Degussa-Hüls AG

Trademark Trial and Appeal Board

Mar 22, 2001

No. 75411277 (T.T.A.B. Mar. 22, 2001)

03/22/01
Paper No. 16
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Degussa-Hüls AG1
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Serial No. 75/411,277
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William F. Rauchholz of Smith, Gambrell & Russell, LLP
for Degussa-Hüls AG.
Barney L. Charlon, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Wendel, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Degussa AG, now merged into Degussa-Hüls AG, has filed
an application to register the mark SYMBIOBOND for
“precious metal alloy for tooth replacements.”2
1 The merger of the original applicant, Degussa AG, with Degussa-
Hüls AG has been recorded by the Assignment Branch at Reel 1983,
Frame 0290.
2 Serial No. 75/411,277, filed December 29, 1997 under Section
44(e), based on German Registration No. 397 32 626, granted
August 25, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/411,277
2
Registration has been finally refused under Section
2(d) of the Trademark Act on the ground of likelihood of
confusion with the following registered marks, all owned by
the same entity:
BIOBOND3 for “dental gold, gold solder and
porcelain for use in fabricating
intra-oral composite custom dental
restorations”;
BIOBOND4 for “ceramic bonding alloy for use
in making dental crowns and
bridges, and for solder and flux
used therewith”; and
BIOBOND II5 for “metal ceramic bonding dental
alloy for use in making crowns and
bridges.”
The refusal has been appealed and applicant and the
Examining Attorney have filed briefs. An oral hearing was
requested but the request was later withdrawn.
We make our determination of likelihood of confusion
on the basis of those of the du Pont factors6 which are
relevant under the circumstances at hand and for which
evidence is of record. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000). Two key
3 Registration No. 917,737, issued August 3, 1971, Section 8 & 15
affidavits accepted and acknowledged, respectively; first
renewal.
4 Registration No. 1,143,861, issued December 23, 1980, Section 8
& 15 affidavits accepted and acknowledged, respectively.
5 Registration No. 1,258,235, issued November 22, 1983, Section 8
& 15 affidavits accepted and acknowledged, respectively.
Ser No. 75/411,277
3
considerations in any likelihood of confusion analysis are
the similarity or dissimilarity of the respective marks and
the similarity or dissimilarity of the goods or services
with which the marks are being used. See In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999)
and the cases cited therein.
Looking first to the respective goods, we note that
applicant has failed to contest the Examining Attorney’s
argument that the goods of applicant and registrant are
closely related, in part, and identical in part.
Turning, however, to the similarity or dissimilarity
of the respective marks, applicant strongly takes issue
with the Examining Attorney. The Examining Attorney
maintains that applicant has simply added the prefix SYM-
to registrant’s BIOBOND mark, so that applicant’s mark
would be viewed as having the connotation “with BIOBOND.”
According to the Examining Attorney, the mere addition of
the term or prefix SYM is insufficient to alter the overall
commercial impression created by applicant’s mark so as to
“negate the confusing similarity between applicant’s and
registrant’s marks.” (Brief, p.4).
6 See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser No. 75/411,277
4
Applicant, on the other hand, argues that the marks,
when viewed in their entireties, are significantly
different not only in sound and appearance, but also in
meaning. Besides noting the obvious differences in
pronunciation and visual appearance of SYMBIOBOND and
BIOBOND, applicant argues that the term “symbio” (stemming
from “symbiosis”) has a meaning independent and distinct
from the term “bio.” Applicant contends that it has not
merely added a term, descriptive or otherwise, to
registrant’s mark, but rather has created a “completely new
fanciful term SYMBIOBOND.” (Brief, p.7).
We are in total agreement with applicant. The marks
SYMBIOBOND and BIOBOND differ not only in appearance and
sound, but also convey distinctly different connotations.
While the Examining Attorney argues that there is no
definition for the prefix “symbio” in the dictionary, there
are definitions for the terms “symbiosis” and “symbiotic.”7
We believe that the relevant purchasers here, namely those
in the dental profession, would recognize the differences
in connotation between the scientifically-oriented terms
7 We take judicial notice of the definitions of “symbiosis” as
“the living together of two dissimilar organisms” or as “any
interdependent or mutually beneficial relationship between two
persons, groups, etc.” The prefix “bio,” on the other hand, is
defined as “a combining form meaning ‘life’.” The Random House
Dictionary of the English Language (2nd ed. 1987).
Ser No. 75/411,277
5
“bio” and “symbio.” Thus, while the marks as a whole may
have no precise meanings, because of the recognizable
differences in the prefixes they would be evocative of
distinctly different commercial impressions. Contrary to
the position taken by the Examining Attorney, we do not
think potential purchasers would view the mark SYMBIOBOND
as consisting of the combination of SYM- with BIOBOND or as
having the connotation “with BIOBOND.” Instead we believe
the reasonable interpretation of applicant's mark would be
as the combination of the term SYMBIO- with the descriptive
suffix BOND, resulting in a markedly different commercial
impression from that resulting from the combination of the
prefix BIO- with the same descriptive suffix.
The difference in commercial impression created by
the marks becomes even more significant when we consider
the relevant purchasers and the conditions under which the
dental alloys would be sold. Applicant argues that the
goods would be sold to knowledgeable professionals after
careful consideration of the products, making confusion
less likely. We agree that the degree of sophistication of
the potential purchasers and the nature of the present
dental goods would result in a more careful perusal of the
goods and respective marks than that involved in a typical
purchase by an ordinary consumer. Even more significantly,
Ser No. 75/411,277
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as stated above, we believe these scientifically-oriented
purchasers would be even more apt to recognize the
difference in connotation between SYMBIOBOND and BIOBOND
and thus to readily distinguish between the two marks.
Here, despite the Examining Attorney’s arguments to the
contrary, the knowledge of the purchasers in their
particular field is highly relevant to their ability to
distinguish between the two marks and directly aids in
obviating confusion.
While applicant has also raised the matter of its
ownership of other marks containing the prefix SYMBIO-, we
find no need to reach any “family of marks” argument.
Applicant contends that consumers are likely to recognize
SYMBIO- dental goods as originating from applicant. We
would simply note, however, that applicant has failed to
support its contention with any evidence of promotion of
its various SYMBIO- marks as a family of marks, or of
recognition by relevant purchasers of the same.
Furthermore, the issue here remains the likelihood of
confusion of applicant’s mark SYMBIOBOND vis-à-vis
registrant’s marks. See In re Lar Mor International, Inc.,
221 USPQ 180 (TTAB 1983).
All in all, considering the distinct differences in
the commercial impressions created by the marks SYMBIOBOND
Ser No. 75/411,277
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and BIOBOND and the degree of sophistication of the
relevant purchasers, we find confusion unlikely, despite
the use of the respective marks on identical and closely
related goods.
Decision: The refusal under Section 2(d) is reversed.