Optimize Tech-nologies, Inc.v.Wicom GmbH

Trademark Trial and Appeal Board

Sep 28, 2006

No. 91158331 (T.T.A.B. Sep. 28, 2006)

Mailed: September 28, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Optimize Technologies, Inc.
v.
Wicom GmbH
_____

Opposition No. 91156666
Opposition No. 91158331
_____

Everett E. Fruehling of Christensen O'Connor Johnson Kindness
PLLC for Optimize Technologies, Inc.

Stanley C. Macel, III of Connolly Bove Lodge & Hutz LLP for Wicom
GmbH.
______

Before Seeherman, Holtzman and Drost, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, Wicom GmbH, has filed applications to register
the mark OPTIFLOW for "laboratory filters for purification and
cleaning of fluid laboratory samples, sold separately" in Class
9;1 and the mark OPTI-LIGHT for the following two classes of
goods: "chromatography chemicals" in Class 1; and "analytical
devices and systems for use in the chemical and physical analysis

1 Application Serial No. 78095516, filed November 28, 2001, alleging a
bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition Nos. 91156666 and 91158331
2
of solid, liquid and gaseous compounds and mixtures and
structural and replacement parts therefore [sic]" in Class 9.2
Both marks are in standard character form.
Opposer filed a notice of opposition against each
application,3 asserting as its ground for opposition, priority
and likelihood of confusion under Section 2(d) of the Trademark
Act.4 In particular, opposer alleges prior use and registration
of the following marks, all in standard character form:
Registration No. 2048831: OPTI for "liquid transfer
components of chemical analysis equipment, namely
High-Performance Liquid Chromatography (HPLC) -
pistons and plunger seals for pumps; solvent reservoir
filters; in-line filters; tubing; check valves; prime
and purge valves; pump heads, precolumn filters; and
fittings for tubing" in Class 9;

Registration No. 2100804: OPTI-GUARD for "precolumn
filters and guard columns for High-Performance Liquid
Chromatography (HPLC)" in Class 9;

Registration No. 2023739: OPTI-MAX for "check valves
for High-Performance Liquid Chromatography (HPLC)
pumps" in Class 9;

Registration No. 2023740: OPTI-SEAL for "piston and
plunger seals for High-Performance Liquid
Chromatography (HPLC) pumps" in Class 9; and

Registration No. 2107751: OPTIMIZE TECHNOLOGIES
(TECHNOLOGIES disclaimed) for "liquid transfer

2 Serial No. 78176019, filed October 18, 2002, based on an allegation
of a bona fide intention to use the mark in commerce.

3 Opposition No. 91156666 was filed on May 5, 2003 against application
Serial No. 78095516 (OPTIFLOW); Opposition No. 91158331 was filed on
October 23, 2003 against application Serial No. 78176019 (OPTI-LIGHT).
The oppositions were consolidated by the Board on April 27, 2004.

4 Opposer also asserts that the marks falsely suggest a connection with
opposer under Section 2(a) of the Act. Inasmuch as opposer submitted
no evidence or argument on this claim, the claim will be given no
further consideration.
Opposition Nos. 91156666 and 91158331
3
components of chemical analytic equipment, namely,
High-Performance Liquid Chromatography (HPLC) -
tubing; fittings; packed columns; guard columns;
precolumn filters; seals; pump components, namely,
pumpheads, pistons, plungers and seals; check valves;
priming valves; priming adapters; detector source
lamps; filters; manifold ball seals; injector
components, namely, syringes, seals and needles;
pressure regulators; sample processor components,
namely, syringes, needles, seals, washers and frits,
all for HPLC instruments; HPLC maintenance kits
comprising inlet cartridge check valves, outlet
cartridge check valves, replacement cartridges,
pistons, pump seals, filters and fittings; and HPLC
fitting kits comprising tubing, nuts and ferrules" in
Class 9.

Opposer also asserts prior use of two additional marks and
ownership of pending applications (filed subsequent to the
involved applications) for those marks as follows:
Serial No. 78235546: OPTI-PAK for "capillary trap
cartridges for High-Performance Liquid Chromatography
(HPLC) and other analytical techniques involving
analyte trapping and sample purification" in Class 9;
and

Serial No. 78235551: OPTI-SOLV for "filters for High-
Performance Liquid Chromatography (HPLC), Mass
Spectrometry, sample preparation, and other analytical
techniques involving filtration of solvents, mobile
phases, and samples" in Class 9.

In addition, opposer alleges in paragraph 7 of the oppositions:
Opposer's and Applicant's goods are sold in the same
channels of trade to the same consumers or class of
consumers, namely, university research laboratories,
biotech research laboratories, pharmaceutical
manufacturers, crime investigation laboratories;
hospitals, and other laboratories and instructions
[sic] performing liquid study and analysis.

Opposer claims that applicant's marks, when applied to
applicant's goods, so resemble opposer's previously used and
Opposition Nos. 91156666 and 91158331
4
registered OPTI and OPTI- prefixed marks referenced above as to
be likely to cause confusion.
Applicant, by its amended answers, admitted paragraph 7 of
the oppositions quoted above, and denied the remaining salient
allegations.
The record includes the pleadings; the file of the involved
applications; opposer's notice of reliance on status and title
copies of its pleaded registrations;5 and the testimony, with an
exhibit, of Doug Ford, opposer's president and owner.
Applicant neither attended the deposition of opposer's
witness nor took any testimony or offered any other evidence in
its own behalf. Only opposer filed a brief.6
As a preliminary matter, we note that opposer submitted for
the first time with its brief, copies of certain responses to
opposer's interrogatories and requests for admission, and what
opposer refers to as "correct copies of documents numbered OPTI

5 Opposer also seeks to introduce, by its notice of reliance, a copy of
a product catalog. However, this type of evidence is not admissible by
notice of reliance because it is not considered a printed publication
available to the public within the meaning of Trademark Rule 2.122(e).
See Glamorene Products Corporation. v. Earl Grissmer Company, Inc.,
203 USPQ 1090 (TTAB 1979) (private promotional literature is not
presumed to be publicly available within the meaning of the rule); and
Wagner Electric Corp. v. Raygo Wagner, Inc., 192 USPQ 33 (TTAB 1976)
(catalogs and other house publications are not publications of general
circulation within the contemplation of the rule). Thus, the product
catalog is not properly of record and will not be considered.

6 The transcript of Mr. Ford's deposition which was filed for the first
time with its brief is considered timely as it was filed prior to the
submission of the case for final decision. See Trademark Rule
2.125(c); Hewlett-Packard Company v. Human Performance Measurement,
Inc., 23 USPQ2d 1390 (TTAB 1991); and TBMP §703.01(k) (2d ed. 2004).
Opposition Nos. 91156666 and 91158331
5
000001 through OPTI 000010" which consist of a series of e-mails
between the parties. This evidence is untimely and will not be
considered. See TBMP §704.05(b) (2d ed. rev. 2004) ("Exhibits
and other evidentiary materials attached to a party's brief on
the case can be given no consideration unless they were properly
made of record during the time for taking testimony").
We turn then to the merits of the case. Opposer, Optimize
Technologies, Inc., markets equipment and components for use in
chromatography. Chromatography is the chemical analysis of
fluids, that is, the separation of a solution into its separate
molecular components. Mr. Ford explains chromatography as
follows (Dep., p. 5):
Chromatography -- the chrome is color, and it's the
separation of the components, analogous to separating
a solution that is colorful into separate components.
So now there's gas chromatography and liquid
chromatography, and it's the separation of either a
gas or a liquid.

Opposer's products are used in a particular chromatography
technique known as High-Pressure Liquid Chromatography (HPLC).
Opposer sells a line of 500 HPLC components worldwide through its
authorized dealers under a variety of "Opti" prefix marks, and
opposer has continually used such marks since the inception of
its business in 1985. Opposer first used an OPTI- prefix mark,
OPTI-LOK, in 1985 on finger-type fittings that connected the
tubing in the HPLC instrument. Opposer has used OPTI-SEAL on
plunger seals for HPLC instruments since January 1988; OPTI-MAX
on check valves since January 1990; OPTI-GUARD on pre-column
Opposition Nos. 91156666 and 91158331
6
filters, guard columns, and any other type of packed bed since
1994; and opposer's "parent" mark, OPTIMIZE TECHNOLOGIES, in
connection with all of opposer's products since October 15, 1985.
In addition, opposer has been selling products under the mark
OPTI-SOLV since March 2002 and under the mark OPTI-PAK since
February 1993.
Opposer advertises and promotes its products at trade shows
where, according to Mr. Ford, opposer is "very visible with all
of our trademark names, the Opti's"; through distributors'
catalogs where "the Opti names are prominent"; and in national
trade journals such as LCGC ("Liquid Chromatography/Gas
Chromatography"). Dep., p. 10.
Opposer markets its products under the OPTI and OPTI- prefix
marks primarily to the pharmaceutical industry, and also to
universities, the petrochemical industry, and to purchasers such
as university research laboratories, biotech research
laboratories, pharmaceutical manufacturers, crime investigation
laboratories, hospitals and any laboratory separating chemical
solutions, performing liquid study analysis.
Applicant, Wicom GmbH, was opposer's dealer of "OPTI"
products in Germany since the late '80s or early 90's. Many of
opposer's products can be used specifically for the same purpose
as the products which applicant intends to sell under its
OPTIFLOW mark. All of applicant's products as well as all of
opposer's products "are used in the HPLC technique or any
Opposition Nos. 91156666 and 91158331
7
instrumentation in that field" (Dep., p. 13); applicant's
OPTILIGHT products "all involve chromatography" and are "in the
same category as all of [opposer's] components for
chromatography" (Dep., p. 14); and applicant's goods can be sold
in the same channels of trade and to the same classes of
purchasers as opposer's goods.
Priority
Opposer has made of record status and title copies of its
five pleaded registrations for the marks OPTI, OPTI-GUARD, OPTI-
MAX, OPTI-SEAL and OPTIMIZE TECHNOLOGIES.7 Thus, opposer's
standing has been established, and its priority with respect to
the registered marks for the goods identified therein is not in
issue. King Candy Co., Inc. v. Eunice King's Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108 (CCPA 1974). In addition, opposer has
demonstrated first use of the mark OPTI and each of the
registered OPTI- prefix marks in connection with the goods
identified in the registrations prior to the November 28, 2001
and October 18, 2002 constructive dates of first use of the
subject applications.
Opposer states in its brief that its pleaded applications
for OPTI-SOLV and OPTI-PAK issued into registrations on November
30, 2004, subsequent to the filing of the oppositions, and

7 Registration No. 2048831 (OPTI), issued April 1, 1997; Registration
No. 2100804 (OPTI-GUARD), issued September 30, 1997; Registration No.
2023739 (OPTI-MAX), issued December 17, 1996; and Registration No.
2107751 (OPTIMIZE TECHNOLOGIES), issued October 21, 1997. The copies
Opposition Nos. 91156666 and 91158331
8
opposer is seeking to rely on these registrations, as well.
However, opposer did not introduce status and title copies of the
registrations or otherwise properly make the registrations of
record. Nor has opposer established common law rights in these
marks. Although Mr. Ford testified that opposer’s OPTI-SOLV and
OPTI-PAK marks were first used in February 1993 and March 2002,
respectively, Mr. Ford did not identify any goods on which these
marks were used. Furthermore, the OPTI-PAK mark was not in use
prior to the November 28, 2001 filing date of the application for
OPTIFLOW.8
Likelihood of confusion
Thus, we turn to the question of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis of
all of the probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In re E.I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the

of the registrations show that Sections 8 and 15 affidavits have been
accepted and acknowledged, respectively, for each.

8 Opposer has not established common law use of the other alleged OPTI-
prefix marks mentioned in opposer's brief. Mr. Ford testified that
opposer used OPTI-FLOW for a digital flowmeter "around the mid-'90s."
However, opposer apparently no longer sells this product, and Mr.
Ford's testimony regarding the first use of this mark in the United
States is unclear. The mark OPTI-LOK, according to opposer, was first
used in 1985, but it is not clear from the testimony whether that mark
is still in use. Opposer offered no evidence of use of the marks OPTI-
Opposition Nos. 91156666 and 91158331
9
goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
Opposer has pleaded9 and argued that it owns a family of
"OPTI" marks. However, the requisite showing of a family of
marks has not been made. Mr. Ford's nonspecific and unsupported
statements that opposer promotes the marks together at tradeshows
and in distributors' catalogs are insufficient to prove that
opposer has created widespread public recognition of "OPTI" as a
family name. See J & J Snack Foods Corp. v. McDonald's Corp.,
932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Witco Chemical
Co. v. Whitfield Chemical Co., 418 F.2d 403, 164 USPQ 43 (CCPA
1969); and Hester Industries Inc. v. Tyson Foods Inc., 2 USPQ2d
1646 (TTAB 1987).
Therefore, we must determine the issue of likelihood of
confusion based on the individual marks that are the subject of
opposer's registrations. In our analysis we will direct our
attention to the registered mark of opposer which can be
considered closest to the marks in the subject applications,
namely Registration No. 2048831 for the mark OPTI.
We turn first to a comparison of the goods. Opposer's goods
are identified in the registration for OPTI as "liquid transfer
components of chemical analysis equipment, namely High-

DRAW, OPTI-PEEK or OPTI-LYNX, all of which were mentioned in a footnote
in opposer's brief.

9 We have construed the notices of opposition as asserting a family of
marks.
Opposition Nos. 91156666 and 91158331
10
Performance Liquid Chromatography (HPLC) - pistons and plunger
seals for pumps; solvent reservoir filters; in-line filters;
tubing; check valves; prime and purge valves; pump heads,
precolumn filters; and fittings for tubing." Applicant's goods
under its OPTIFLOW mark are "laboratory filters for purification
and cleaning of fluid laboratory samples"; and under its OPTI-
LIGHT mark are "chromatography chemicals" and "analytical devices
and systems for use in the chemical and physical analysis of
solid, liquid and gaseous compounds." The parties' goods, as
identified, are related on their face. Chromatography refers to
the collective techniques, such as HPLC, used to separate, purify
and analyze chemical solutions. Applicant's and registrant's
goods are complementary, closely related equipment and components
used in a chromatography or HPLC system. Further, Mr. Ford
testified that applicant's analytical devices are "in the same
category as all of our components for chromatography" (Dep., p.
14), and that opposer's chemicals and products are used for the
same purpose as applicant's laboratory filters for purification
and cleaning of fluid laboratory samples.
In addition, the record shows, and applicant admits, that
the parties' goods would be sold in the same channels of trade
and directed to the same classes of purchasers, including the
petrochemical industry; pharmaceutical manufacturers; and
university, biotech research and crime investigation
laboratories.
Opposition Nos. 91156666 and 91158331
11
We turn then to a comparison of opposer's mark OPTI with
applicant's marks OPTIFLOW and OPTI-LIGHT. In determining the
similarity or dissimilarity of marks, we must consider the marks
in their entireties in terms of sound, appearance, meaning and
commercial impression. See du Pont, supra. See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005).
The parties' marks are similar in sound and appearance. The
term OPTI is opposer's entire mark and, as the first term in
OPTIFLOW and OPTI-LIGHT, it is visually and aurally the dominant
feature of applicant's marks. Further, the term OPTI is dominant
in conveying the meaning and creating the commercial impression
of applicant's marks. To the extent that "OPTI" could be viewed
as a shortened form of "optimize," as in opposer's mark OPTIMIZE
TECHNOLOGIES, thereby suggesting the quality and effectiveness of
opposer's products, that meaning would be the same in applicant's
marks. The additional words FLOW and LIGHT in applicant's marks
do not significantly change the meaning or commercial impression
created by OPTI alone, particularly in view of the highly
suggestive nature of those words in relation to applicant's
goods. As opposer points out, the term FLOW is highly suggestive
of the flow of liquid through a filter, and LIGHT is at least
highly suggestive of applicant's analytical device which employs
a lamp or other illumination device. Purchasers are likely to
assume that OPTIFLOW and OPTI-LIGHT identify additional products
Opposition Nos. 91156666 and 91158331
12
in opposer's line of chromatography equipment and components
rather than identifying a different source for the products.
In addition, although opposer has not established a family
of marks, the fact that opposer has itself used variations of its
OPTI mark by adding matter to it, e.g., OPTI-GUARD, OPTI-MAX and
OPTI-SEAL, increases the likelihood that applicant's marks
OPTIFLOW and OPTI-LIGHT would be perceived as additional
variations of opposer's marks. See Humana Inc. v. Humanomics
Inc., 3 USPQ2d 1696, 1700 (TTAB 1987) (noting that this point is
relevant even where a family of marks has not been proven, citing
Varian Associates, Inc. v. Leybold-Heraeus G.m.B.H., 219 USPQ 829
(TTAB 1983)).
We are not, however, persuaded by opposer's evidence and
argument that OPTI is a famous mark. Long use alone is
insufficient to show public recognition of the mark, and Mr. Ford
has offered only self-serving and unsupported testimony that
opposer has established goodwill in its marks and a reputation in
the industry, and only vague and general statements about awards
and kudos that the company has received. This evidence is far
from sufficient to establish fame. On the other hand, there is
no evidence that the mark OPTI, while somewhat suggestive of
opposer's goods, is commonly used in the chromatography industry,
nor is there any other evidence to indicate that the mark is
weak, or entitled to anything less than a normal scope of
protection.
Opposition Nos. 91156666 and 91158331
13
We turn finally to the sophistication of the purchasers.
Although there is no specific evidence on this factor, it is
reasonable to assume that purchasers of chromatography equipment
and components are sophisticated and knowledgeable about those
products. However, even sophisticated purchasers would be
susceptible to source confusion, particularly under circumstances
where, as here, the goods are closely related and are sold under
similar marks. See Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re Pellerin
Milnor Corporation, 221 USPQ 588 (TTAB 1983).
In view of the similarities between opposer's mark OPTI and
applicant's marks OPTIFLOW and OPTI-LIGHT, and because the goods
are closely related, and the trade channels and purchasers for
the goods are the same, we find that confusion is likely.10
Decision: The consolidated oppositions are sustained, and
registration to applicant is refused.

10 To the extent opposer is making the argument, there is insufficient
evidence to show or from which we can infer that applicant adopted its
marks in bad faith. Mere knowledge of the existence of a prior user's
mark does not, by itself, constitute bad faith. See Action Temporary
Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307 (Fed.
Cir. 1989). Opposer must show that applicant intentionally sought to
trade on opposer's good will or reputation. See Big Blue Products Inc.
v. International Business Machines Corp., 19 USPQ2d 1072 (TTAB 1991).
There is no testimony or other evidence regarding applicant's intent in
adopting the mark.