DeRoyal Industries, Inc.

Trademark Trial and Appeal Board

Mar 7, 2001

No. 74665896 (T.T.A.B. Mar. 7, 2001)

HEARING: October 3, 2000
Paper No. 19
DEB
03/07/01
UNITED S
Trad
In
Mark S. Graham of L
Industries, Inc.
Howard B. Levine, T
(Tomas Vlcek, Manag
Before Quinn, Hohei
Judges.
Opinion by Bucher,
DeRoyal Indust
register the mark K
calcium alginate fi
Registration h
of the Trademark Ac
applicant's mark, w
mark CALGONATE, whi
1 Ser. No. 74/665
allegation of a bona
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.
TATES PATENT AND TRADEMARK OFFICE
________
emark Trial and Appeal Board
________
re DeRoyal Industries, Inc.
________
Serial No. 74/665,896
_______
uedeka Neely & Graham, P.C. for DeRoyal
rademark Examining Attorney, Law Office 115
ing Attorney).
_______
n and Bucher, Administrative Trademark
Administrative Trademark Judge:
ries, Inc. has filed an application to
ALGINATE for “wound dressings comprising
bers” in International Class 5.1
as been finally refused under Section 2(d)
t, 15 U.S.C. §1052(d), on the ground that
hen applied to its goods, so resembles the
ch is registered for “topical calcium
,896, filed on April 25, 1995, based upon an
fide intention to use the mark in commerce.
Serial No. 74/665,896
2
gluconate gel for the treatment of burns,” 2 also in
International Class 5, as to be likely to cause confusion, to
cause mistake or to deceive.
Applicant has appealed. Briefs have been filed and an
oral hearing was held before this Board. We affirm the
refusal to register.
Applicant argues, in urging that the refusal be reversed,
that both marks are highly suggestive and that the only shared
element, the common chemical suffix “-ate,” cannot induce
confusion because the dominant portions of the respective
marks (“KALGIN-” vs. “CALGON-”) are readily distinguishable as
to sound, meaning and appearance.
The Examining Attorney maintains that the marks are
similar, contending that applicant’s mark could well be
pronounced the same as registrant’s mark. The Examining
Attorney also contends that the goods are both “products in
the nature of calcium-based wound dressings” and hence are
closely related and travel in the same channels of trade to
the same classes of purchasers.
Our determination under Section 2(d) is based upon an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. See In re E. I. du Pont de Nemours & Co., 476 F.2d
2 Reg. No. 2,027,492, issued on December 31, 1996.
Serial No. 74/665,896
3
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the goods. It is well settled
that the issue of likelihood of confusion between applied-for
and registered marks must be determined on the basis of the
goods as they are identified in the involved application and
cited registration, rather than on what any evidence may show
as to the actual nature of the goods, their channels of trade
and/or classes of purchasers. Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
The goods need not be identical or even competitive in nature
to support a finding of likelihood of confusion. Instead, it
is sufficient that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with
the same producer or provider. See In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Serial No. 74/665,896
4
Applicant's wound dressings consist of a calcium alginate
fiber preparation. In this context, the term “wound” would
include burns. Registrant's product is a topical gel for
treating burns. Similarly, applicant concedes that its
product may be used in treating burns. While it is not clear
from the record whether or not registrant’s gel might be used
in conjunction with applicant’s dressings, both are materials
designed for wound care, and both will be used in the repair,
protection, healing and remediation of injured skin surfaces.
In sum, given the close relationship of the goods, and the
fact that they appear to be sold to ordinary consumers,
confusion is likely to occur if these items were to be sold
under similar marks.
We thus turn our attention to a comparison of applicant’s
KALGINATE mark and registrant’s CALGONATE mark. The Trademark
Examining Attorney argues that these two marks are similar in
sound and appearance:
Evaluated in their entireties, the marks
KALGINATE and CALCONATE are plainly similar in
appearance and sound and overall commercial
impression. They both have the same number of
letters, 9. They both have the same number of
vowels, 4. They both have the same number of
consonants, 5. They both contain the same
number of syllables, 3. All vowels and
consonants in the marks have the same
placement, which creates a high degree of
phonetic similarity. They both begin with the
same hard “K” sound, followed by the “ALG” and
concluding with the “-ATE” suffix. In fact,
Serial No. 74/665,896
5
every letter but two are identical in both
marks. The only difference in the appearance
of the marks is the K/C (which sound the same
…) and the O/I (which may very likely be
pronounced the same… ). This simple
examination of the marks establishes, prima
facia, that the marks are similar in sound and
appearance.
By contrast, applicant argues that the “-ATE” suffix is
generic and extremely diluted in this class of goods. Hence,
applicant contends that the dominant portions of the
respective marks are the first two syllables (KALGIN- and
CALGON-), and that they are each highly suggestive of
different types of goods –- KALGIN- of calcium alginate
dressings and CALGON- of a calcium gluconate-based ointment.
We begin our analysis of these marks by noting that each
appears to be a coined term. Even if these respective terms
may have suggestive components, we do not assume that the
average purchaser faced with applicant’s mark will be able to
decipher the origins of KALGIN- with calcium alginate, or when
seeing or hearing registrant’s mark, will readily recognize
CALGON- as suggesting a calcium gluconated-based product.
Viewing these two marks in their entireties, we agree
with the Trademark Examining Attorney that they are quite
similar as to appearance and sound. As pointed out by the
Trademark Examining Attorney, the two words are structured
quite similarly. As to sound, we begin with the postulate
Serial No. 74/665,896
6
that there is no correct pronunciation of a trademark, and the
difference in the middle letter of the respective marks,
between an “O” and an “I,” is a de minimis difference in
sound. If called for orally, the chance for confusion is
great.
Finally, although applicant has produced fifty-one
registrations in the field of medical preparations having the
“-ATE” suffix, this evidence demonstrates that there are no
third-party trademarks for related products which resemeble
either of these marks to the extent that the involved marks
are similar to each other.
In summary, we find these marks to be quite similar as to
sound and appearance, and we find the goods to be closely
related.
Decision: The refusal to register is affirmed.