Achenbach Buschhutten GmbH

Trademark Trial and Appeal Board

Oct 26, 2009

No. 76581689 (T.T.A.B. Oct. 26, 2009)

Mailed:
October 26, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Achenbach Buschhutten GmbH
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Serial No. 76581689
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Friedrich Kueffner, P.C., for Achenbach Buschhutten GmbH.

Kapil K. Bhanot, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
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Before Bucher, Cataldo, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Achenbach Buschhutten GmbH (“applicant”) filed an
application to register the mark shown below:

for goods ultimately identified as “Electric, hydraulic and
pneumatic machines and parts thereof for automating and
optimizing rolling processes, for preparing, transporting and
optimization of throughput, quality and surface of rolled
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76581689
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material, namely, rolling mills, recoilers, decoilers,
conveyors,” in International Class 7 and “Electronic and optical
apparatus for measuring, controlling and regulating rolling
processes, and for managing detection, evaluation and recording
of data from rolling processes, namely, electrical controllers,
data processors, optical sensors,” in International Class 91.
The Trademark Examining Attorney refused registration of
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s mark so
resembles the registered mark OPTIFOIL PLANT, for the goods
listed below, that when used on or in connection with
applicant’s identified goods, it is likely to cause confusion or
mistake or to deceive:
1. “Rolling mills and rolls being parts thereof;
machines for producing aluminum thin strips and foils;
machines for producing cables, wires, hoops, tubes,
pipes and metal sections; electric welding machines;
rotary presses; metal working and shaping machines;
flatbed presses; extrusion presses for industrial use;
machines for pressing metal sheets; flattening machines;
power-operated planers; continuous casting installations

1 Serial No. 76581689, filed March 15, 2004, originally pursuant to
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), revised to
allege first use and first use in commerce on June 7, 2004 in both
classes.
Serial No. 76581689
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composed of melting furnace, continuous caster with edge
trimmer, thin strip mill, finish doubling foil mill,
doubling machine, separating machine and slitting
machine; degassing ladles being machine parts,” in
International Class 7.
2. “Apparatus and instruments for measuring
flatness, namely control rollers for the unwinding of a
section of a laminated metallic strip, and gauges and
sensors for measuring the distribution of stresses over
the width of a laminated metallic strip and for
determining the longitudinal constraints of a laminated
metallic strip,” in International Class 9.
3. “Construction of industrial plants for others;
construction of plants for the manufacture of aluminum
thin strips and foils for others and maintenance and
repair thereof; rust removal and rustproofing,” in
International Class 37.
4. “Engineering and technological consulting
services in the field of metal foil manufacturing;
engineering services in the field of manufacturing
aluminum thin strips and foils; material testing; patent
consultation; engineering; expert witness services in
the fields of manufacture of aluminum thin strips and
foils, and construction of plants for the manufacture of
Serial No. 76581689
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aluminum thin strips and foils; intellectual property
licensing; software design and development for others;
updating computer software; computer programming;
technical research in the fields of manufacture of
aluminum thin strips and foils, and construction of
plants for the manufacture of aluminum thin strips and
foils; surveying of technical projects in the fields of
manufacture of aluminum thin strips and foils,” in
International Class 42.2
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney filed
briefs. For the reasons discussed herein, the Board affirms the
refusal to register.
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
likelihood of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between
the marks and the similarities between the goods or services.

2 Registration No. 3346521, issued December 4, 2007, filed under
Section 44E of the Trademark Act; 15 U.S.C. §1126, and disclaiming the
exclusive right to use “PLANT” apart from the mark as shown.
Serial No. 76581689
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See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
The Marks
We consider and compare the appearance, sound, connotation
and commercial impression of the marks in their entireties. In
re E. I. du Pont De Nemours & Co., 177 USPQ at 567. The mark in
the cited registration consists of the word “OPTIFOIL,” with
only the additional word, “PLANT,” which is disclaimed.
Descriptive matter is generally viewed as a less dominant or
significant feature of a mark. In re National Data Corp., 224
USPQ 749, 750 (Fed. Cir. 1985)(“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark
may be given little weight in reaching a conclusion on the
likelihood of confusion’”).
Applicant’s mark consists of a design with the stylized
word “OPTIFOIL.” Applicant’s mark also appears to contain the
stylized letters AB, perhaps as initials for applicant’s name,
Achenbach Buschhutten Gmbh. In short, the AB design in
applicant’s mark would appear to serve as a house mark, which
Serial No. 76581689
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does not necessarily eliminate its confusing similarity. See In
re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985)
(applicant’s LA CACHET DIOR held confusingly similar to CACHET);
In re the United States Shoe Corp., 229 USPQ 707, 709 (TTAB
1985) (CAREER IMAGE for retail women’s clothing store services
likely to cause confusion with CREST CAREER IMAGE for clothing).
In either case, the design itself does not serve to distinguish
the marks. Consumers will note and remember the words
themselves, because they will be used to call for or refer to
the goods. See CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82 (Fed.
Cir. 1983). Accordingly, the stylized lettering of applicant’s
mark does not change its connotation or commercial impression.
We are then left to compare marks that both have the term
“OPTIFOIL” but little else of source-indicating significance.
Applicant argues that the cited registration is weak. In
particular, applicant argues that the word “OPTIFOIL,” common to
both marks, is merely a combination of abbreviations of the
generic terms “OPTI-“ (allegedly short for “optimum” or
“optimal”) and “-FOIL.” (applicant’s brief at 3). However,
applicant offered no evidence to support this argument.
Furthermore, even a weak mark is entitled to protection against
registration of confusingly similar marks. See Giant Food Inc.
v. Roos and Mastacco, Inc., 218 USPQ 521 (TTAB 1982). To the
extent applicant is making a collateral attack on the cited
Serial No. 76581689
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registration, such attack is not permissible in an ex parte
proceeding.
In conclusion, the marks are similar in appearance, sound,
and commercial impression. In view of the foregoing, we find
that the first du Pont factor weighs in favor of finding a
likelihood of consumer confusion.
The Goods and Channels of Trade

Goods or services need not be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is enough that the goods or services are related in
some manner or that some circumstances surrounding their
marketing are such that they would be likely to be seen by the
same persons under circumstances which could give rise, because
of the marks used or intended to be used therewith, to a
mistaken belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of each parties’ goods or
services. In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Although there is limited evidence of record regarding the
relatedness of the goods identified in the application and the
cited registration, we note that the goods overlap and are in
part identical. The Class 7 goods both contain “rolling mills.”
The Class 9 goods appear to overlap on their face as well, such
as applicant’s “apparatus for measuring [inter alia] rolling
Serial No. 76581689
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processes” and registrant’s “apparatus and instruments for
measuring flatness, namely, control rollers.” Finally,
applicant has not contested the similarity of its goods to those
in the cited registration, apparently conceding this point.
Accordingly, we find this du Pont factor weighs heavily in favor
of finding a likelihood of consumer confusion as to both
applicant’s Class 7 and Class 9 goods.
In the absence of specific limitations in the registration,
we must presume that registrant’s goods will travel in all
normal and usual channels of trade and methods of distribution.
Squirtco v. Tomy Corporation, 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992) (because there are no limitations as to channels of
trade or classes of purchasers in either the application or the
cited registration, it is presumed that the services in the
registration and the application move in all channels of trade
normal for those services, and that the services are available
to all classes of purchasers for the listed services). Since
there are no limitations on the channels of trade in applicant’s
identification of goods either, we must make the same
presumption with regard to applicant’s goods. In other words,
there is nothing that prevents the registrant’s various types of
rolling mills and their parts from being sold in the same
channels of trade and to the same classes of consumers that
Serial No. 76581689
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purchase applicant’s rolling mills and related apparatus for
measuring, controlling and regulating them. Accordingly, we
find that these du Pont factors weigh in favor of finding a
likelihood of consumer confusion.
Balancing the Factors
In view of our findings that the marks are similar, the
goods are similar, and the goods move in the some of the same
channels of trade to the same classes of purchasers, we find a
likelihood of consumer confusion.
Decision: The refusal to register is affirmed.