Bruker Daltonik GmbH

Trademark Trial and Appeal Board

Mar 26, 2021

79258339 (T.T.A.B. Mar. 26, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: March 26, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Bruker Daltonik GmbH
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Serial No. 79258339
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Paul Novak of Hackler Daghighian Martino & Novak,
for Bruker Daltonik GmbH.
Sara Anne Helmers, Trademark Examining Attorney, Law Office 126,
Andrew Lawrence, Managing Attorney.
_____

Before Wellington, Goodman and Larkin,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Bruker Daltonik GmbH (“Applicant”) seeks registration on the Principal Register
of the mark MALDI BIOTYPER SIRIUS (in standard characters, MALDI disclaimed)
for
Scientific instruments, namely, mass spectrometers and
replacement parts therefor, in particular, time-of-flight
mass spectrometers and replacement parts therefor;
software and computer programs for operating a mass
spectrometer; software and computer programs for
processing, evaluating and displaying data acquired with a
mass spectrometer; software and computer programs for
processing mass spectra and identifying or characterizing
Serial No. 79258339
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microorganisms, such as bacteria, yeasts, viruses and
fungi, in biological, industrial or food samples in
International Class 9; and
Human and veterinary diagnostic instruments, in
particular mass spectrometers for use in medical and
clinical applications for the identification or
characterization of microorganisms, such as bacteria,
yeasts, viruses and fungi in International Class 10.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the following registered marks owned by different
entities:
Registration No. 4516814 for the mark SIRIUS for
Apparatuses and instruments for the measurement,
monitoring and evaluation of materials subjected to
thermal changes; apparatuses and instruments for
differential scanning calorimetry, differential thermal
analysis, multiple mode calorimetry, differential scanning
calorimetry, thermo-mechanical analysis, adiabatic
calorimetry, evolved gas analysis, determination of
thermal conductivity and thermal diffusivity; apparatuses
and instruments for the thermo-gravimetric measurement
of mass change; electronic and/or electro-technical
thermobalance for the measurement of mass change under
different atmospheres; combinations of electronic and/or
electro-technical thermobalances with the fourier
transform infrared spectrometer (FTIR) or mass
spectrometer (MS); software for operating thermal,
thermo-mechanical, calorimetric and thermogravimetric

1 Application Serial No. 79258339 was filed on March 13, 2019, under Section 66(a) of the
Trademark Act, 15 U.S.C. § 1141f(a), requesting an extension of protection based on
Applicant’s International Registration No. 1465734 registered March 13, 2019.

Page references to the application record refer to the online database pages of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs on appeal
refer to the Board’s TTABVUE docket system.

Serial No. 79258339
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measuring instruments; automated appliance for filling
and emptying measuring instruments for the sample space
of thermo-analytical measuring instruments, sold as
component together with measuring instruments; sample
containers, sample holders, measuring heads sold as a
component together with measuring instruments in
International Class 9;2
Registration No. 2870576 for the mark SIRIUS for
portable gas analyzers for indicating oxygen, combustible
gases or toxic gases in atmosphere” in International Class
9.3
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed.4 We affirm in part and reverse in part the
refusal to register.
I. Evidentiary Issue
The Examining Attorney, in her brief, asks the Board to take judicial notice of
dictionary definitions of “genotype,” “biotype,” and “sirius,” to which Applicant has
objected in its reply brief as untimely, also arguing that it was unable to offer
countering evidence. Examining Attorney’s brief, 11 TTABVUE 9-11; Applicant’s
reply brief, 12 TTABVUE 3.

2 Issued April 22, 2014 under an extension of protection; Section 71 accepted and Section 15
acknowledged.
3 Issued August 3, 2004; renewed. We will refer to the owners of the cited registrations as
“Registrants.”
4 The Examining Attorney had requested consolidation of this appeal with Applicant’s co-
pending application Serial No. 79257406, 8 TTABVUE. However, that application was
remanded to the Examining Attorney on December 9, 2020.
Serial No. 79258339
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Although the submission by the Examining Attorney is technically untimely
under Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), we have considered the
evidence inasmuch as it is settled that the Board may take judicial notice of dictionary
definitions. Univ. of Notre Dame du Lac v. J. C. Gourmet Food Imps. Co., 213 USPQ
594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In Re Volvo
Cars of N. Am. Inc., 46 USPQ2d 1455, 1457 (TTAB 1998) (although the evidence was
technically untimely, the Board took judicial notice of dictionary definitions
submitted with the main appeal brief). Therefore, the request is granted and
Applicant’s objection is overruled.
II. Likelihood of Confusion
Section 2(d) of the Trademark Act prohibits registration of a mark that so
resembles a registered mark as to be likely, when used on or in connection with the
goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.
§ 1052(d).
Our determination of likelihood of confusion under Section 2(d) is based on an
analysis of all probative facts in the record that are relevant to the likelihood of
confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973) (“DuPont”). We consider each DuPont factor for which
there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
Serial No. 79258339
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In every Section 2(d) case, two key factors are the similarity or dissimilarity of the
marks and the goods or services. 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.”).
A. Similarity or Dissimilarity of the Marks and Strength or Weakness of
the Cited Marks
We turn to the first DuPont factor, which requires us to determine the similarity
or dissimilarity of the marks in terms of appearance, sound, connotation and overall
commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005). The test
under the first DuPont 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. Coach Servs., Inc.
v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
In comparing the marks, we consider them in their entireties. In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). It is nevertheless appropriate,
for rational reasons, to regard certain features of the marks as being more dominant
or otherwise significant, and therefore to give those features greater weight. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110 USPQ2d 1157, 1161
(Fed. Cir. 2014); In re Nat’l Data Corp., 224 USPQ at 751.
Serial No. 79258339
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“In appropriate cases, a finding of similarity as to any one factor (sight, sound or
meaning) alone ‘may be sufficient to support a holding that the marks are confusingly
similar.”’ In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (citations
omitted). See also Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion”).
The cited SIRIUS marks and Applicant’s mark MALDI BIOTYPER SIRIUS (with
MALDI disclaimed) are similar in appearance and sound to the extent that they share
the word SIRIUS. The marks are dissimilar in terms of sight and sound to the extent
that Applicant’s mark, but not the cited marks, includes and begins with the words
MALDI BIOTYPER.
Applicant’s mark MALDI BIOTYPER SIRIUS incorporates in its entirety the two
cited SIRIUS word marks. While there is no rule that likelihood of confusion
automatically exists where one mark encompasses another, in this case, as in many
others, the fact that the entire cited marks are incorporated in Applicant’s mark
increases the similarity between the marks. See In re Mighty Leaf Tea, 601 F.3d 1342,
94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s
mark ML MARK LEES); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106 (CCPA 1975) (applicant’s
mark BENGAL LANCER for club soda, quinine water and ginger ale likely to cause
confusion with BENGAL for gin); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266,
1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic
Serial No. 79258339
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resonance imaging diagnostic apparatus is similar to TITAN for medical ultrasound
diagnostic apparatus).
The Examining Attorney argues that SIRIUS has the most source identifying
significance in Applicant’s mark because SIRIUS is distinctive and has no descriptive
meaning in connection with scientific instruments, while the disclaimed term MALDI
is descriptive, and BIOTYPER is suggestive.5 To support her argument that SIRIUS
is distinctive, the Examining Attorney references the dictionary definition of SIRIUS
submitted with her brief which is defined as “a star of the constellation Canis Major
that is the brightest star in the heavens.” Examining Attorney’s brief, 11 TTABVUE
11, 24. To support her argument that BIOTYPER is suggestive, the Examining
Attorney references the dictionary definitions submitted with her brief: “biotype” is
defined as “a group of organisms that share a genotype” and “genotype” is defined as
“a similar genetic makeup.” Id. at 9, 25-26. According to the Examining Attorney
“[t]he word BIOTYPER in the applied-for mark, therefore, is suggestive of scientific
equipment that assists in identifying a group of organisms that share a similar
genetic makeup.” Id. at 10.
In its reply brief, Applicant argues that biotype and “biotyper” are not the same.
Applicant’s reply brief, 12 TTABVUE 3. Applicant submits that the Examining
Attorney’s evidence should be given minimal probative weight as it does not establish
that BIOTYPER is the same as biotype or that BIOTYPER is suggestive of its goods.

5 The Examining Attorney required Applicant to disclaim MALDI, May 30, 2019 Office Action
at TSDR 1, because it abbreviates “Matrix Assisted Laser Desorption/Ionization.” Id. at
TSDR 33-35.
Serial No. 79258339
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Id. Applicant argues that BIOTYPER is the dominant term in its mark, referencing
prior registrations it owns for the marks MALDI BIOTYPER (MALDI disclaimed)
and IR BIOTYPER (IR disclaimed) for goods that include time-of-flight mass
spectrometers, and submits that “these registrations provide evidence of the source
identifying power of BIOTYPER, especially in a small industry like the mass
spectrometer business.” Applicant’s brief, 6 TTABVUE 18; December 20, 2019
Response to Office Action at TSDR 9-15.
Applicant also argues that the addition of the terms MALDI BIOTYPER to
SIRIUS is sufficient to distinguish Applicant’s mark and the cited marks in their
entireties because SIRIUS is a weak and diluted term. Applicant’s brief, 6 TTABVUE
13-14. Applicant references the Examining Attorney’s argument, made during
prosecution and again in her brief, that BIOTYPER is a house mark and adding this
term to SIRIUS does not avoid confusion.6 However, Applicant submits that the
exception to the general principle regarding the addition of house marks applies here.
In particular, Applicant contends that because SIRIUS is diluted, “the addition of a
house mark or other inherently distinctive term to the same mark renders the two
marks sufficiently distinguishable to avoid a likelihood of confusion.” Applicant’s
brief, 6 TTABVUE 19.

6 There is no evidence in the record as to whether Applicant uses BIOTYPER as a mark on a
large variety of goods, which would suggest that BIOTYPER is a house mark. The two
registrations submitted by Applicant show that the marks are used on the same or very
similar goods as those identified herein, although the IR BIOTYPER mark includes
additional types of spectrometers and spectroscopes as well as Class 5 cultures and
preparations for microorganisms and reagents.
Serial No. 79258339
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To support these arguments, Applicant submitted 35 live third-party registrations
that contain the term SIRIUS by itself or combined with other wording.7 June 20,
2020 Request for Reconsideration at TSDR 7-213, 261-271. Applicant argues that at
least three of the submitted third-party registrations that cover goods in the
“electronics market and cover parts,” such as integrated circuits, and electronic
components, are related to Applicant’s and Registrants’ goods. Applicant’s brief, 6
TTABVUE 14. June 20, 2020 Request for Reconsideration at TSDR 7-12, 50-55, and
177-181. The two coexisting SIRIUS registrations cited by the Examining Attorney
were included as part of this submission. June 20, 2020 Request for Reconsideration
at TSDR 40-49.
Applicant’s third-party registration evidence is relevant to the conceptual
strength of the cited marks, not their commercial strength. Tao Licensing, LLC v.
Bender Consulting Ltd., 125 USPQ2d 1043, 1057 (TTAB 2017) (“Use evidence may
reflect commercial weakness, while third-party registration evidence that does not
equate to proof of third-party use may bear on conceptual weakness if a term is
commonly registered for similar goods or services.”) (citing Tektronix, Inc. v.
Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95 (CCPA 1976)). See also AMF

7 The Examining Attorney points out that 15 registrants own the 35 submitted third-party
registrations; some of the registrants own multiple registrations. Examining Attorney’s brief,
11 TTABVUE 12. For example, one third-party registrant owns 12 registrations, while
another third-party registrant owns four. June 20, 2020 Request for Reconsideration at TSDR
70-109, 135-176; 56-60, 66-69, 128-134. Applicant also submitted eight third-party
applications. Id. at TSDR 214-253. We point out that third-party applications are evidence
only of the fact that such applications were filed; unlike registrations, they are not evidence
of the weakness of marks. See In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016)
(applications are only probative to show that the applications have been filed).
Serial No. 79258339
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Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973) (“The
existence of [third party] registrations is not evidence of what happens in the market
place or that customers are familiar with them....”) (citations omitted). Third-party
registration evidence may demonstrate conceptual weakness by showing that a term
carries a highly suggestive or descriptive connotation in the relevant industry. See In
re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (active
third-party registrations may be relevant to show that a mark or a portion of a mark
is descriptive, suggestive, or so commonly used that the public will look to other
elements to distinguish the source of the goods or services).
As to the three third-party registrations (Sirius Act, Ma Vinci Sirius, and another
Sirius mark) identified by Applicant, which may cover component parts of
Registrants’ goods, the Examining Attorney correctly points out, 11 TTABVUE 15,
that the fact that an electronic component may be incorporated into finished scientific
instrument products does not, per se, support a claim of relatedness. As to the
remaining third-party registrations which do not appear on their face to be related to
Registrants’ goods, Applicant has not explained how they are related, and we do not
find them probative.8 In re i.am.symbolic, 123 USPQ2d at 1751 (disregarding third-

8 The Examining Attorney points out that the third-party registrations are “predominantly
different” and “apparently unrelated to the relevant goods,” and cover, among other things,
oil sensing systems, instant messaging devices, hip joint implants and related surgical
devices, computer software for managing automated payments, various other types of
computer software not related to scientific instruments, and downloadable electronic
newsletters, reports, briefs and webcasts related to business and marketing. Examining
Attorney’s brief 11 TTABVUE 12, 14-16.
Serial No. 79258339
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party registrations for other types of goods where the proffering party had neither
proven nor explained how they were related to the goods in the cited registration).
Even if we consider the coexisting cited registrations and the three third-party
registrations specifically mentioned by Applicant as evidence of the conceptual
weakness of the term SIRIUS, Applicant’s evidence falls short of “the large quantum
of evidence of … third-party registrations that was held to be significant in both” Jack
Wolfskin Ausrustung Fur Draussen GmbH v. New Millennium Sports S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015), and Juice Generation, Inc. v. GS
Enters., LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). In re Inn at
St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 F. App’x (Fed.
Cir. 2019) (finding four registrations of varying probative value, not sufficient to show
weakness of the term 5IVE). Therefore, Applicant has not established that SIRIUS
lacks conceptual strength such that it is entitled to a lesser scope of protection than
any other arbitrary mark. Accordingly, the third-party registration evidence in the
record joined with the two cited registrations is not sufficient to show that the term
SIRIUS is weak in relation to Registrants’ goods such that the presence of the
wording MALDI BIOTYPER in Applicant’s mark would be sufficient to distinguish
the marks as a whole.
Therefore, the DuPont factor relating to strength or weakness of the common
element in Applicant’s and Registrants’ marks is neutral in our analysis.
As indicated, Applicant points to the coexistence of the two cited SIRIUS marks
as evidence of marketplace dilution that allows registration of its mark. However, to
Serial No. 79258339
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the extent that Applicant is arguing that the coexistence of the two cited marks inter
se on the Principal Register shows that consumers know these marks and are able to
distinguish between them, we have already explained that third-party registrations
are not evidence of the use of the marks or that customers are familiar with them.
Further, the coexistence of the two SIRIUS registrations does not mean that we must
allow Applicant to register its mark on this basis. See In re Nett Designs Inc., 236 F3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had
some characteristics similar to Nett Designs’ application, the PTO’s allowance of such
prior registrations does not bind the Board or this court.”). It is well settled that each
case must be decided on its own facts, based on the particular mark, the particular
goods or services, and the particular record in each application. See e.g., In re Eagle
Crest Inc., 96 USPQ2d 1127, 1229 (TTAB 2010) (“It has been said many times that
each case must be decided on its own facts.”).
We find that the dominant feature of Applicant’s mark is SIRIUS as it is an
arbitrary term that is not diluted in the marketplace, MALDI is disclaimed,9 and
BIOTYPER is suggestive of equipment and software for biotyping of microorganisms.
As to Applicant’s prior MALDI BIOTYPER and IR BIOTYPER registrations, the fact
that Applicant owns registrations that incorporate the term BIOTYPER for similar
goods is not outcome determinative. To the extent that Applicant argues that
BIOTYPER is a distinctive term, “[t]he addition of a distinctive term, which is not a

9 By disclaiming the word MALDI, Applicant has conceded the wording is, at a minimum,
descriptive of Applicant’s goods. In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2014 n.4
(TTAB 1988).
Serial No. 79258339
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house mark, does not necessarily result in marks that are dissimilar.” In re Toshiba
Med. Sys. Corp., 91 USPQ2d at 1269 (citations omitted). Thus, the mere addition of
BIOTYPER to Applicant’s mark, regardless of whether that term is Applicant’s house
mark, does not serve to distinguish Applicant’s mark from Registrants’ marks for
purposes of our likelihood of confusion determination.
When the marks are considered in their entireties, we find that their similarities
outweigh their dissimilarities. Purchasers are likely to view Applicant’s mark as
simply a variation of both Registrants’ marks or assume that it identifies another
product in each of Registrants’ “Sirius” product lines. The first DuPont factor weighs
in favor of finding a likelihood of confusion.
B. Similarity or Dissimilarity of the Goods
We next consider the second DuPont factor, which “considers ‘[t]he similarity or
dissimilarity and nature of the goods or services as described in an application or
registration.’” DuPont, 177 USPQ at 567. Our analysis under this factor is based on
the identifications of goods in the application and the cited registration. Stone Lion
Capital Partners, 110 USPQ2d at 1161-63.
In analyzing this factor, it is not necessary that the goods of Applicant and
Registrants be similar or even competitive to support a holding of likelihood of
confusion. It is sufficient if the respective goods are related in some manner and/or
that the conditions surrounding their marketing are such that they would be
encountered by the same persons under circumstances that could, because of the
similarity of the marks used thereon, give rise to the mistaken belief that they
Serial No. 79258339
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emanate from, or are associated with, the same source. Coach Servs., 101 USPQ2d at
1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). In
addition, “it is sufficient for finding a likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods within a
particular class in the application.” In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5
(TTAB 2015) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981)).
We now turn to consideration of Applicant’s and Registrants’ goods. In order to
more fully understand the goods, as mentioned infra, we take judicial notice of
dictionary definitions of some of the terms in the identifications of goods. See In re
Thor Tech, Inc., 90 USPQ2d 1634, 1636 & 1638 n.10 (TTAB 2009) (The Board may
take judicial notice of dictionary definitions, including definitions from online
dictionaries, to clarify the meaning of words in the identifications of goods or
services).
Applicant’s goods are
Scientific instruments, namely, mass spectrometers and
replacement parts therefor, in particular, time-of-flight
mass spectrometers and replacement parts therefor;
software and computer programs for operating a mass
spectrometer; software and computer programs for
processing, evaluating and displaying data acquired with a
mass spectrometer; software and computer programs for
processing mass spectra and identifying or characterizing
microorganisms, such as bacteria, yeasts, viruses and
fungi, in biological, industrial or food samples in
International Class 9; and
Human and veterinary diagnostic instruments, in
particular mass spectrometers for use in medical and
clinical applications for the identification or
Serial No. 79258339
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characterization of microorganisms, such as bacteria,
yeasts, viruses and fungi in International Class 10.
For Applicant’s goods, we take judicial notice of the definition of mass
spectrometry: “an instrumental method for identifying the chemical constitution of a
substance by means of the separation of gaseous ions according to their differing mass
and charge”10 and the definition of mass spectrometer “a device for identifying the
kinds of particles present in a given substance: the particles are ionized and beamed
through an electromagnetic field and the manner in which they are deflected is
indicative of their mass and, thus, their identity.”11
The goods in Registration No. 4516814 are
Apparatuses and instruments for the measurement,
monitoring and evaluation of materials subjected to
thermal changes; apparatuses and instruments for
differential scanning calorimetry, differential thermal
analysis, multiple mode calorimetry, differential scanning
calorimetry, thermo-mechanical analysis, adiabatic
calorimetry, evolved gas analysis, determination of
thermal conductivity and thermal diffusivity; apparatuses
and instruments for the thermo-gravimetric measurement
of mass change; electronic and/or electro-technical
thermobalance for the measurement of mass change under
different atmospheres; combinations of electronic and/or
electro-technical thermobalances with the fourier
transform infrared spectrometer (FTIR) or mass
spectrometer (MS); software for operating thermal,
thermo-mechanical, calorimetric and thermogravimetric
measuring instruments; automated appliance for filling
and emptying measuring instruments for the sample space
of thermo-analytical measuring instruments, sold as
component together with measuring instruments; sample

10 Merriam-Webster dictionary, merriam-webster.com, https://www.merriam-webster.com
(accessed March 23, 2021).
11 Random House Unabridged Dictionary, dictionary.com, https://www.dictionary.com
(accessed March 23, 2021).
Serial No. 79258339
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containers, sample holders, measuring heads sold as a
component together with measuring instruments in
International Class 9;
For the goods in Registration No. 4516814, we take judicial notice of the following
dictionary definitions:12
calorimeter: “an apparatus for measuring quantities of absorbed or emitted
heat or for determining specific heats”;

thermal: “being or involving a state of matter dependent upon temperature”;

thermal conductivity: “capability of conducting heat”;
thermogravimetry: “the determination (as with a thermobalance) of weight
changes in a substance at a high temperature or during a gradual increase in
temperature”;

thermobalance: “a balance designed especially for weighing bodies at high
temperatures”;

thermochemistry: “a branch of chemistry that deals with the interrelation of
heat with chemical reaction or physical change of state”;

thermal conductivity: “the quantity of heat that passes in unit time through a
unit area of plate whose thickness is unity when its opposite faces differ in
temperature by one degree”;

thermomechanical: “designed for or relating to the transformation of heat
energy into mechanical work.”

diffusion: “chemistry : the process whereby particles of liquids, gases, or solids
intermingle as the result of their spontaneous movement caused by thermal

12 Merriam-Webster dictionary, merriam-webster.com (accessed March 23, 2021).
https://www.merriam-webster.com/dictionary/spectrometer
https://www.merriam-webster.com/dictionary/thermal
https://www.merriam-webster.com/dictionary/thermal%20conductivity
https://www.merriam-webster.com/dictionary/thermogravimetric
https://www.merriam-webster.com/dictionary/thermobalance
https://www.merriam-webster.com/dictionary/thermochemistry
https://www.merriam-webster.com/dictionary/thermal%20conductivity
https://www.merriam-webster.com/dictionary/diffusion
https://www.merriam-webster.com/dictionary/thermomechanical
https://www.merriam-webster.com/dictionary/spectrometer.
Serial No. 79258339
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agitation and in dissolved substances move from a region of higher to one of
lower concentration.”

spectrometer: “any of various analytical instruments in which an emission (as
of particles or radiation) is dispersed according to some property (such as mass
or energy) of the emission and the amount of dispersion is measured.”

The goods in Registration No. 2870576 are
portable gas analyzers for indicating oxygen, combustible
gases or toxic gases in atmosphere” in International Class
9.
We take judicial notice of the dictionary definition of “analyzer”: “a person,
machine, or device that examines something in detail in order to discover exactly
what it is or consists of.”13
Applicant’s goods in Class 9 include “Scientific instruments, namely, mass
spectrometers and replacement parts therefor, in particular, time-of-flight mass
spectrometers.”
The goods in Registration No. 4516814 include “combinations of electronic and/or
electro-technical thermobalances with the fourier transform infrared spectrometer
(FTIR) or mass spectrometer (MS)” and “apparatus and instruments for. . . evolved
gas analysis.” Applicant’s time-of-flight mass spectrometers are encompassed by the
more broadly identified “mass spectrometers” for use in combination with “electronic
and/or electro-technical thermobalances” offered by Registrant. See e.g., In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly

13 Cambridge Dictionary, dictionary.cambridge.org (U.S.) (accessed March 23, 2021),
https://dictionary.cambridge.org/us/dictionary/english/analyzer.
Serial No. 79258339
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identified ‘residential and commercial furniture’”). In addition, Registrant’s
apparatus and instruments for evolved gas analysis are broad enough to encompass
time-of flight mass spectrometers that may be used for such a purpose. See Set Prods.,
Inc. v. Constr. Prods., Inc., 208 USPQ 842, 848 (TTAB 1980) (where the identification
of goods is not specifically restricted as to type, purpose, function, trade channels, or
classes of purchasers, the trier of fact may presume that the goods of the parties
encompass all types of the product or products falling within the identification
thereof).
The goods in Registration No. 2870576 are portable gas analyzers for measuring
the gas in the atmosphere and this identification is broad enough to encompass “time-
of-flight mass spectrometers.”
Applicant argues that “Registration 2870576 is registered for “portable gas
analyzers[…]’. These products are portable and very small instruments and are very
different from Applicant’s heavy stationary mass spectrometers. Consumers would
not be confused between a small portable gas analyzer and a mass spectrometer.”
Applicant’s brief, 6 TTABVUE 20. However, Applicant’s time-of-flight mass
spectrometers are unrestricted as to use, size, or purpose, and therefore, the
identification encompasses time-of flight mass spectrometers offered in portable form
and used in connection with gas analysis.
Accordingly, we find Applicant’s Class 9 goods are legally identical in part to goods
identified in both cited registrations.
Serial No. 79258339
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As additional evidence of relatedness, the Examining Attorney has submitted
third-party website evidence showing that the same entity offers “mass
spectrometers,” “gas analyzers,”, including portable and table top versions, and
“instruments for evolved gas analysis.”14 The evidence also shows that “mass
spectrometers” are often offered as part of a system with other equipment for gas
analysis or in combination with gas chromatographs15 or coupled with thermal
instruments (i.e., “Apparatuses and instruments for the measurement, monitoring
and evaluation of materials subjected to thermal changes”) that can also be used in
connection with gas analysis.
Amtek Process Instruments offers links to mass spectrometers and gas
gravitometers on the same webpage listing under “technology.” On the
gas gravitometer web page, the item shown measures gas quality and is
portable. On the mass spectrometer page, Amtek offers a mass
spectrometer that analyzes gases. May 30, 2019 Office Action at TSDR
6-7.

FLIR offers portable and non-portable gas chromatograph mass
spectrometers under the same marks. Id. at TSDR 9-10.

Hiden Analytical offers systems for real time gas analysis of catalyst
performance that includes a mass spectrometer. Hiden also offers
compact gas analyzers. Id. at TSDR 11-13.

14 The evidence from the marketplace is relevant to understand what consumers would expect
or be accustomed to seeing. Here, potential consumers are exposed to the same entity offering
Applicant’s and Registrants’ goods. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single company
sells the goods and services of both parties, if presented, is relevant to a relatedness
analysis”). We note that although offered by the same manufacturer, for the most part, the
website evidence does not show the offering of these various goods under the same
trademarks.
15 We take judicial notice of the definition of chromatography: “a process in which a chemical
mixture carried by a liquid or gas is separated into components as a result of differential
distribution of the solutes as they flow around or over a stationary liquid or solid phase.”
Merriam-Webster dictionary. Merriam-webster.com. https://www.merriam-webster.com
(accessed March 23, 2021).
Serial No. 79258339
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Netzsch offers a mass spectrometer for routine analysis of gases in a
compact form Id. at TSDR 22. It also offers a “highly sensitive gas
chromatography-mass spectrometry (GC-MS) coupling to Thermal
Analyzers for precise identification of gas species.” Id. at TSDR 22-23,
27.

Perkin Elmer offers gas chromatography mass spectrometry systems
and liquid chromatography and mass spectrometry systems. It also
offers a portable thermal mass capillary gas chromatograph with a
miniaturized toroidal ion trap mass spectrometer. Id. at 31-32.

MKS offers Mass Spectrometers for “Sensitive and Reproducible Gas
Process Monitoring & Control.” Its gas analyzers employ mass
spectrometry, Fourier Transform Infrared, Nondispersive Infrared, or
Tunable Filter spectroscopy to analyze gas composition. January 18,
2020 Office Action at TSDR 2-3.

Setaram Kep Technologies offers a “High Pressure Mass Spectrometer”
for gas composition analysis. It also offers thermal conductivity analyzer
and calorimetry products and thermal analysis devices. Id. at TSDR 4-
7.

Thermo Fisher Scientific offers a “Mass Spectrometer and Thermal
Conductivity Dectector” and a portable gas leak dectector. Id. at TSDR
9-10.

Ulvac, under the category of gas analyzers, offers a differentially
pumped quadropole mass spectrometer that provides gas analysis, and
separately, thermal analysis instruments. Id. at TSDR 11-13.

Almost all of the website pages provided by the Examining Attorney show the
offering of a mass spectrometer in connection with gas analysis. According to some of
the websites, the combination of a mass spectrometer and a gas chromatograph can
be used for identification and quantification of volatile and semi-volatile compounds
for air, water and soil testing, for residual solvents and terpene analysis, for rapid
screening of chemicals including environmental volatiles and semi-volatiles,
explosives, chemical warfare agents, hazardous substances, and for use in food safety
Serial No. 79258339
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and industrial applications. May 30, 2019 Office Action at TSDR 31. Mass
spectrometers coupled with thermal instruments can be used to detect, analyze and
separate organic components and to analyze gas catalyst performance. Id. at TSDR
11, 23.
As to Applicant’s goods in Class 10, “Human and veterinary diagnostic
instruments, in particular mass spectrometers for use in medical and clinical
applications for the identification or characterization of microorganisms, such as
bacteria, yeasts, viruses and fungi,” it is apparent from the face of the identification
and involved registrations that the uses and purposes of Applicant’s goods are very
different from the uses and purposes of the goods identified in the cited registrations
(gas analysis and thermal and calorimetric analysis). Further, the Examining
Attorney’s website evidence does not establish that companies that offer mass
spectrometers for gas analysis or for use in combination with calorimetric and
thermal devices also offer mass spectrometers for medical and clinical applications
for the identification or characterization of microorganisms.
Only one website indictates that its mass spectrometer can be used for a broad
range of applications such as drug discovery, proteomics, environmental and food
safety, clincial research and forensic toxicology. January 18, 2020 Office Action at
TSDR 9. However, the website evidence that a single company may sell a mass
spectrometer that could have broader application and be used in connection with
clinical research and forensic toxicology is tenuous and quite limited, and is
Serial No. 79258339
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insufficient for us to find that Registrants’ goods and Applicant’s Class 10 goods are
related.
C. Channels of Trade Classes of Purchasers and Conditions of Sale
The third DuPont factor considers “the similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567. Our analysis under
this factor is based on the identifications of goods in the application and the cited
registrations.16 Stone Lion Capital Partners, 110 USPQ2d at 1161-63. As to the fourth
DuPont factor, we consider the “conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont 177 USPQ at
567.
Because the Class 9 goods described in the application and the cited registrations
are in part legally identical, we presume that the channels of trade and classes of
purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012) (identical goods are presumed to travel in same channels of
trade to same class of purchasers). Additionally, the Examining Attorney’s website
evidence also shows that the trade channels for these goods overlap.
As to Applicant’s Class 10 goods and the cited registrations, absent restrictions as
to the channels of trade or classes of purchasers, we must presume that the goods

16 In its June 20, 2020 Request for Reconsideration at TSDR 256-260, Applicant included a
web page and Wikipedia pages related to the Registrant in Registration No. 2870576 and
what it describes as the specimen in the registration file for Registration No. 4516814 to show
the type of goods offered by both of the Registrants. However, we must base our decision on
the goods identified in the cited registrations, rather than what the extrinsic evidence shows
the scope of those goods to be. Octocom Sys., Inc. v. Hous. Comps. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Serial No. 79258339
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are, or will be, sold in all the normal channels of trade to all the usual purchasers for
such goods. Squirtco v. Tomy Corp., 697 F.2d 1038, 1042-43, 216 USPQ 937, 940
(Fed.Cir.1983).
As discussed above, there is very little evidence that Applicant’s Class 10 goods
and Registrants’ goods are available in the same channels of trade to the same
consumers. While we recognize that mass spectrometers may be offered by some
companies for use in a broad range of applications, and therefore offered in the same
trade channels, there is insufficient evidence in this record that Applicant’s Class 10
goods travel in the same channels of trade or may be purchased by the same class of
purchasers as the goods in the cited registrations. Therefore, we do not find that the
trade channels overlap for Applicant’s Class 10 goods.
As to conditions of sale, while neither the identification of goods in the application
or the registrations contain any restrictions as to trade channels and purchasers, it
is nonetheless clear from the nature of the goods as identified that they are scientific
equipment that would be selected with considerable care by purchasers familiar with
the source or origin of the products.17 Elec. Design & Sales Inc. v. Elec. Data Sys.
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392 (Fed. Cir. 1992) (finding purchasers

17 It its June 20, 2020 Request for Reconsideration at TSDR 5, Applicant explains that “[m]ass
spectrometry (MS) is an analytical technique that measures the mass-to charge ratio of ions.
The results are typically presented as a mass spectrum, a plot of intensity to function of the
mass-to charge ratio. … these devices and purchasers of these devices are some of the most
specialized and sophisticated in the world.” Applicant explains that the differential scanning
calorimeter (DSC) offered by Registrant in Registration No. 4516814 “provides a measure of
heat flow, which provides insight into molecular motion. The DSC is readily employed to
determine the heat capacity of a polymer, and representative thermal transitions of a
polymer, including the glass transition temperature and the melting point.”
Serial No. 79258339
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sophisticated based on identification of opposer’s and applicant’s goods). Therefore,
we agree with Applicant’s contention that the purchasers of these goods, i.e.,
professionals in scientific fields or technical purchasers, are technically sophisticated
and careful purchasers of these types of goods. The fourth DuPont factor weighs in
Applicant’s favor.
III. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors. With respect to Applicant’s identified goods in International Class 9,
we find that, since the marks are similar, the goods are identical in part to
Registrants’ goods and there is a presumption that the identical goods move in the
same channels of trade and are sold to the same class of consumers, Applicant's
MALDI BIOTYPER SIRIUS mark so resembles the cited registered SIRIUS marks
as to be likely to cause confusion, mistake or deception as to the source of Applicant's
International Class 9 goods. Although we have stated that the DuPont factor
regarding the conditions under which and buyers to whom sales are made weighs in
Applicant’s favor, it is not sufficient to outweigh our findings on the other DuPont
factors, all of which favor Registrants. See Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962) (although the goods would be purchased by
technicians who are discriminating purchasers, “[b]eing skilled in their own art does
not necessarily preclude their mistaking one trademark for another” when the marks
are similar and “cover merchandise in the same general field.”).
Serial No. 79258339
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With respect to Applicant’s goods in International Class 10, the record contains
insufficient evidence to establish that the goods are related and therefore does not
demonstrate a likelihood of confusion between Registrants’ and Applicant’s marks for
the identified goods.
Decision: The refusal to register Applicant’s MALDI BIOTYPER SIRIUS mark
under Section 2(d) of the Trademark Act is affirmed as to the goods identified in
International Class 9, and reversed as to goods identified in International Class 10.