Petrochem, Inc.

Trademark Trial and Appeal Board

Oct 11, 2007

No. 78813357 (T.T.A.B. Oct. 11, 2007)

Mailed:
October 11, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Petrochem, Inc.
________

Serial No. 78813357
_______

Michael Cerrati and John Alumit of Patel & Alumit, P.C. for
Petrochem, Inc.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Grendel, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On February 13, 2006, Petrochem, Inc. (applicant)
applied to register the mark HT-2000 in standard-character
form on the Principal Register for goods identified as “All
purpose lubricants; Industrial lubricants; Lubricants for
industrial machinery; Lubricating oils” in International
Class 4. Applicant claims both first use of the mark
anywhere and first use of the mark in commerce on April 30,
2000.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78813357
2
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with prior Registration No. 2190519
for the mark shown below which is registered on the
Principal Register for goods identified as “lubricating
oils, greases, process oils, all derived from petroleum” in
International Class 4.

The registration issued on September 22, 1998, and the
registration is active and incontestable. When the
Examining Attorney made the refusal final applicant
appealed. Both applicant and the Examining Attorney have
filed briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
Serial No. 78813357
3
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
The goods of applicant and the registrant need not be
identical to find likelihood of confusion under Section
2(d) of the Trademark Act. They need only be related in
such a way that, because of the similarity of the marks,
the circumstances surrounding their marketing could result
in relevant consumers mistakenly believing that the goods
originate from the same source. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
See also On-Line Careline Inc. v. America Online Inc., 229
F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and
registrations. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).
Serial No. 78813357
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Applicant does not argue that there is any difference
between the goods of applicant and the goods of registrant
as identified in the application and the cited
registration. The Examining Attorney points out that the
goods of applicant and those identified in the cited
registration are, at least in part, identical. Both the
application and the cited registration include “lubricating
oils.” Although the registration specifies that the
“lubricating oils,” and the other identified goods, are
derived from petroleum and the application does not, the
“lubricating oils” identified in the application logically
include those identified in the cited registration.
Accordingly, the goods of applicant and registrant are, at
least in part, legally identical. The remainder of the
goods in the application and cited registration are closely
related. Accordingly, we conclude that the goods are, at
least in part, identical for purposes of our determination
of likelihood of confusion here.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods or services are
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Serial No. 78813357
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In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005). While we must consider
the marks in their entireties, it is entirely appropriate
to accord greater importance to the more distinctive
elements in the marks. As the Court of Appeals for the
Federal Circuit observed, “…in articulating reasons for
reaching a conclusion on the issue of confusion, there is
nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Applicant argues that the marks differ significantly
when viewed in their entireties. In fact, applicant rests
its entire argument that there is no likelihood of
confusion on the differences between the marks.
With respect to consideration of the marks applicant
states, “In order to conduct a proper analysis, the
Examining Attorney must consider: (a) the design in the
Serial No. 78813357
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Registered Mark, (b) the word stylization and the lack of
definiteness of the lettering in the Registered Mark, and
(c) the addition of a distinguishing word in the Registered
Mark.” Applicant’s Brief at 3. Applicant also states,
“While it is often true that the word portion of a mark is
more likely to be impressed upon a purchaser’s memory, that
is not the case in every situation, especially here, where
the Registered Mark comprises a design feature where the
words are not quite so apparent and the design contains
unique features.” Id. We have considered the marks in
their entireties and find the marks similar.
First, we conclude that the design element is
insufficient to distinguish applicant’s mark from the mark
in the cited registration. In In re Appetito Provisions
Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987), the Board
stated, “Thus, if one of the marks comprises both a word
and a design, then the word is normally accorded greater
weight because it would be used by purchasers to request
the goods or services. Kabushiki Kaisha Hattori Tokeiten
v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).” However
distinctive the design and the stylized presentation of the
“HT” may be in the registered mark, the fact remains that
HT is the only literal element in the registered mark which
Serial No. 78813357
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a potential purchaser could use to identify the goods of
registrant.
Furthermore, HT is the element which the marks share
in common. HT is the first literal element in applicant’s
mark and the only literal elelment in the cited mark.
Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988)(“… [it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692
(“The presence of this strong distinctive term as the first
word in both parties’ marks renders the marks similar,
especially in light of the largely laudatory (and hence
non-source identifying) significance of ROYALE.”).
Applicant also overstates the importance of “2000”
in its own mark. Again, it follows HT. A potential
purchaser familiar with registrant’s mark who encounters
applicant’s mark on an identical or related product would
likely perceive that “2000” merely identifies a related
product from registrant. “2000” would simply be perceived
as identifying a variation, such as a product somehow
connected with the year 2000. We note that applicant
claims that it began use of the HT-2000 mark in 2000,
Serial No. 78813357
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perhaps designating its own product as one connected with
the year 2000. Accordingly, the addition of “2000” to
applicant’s mark is not sufficient to distinguishes
applicant’s mark from the registered mark. See SBS Prods.
Inc. v. Sterling Plastic & Rubber Prods. Inc., 8 USPQ2d
1147, 1149 (TTAB 1988).
Finally, applicant treats its own mark, which is in
standard-character form, as if it were devoid of form and
static. The Examining Attorney correctly points out that,
by presenting its mark in standard-character form,
applicant seeks a registration which would protect the mark
in various manners of display within reason. See In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). Those
variations could include one which resembles the display in
the cited registration.
In conclusion, we have considered applicant’s mark and
the mark in the cited registration in their entireties in
terms of appearance, sound, connotation and commercial
impression, and we conclude that the marks are similar.
While there are specific differences between the marks, we
conclude that those differences are not sufficient to
distinguish the marks which have the same dominant literal
element, HT.
Serial No. 78813357
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Finally, we have considered all arguments and evidence
bearing on the du Pont factors in this case and conclude
that there is a likelihood of confusion between applicant’s
mark and the cited mark principally because the marks are
similar and the goods are legally identical and otherwise
closely related.
Decision: We affirm the refusal to register
applicant’s mark under Trademark Act Section 2(d).