Cal Tec Labs, Inc.

Trademark Trial and Appeal Board

Mar 19, 2015

No. 85857119 (T.T.A.B. Mar. 19, 2015)

THIS OPINION IS NOT
A
PRECEDENT OF THE
TTAB
Mailed:
March 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Cal Tec Labs, Inc.
_____

Serial No. 85857119
_____

Noland J. Cheung and Michael E. Dukes of Cohen & Grigsby, P.C. for Cal Tec Labs,
Inc.
Mayur Vaghani, Trademark Examining Attorney, Law Office 102 (Mitchell Front,
Managing Attorney).

Before Zervas, Kuczma and Masiello, Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Cal Tec Labs, Inc. (“Applicant”) seeks registration on the Principal Register of
the mark for the following International Class 42 services:
Calibration of instrumentation services, namely, calibration of
micrometers, calipers, dial indicators, bore gages, pin gages, gage
blocks, plain ring gages, threaded rings, plain plug gages, threaded
plugs, torque wrenches, length standards, height gages, radius gages,
steel rules, CMM’s, hardness testers, thread wires, straight edges,
squares, levels, wire crimp tools, pressure gages, vacuum gages, flow
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meters, transducers, hygrometers, thermocouples, thermometers, chart
recorders, pyrometers, viscometers, viscosity cups, sieves, stop
watches/timers, precision scales, surface roughness, force gages,
durometers, gloss meters, weight/per gallon, impact testers,
multimeters, oscilloscopes, frequency counters, hi-pot testers, HV
probes, panel meters, insulation testers, power analyzers, power
supply, clamp-on’s, watt meters, signal generators, RF analyzer,
capacitance, ampmeters, current probes, resistance, static tester, pulse
generators and radar guns.1

The description of the mark in the record states, “The mark consists of the letter
‘C’ in a square block centered above the letters ‘T’ in a square block and ‘L’ in a
square block.”
The Examining Attorney refused registration of Applicant’s mark under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that Applicant’s
mark is likely to cause confusion or mistake or to deceive in view of Registration No.
3045797 for the standard character mark CTL for services including “Engineering
services; construction materials testing and analysis; existing structure inspection
and evaluation; chemical laboratory sampling and analysis relating to engineering
services” in International Class 42.2
When the refusal was made final, Applicant filed an appeal. The Examining
Attorney and Applicant each filed a brief. We affirm the refusal to register.
Applicable Law
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

1 Application Serial No. 85857119 was filed on February 2, 2013, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), and claims first use and use in commerce in 1999.
2 Registered January 17, 2006; Section 8 affidavit accepted.
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(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.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014).
Similarity or Dissimilarity of the Marks
We compare the marks for similarities and dissimilarities in appearance, sound,
connotation and commercial impression. Palm Bay, 73 USPQ2d at 1692. The test 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 or
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. In re Association of the United States Army, 85
USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975). Under actual marketing conditions, consumers do not necessarily
have the luxury of making side-by-side comparisons between marks, and must rely
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upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206
USPQ 255 (TTAB 1980).
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 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667
F.2d 1005, 212 USPQ 23, 234 (CCPA 1981) (“It is axiomatic that a mark should not
be dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion”). 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.
Applicant does not disagree with the Examining Attorney’s contention that
Applicant’s mark would be interpreted and pronounced as the letters “CTL.”
Applicant’s name is Cal Tech Labs, Inc.; Applicant identified the literal element of
its mark in its initial application as “CTL”; and Applicant stated at p. 2 of its
response to the first Office Action that it “agrees that the literal element in
Applicant’s mark is ‘CTL.’” However, Applicant argues that the layout and design
elements of its mark distinguish its mark in appearance from the cited registered
mark. Applicant points out that the letter “C” in Applicant’s mark depicted in the
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drawing is raised above the other letters in the mark, and the shading of the
“blocks” surrounding each letter comprising the mark places the letter “C” behind
the other letters in the mark. Applicant argues that this layout places emphasis on
the letters T and L, making them dominant over the letter C and possibly affecting
the order in which viewers would read and pronounce the mark. While some may
read the mark from left to right, it is just as plausible that others, especially those
who know of Applicant and its services, will read the mark from top to bottom and
pronounce it as CTL. Further, Applicant’s specimen of use depicts the letter “C”
placed in front of the other letters in the mark, rather than behind.3 This fact,
combined with the nature of Applicant’s name and Applicant’s agreement that the
correct order of the letters is CTL, suggests that Applicant may use the mark in
ways that will promote the perception of the mark as CTL rather than TCL, such as
shown in the specimen of use. In view of the foregoing, we find that Applicant and
certain potential consumers would pronounce the mark as CTL.
As for the lettering style in Applicant’s mark, which is rather nondistinctive, we
note that a mark in typed or standard characters such as registrant’s mark may be
displayed in any lettering style; the rights reside in the wording or other literal
element and not in any particular display or rendition. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601

3 Tithe Examining Attorney has not raised this discrepancy between the marks depicted in
the drawing and in the specimen as the basis for any objection to registration, and
Applicant does not mention the discrepancy. Therefore, the question of whether the mark
shown in the specimen displays use of the mark sought to be registered is not before us.
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F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Thus, registrant may display its
mark in the same lettering style as appears in Applicant’s mark.
As for the square elements which surround each of the letters in Applicant’s
mark, Applicant maintains that they are “a design of three intersecting and
touching building blocks, or squares, with the ‘C’ square behind and between the ‘T’
and ‘L,’” that
gives the appearance of the design of three building blocks. “Building
blocks” are generally considered “n. a basic element or component.”
Applicant’s services are described as “calibration services” of specific
instrumentation. The term “calibrate” may be defined as follows: “to
standardize (as a measuring instrument) by determining the deviation
from a standard so as to ascertain the proper correction factor.”
Therefore, Applicant’s calibration services may be considered the basic
component, or building block, in the accurate use of the instruments
calibrated by Applicant. Based on the distinctive stylized design,
including the layout of the letters, and commercial impression,
Applicant’s Mark differs significantly from the Cited Mark making
consumer confusion unlikely.4

We are not persuaded that the typical customer would perceive in Applicant’s
mark the subtle meaning proposed by Applicant. The square elements do not
sufficiently distinguish the marks, especially in light of the lettering in the marks.
First, to the extent that they are considered a design feature, for a composite mark
containing both words or letters and a design, the word or letter portion may be
more likely to be impressed upon a purchaser’s memory and to be used when
requesting the services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107
USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999)); see In re Viterra Inc., 101 USPQ2d at 1911 (citing CBS

4 Applicant’s Brief at 8-9.
Serial No. 85857119

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Inc. v. Morrow, 708 F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir 1983)). Second, to the
extent that they function as background or carrier elements for each of the letters,
they do not add much to the commercial impression of the mark. In re Kysela Pere et
Fils, Ltd. 98 USPQ2d 1261, 1267 (TTAB 2011) (“certainly the oval designs in the
marks are merely background or ‘carrier’ elements, and do not make a strong
commercial impression”) (citing In re Dixie Restaurants Inc., 41 USPQ2d at 1534).
Applicant argues that the “services offered in connection with Applicant’s Mark
are marketed to and encountered by consumers visually at its facilities, in articles,
websites, and other visual marketing and advertising materials. When marks are
encountered visually rather than aurally, likelihood of confusion is lessened.”5 We
need not limit our consideration to the manner in which Applicant actually markets
its services. The du Pont factor regarding the similarity of the marks is not linked to
the manner in which an Applicant actually uses its marks. In addition, Applicant’s
argument is particularly unpersuasive because registrant’s mark is in standard
character form, and the “blocks” which surround the letters in Applicant’s mark are
not particularly distinctive and may be considered as background material.
For the reasons mentioned above, we therefore find that the marks are similar
in sound, meaning, and commercial impression.
Strength of Registrant’s Mark
Applicant argues that the definition from submitted with
his response to the first Office Action showing over 70 entries for the acronym CTL
demonstrates that registrant’s mark is weak. As the Examining Attorney points

5 Applicant’s Brief at 17.
Serial No. 85857119

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out, however, the weakness of a particular mark is generally determined in the
context of the number and nature of similar marks in use in the marketplace in
connection with similar goods and/or services, not whether a term has multiple
meanings. See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937
F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de
Nemours & Co., 177 USPQ at 567. In addition, Applicant has not pointed to any
particular meaning that the mark has in the context of the services of registrant or
Applicant.
Similarity or Dissimilarity of the Services
We now consider the similarity or dissimilarity of the services, basing our
evaluation on the services as they are identified in the registration and 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 in “order to
find that there is a likelihood of confusion, it is not necessary that the goods or
services on or in connection with which the marks are used be identical or even
competitive [as Applicant argues at pp. 16 – 17 of its Brief]. It is enough if there is a
relationship between them such that persons encountering them under their
respective marks are likely to assume that they originate at the same source or that
there is some association between their sources.” McDonald’s Corp. v. McKinley, 13
USPQ2d 1895, 1898 (TTAB 1989).
Serial No. 85857119

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The Examining Attorney focuses on registrant’s engineering services and
Applicant’s calibration services and states that the “services of the parties are
highly related because they appeal to the same consumers and follow similar
channels of trade.”6 The Examining Attorney relies on the following evidence to
demonstrate that calibration services and engineering services are commonly
encountered together under the same mark:
● The definition of “calibration” from dictionary.com, submitted with
the first Office Action, meaning “to determine the accuracy of”; and

● Internet evidence demonstrating use of the same mark in connection
with both calibration services and engineering services:

1. Walsh Engineering Services7
Showing the same mark used in offering calibration and
various engineering services.

2. Element8
Webpages showing the same mark used offering calibration
services for various types of equipment, including
oscilloscopes and force gauges, and engineering services.

3. Northrop Grumman9
Webpages showing the same mark used in offering
calibration services for a wide range of measuring and test
equipment and engineering services.

4. Applied Technical Services10
Webpage titled “Calibration” states “ATS Calibration …
provides full service calibration, dimensional inspection and
repair services” and lists “oscilloscope[s]”; and webpage titled
“Consulting Engineering” states, “Mechanical, civil, chemical,

6 Examining Attorney Brief at unnumbered 9.
7 http://walshengr.com/capabilities.html.
8 http://www.element.com/services-index/calibration-services.
9 http://www.northropgrumman.com/Capabilities/MetrologyTestEquipment.
10 http://www.atslab.com/calibrations/calibration-companies.php and
http://www.atslab.com/consulting-engineering/consulting-engineering.php.
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industrial, and materials engineers provide a wide range of
services to all industries.”

5. King Gage Engineering11
Shows the same mark used in connection with Pressure
gauge and differential pressure gage calibration and
“Application Engineering” services.

6. Cascade Engineering Services, Inc.12
Shows the same mark used in connection with calibration
services for, e.g., “electronics” and “Torque/Mass” and
engineering services.

7. Sears Calibration13
Webpage shows the same mark used in connection with
“Calibration Services of Test and Measurement Equipment”
including “Calibration of Thread Plug and Ring Gages” and
“Metrology Engineering Services.”

Further, the examining attorney submitted over a dozen third-party, use-based
registrations showing the same mark registered in connection with calibration and
engineering services. Use-based third party registrations have probative value to
the extent that they serve to suggest that the services listed therein, namely,
calibration services and engineering services, are of types that emanate from a
single source. In re Infinity Broad. Corp. of Dallas, 60 USPQ2d 1214, 1217-18
(TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
The evidence discussed above demonstrates that Applicant’s and registrant’s
services are related. In addition, the Examining Attorney set forth evidence and
argued that engineering services include calibration services. The Examining

11 http://www.kinggageengineering.com/Services/Calibration.Engineering.Sourcing/
tabid/66/Default.aspx.
12 http://www.cascage-eng.com.
13 http://www.searscalibration.com/metrology-engineering-services.html.
Serial No. 85857119

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Attorney relies on, e.g., (i) a webpage from Education Portal14 which discusses how
to become a calibration engineer, and provides that “[c]alibration engineers
calibrate different types of engines using calibration and diagnostic software,” and
(ii) a webpage from Walsh Engineering Services15 indicating that the calibration
services are performed by engineers. This evidence, which is not extensive, at a
minimum bolsters our finding that the services are related.
Similarity or Dissimilarity of Classes of Purchasers and Trade Channels
Applicant states in its brief that it “provides its calibration services to
professional or commercial consumers for specific instrumentation, particularly for
dimensional equipment, process equipment, and electronic equipment.”16 In
addition, we note that there are no limitations regarding trade channels or
purchasers in the respective recitations of services, though we point out that
Applicant’s calibration services are tied to the calibration of particular types of
equipment which are not necessarily used in all industries.
On one hand, the Examining Attorney’s evidence demonstrates that engineering
and calibration services are sometimes offered on the same websites, even on the
same webpages, under the same marks. In addition, several third-party webpages
suggest that those consumers needing engineering services, who possibly have or
purchase equipment related to those engineering services, will require calibration of
such equipment. See, e.g., Sears webpages offering metrology engineering services,

14 http://education-portal.com/article/how_to_become_a_calibration_engineer
_and_career_roadmap.html.
15 http://walshengr.com/capabilities.html.
16 Applicant’s Brief at 13.
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(“[w]e will guide you through all phases of new product development, help establish
calibration rules, devise calibration procedures and methodologies, as well as verify
specifications and traceability”) and calibration services for metrology equipment
(“Calibration Services of Test and Measurement Equipment”).17
On the other hand, there is no evidence that the same individuals or
departments within entities which require both engineering and calibration services
order both types of services. Different individuals or different departments may
make purchasing decisions regarding such services. See Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed.
Cir. 1992) (“[E]ven when there is an overlap in purchasing persons due to a common
purchasing agent, such an agent is not necessarily a ‘relevant person’ for
determining likelihood of confusion”).
The evidence therefore is inconclusive regarding the similarity or
dissimilarity of the classes of purchasers and trade channels. The du Pont factors
regarding purchasers and trade channels are neutral in our analysis.
Purchaser Care and Consumer Sophistication
Applicant maintains that purchasers of its services “would exercise a high level
of sophistication” in choosing Applicant’s services, therefore minimizing any
likelihood of confusion. Applicant states:
Because of the very nature of the instrumentation and
specificity of the manufacturer or government standards, a high
degree of care is exercised in the instrument’s maintenance such
that the purchasers often knows with whom they are dealing.
For example, each purchase of Applicant’s calibration services

17 Submitted with first Office Action.
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necessarily involves a careful process wherein the purchaser
must identify the manufacture and model of a specific
instrument and the desired manufacturer or governmental
standards for that instrument. As such, the high degree of care
exercised by professional or commercial consumers of
Applicant’s services is far from being a casual purchase.
Accordingly, a purchaser of Applicant’s services would be able to
distinguish between Applicant’s specialized calibration services
and registrant’s generalized engineering services. Similarly,
engineering services are not purchased on a whim by ordinary
consumers, but also purchased by highly sophisticated, careful
purchasers. Accordingly, the professional or commercial
consumers of Applicant’s services are sophisticated enough not
to create an incorrect assumption that the services at issue
originate from the same source.18

The problem with Applicant’s analysis is that it is not supported by any
evidence. Moreover, even a sophisticated consumer is not immune from source
confusion, and because the marks are identical in lettering, even a careful,
sophisticated consumer is not likely to note the differences in the marks.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000).
The du Pont factor addressing consumer purchasing conditions is neutral in our
analysis.
Lack of Actual Confusion
Applicant points out that there is no evidence of actual confusion between
Applicant’s and registrant’s services despite 14 years of concurrent use, based on
the first use dates listed in the application and the registration. Applicant’s
assertion of the absence of actual confusion in this ex parte proceeding is of little
probative value on the question of likelihood of confusion because we cannot readily
determine whether there has been a significant opportunity for actual confusion to

18 Applicant’s Brief at 15 - 16.
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have occurred, such that the absence of confusion is meaningful. See In re Opus One
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos U.S.A., 223 USPQ 1025
(TTAB 1984); In re Jeep Corp., 222 USPQ 333 (TTAB 1984). In addition, it is not
necessary to show actual confusion in order to establish likelihood of confusion. See
Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed.
Cir. 1990).
The du Pont factor regarding actual confusion therefore is neutral in our
analysis.
Conclusion
We find that the marks are similar and the respective services are related
and Applicant has not demonstrated that registrant’s mark is a weak mark. In
addition, we find that the du Pont factors regarding trade channels, customers,
purchasing conditions, and actual confusion are neutral in our analysis. In view
thereof, and after considering all of the arguments raised by both the Examining
Attorney and Applicant (including those arguments not specifically discussed
herein, which we do not find persuasive), we conclude that there is a likelihood of
confusion between Applicant’s mark and registrant’s mark.
Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.