Restek Corporation

Trademark Trial and Appeal Board

Jan 30, 2008

No. 78669093 (T.T.A.B. Jan. 30, 2008)

Mailed:
January 30, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Restek Corporation
________

Serial No. 78669093
_______

John F.A. Earley III, Frank J. Bonini, Jr. and Charles L.
Riddle of Harding Earley Follmer & Frailey for Restek
Corporation.

Sue Carruthers, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______

Before Quinn, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Restek Corporation seeks registration on the Principal
Register of the mark Viva (in standard character format) for
goods identified in the application as “high-pressure
liquid chromatography columns for chemical analysis” in
International Class 9.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant’s mark, when used with the identified goods, so

1 Application Serial No. 78669093 was filed on July 13, 2005
based upon applicant’s allegation of first use anywhere and first
use in commerce at least as early as February 1, 2005.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78669093
- 2 -
resembles the following two registered marks owned by the
same party:
VIVAPURE for “membrane chromatography units comprised of
centrifugal spin columns, centrifugal filter
devices, centrifugal concentrators, and
chromatography columns with stacks of membrane
adsorbers for laboratory use” in International
Class 9;
“membrane chromatography units comprised of
centrifugal spin columns, centrifugal filter
devices, centrifugal concentrators, and
chromatography columns with stacks of membrane
adsorbers; and filtration modules and apparatus
for purification and contamination removal,
especially of biomolecules such as proteins,
antibodies, oligonucleotodes, viruses, aggregated
biomolecules and endotoxins” in International
Class 11;2
VIVASCIENCE for, inter alia “scientific instruments, apparatus
and equipment, namely, … microtiter plates and
membrane chromatography apparatus; … filtration
devices for scientific, laboratory, medical
diagnostic, and medical research for use in the
diagnosis of diseases and the identification of
substances, nucleic acids, proteins, antibodies,
and antigens” in International Class 9; and
“… instruments and equipment for the manufacture
of medical and pharmaceutical products and for the
treatment of living organisms, namely filters,
centrifugal filter tubes, centrifugal filter
concentrators, filter membrane adsorbers and
chromatography filter apparatus …” in
International Class 11.3

2 Registration No. 2640449 issued to Vivascience AG, a German
corporation, on October 22, 2002. The assignment records of the
United States Patent and Trademark Office show that this
registration is currently owned by Sartorius Stedim Biotech GMBH,
Reel 3651, Frame 0579.

3 Registration No. 2896555 issued to Vivascience AG, a German
corporation, on October 26, 2004. The assignment records of the
United States Patent and Trademark Office show that this
registration is currently owned by Sartorius Stedim Biotech GMBH,
Reel 3646, Frame 0440.
Serial No. 78669093
- 3 -
as to be likely to cause confusion, to cause mistake or to
deceive.
Applicant has appealed. Both applicant and the
Trademark Examining Attorney have filed briefs. We affirm
the refusal to register.
Likelihood of Confusion

We turn then to a consideration of the issue of
likelihood of confusion. Our determination is based upon
our analysis of all of the probative facts in evidence that
are relevant to the factors bearing on that issue. See In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, however, two key,
although not exclusive, considerations are the similarities
between the marks and the relationship between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997).
Relatedness of the Goods and Channels of Trade
The Trademark Examining Attorney argues correctly that
applicant’s goods are clearly related to registrant’s goods
Serial No. 78669093
- 4 -
inasmuch as both identify chromatography apparatus for
scientific use. Inasmuch as applicant has submitted no
arguments to the contrary, we regard the goods as very
closely related, if not overlapping. Where the goods are
identical and/or closely related, and neither
identification has any limitations as to channels of trade,
we must presume that the respective goods would move
through the same trade channels to the same classes of
purchasers. Hence, this du Pont factor also favors the
position of the Trademark Examining Attorney herein.
Similarity of the marks
We begin this part of the analysis mindful of the fact
that when marks would appear on virtually identical goods,
the degree of similarity in the marks necessary to support
a conclusion of likely confusion declines. Century 21 Real
Estate Corp. V. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
As to appearance, applicant is correct in noting that
when the marks are compared in their entireties, the
registered marks have more syllables than applicant’s
applied-for mark. However, that becomes less relevant when
one notes that the dominant portion of all of the marks is
“Viva,” which comprises the only word in applicant’s mark
Serial No. 78669093
- 5 -
and the first portion of each of registrant’s marks. As a
rule, consumers are more inclined to focus on the first
term in a trademark. See Presto Prods., Inc. v. Nice-Pak
Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) [“it is often
the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered” when
making purchasing decisions].
As to connotation, applicant has merely taken
registrant’s marks and deleted the words “pure” and
“science” from these combined terms. We find that deletion
of these particular words from registrant’s composite marks
is not sufficient to overcome a likelihood of confusion
under § 2(d).
The mark VIVAPURE identifies “apparatus for
purification and contamination removal.” The mark
VIVASCIENCE is used in connection with goods designed for
particular scientific uses. Thus, if separated from the
dominant, root term “Viva” by a space, these terms would
likely both be disclaimed due to their descriptivness
relative to the goods. Such matter is typically accorded
less significance when marks are compared to determine the
similarity in commercial impressions. In fact, as noted by
the Trademark Examining Attorney (brief, unnumbered p. 6),
Serial No. 78669093
- 6 -
most prospective consumers of such goods would make the
assumption that the source of VIVAPURE chromatography
equipment for laboratory use and VIVASCIENCE chromatography
apparatus for laboratory, medical and pharmaceutical use would be
the likely source for VIVA chromatography equipment for
chemical analysis.
Although applicant argues that the cited marks create
different commercial impressions from applicant’s mark
because VIVAPURE brings to mind “live pure” or “pure
living,” while VIVASCIENCE suggests “science lives,” we find
no evidence in support of this conjecture. We find more
likely that customers without knowledge of either vendors
might make an educated guess that a possibly anonymous
source of VIVA brand chromatography equipment has product
marks suggesting purification and scientific applications.
Conclusion
We find that because of the close relationship of the
goods involved herein, identical channels of trade, and the
similar commercial impressions created by applicant’s and
registrant’s marks, confusion is likely between applicant’s
mark and the marks in the cited registrations.
Decision: The refusal to register under Section
2(d) of the Trademark Act is hereby affirmed.