Aalto Scientific, Ltd.

Trademark Trial and Appeal Board

Oct 31, 2013

No. 85274689 (T.T.A.B. Oct. 31, 2013)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 31, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Aalto Scientific, Ltd.
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Serial No. 85274689
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Katherine M. Hoffman of McKenna Long & Aldridge LLP,
for Aalto Scientific, Ltd.
Giancarlo Castro, Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
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Before Bucher, Kuhlke and Wolfson,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Aalto Scientific, Ltd. (“applicant”) seeks registration on the Principal Register of
the mark AALTO SCIENTIFIC (in standard character format) for
scientific research and development; scientific and
technological services, namely, scientific research,
analysis, testing in the field of in vitro diagnostic reagent
and diagnostic product development; custom design and
development of chemical reagents and biochemical assays
for private label and OEM suppliers; providing reagent
sample testing and diagnostic services for others in the
fields of science and research related thereto; consultation
Serial No. 85274689
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services in the field of scientific research and development
in International Class 42.1
The examining attorney has taken the position that applicant’s mark, when
used in connection with the recited services, so resembles the following four marks
registered for the services recited below (all registrations being owned by the same
registrant), as to be likely to cause confusion, to cause mistake or to deceive under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d):
Aalto University 2 for, inter alia, “scientific research; technological research and design for others in the field of biotechnology, chemical technology,
chemistry, materials science, materials engineering, forest
products technology, automation technology, systems technology,
electronics, micro and nanosciences, radio science, radio
engineering, signal processing, acoustics, electrical engineering,
communications, networking, radio astronomy, space research,
architecture, energy technology, civil engineering, environmental
engineering, construction engineering, surveying, structural
engineering, building technology, applied mechanics,
environmental technology, building services technology, biomedical
engineering, computational science, mathematics, systems
analysis, media technology, applied physics, information science,
computer science, computer engineering, industrial engineering,
low temperature research, physics, information technology;
industrial analysis and research services for others in the field of
biotechnology, chemical technology, chemistry, materials science,
materials engineering, forest products technology, automation
technology, systems technology, electronics, micro and
nanosciences, radio science, radio engineering, signal processing,
acoustics, electrical engineering, communications, networking,
3
4

1 Application Serial No. 85274689 was filed on March 23, 2011, based upon applicant’s
allegation of first use and first use in commerce of January 1980. Applicant states that the
wording “Aalto” has no meaning in a foreign language. No claim is made to the exclusive
right to use the word “Scientific” apart from the mark as shown.
2 Registration No. 3740171 for the mark Aalto University (in standard character format)
issued on January 19, 2010. The English translation of “Aalto” in the mark is “Wave.” No
claim is made to the exclusive right to use the word “University” apart from the mark as
shown.
3 Registration No. 3892861 issued on December 21, 2010. The English translation of the word
“Aalto” in the mark is “Wave.” No claim is made to the exclusive right to use the word
“University” apart from the mark as shown.
Serial No. 85274689
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5
radio astronomy, space research, architecture, energy technology,
civil engineering, environmental engineering, construction
engineering, surveying, structural engineering, building
technology, applied mechanics, environmental technology, building
services technology, biomedical engineering, computational
science, mathematics, systems analysis, media technology, applied
physics, information science, computer science, computer
engineering, industrial engineering, low temperature research,
physics, information technology; design and development of
computer hardware and software” in International Class 42.

When the refusal was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.

4 Registration No. 3896644 issued on December 28, 2010. The English translation of the
word “Aalto” in the mark is “Wave.” No claim is made to the exclusive right to use the word
“University” apart from the mark as shown.
5 Registration No. 3946949 issued on April 19, 2011, The English translation of the word
“Aalto” in the mark is “Wave.” No claim is made to the exclusive right to use the word
“University” apart from the mark as shown.
Serial No. 85274689
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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also
In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
Applicant has applied to register the mark AALTO SCIENTIFIC. All four of
registrant’s cited marks are dominated by the words Aalto University. In comparing
the marks, we must consider the marks in their entireties as to appearance, sound,
connotation and commercial impression, to determine the similarity or dissimilarity
between them. Palm Bay, 73 USPQ2d at 1692. The test, under this 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 goods offered
under the respective marks is likely to result. Because the similarity or
dissimilarity of the marks is determined based on the marks in their entireties, the
analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on the entire marks, not just part of
the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985). On the other hand, 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 a consideration of the marks in their
entireties. In re National Data Corp., 224 USPQ at 751.
We focus our discussion of the respective marks on registrant’s standard
character mark, as this mark is closest in sight, sound, meaning and commercial
Serial No. 85274689
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impression to applicant’s standard character mark. See, e.g., In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). When comparing the word marks
as to sound and appearance, the leading word “Aalto” is clearly the most dominant
source-identifying component in both marks, and is the term most likely to be
impressed upon a prospective consumer. Presto Products, Inc. v. Nice-Pak Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which
is likely to be impressed upon the mind of a purchaser and remembered”). See also,
Palm Bay, 73 USPQ2d at 1692.
Neither applicant nor the examining attorney has focused at any length on the
connotation of word “Aalto.” We note that applicant has stated that Aalto has no
meaning in a foreign language, while the registrations all state that the term means
“wave.” While this discrepancy ultimately does not affect our decision, based upon
this entire record, we have no reason to assume anything other than that the word
“Aalto” represents a strong term both conceptually and commercially. That is,
whether the word “Aalto” is seen by most prospective consumers in the United
States as an invented term, or contrariwise, as meaning “wave,” it will create the
same overall commercial impression when used by applicant or by registrant.
Although the marks have the same dominant portion, we must compare the
marks as a whole. M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78
USPQ2d 1944, 1948-49 (Fed. Cir. 2006) (“When comparing the similarity of marks,
a disclaimed term ... may be given little weight, but it may not be ignored”).
Nevertheless, because the final words (“Scientific” and “University”) are in a
Serial No. 85274689
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secondary position within the marks, and they are correctly disclaimed in the
respective marks as descriptive terms that are intrinsically weak in the field of
scientific research, we find that they have little source-identifying value for
purposes of distinguishing the two marks.
Having found these standard character marks to be confusingly similar, we
need not reach a determination as to registrant’s other three composite marks.
B. Relationship of Services, Trade Channels and Classes of Consumers
We turn our attention next to an evaluation of the relationship of the services as
recited in the ’171 registration to the services recited in the application. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d
1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the
respective services be identical or even competitive in order to find that they are
related for purposes of our likelihood of confusion analysis. That is, the issue is not
whether consumers would confuse the services themselves, but rather whether they
would be confused as to the source of the services. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). The services need only be sufficiently related that consumers
would be likely to assume, upon encountering the services under similar marks,
that the services originate from, are sponsored or authorized by, or are otherwise
connected to the same source. See In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991).
Serial No. 85274689
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Applicant argues against a finding of likelihood of confusion on the basis of the
differences between registrant’s and applicant’s services, emphasizing distinct
channels of trade and substantially different customer bases. The record shows that
registrant is an educational institution located in Espoo and Helsinki, Finland, an
institution “where science and art meet technology and business.”6 Hence,
registrant is a Finnish University that directs its services to the academic
community. By contrast, applicant is an independent, privately-owned, U.S.-based
manufacturer that provides its services to commercial in vitro diagnostics (IVD)
labs and others in the IVD-manufacturing community. Applicant states that it
serves the worldwide needs of the medical diagnostic industry7 by providing
research services and diagnostic materials and equipment such as control and
calibrator sera, purified human proteins, and bulk human and animal sera to the
in vitro diagnostics (IVD) manufacturing community.8
Applicant argues that relevant consumers are not likely to be confused as to
source because it is unlikely that either registrant’s or applicant’s respective
customers will encounter the services of the other:
Registrant directs its services to the academic community,
whereas Applicant provides its services to the scientific
business community. Registrant does not sell products to
the medical community, and Applicant does not provide
educational services.

6 http://www.aalto.fi/en/.
7 http://www.aaltoscientific.com/aboutus.php.
8 http://www.aaltoscientific.com/index.php.
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Furthermore, applicant argues that in the event the respective consumers
should encounter the other’s services, “it is highly unlikely that an academic or
prospective student would be confused when finding applicant, which provides
diagnostic materials and equipment. Consumers would not be likely to believe that
the parties are related or associated in any way.” 9 Thus, applicant argues, there can
be no likelihood of confusion because the respective services are marketed to
entirely different consumers through distinct trade channels.
By contrast, the examining attorney contends that we must look to the
recitations of services in the application and registration at issue, not to extrinsic
evidence of actual use. The examining attorney points out that the recitations set
forth in the application and registration have no restrictions as to nature, type,
channels of trade or class of purchasers. Therefore, he contends, because the
services are deemed, in part, to be legally identical, it is presumed that the services
travel in all normal channels of trade, and hence, some would be available to the
same classes of purchasers.
We agree with the examining attorney that when one evaluates the relationship
of the services as identified in the cited registration to the services recited in the
application, both are involved in the field of scientific research. Specifically,
registrant’s recitation of services includes research in the fields of biotechnology and
biomedicine, which encompasses the somewhat more narrow scope of applicant’s

9 Applicant made its most detailed arguments on the du Pont factors about distinct
channels of trade and customer differences in its response of December 21, 2011, to the
examining attorney’s initial office action. In its appeal brief, applicant simply referred back
to and incorporated these earlier arguments.
Serial No. 85274689
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research in IVD. Accordingly, the services are legally identical. As argued by the
examining attorney, where services are legally identical, they are presumed to
travel through the same trade channels and to be offered to the same classes of
consumers. See American Lebanese Syrian Associated Charities Inc. v. Child Health
Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally
identical, they must be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers.”).
Applicant argues that in the real world, registrant does not “sell products to the
medical community,” and applicant does not provide educational services. However,
we cannot look to extrinsic evidence to narrow the scope of registrant’s recited
services, and without any express limitation, we must presume that registrant’s
scientific research services are offered through the same channels of trade to the
same classes of potential consumers as applicant’s IVD research and development
services.
Accordingly, these du Pont factors weigh in favor of a finding of likelihood of
confusion.
C. Potential market interface between applicant and registrant
Applicant also argues in its appeal brief that it hoped to obtain a coexistence
agreement with registrant, or alternatively, given applicant’s decades of priority,
file cancellation petitions to remove the blocking registrations.
Serial No. 85274689
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However, at no point during the prosecution of its application did applicant file
cancellation petitions. In the absence of any such inter partes actions, applicant’s
claim of prior use is irrelevant to the outcome of this ex parte proceeding, and is
considered an impermissible collateral attack on the registrations. At no point did
applicant ask for a suspension to pursue cancellations or a coexistence agreement,
and as of the drafting of this final decision, no consent agreement has been
submitted to the United States Patent and Trademark Office. Accordingly,
applicant’s unrealized intentions have no bearing on this case.
D. Conclusion
In view of the fact that the services are legally identical, in-part, and that the
overall commercial impressions of the respective standard character marks are
quite similar, we find that applicant’s registration of its applied-for mark is likely to
cause confusion.
Decision: The refusal to register applicant’s mark under Section 2(d) of the
Lanham Act on the basis of Registration No. 3740171 is hereby affirmed.