Medi PlusTec Medizin-isch-Technische Handel-gessellschaft mbH

Trademark Trial and Appeal Board

May 24, 2006

No. 78283332 (T.T.A.B. May. 24, 2006)

Mailed:
24 May 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Medi Plus Tec Medizinisch-Technische
Handelsgessellschaft mbH
________

Serial No. 78283332
_______

Mary S. Mathew of Collard & Roe, P.C. for Medi Plus Tec
Medizinisch-Technische Handelsgessellschaft mbH.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Walters, Rogers, and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 5, 2003, Medi Plus Tec Medizinisch-
Technische Handelsgessellschaft mbH (applicant) applied to
register the mark DENVER (in typed or standard character
form) on the Principal Register for goods ultimately
identified as:
cigarettes, tobacco, matches, and smoker's articles,
namely, cigarette holders not of precious metal,
cigarette cases not of precious metal, ashtrays not of
precious metal, matchboxes not of precious metal and
lighters not of precious metal, not including cigars
in Class 34.

THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78283332
2
The application (Serial No. 78283332) is based on
applicant’s ownership of a German registration (No. 302 52
030). 15 U.S.C. § 1126(e).1 The examining attorney2
refused to register the mark under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), because of a
registration for the mark DENVER SWEETS, in typed or
standard character form, for “cigars” in Class 34. The
registration, No. 2,124,720, issued December 30, 1997, and
it contains a disclaimer of the term “Sweets.” Affidavits
under Sections 8 and 15 of the Trademark Act have been
accepted or acknowledged.
After the examining attorney made the refusal final,
this appeal followed.
When we have a question of likelihood of confusion, we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind

1 Applicant also based its application on its intention to use
the mark in commerce, but it subsequently deleted this basis.
2 The current examining attorney was not the original examining
attorney in the case.
Ser No. 78283332
3
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by looking at the similarities and
dissimilarities of applicant’s and registrant’s marks,
DENVER and DENVER SWEETS. Neither mark is limited to any
particular style or design so the marks are identical
except for the fact that registrant adds the disclaimed
word “Sweets” in its mark. The term “Sweets” appears, at a
minimum to be descriptive of cigars with “a sweet flavor,
smell.”3 The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987).4 Disclaimed matter is
often “less significant in creating the mark’s commercial
impression.” In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). The Federal Circuit has held that the
addition of the word “Swing” to registrant’s mark “Laser”

3 See also In re House of Windsor, 221 USPQ 53, 54 (TTAB 1983)
(emphasis added) (“Registration was initially refused in this
case, under Section 2(e)(1) of the Trademark Act, on the ground
that the term ‘BAHIA’ merely described a type of small, sweet,
dark leaf tobacco raised in the Bahia province in Brazil, from
which leaves applicant's cigars were presumably made”).
4 We take judicial notice of this definition. 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).
Ser No. 78283332
4
did not result in the marks being dissimilar. “[B]ecause
both marks begin with ‘laser,’ they have consequent
similarities in appearance and pronunciation. Second, the
term ‘swing’ is both common and descriptive… Regarding
descriptive terms this court has noted that the descriptive
component of a mark may be given little weight in reaching
a conclusion on likelihood of confusion.” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845-45
(Fed. Cir. 2000) (citations and quotation marks omitted).
See also In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (Court held that the addition
of “The,” “Cafe” and a diamond-shaped design to
registrant’s DELTA mark still resulted in a likelihood of
confusion).
Applicant’s mark DENVER is obviously dominated by the
term DENVER inasmuch as it is the entire mark.
Registrant’s mark DENVER SWEETS would also be dominated by
the same term because the descriptive term “Sweets” would
not significantly distinguish the otherwise identical
terms. When we compare the marks in their entireties, the
terms DENVER and DENVER SWEETS are similar in sound,
appearance, meaning, and commercial impression. If “the
dominant portion of both marks is the same, then confusion
Ser No. 78283332
5
may be likely notwithstanding peripheral differences.” In
re Denisi, 225 USPQ 624, 624 (TTAB 1985).
However, applicant argues that the term “Denver” is
“highly diluted” and it “is entitled to a narrow scope of
protection as it is a weak word.” Brief at 6. Applicant
relies on a list of 319 marks that contain the word
“Denver.” There are numerous problems with applicant’s
argument. First, the Federal Circuit has made it clear
that concerning the “strength of a mark, however,
registration evidence may not be given any weight.” Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992) (emphasis in original). See
also AMF Inc. v. American Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) ("The existence
of [third party] registrations is not evidence of what
happens in the market place or that customers are familiar
with them"). Therefore, we cannot consider the
registrations as evidence that the cited mark is weak or
diluted. Also, while “third-party registrations may be
used to demonstrate that a portion of a mark is suggestive
or descriptive, they cannot be used to justify the
registration of another confusingly similar mark.” In re
J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987).
Therefore, even if applicant provided complete copies of
Ser No. 78283332
6
these registrations, they would not support applicant’s
argument that the cited registration is weak and entitled
to only a narrow scope of protection.
More importantly, the evidence of record consists of a
list of application and registration numbers with the mark
and the status of the application and registration.
Normally, the “submission of a list of registrations is
insufficient to make them of record.” In re Duofold, Inc.,
184 USPQ 638, 640 (TTAB 1974). However, the examining
attorney has not objected and we will consider them for
whatever limited probative value such evidence may have.
In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1513 n.3 (TTAB 2001). We add that there is little
probative value in a list of marks devoid of goods or
services, disclaimers, and other information.
Furthermore, when we view the list, there are only
approximately 33 active registrations. The rest of the
list is composed of applications and expired registrations,
which are not evidence that supports applicant’s argument.
Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]
canceled registration does not provide constructive notice
of anything”); and Glamorene Products Corp. v. Earl
Grissmer Co., Inc., 203 USPQ 1090, 1092 n.5 (TTAB 1979)
Ser No. 78283332
7
(“The filing of a notice of reliance upon third-party
applications is a futile act because copies of those
applications or the publication thereof in the Official
Gazette is evidence only of the filing of the applications
and nothing else”). The fact that the term “Denver” is
registered as part of 33 different registrations for a
variety of goods and services is hardly surprising.
Therefore, we cannot conclude from this very limited
evidence that the cited registration is weak.
The next factor we consider is the relatedness of the
goods of applicant and registrant. Registrant’s goods
consist of a single item, cigars. Applicant’s goods
include cigarettes, tobacco, matches, and various smoker's
articles. Obviously, goods do not have to be identical
before we can find that they are related. “In order to
find that there is a likelihood of confusion, it is not
necessary that the goods or services on or in connection
with which the marks are used be identical or even
competitive. It is enough if there is a relationship
between them such that persons encountering them under
their respective marks are likely to assume that they
originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
Ser No. 78283332
8
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
The examining attorney has introduced numerous
registrations that show that the same entity has registered
its mark for both cigarettes and cigars. See, e.g.,
Registration Nos. 2,128,089 (cigars and cigarettes);
2,289,175 (cigars and cigarettes); 2,174,627 (cigars and
cigarettes); 2,632,926 (cigars and cigarettes); 2,690,682
(cigars and cigarettes); 2,750,200 (cigars and cigarettes);
2,739,152 (cigars and cigarettes); and 2,750,333 (cigars
and cigarettes). These registrations suggest that cigars
and cigarettes originate from the same source. See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
(Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Furthermore, we note that the board has held that
cigars and smoking tobacco are related products.
Cigars, chewing tobacco and smoking tobacco are all
tobacco products sold in the same retail outlets to
the general purchasing public. Although neither of
Ser No. 78283332
9
the parties presently includes in their line of
products the goods of the other, the record indicates
that other companies carry such products as part of
their line. There is no doubt that if cigars and
chewing tobacco or smoking tobacco were sold under the
same or similar marks, the purchasing public would
readily assume that the products originate with a
single producer or seller.

Consolidated Cigar Corp. v. Liggett & Myers Tobacco Co.,
137 USPQ 483, 484 (TTAB 1963).
Here, the record supports the examining attorney’s
conclusion that the goods are related. When we also
consider that the marks DENVER and DENVER SWEETS are very
similar, we hold that if purchasers were to encounter these
very similar marks on the identified products, they are
likely to assume that the sources of these goods are
related or associated in some way. Therefore, confusion
would be likely.
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.