Unitech Int’l. Inc

Trademark Trial and Appeal Board

Jul 12, 2001

No. 75306377 (T.T.A.B. Jul. 12, 2001)

7/12/01 Paper No. 30
EWH
UNITED STATES P
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Trademark
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In re Unit
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Seria
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Ezra Sutton for Unitech
Allison Hall, Trademark
(Michael Szoke, Managing
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Before Cissel, Hanak and
Judges.
Opinion by Hanak, Admini
Unitech Internation
register in typed drawin
“vacuum cleaners.” The
on June 10, 1997.
Citing Section 2(d)
Attorney has refused reg
applicant’s mark, as app
to cause confusion with
registered in typed draw
cleaners for domestic us
When the refusal to
appealed to this Board.
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.ATENT AND TRADEMARK OFFICE
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Trial and Appeal Board
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ech International Inc.
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l No. 75/306,377
____________
International Inc.
Examining Attorney, Law Office 103
Attorney).
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Holtzman, Administrative Trademark
strative Trademark Judge:
al Inc. (applicant) seeks to
g form UNITECH 3 IN 1 POWERVAC for
intent-to-use application was filed
of the Trademark Act, the Examining
istration on the basis that
lied to vacuum cleaners, is likely
the mark POW-R-VAC, previously
ing form for “electric vacuum
e.” Registration No. 1,688,801.
register was made final, applicant
Applicant and the Examining

Ser. No. 75/306,377
Attorney filed briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods and the similarities of the marks. 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.”).
Considering first the goods, they are legally
identical. Applicant’s own chosen description of goods is
simply “vacuum cleaners” and this description is broad
enough to include the goods of the cited registration,
namely, “electric vacuum cleaners for domestic use.”
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1814 (Fed. Cir. 1987).
Considering next the marks, we note at the outset that
when the goods of the parties are legally identical as is
the case here, “the degree of similarity [of 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)
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Ser. No. 75/306,377
This is particularly true when not only are the goods
legally identical, but in addition, they are ordinary
consumer items such as vacuum cleaners. See Specialty
Brands, Inc. v. Coffee Bean Distributors, Inc., 748 F.2d
669, 223 USPQ 1281, 1282 (Fed. Cir. 1984) and In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289,
1290 (Fed. Cir. 1984).
At first blush, it would appear that registrant’s one
word mark and applicant’s five word mark are only slightly
similar. However, it must be remembered that both the
registered mark and applicant’s mark are depicted in typed
drawing form. This means that both the registered mark and
applicant’s mark are “not limited to the mark[s] depicted in
any special form[s].” Phillips Petroleum v. C. J. Webb, 442
F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Accordingly, in our
likelihood of confusion analysis, we must consider all
reasonable manners in which the marks could be depicted, and
in particular, we must take special note of the actual
manners in which applicant and registrant have depicted
their marks. Phillips Petroleum, 170 USPQ at 36; INB
National Bank v. Metrohost Inc., 22 USPQ2d 1585, 1588 (TTAB
1992).
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Ser. No. 75/306,377
Applicant has submitted a one page product specimen
sheet featuring its UNITECH 3 IN 1 POWERVAC vacuum cleaner.
In this product specimen sheet, there is a picture of
applicant’s vacuum cleaner, and on this vacuum cleaner there
are two depictions of applicant’s mark. In the center of
the vacuum cleaner, applicant has depicted its mark with the
UNITECH portion on one line, the 3 IN 1 portion on a second
line and the POWERVAC portion on a third line. A consumer
familiar with registrant’s POW-R-VAC vacuum cleaners, upon
viewing the foregoing depiction of applicant’s mark, could
easily assume that registrant’s and applicant’s vacuum
cleaners were the same brand. To elaborate, consumers may
well believe that both vacuum cleaners had essentially the
same brand name, namely, POW-R-VAC or POWERVAC. These
consumers could view the UNITECH portion of applicant’s mark
as indicating the name of the manufacturer of the vacuum
cleaner which, of course, is the case in that applicant’s
name is Unitech International Inc. As for the 3 IN 1
portion of applicant’s mark, applicant has conceded at page
1 of its appeal brief that this portion is suggestive of
certain properties of its vacuum cleaners, namely, that they
can function as handheld vacuums, upright vacuums and power
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Ser. No. 75/306,377
brushes.
However, even more troubling is the manner in which
applicant depicts its mark on the base of its vacuum
cleaner. In this manner of depiction, the UNITECH portion
of applicant’s mark is far removed from the 3 IN 1 POWERVAC
portion of applicant’s mark. This manner of depiction could
result in consumers not even noticing the UNITECH portion of
applicant’s mark. In other words, this manner of depiction
would cause consumers to see simply the 3 IN 1 POWERVAC
portion of applicant’s mark. By simply focusing on the 3 IN
1 POWERVAC portion of applicant’s mark, consumers, familiar
with registrant’s POW-R-VAC vacuum cleaners, could be of the
belief that applicant’s vacuum cleaner is simply a more
advanced or sophisticated version of the original POW-R-VAC
vacuum cleaners in that applicant’s vacuum cleaner functions
as a handheld vacuum, an upright vacuum and a power brush.
(We also note that at the top left-hand corner of
applicant’s product specimen sheet there appears simply the
mark 3 IN 1 POWERVAC without any depiction of the term
UNITECH. However, because applicant is not seeking to
register simply 3 IN 1 POWERVAC, we have not considered this
manner of depiction in our likelihood of confusion
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Ser. No. 75/306,377
analysis.)
Put quite simply, applicant itself has elected to
depict its mark in a manner such that the UNITECH portion is
far removed from the remainder of the mark, leaving only the
suggestive 3 IN 1 portion on a separate line above the
POWERVAC portion of applicant’s mark. Given the fact that
the POWERVAC portion of applicant’s mark is identical to the
cited mark POW-R-VAC in terms of pronunciation and
connotation and the fact that the POWERVAC portion of
applicant’s mark and POW-R-VAC are similar in visual
appearance, we find that the use of applicant’s mark (as
actually depicted by applicant) and registrant’s mark on
identical ordinary consumer goods is likely to result in a
likelihood of confusion.
Of course, it need hardly be said that to the extent
that there are any doubts on the issue of likelihood of
confusion, said doubts must be resolved in favor of the
registrant. In re Martin’s Famous Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.
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