner of an application to register the mark
“ULTIMAX” for “telecommunications products, namely, outside
plant1 structured cabling system consisting of copper,
coaxial and fiber optic cable, cabinets, enclosures, cable

1 According to applicant, “outside plant” is a commonly-used
term for the part of a large organization’s telephone system that
is physically located outside the corporate buildings.
Ser No. 75/045,569
2
connectors, composite cable and cable connectors, central
office cable terminating devices, and telecommunications
network interface devices.”2
The Trademark Examining Attorney issued a final
refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's proposed mark, “ULTIMAX” when used on these
high-technology items in the nature of outside plant
cabling infrastructures, so resembles the registered mark,
“ULTIMAX,” as applied to “transient voltage suppressors and
conditioners” as to be likely to cause confusion, or to
cause mistake, or to deceive.3
Applicant has appealed the final refusal to register.
Briefs have been filed, but applicant did not request an
oral hearing. We reverse the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E.I. du Pont DeNemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA 1973),
which sets forth the factors which, if relevant, should be
considered in determining likelihood of confusion.

2 Serial No. 75/045,569, in International Class 9, filed
January 18, 1996, based upon an allegation of a bona fide
intention to use the mark in commerce.
3 Registration No 1,805,173, issued on November 16, 1993.
The registration sets forth dates of first use of June 11, 1992.
Ser No. 75/045,569
3
Identical Marks
The examining attorney focuses first on the
similarities of the two marks. In its brief, applicant
concedes the obvious -- applicant's mark “ULTIMAX” is
identical in appearance, sound, connotation and commercial
impression to registrant's mark “ULTIMAX.” Thus, the issue
of whether confusion is likely under the Trademark Act will
turn on a weighing of all the relevant du Pont factors.
Relatedness of the respective parties’ goods
These marks must be considered in connection with the
particular goods for which they are, or will be, used. In
re National Data Corp., 224 USPQ 749, 750 (Fed. Cir. 1985).
Hence, the examining attorney proceeded to a comparison of
the respective parties’ goods to determine if they are, or
will be, related. We agree with the Trademark Examining
Attorney that for the purpose of determining likelihood of
confusion, the goods need not be identical or even
competitive. It is sufficient that the goods or services
of the applicant and registrant are related in some manner
that would give rise to a likelihood of confusion. See
e.g., In re Martin’s Famous Pastry Shoppe Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass
Ser No. 75/045,569
4
Works, 229 USPQ 65 (TTAB 1985); In re Jeep Corp., 222 USPQ
333 (TTAB 1984).
Throughout the prosecution of this application,
applicant has consistently construed the goods covered by
the registration in a most narrow context. As a result,
applicant asserts that these respective goods are not at
all similar. In fact, applicant identifies registrant’s
product as an A/C surge protector for appliances and
electronics having A/C power connections. This is a more
restrictive variant than “transient voltage suppressors and
conditioners” as set out in the registration. Applicant
first made this assertion in its first response to the
initial Office action refusing registration. Applicant
then followed up this argument by submitting with its
appeal brief additional materials about registrant’s goods
tending to support this restrictive identification.4 Since
applicant did not comply with the established rule that the
evidentiary record in an application must be complete prior
to the filing of the notice of appeal,5 we agree with the

4 Applicant submitted as attachments information from the
specimen included with registrant’s Statement of Use (dated July
16, 1993) as well as some of registrant’s pamphlets, purporting
to show that registrant's products are marketed to consumers
wishing to protect appliances and electronic equipment such as
TV's, VCR's, stereo systems, computers, fax machines, and copiers
from power surges.
5 See, 37 CFR 2.142(d); In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994).
Ser No. 75/045,569
5
Trademark Examining Attorney that this material cannot
enter into our decision. Accordingly, and for the reasons
indicated more fully below, we cannot share in applicant’s
assumption that the registrant's goods are designed
exclusively for indoor use or used exclusively with
domestic appliances and electronics. We conclude that
these goods could be complementary products as demonstrated
by the Trademark Examining Attorney using a broad
definition of registrant’s goods.6 See Communications
Satellite Corp. v. Comcet Inc. 166 USPQ 353, 358 (4th Cir.
1970) (complementary products are particularly vulnerable
to confusion).
Trade Channels
Given identical marks and arguably complementary
goods, the Trademark Examining Attorney contends that the
same purchasers would encounter these marks, and that the
activities surrounding their marketing are such that

6 Without reference to the untimely attachments provided by
applicant with the appeal brief, we accept that by definition, the
signals conducted by applicant’s telecommunications cable
products do not include Alternating Current (A/C) electrical
power. We agree with applicant, at least on this record, that a
manufacturer of surge protectors for indoor or outdoor A/C
appliances would not be likely to manufacture state-of-the-art
products for the telecommunications industry. Any manufacturer
of registrant’s A/C products would be venturing into an entirely
different line of business if it were to begin manufacturing
products for the transmission of video, data and telephone
signals via coaxial or fiber-optic telecommunications cables.
Ser No. 75/045,569
6
confusion as to origin is likely.7 Based on this evidence,
the Trademark Examining Attorney concludes that
registrant’s goods might well include voltage suppressors
and conditioners designed for use in conjunction with
outside telecommunication structures and equipment. We
agree with the Trademark Examining Attorney that
registrant’s identification of goods is not limited in any
manner and must necessarily be read to encompass all of the
normal trade channels and customers of any type, of any
price, or for use with any “transient voltage suppressors
and conditioners.”
By contrast, applicant concludes that the channels of
trade for the goods are different. Applicant argues that
purchasers seeking quite different products to satisfy very
different requirements will naturally seek those products
in distinctly different channels of trade.

7 The Trademark Examining Attorney has submitted evidence in
the form of NEXIS articles, listing from the Thomas Register of
American Manufacturers, and third-party registrations to
demonstrate that transient voltage suppressors and conditioners
are related to outside cabling systems. For example, she argues
that cabling systems are likely to include voltage suppressors as
a means of protecting the affected telecommunications equipment
from electrical surges. She argues further that all cables
inside the plant are ultimately linked to outside cabling
systems. Moreover, she contends that the term "devices" used in
applicant’s identification of goods, i.e., "central office cable
terminating devices and telecommunications network interface
devices," is actually broad enough to encompass voltage
suppressors and conditioners.
Ser No. 75/045,569
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We conclude that there is significant dissimilarity
between applicant's products and registrant’s listed goods.
When comparing applicant's products to registrant’s goods,
even the Trademark Examining Attorney admits these goods
are likely different. On the current record, we cannot say
for sure whether these goods might be complementary. The
Trademark Examining Attorney and applicant seem to agree
that registrant’s and applicant’s goods are electrical and
telecommunications devices, respectively, possibly used by
the same large institutions inside the offices and outside
the plant. However, the fact that these respective goods
could possibly be complementary products does not exhaust
the du Pont factors that are relevant herein. Furthermore,
we are not convinced that the goods as recited in the
application and registration would necessarily move in the
same channels of trade, and it would be premature to
conclude that the use by applicant of “ULTIMAX” in
connection with its products is likely to cause confusion
with registrant’s mark.
Conditions of Sale / Sophistication of Purchasers
Applicant’s products are outside plant structured
cabling systems that are marketed to service providers
interested in constructing telecommunications networks. We
Ser No. 75/045,569
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accept from the identification of goods that applicant’s
products are most expensive and are provided only to
sophisticated professionals on an individualized basis.
Even though this may not be true of registrant’s goods,
this factor weighs against finding a likelihood of
confusion. See Industrial Nucleonics Corporation v. Hinde,
475 F.2d 1197, 1199, 177 USPQ 386, 387 (CCPA 1973), and
Astra Pharmaceutical Products, Inc. v. Beckman Instruments,
Inc., 718 F.2d 1201, 1206, 220 USPQ 786, 790 (1st Cir. 1983)
(sophisticated purchasers and expensive goods militate
against confusion). Accordingly, applicant argues that the
sophisticated purchasers making decisions about procuring
applicant’s products would definitely not be likely to
confuse the source of the respective vendors' goods.
With respect to the sophistication of the relevant
purchasers, the Trademark Examining Attorney correctly
points out that courts have recognized that buyer expertise
does not always assure the absence of confusion, especially
when one is faced with identical marks. However, under all
the facts of this case, we conclude that this potential for
confusion appears to be a mere possibility -- not a
probability. See Carter-Wallace, Inc. v. Procter & Gamble
Co., 434 F.2d 794, 804, 167 USPQ 713, 720 (9th Cir. 1970).
As discussed in more detail below, the number of persons
Ser No. 75/045,569
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who actually fall into the category of overlapping
purchasers appears de minimis at best.
The Trademark Examining Attorney postulates that a
corporate office purchasing registrant’s indoor voltage
suppressors for its corporate operations may also need to
consider purchasing outdoor telecommunications equipment of
the type sold by applicant. We do not agree.
Applicant and registrant conduct business in somewhat
related fields and one could hypothesize that they might
well sell products to some of the same large institutions.
However, the mere possibility of purchase of the goods of
both vendors by the same institution does not, by itself,
establish similarity of trade channels or overlap of
customers. For example, individual departments may be
quite independent in their respective purchasing
activities. In such large organizations, it can hardly be
presumed that expensive and sophisticated infrastructures
such as outside plant cabling are selected by the same
individuals who make routine purchases of office supplies,
including power protection devices. Astra, 718 F.2d at
1206, 220 USPQ at 790. The likelihood of confusion must be
shown to exist not in a purchasing institution, but in “a
customer or purchaser.” Id., 220 USPQ at 790. As the Court
of Customs and Patent Appeals stated in Witco Chem. Co. v.
Ser No. 75/045,569
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Whitfield Chem. Co., 418 F.2d 1403, 1405, 164 USPQ 43, 44-
45 (CCPA 1969), aff’g, 153 USPQ 412 (TTAB 1967):
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.
The facts of this case are similar in some respects to
those found in the cases of Electronic Design & Sales v.
Electronic Data Systems, 954 F.2d 713, 21 USPQ2d 1388 (Fed.
Cir. 1992) and Dynamics Research Corp. v. Langenau
Manufacturing Co., 704 F.2d 1575, 217 USPQ 648 (Fed. Cir.
1983). As is the case here, the marks involved in
Electronic Design (“E.D.S. and design” compared to “EDS”)
and Dynamics Research (both marks comprise the initialism
“DRC”) were virtually identical. However, as was the
situation in these prior two cases, the record herein
establishes that applicant's goods are expensive. They
would be purchased by experienced corporate officials
following significant study and contractual negotiation:
In those instances where the same customers
might be exposed to both applicant's and
opposer's goods sold under the identical
mark, there would not be any likelihood of
confusion as to the source of the goods in
view of the nature of the goods involved and
the nature of the purchasers [large
corporations and government agencies] who
would be responsible for acquisition of the
products.
Ser No. 75/045,569
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Dynamics Research, 217 USPQ at 650.
Inasmuch as applicant’s products (as described) must
be assumed to be targeted to a most discriminating
clientele, probably under a negotiated contract involving
many thousands of dollars and a close working relationships
with the customer, it is highly unlikely that a
sophisticated client interested in Lucent Technologies’
products would think that "ULTIMAX" surge protectors also
represent applicant’s goods.
Conversely, we agree with applicant that the average
consumer wishing to purchase a surge protector would be
extremely unlikely to know of applicant's outside plant
network cabling system.
How diluted is the mark?
While applicant's mark and registrant's mark are
virtually identical, this highly suggestive matter cannot
be deemed to be a strong mark. Applicant has submitted
Patent and Trademark Office printouts (pending applications
and registrations) of a dozen variations on the ULTIMAX
formative, including use on electrical cables, electronic
controls, and portable temperature sensing systems.
Although there is no evidence of use of these third-party
Ser No. 75/045,569
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marks, we may look at this kind of evidence to show
probable meaning or connotation of the mark.
Variety of goods on which registrant’s mark is used
We agree with applicant that there is not a reasonable
probability, based upon the field of manufacture registrant
currently occupies, that registrant would enter the field
of manufacturing telecommunications products.
Decision: In spite of identical marks used on
potentially complementary goods, we conclude that based
upon the relative weakness of this mark, the expense of
applicant’s goods, the sophistication of applicant’s
purchasers, and an absence of any clear overlap in
purchasers of the respective parties’ goods, confusion is
not likely. The refusal to register under Section 2(d) is
reversed.
R. L. Simms
P. T. Hairston
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board