Vast Resources, Inc.

Trademark Trial and Appeal Board

Jul 31, 2008

No. 78692514 (T.T.A.B. Jul. 31, 2008)

Hearing: Mailed:
June 26, 2008 July 31, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Vast Resources, Inc., dba Topco Sales
________

Serial No. 78692514
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Jay H. Geller for Vast Resources, Inc., dba Topco Sales.

Colleen Kearney, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
_______

Before Hairston, Bucher and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Vast Resources, Inc., dba Topco Sales, seeks registration
on the Principal Register of the mark CLIMAX (in standard
character format) for goods identified as follows:
“adult sexual aids, namely, electric and non-electric
massage devices and accessories for massaging or
vibrating portions of the face and body; imitation
sexual organs, namely penises, penises and testicles,
dildoes, vaginas and breasts; devices for aiding in
sexual intercourse and masturbation, namely
reproductions of parts of the male and female
anatomy, stimulation devices for aiding in sexual
arousal and performance; vibrators and vibrator
sleeves; and vacuum pumps and vacuum pump
accessories, namely a cylinder sleeve, cushion
inserts, constriction rings and constriction ring
loaders for use to maintain penile rigidity” in
International Class 10.1

1 Application Serial No. 78692514 was filed on August 15, 2005
based upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78692514
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This case is now before the Board on appeal from the final
refusal of the Examining Attorney to register applicant’s mark
based upon Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). The Trademark Examining Attorney asserts that
applicant’s mark, when used in connection with the identified
goods, so resembles the following mark,

which is registered for “electric massage apparatus, namely,
vibrators” in International Class 19,2 as to be likely to cause
confusion, to cause mistake or to deceive. Applicant and the
Trademark Examining Attorney have fully briefed the case.
In discussing the similarities of the marks, the Trademark
Examining Attorney takes the position that the word “Climax” in
registrant’s mark is most dominant visually, that the term
“Jelly” is merely descriptive and properly disclaimed, and
that the word “Maximizer” “merely serves as a modifier that
enforces the dominance of the term Climax.” By contrast, in
arguing for registrability, applicant contends that its mark is
not confusingly similar to the cited mark in that the marks do

2 Registration No. 2275401 issued on September 7, 1999; Section 8
affidavit (six-year) accepted and Section 15 affidavit acknowledged.

Serial No. 78692514
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not sound alike, they do not look alike, they have different
connotations and they have different commercial impressions.
Applicant argues that the Examining Attorney improperly
dissects registrant’s mark, explains the “modifying” role of
the word “Maximizer,” while criticizing registrant’s disclaimer
of the word “Climax.” Finally, applicant argues that the
Trademark Examining Attorney has improperly ignored applicant’s
own claimed registrations for CLIMAX for related goods.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563 (CCPA 1973).
We turn first to the du Pont factor focusing on the
relationship of the goods herein. Applicant does not dispute
the fact that registrant’s electric massage devices, i.e.,
vibrators, are included in the range of adult novelty items
identified by applicant. Accordingly, the goods are
identical in part and otherwise related, and this du Pont
factor favors a finding of likelihood of confusion. If the
cited registration contains no limitation as to the channels of
trade or classes of purchasers, it is presumed that the
registration encompasses all goods of the type described, that
they move in all channels of trade normal for these goods, and
Serial No. 78692514
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that they are available to all classes of purchasers for the
described goods and services. See In re Linkvest S.A.,
24 USPQ2d 1716 (TTAB 1992). These related du Pont factors also
favor a finding of likelihood of confusion.
We turn then to the critical du Pont factor that the
Trademark Examining Attorney and applicant discuss at length in
their briefs involving the similarities or dissimilarities in
the appearance, sound, connotations and commercial impressions
of the respective marks. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
As noted by the Trademark Examining Attorney, the
descriptive term “Jelly” in registrant’s composite mark is
presented in relatively small letters, and registrant correctly
disclaimed it apart from the cited mark as a whole.
Additionally, the Trademark Examining Attorney placed into the
record a copy of a website describing the use of “jelly”
materials in constructing adult novelty items.3
Applicant does not dispute this basic principle, but
points out that the word “Jelly” is nonetheless part of the
composite mark cited against its mark, and notes further that
registrant, in arguing against an outstanding descriptiveness
refusal under Section 2(e)(1) of the Act, agreed to disclaim

3 http://www.mybodyvibes.com/store/vibrators/jelly/

Serial No. 78692514
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both words, “Jelly Climax.” [Application Serial No. 75371757,
Office action of November 2, 1998].
Applicant repeatedly points out that registrant has
disclaimed the term “Climax” as merely descriptive of its
vibrators. “It is a jelly product that maximizes and [sic] sexual
climax (orgasm).” Applicant’s reply brief at 3. Thus, in the
context of registrant’s mark, applicant is adamant that the word
“Climax” is merely descriptive. By contrast, when used in the
context of applicant’s own related goods, applicant makes the
counter-argument that the word “Climax” alone functions as an
inherently distinctive trademark.
In arguing against registrability herein, the Trademark
Examining Attorney has consistently focused on the relatively
large size of the word “Climax” in registrant’s composite mark.
Undeniably, this word is in a larger, more distinctive style of
lettering than the other two words making up the composite.
Yet, in an apparent effort to bolster her argument for our
finding a likelihood of confusion herein, the Trademark
Examining Attorney argues that the cited registration is
flawed:
The examining attorney notes that the term CLIMAX is
incorrectly disclaimed from the registered mark. … [T]he
examining attorney notes that the disclaimer of the term
CLIMAX from the registered mark was in error and should not
be considered for the purposes of this analysis. …
Moreover, the examining attorney did not issue a Section
2(e)(1) descriptiveness refusal in the instant case as the
term CLIMAX is not descriptive, but rather suggestive and
capable of registration on the Principal Register,
Serial No. 78692514
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without a showing of secondary meaning. The term CLIMAX
cannot be viewed in the same light as the term JELLY, as
CLIMAX is in fact a suggestive term, and does not describe
the goods.

Trademark Examining Attorney appeal brief at unnumbered 10.
Applicant describes this approach by the Trademark
Examining Attorney as “incredulous,” “outrageous,” “erroneous,”
“unfortunate” and “unconscionable.” Without commenting further
on applicant’s characterizations, we agree with applicant that
the Trademark Examining Attorney cannot eviscerate a cited
registration in this manner. In the face of a registration bar
under Section 2(e)(1) of the Act when prosecuting the cited
registration, registrant was successful in overcoming this
refusal by disclaiming the words “Jelly Climax.”
Hence, the only non-descriptive, non-disclaimed matter in
the cited registration is the word “Maximizer.” Nonetheless,
the Examining Attorney argues that “the term MAXIMIZER … merely
serves as a modifier … of the term CLIMAX”:
The term MAXIMIZER, while not descriptive, merely serves
as a modifier that enforces the dominance of the term
CLIMAX. The term MAXIMIZER, meaning to increase to a
maximum or to make the most of, simply implies that the
suggested CLIMAX will be increased or maximized. Thus, the
mere addition of the modifying term MAXIMIZER does not
obviate the dominance of the term CLIMAX. Potential
consumers encountering the marks used in connection with
the goods at issue would interpret the goods as emanating
from the CLIMAX brand, one being the more intense or
maximized variety, and the other being the more standard
variety.

Trademark Examining Attorney’s appeal brief at unnumbered
9 and 10. Furthermore, she asks that we take judicial notice
Serial No. 78692514
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of the definition of “maximizer” as a transitive verb meaning
“1: to increase to a maximum, 2: to make the most of, 3:
to find a maximum value of …”4
However, we cannot fault the previous Trademark Examining
Attorney tasked with examining registrant’s application in
deciding that among the three words making up that composite
mark, the word “Maximizer” is the strongest candidate for
inherent distinctiveness when used in the connection with
vibrators. Accordingly, we find the word MAXIMIZER to be the
dominant portion of the cited mark.
As a corollary, we also find that the present Trademark
Examining Attorney has analyzed the cited mark incorrectly. As
to parts of speech within registrant’s composite mark, the word
“Climax” is used as an adjective modifying the word “Maximizer”
– used in registrant’s mark as a noun and not a verb as the
Trademark Examining Attorney’s dictionary entry suggests.
As to sound, registrant’s mark is eight syllables, with
applicant’s two syllable term buried in the middle thereof.
Thus, the sound of these respective marks is quite dissimilar.
As to the appearance of registrant’s composite, it is
clear that the lettering of the word “Climax” is the largest
and most distinctive stylistically. While this is the
strongest argument for the position of the Trademark Examining

4 MERRIAM-WEBSTER’S COLLEGIATE® DICTIONARY, Eleventh Edition, also
available at www.m-w.com.
Serial No. 78692514
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Attorney that “Climax” is the dominant portion of the cited
mark visually, given the fact that it is the second of two
adjectives modifying the term “Maximizer,” we cannot agree that
the word “Climax” retains such an elevated status when one is
looking to identify the most salient feature of the composite
for purposes of discerning commercial impression and
connotation. We disagree with the conclusions of the Trademark
Examining Attorney that the meaning prospective consumers
acquainted with both marks would draw from registrant’s mark is
that registrant’s listed product offers “the more intense or
maximized” experience available from the respective CLIMAX
branded products.
When used alone by applicant in the context of adult sex
toys, the word CLIMAX appears suggestive of the ultimate,
intended effect of the goods. However, within the three-word
phrase, “Jelly Climax Maximizer,” the word “Climax” is merely
descriptive inasmuch as it modifies the word “Maximizer,” and
tells the prospective purchaser precisely what the product
does. We find this to be true despite the relatively large,
stylized letters in which the word “Climax” is presented. As
we noted above, registrant has disclaimed the word “Climax,”
and there is no indication that the registrant has subsequently
sought a registration without such a disclaimer – a change that
would likely not go unnoticed by registrant.
Serial No. 78692514
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While the cited mark, in its entirety is arguably somewhat
laudatory, we must assume, in the instant context, that it is
inherently distinctive overall.
In conclusion, in spite of the fact that we are faced with
overlapping goods moving through the same presumed channels of
trade ultimately to be purchased by the same ordinary
customers, we reverse this Section 2(d) refusal based upon the
dissimilarity of the marks. Both of these marks are somewhat
weak as applied to these goods, and when viewed in their
entireties, we find that the respective marks are not
confusingly similar.
We have reached this determination without giving weight
to applicant’s arguments that it is entitled to registration of
its CLIMAX mark for the goods involved herein because it
already owns two registrations for the identical mark for
personal lubricants. Our task in deciding this appeal is to
determine the registrability of applicant’s mark for the
involved goods. Applicant’s ownership of registrations for the
identical mark for different goods is not a factor in our
likelihood of confusion determination.
Decision: The refusal to register under Section 2(d) of
the Lanham Act is hereby reversed.