The Sy-Klone Company, Inc.v.Korea Industrial Design Corporation

Trademark Trial and Appeal Board

Apr 29, 2008

No. 91164490 (T.T.A.B. Apr. 29, 2008)

Mailed: April 29, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Sy-Klone Company, Inc.
v.
Korea Industrial Design Corporation
_____

Opposition No. 91164490
to application Serial No. 76460165
filed on February 13, 2003
_____

Ronald J. Shore of Antonelli, Terry, Stout & Kraus, LLP for
The Sy-Klone Company, Inc.

Anthony J. Dain, Frederick K. Taylor and Frederic G. Ludwig
III of Procopio Cory Hargreaves & Savitch LLP for Korea
Industrial Design Corporation.
______

Before Quinn, Hohein and Taylor, Administrative Trademark
Judges.

Opinion by Taylor, Administrative Trademark Judge:

Korea Industrial Design Corp. has filed an application
to register on the Principal Register the mark CYCLONE (in
standard character form) for an “intake and exhaust air flow
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition No. 91164490
2
vane assembly device for use in an internal combustion
engine.” in Class 7.1
Registration has been opposed by the Sy-Klone Company,
Inc. on the ground of a likelihood of confusion with its
previously used mark SY-KLONE. Opposer specifically
alleges, inter alia, that “since at least as early as 1988,
[it] has been, and is now, using the term SY-KLONE as a
trademark, as a trade name and in its corporate name in
connection with the sale of air intake systems for the air
intakes of engines” (Opposition ¶ 3); that opposer’s use of
its SY-KLONE mark has been “valid and continuous from a time
prior to the October 17, 2002 filing date of [the involved
application], and has been valid and continuous since said
date of first use and has not been abandoned” (Id.); that
opposer has built up extensive good will and consumer
recognition of its mark through a “substantial amount of
time and effort in advertising and promotion” (Opposition at
¶ 6); and that “in view of the similarity of Applicant’s
mark CYCLONE to Opposer’s trademark, trade name and
corporate name and the related nature of the goods of the
respective parties, it is alleged that Applicant’s mark so
resembles Opposer’s mark, trade name and corporate name,
previously used in the United States and not abandoned, as

1 Serial No. 76460165, filed on October 17, 2002, based on an
allegation of a bona fide intention to use the mark in commerce.
Opposition No. 91164490
3
to be likely to cause confusion, or to cause mistake, or to
deceive.” (Id.)
Applicant, in its answer, has denied the essential
allegations of the notice of opposition.2
PRELIMINARY MATTERS
First, during the course of the testimony deposition of
opposer’s witness, Mr. James Murdock, applicant raised
various objections. Because these objections were not
maintained in applicant’s trial brief, they are considered
waived. See Hard Rock Café International (USA) Inc. v.
Elsea, 56 USPQ2d 1504, 1507 n.5 (TTAB 2000) (objection to
exhibit raised during deposition but not maintained in brief
deemed waived); Reflange Inc. v. R-Con International, 17
USPQ2d 1124, 1125 n.4 (TTAB 1990) (objection to testimony
and exhibits made during depositions deemed waived where
neither party raised any objection to specific evidence in
its brief).
Last, opposer, in its reply brief, objects to evidence
attached to applicant’s trial brief that was not offered
during applicant’s testimony period.3 The objection is

2 Applicant also pleaded certain affirmative defenses, including
that “Opposer’s ‘Sy-Klone’ mark, when used on or in connection
with Opposer’s goods and services, is merely descriptive of the
recited goods and services.” (Answer at Affirmative Defenses).
However, the affirmative defenses were not pursued at trial and,
accordingly, such defenses are considered waived.

3 This evidence consists of the amended declaration of Frederick
Taylor with Exhibit A.
Opposition No. 91164490
4
sustained. 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. See e.g., Maytag Co.
v. Luskin’s, Inc., 228 USPQ 747, 748 n.5 (TTAB 1986). See
also TBMP § 704.05(b)(2d ed. rev. 2004). Moreover, with
respect to Exhibit A, which applicant previously submitted
in connection with its response to a motion for summary
judgment filed by opposer, the parties were advised in the
Board’s order denying that motion that the evidence
submitted in connection therewith was of record for the
purpose of that motion only. That is, in order to be
considered at final hearing, such evidence must have been
properly introduced during an appropriate testimony period.
It was not. We therefore have declined to consider
applicant’s improperly submitted evidence. We add, however,
that even if we had considered this evidence, our decision
would be the same.
THE RECORD
The record consists of the pleadings and the file of
application Serial No. 76460165. In addition, opposer
submitted the testimony deposition, with exhibits, of its
president, Mr. James G. Moredock. The entire deposition and
accompanying exhibits have been marked as confidential.
However, the filing of an entire testimony deposition under
Opposition No. 91164490
5
seal is improper, as the parties cannot shield from the
public information that is not truly confidential. See
Trademark Rule 2.27(d) and (e). Moreover, we note that in
its brief, which is unredacted, opposer makes references to
certain of the testimony and exhibits that were designated
confidential. Accordingly, we have referred to selective
portions of the record that were referenced in the brief and
appear to us to be not truly confidential.
Applicant did not take testimony or submit any evidence
during its testimony period, but did file a brief on the
case.4
FINDINGS OF FACT
According to the record, since as early as 1988,
opposer has continuously used the term SY-KLONE as a
trademark, as a trade name and in its corporate name in
connection with the sale of air intake systems for the air
intakes of engines. Opposer’s air intake systems include
precleaner products for use in internal combustion engines
and other devices that require air prior to it entering into
a filter. There are eight basic models of opposer’s primary
product, the Series 9000, which are built for a range of
engines from lawn mower engines to the largest diesel

4 Although applicant’s brief is incorrectly captioned as its
response to opposer’s motion for summary judgment, applicant
states therein that it “submits the following Trial Brief.”
(Brief, p. 1).

Opposition No. 91164490
6
engines, and particularly including those on highway
trucks.5 Opposer applies its mark directly to the goods
themselves and packaging for the goods. Opposer also uses
its mark on letterhead, facsimiles, business cards, e-mail,
envelopes, brochures and its web site. Opposer’s customers
include large manufacturers, distribution companies, dealers
and individual end-users. Opposer markets its air intake
systems through advertisements in trade publications, at
tradeshows, and by brochures and sales and marketing
publications produced by opposer.

5 Opposer’s witness, Mr. Moredock, additionally testified as
follows:
Q Is the Series 9000 product sold under the mark
Sy-Klone?
A Yes.
…
Q What is that [product information sheet]
referring to?
A Well, our products sold by Sy-Klone are
centrifugal devices, and so -- so for it to work,
it draws air into the product and it enters into
the vane area, which -- is the first step in
creating the centrifugal force to -- to separate
debris. And so that vane assembly is just that.
It’s taking the air from the outside and putting
it in a spinning or centrifugal motion as it
inters into the separator chamber.
…
Q You stated that your products include air flow
vanes. Then can your goods be properly referred
to as an air flow vane assembly devise for use in
an internal combustion engine?
A Yes, absolutely.

(Moredock dep., p. 24, lines 1-3 and 11-20, and p. 34, lines 13-
17).

Opposition No. 91164490
7
Inasmuch as applicant did not take testimony or
introduce any other evidence during its testimony period,
there is no information about applicant or its business.
ANALYSIS
Standing
The evidence of record shows that opposer is the source
of air intake systems for the air intake of engines under
the SY-KLONE mark. We find this fact, together with the
fact that opposer’s likelihood of confusion claim is not
frivolous, satisfies the requirements for standing in this
case. See Richie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-à-vis the other party, it owns "a mark or trade
name previously used in the United States ... and not
abandoned...." 15 U.S.C. § 1052(d). Priority is an issue
in this case because opposer does not own a subsisting
registration upon which it can rely under § 2(d). See King
Candy Co., Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
Opposer asserts common law rights in the SY-KLONE mark.
In order for a plaintiff to prevail on a claim of likelihood
Opposition No. 91164490
8
of confusion based on its ownership of common law rights in
a mark, the mark must be distinctive, inherently or
otherwise, and plaintiff must show priority of use. See
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209
USPQ 40 (CCPA 1981). As noted earlier, applicant
effectively waived its claim that opposer’s SY-KLONE mark is
merely descriptive. Indeed, applicant, in its brief, argues
that “as to connotation and commercial impression … the mark
SY-KLONE has no apparent connotation or commercial
impression.” (Brief, p. 4). We accordingly find opposer’s
SY-KLONE mark inherently distinctive.
As regards priority, the record clearly establishes
19886 as the date that opposer first used SY-KLONE as a
trade name, in its corporate name, and as a trademark in
connection with air intake systems for the air intakes of
engines. Inasmuch as applicant did not take testimony or
otherwise submit proof that it has commenced use of the mark
CYCLONE, the earliest date upon which applicant is entitled
to rely in this proceeding for purposes of priority is the
filing date of the involved intent-to use application, i.e.,
October 17, 2002, a date subsequent to opposer’s established
first use date. See, e.g., Lone Star Mfg. Co., Inc. v. Bill
Beasley, Inc., 498 F.2d 906, 182 USPQ 368, 369 (CCPA 1974);

6 Given the indefiniteness of 1988, opposer’s first use date for
purposes of priority is December 31, 1988. See generally, TBMP §
903.07.
Opposition No. 91164490
9
Columbia Steel Tank Co. v. Union Tank & Supply Co., 277 F.2d
192, 125 USPQ 406, 407 (CCPA 1960); and Zirco Corp. v.
American Telephone & Telegraph Co., 21 USPQ2d 1542 (TTAB
1991). Priority thus rests with opposer.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In considering the evidence of record on
these factors, we keep in mind 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).
Considering first the marks, we must determine whether
applicant’s CYCLONE mark and opposer’s SY-KLONE mark are
similar or dissimilar in terms of sound, appearance,
connotation and commercial impression. The test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to the source of the goods
Opposition No. 91164490
10
and/or services offered under the respective marks is likely
to result.
Applicant argues that the parties’ respective marks
clearly are distinct in appearance. Applicant also argues
that its mark implies a device that involves swirling the
air whereas opposer’s mark has no apparent connotation or
commercial impression. Applicant further contends that
there is no evidence as to how actual customers pronounce
opposer’s mark but, even if the marks are phonetically
similar, “Opposer has presented no evidence that the goods
are advertised by television or radio, or purchased by
verbal order, rather than visually.” (Brief, p. 4). We
find these arguments are not persuasive.
Obviously, there are certain visual differences in the
marks. Unlike applicant’s mark CYCLONE, opposer’s mark SY-
KLONE incorporates a fanciful spelling of cyclone and there
is a hyphen between the first and second syllables.
However, these differences in appearance are not
particularly significant when we consider the overall
similarities. Both marks contain two syllables, share the
majority of the letters and all of the vowels, and begin
with either the letters “CY” or the phonetically equivalent
letters “SY” and end with the letters “LONE.” In addition,
CYCLONE and SY-KLONE may be pronounced the same. While the
marks could be pronounced differently, as applicant urges,
Opposition No. 91164490
11
it is settled that there is no correct pronunciation of a
trademark, as it is impossible to predict how the public
will pronounce a particular mark. Kabushiki Kaisha Hattori
Tokeiten v. Acuotto, 228 USPQ 461 (TTAB 1985). Thus, even
if SY-KLONE may be pronounced as two words, e.g., as
someone’s first and last name or otherwise, it also may be
pronounced “CYCLONE.” Therefore, for our purposes, the
parties’ marks are phonetically identical.
Further, as regards the connotation and commercial
impression of the marks, opposer made of record a definition
of the word “cyclone” from Webster’s New Collegiate
Dictionary, (1979). “Cyclone” is defined as “any of various
centrifugal devices for separating material (as solids from
liquids).” (Brief, p. 21, Moredock test., exh. 11).
Contrary to applicant’s contention, CYCLONE and SY-KLONE,
when viewed in the context of the goods, namely, air intake
devices for engines, have the identical meaning in relation
to those goods, and they create the same or at least similar
overall commercial impressions, specifically, that the air
intake devices are centrifugal devices that separate solids
from the air. We find that neither the fanciful spelling
nor the hyphen in opposer’s mark in any way alters its
substantial similarity in commercial impression to that of
applicant’s mark.
Opposition No. 91164490
12
Put simply, while we acknowledge that there are
differences in the marks, we find that the identity in sound
and meaning and the substantial similarity in commercial
impression outweigh the slight differences in appearance.
Thus, the du Pont factor of similarity of the marks favors
opposer.
Before we leave this discussion, we point out that
applicant’s claim that opposer’s goods are not purchased by
verbal order is not substantiated by the record.
We next consider the du Pont factors which pertain to
the similarity or dissimilarity of the goods, the channels
of trade and the classes of purchasers. Applicant argues
that its goods and opposer’s goods are dissimilar.
Applicant specifically argues that:
Applicant’s goods are small air swirling
device [sic] for deployment in light car and
truck air intake systems to improve
performance, power and diminish air pollution.
Opposer’s goods are large mounted air pre-
cleaners for large engines, in extreme,
hostile environments, including engines used
in waste, construction, mining, military,
forestry, and landfill environments.

(Brief, p. 5). This argument is unavailing. The
registrability of applicant’s mark must be determined on the
basis of the identification of its goods as set forth in the
involved application. This is so regardless of what the
record may reveal as to the particular nature of the
applicant’s goods, their actual or asserted channels of
Opposition No. 91164490
13
trade, or the classes of purchasers to which they are in
fact or intended to be directed. See e.g., Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank v.
Wells Fargo Bank, supra. Here, applicant’s goods are
identified in its application as “intake and exhaust air
flow vane assembly device for use in an internal combustion
engine.” The goods for which opposer has established prior
rights are air intake systems for the air intakes of
engines, such systems including a vane assembly.7 We find
applicant’s goods as so identified are legally identical to,
or at least, encompass opposer’s goods.
Furthermore, since there are no limitations as to the
class of purchasers or channels of trade, we must presume
that applicant’s intake and exhaust air flow vane assembly
device will be offered to a wide range of prospective
consumers, including those seeking products for large
engines, and in all the usual channels of trade for those
products. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
In addition, the record shows that opposer’s products not
only include air intake systems for large engines, but also
include those for small engines such as lawnmowers and
trucks.

7 Because opposer relies on common law rights acquired through
use of its mark, registrability is determined on the basis of the
goods for which opposer has established prior rights.
Opposition No. 91164490
14
We thus find that the du Pont factors of similarity of
the goods, channels of trade and class of purchasers favor
opposer.
Finally, with respect to the conditions of sale,
applicant argues that “buyers of its [opposer’s] goods would
be sophisticated and discriminating. They would be looking
for the particular good to fit the particular industrial or
commercial need.” (Brief, p. 5). Even assuming that
purchasers of opposer’s goods may need to exercise a degree
of care or thought in choosing such goods, sophisticated and
careful purchasers can still be confused as to source under
circumstances where similar marks are used on legally
identical goods. See In re Research Trading Corp., 793 F.2d
1276, 230 USPQ 49, 50 (Fed. Cir. 1986) citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 110, 112 (CCPA 1970) ("Human memories even of
discriminating purchasers … are not infallible.").
CONCLUSION
When all of the relevant du Pont factors are
considered, we conclude that contemporaneous use by
applicant of the mark CYCLONE for intake and exhaust air
flow vane assembly device for use in an internal combustion
engine is likely to cause confusion with opposer’s use of
its SY-KLONE mark with respect to air intake systems for the
air intakes of engines.
Opposition No. 91164490
15
Decision: The opposition is sustained and registration
to applicant is refused.