Valuty, Inc.

Trademark Trial and Appeal Board

Mar 27, 2009

No. 78934912 (T.T.A.B. Mar. 27, 2009)

Hearing: Mailed:
2/11/2009 3/27/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Valuty, Inc.
________

Serial No. 78934912
_______

Terry L. Clark of Harness, Dickey & Pierce for Valuty, Inc.

Peter Bromaghim, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).1
_______

Before Quinn, Bucher and Taylor, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Valuty, Inc. filed, on July 21, 2006, an intent-to-use
application to register the mark BIONIC AIR (“AIR”
disclaimed) (standard character form) for “air purifier and
ionizer” (in International Class 11).
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when applied

1 Ronald DelGizzi, an examining attorney new to the application
file, appeared on behalf of the Office at the oral hearing.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 78934912
2
to applicant’s goods, so resembles the previously
registered mark BIONICS (typed form) for the goods and
services set forth below2 as to be likely to cause
confusion.
Skin care appliances, namely, masks
that emit far infrared rays for
cleansing and stimulating skin; skin
care appliances, namely, ultrasound
machines emitting low frequency waves
to cleanse and stimulate skin; skin
care appliances, namely, high frequency
skin treatment machines for cleansing
and treating the skin; skin care
appliances, namely ozone generators for
cleansing and stimulating skin; electro
massage appliance (in International
Class 10);

Household air cleaners; ozone
sanitizers for air and water; water
purifiers using ozone; water treatment
equipment, namely, water sterilizers;
water purification units for domestic
use; instant hot water heaters for
domestic and commercial use;
cooling/heating appliance, namely, air
conditioner/heater (in International
Class 11); and

Retail store featuring electronic skin
care appliances, cosmetics, water
purifiers, water heaters, optical
coherent tomography, ozone sanitizers,
medical appliances for ultrasound, and
air cleaners (in International Class
35).

2 Registration No. 2952190, issued May 17, 2005.
Ser. No. 78934912
3
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs, and both
were present at an oral hearing.
Applicant contends that the examining attorney has
improperly dissected applicant’s mark by focusing on the
first word, “BIONIC,” of its mark, rather than considering
the mark BIONIC AIR in its entirety. According to
applicant, the examining attorney also has improperly
characterized the word “AIR” as generic or descriptive.
Although applicant has disclaimed the term “AIR,” applicant
goes on to argue that “AIR when used in combination with
BIONIC to identify the goods of the present application
would not be used in a generic or descriptive sense.”
(Brief, p. 4). Applicant also argues that the marks have
different meanings: “The word ‘BIONIC’ has a special
meaning to consumers from its extensive use. The phrases
‘Bionic Man’ and ‘Bionic Woman’ are both very famous and
well known phrases that were made popular by both past and
current television programs. In comparison, the word
‘BIONICS’ is defined as a science concerned with
application of data about the functioning of biological
systems to the solution of engineering problems.” (Brief,
p. 6). Applicant does not dispute the similarity between
the goods; rather, it concedes that the goods are related
Ser. No. 78934912
4
(Response, 6/19/07) and assumes “for the purpose of
argument only” that the goods are identical. (Request for
Reconsideration, p. 4). In support of its position,
applicant submitted a printout of a TESS search summary
listing third-party registrations and applications of marks
comprising, in whole or in part, “BIONIC.”
The examining attorney maintains that applicant’s “air
purifier and ionizer” are legally identical to registrant’s
“household air cleaners” and “ozone sanitizers for air.”
As to the marks, the examining attorney contends that the
marks are highly similar. The examining attorney is not
persuaded that the TESS summary justifies a finding that
the cited mark is entitled to a narrow scope of protection.
In support of the refusal, the examining attorney relied on
dictionary definitions of the terms “bionic” and “bionics,”
and excerpts of third-party websites providing information
about air purifiers and cleaners.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of 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). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
Ser. No. 78934912
5
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
As indicated above, applicant does not dispute the
similarity between the goods. Applicant’s goods are
identified as “air purifier and ionizer,” and registrant’s
goods include “household air cleaners” and “ozone
sanitizers for air.” As identified, these goods are
legally identical for purposes of the likelihood of
confusion analysis. Lest there be any doubt, the examining
attorney’s Internet evidence shows that air purifiers, air
cleaners and ionizers are similar products that perform the
same function. Likelihood of confusion may be found based
on any goods that come within the identification of goods
in the involved application or registration. Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981). Because the goods are
identical in part, we presume that they move through the
same trade channels (e.g., mass merchandisers) to the same
classes of purchasers, including ordinary consumers. The
identity in these du Pont factors weighs heavily in favor
of a finding of likelihood of confusion.
Ser. No. 78934912
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With respect to the marks, we must compare the marks
in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the
first du Pont factor, 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 impression that confusion
as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks.
See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Finally, where, as in the present case, the marks
are used in connection with legally identical goods (at
least in part), the degree of similarity between the marks
that is necessary to support a finding of likely confusion
declines. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
As to the marks, applicant’s mark BIONIC AIR and
registrant’s mark BIONICS obviously share a “BIONIC”
component, albeit with a letter “S” in registrant’s mark.
Ser. No. 78934912
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It is well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“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.”) For example, merely descriptive matter that
is disclaimed is accorded subordinate status relative to
the more distinctive portions of a mark. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997). Applicant has disclaimed the generic
term “AIR,” and this term, as used in connection with air
purifiers and ionizers, plays a clearly subordinate role to
the “BIONIC” component in applicant’s mark. Moreover, the
term “BIONIC” is the first term of applicant’s mark;
clearly, this first component of applicant’s mark is most
likely to be impressed upon the mind of a purchaser and
will be remembered and used when calling for the goods.
See Presto Products, Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988).
Ser. No. 78934912
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In view of the above, the marks BIONIC AIR and
BIONICS, when considered in their entireties, are similar
in sound and appearance.
Although applicant attempts to draw a distinction
between the marks in terms of meaning, we are not
persuaded. For many consumers, BIONIC may be perceived
simply as a singular form of BIONICS. See Wilson v.
Delauney, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It
is evident that there is no material difference, in a
trademark sense, between the singular and plural forms of
the word ‘Zombie’ and they will therefore be regarded here
as the same mark.”). For others, the terms may be seen
simply as different parts of speech but with a common
meaning. In this connection, the term “bionics” is defined
as “noun: Application of biological principles to the
study and design of engineering systems, especially
electronic systems,” and “bionic” means “Adjective: Of or
relating to bionics.” The American Heritage of the English
Language (4th ed. 2000). Contrary to applicant’s arguments,
the marks convey the same connotation, namely that the air
purifiers/cleaners employ bionics to clean the air.
Given the similarities just discussed, the marks, when
used in connection with legally identical air
Ser. No. 78934912
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purifiers/cleaners, will engender essentially identical
overall commercial impressions.
In sum, the marks are highly similar, and this factor
weighs in favor of a finding of likelihood of confusion.
The existence of third-party registrations and
applications for BIONIC marks and variations thereof is of
little relevance to our analysis. Applicant submitted,
with its response on June 17, 2007, a printout of a search
summary listing seventy-seven BIONIC marks retrieved from
the TESS database. The examining attorney, in the final
refusal dated July 24, 2007, considered the search summary.
In its appeal brief, applicant referred to the search
summary, and added that “[i]n addition to the seventy-seven
(77) pending and registered marks...there were over three
(3) times (over two hundred-twenty (220) registrations and
applications) as many hits in a search of the U.S.P.T.O.
database for items beyond active and pending items.”
(Brief, p. 5).
Although the TESS summary is insufficient to make the
listed registrations and applications of record, the
summary itself is of record in this appeal. In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001). However, the
summary merely lists the mark, the registration or
application number, and the “Live/Dead” status of the
Ser. No. 78934912
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registration or application, with no accompanying
indication of the goods and/or services associated
therewith. Thus, while we have considered the TESS
summary, it is of virtually no probative value. Further,
we have given no weight to applicant’s mere reference in
its brief to any additional registrations and applications.
We hasten to add that, even if applicant had submitted
copies of the registrations and applications listed in the
TESS summary, they are not proof that consumers are
familiar with such marks so as to be accustomed to the
existence of the same or similar marks in the marketplace.
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982). Further, to
have any relevance, the marks must cover goods similar to
the ones involved in the appeal. Moreover, even if we were
to find, based on applicant’s evidence, that registrant’s
mark is weak and entitled to a narrow scope of protection,
the scope is still broad enough to prevent the registration
of a similar mark for identical goods. See In re Farah
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971). Lastly, the third-party applications have no
evidentiary value other than to show that they were filed.
Ser. No. 78934912
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In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699
(TTAB 1992).
We conclude that consumers familiar with registrant’s
“household air cleaners” and “ozone sanitizers for air”
sold under the mark BIONICS would be likely to believe,
upon encountering applicant’s mark BIONIC AIR for “air
purifier and ionizer,” that the goods originate from or are
associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.