Diamond

Trademark Trial and Appeal Board

Jul 21, 2009

No. 76670805 (T.T.A.B. Jul. 21, 2009)

Mailed:
July 21, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Diamond
________

Serial No. 76670805
_______

Myron Amer of Myron Amer, P.C. for Nevin Diamond.

Mark V. Sparacino, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Seeherman, Walters and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Nevin Diamond (Applicant) has applied to register the
mark NAVI-CLEAN in standard characters on the Principal
Register for goods now identified as “disposable wipes
impregnated with cleansing compounds for wiping clean flat
computer screens” in International Class 3.1

1 Application Serial No. 76670805, filed December 26, 2006, based
on Applicant’s statement of a bona fide intention to use the mark
in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76670805
2
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. 1052(d), on the
grounds that Applicant’s mark is likely to be confused with
the mark shown below in Registration No. 2207204 for
“disposable impregnated paper tissue for use in cleaning
objects and surfaces” in International Class 21. The
registration issued on June 24, 2008.

The Examining Attorney has also refused to accept
Applicant’s proposed amendment to the identification of
goods on the grounds that the proposed amendment, discussed
below, would broaden the identification of goods in
violation of Trademark Rule 2.71(a), 37 C.F.R. § 2.71(a).
Applicant has appealed from both refusals. Applicant
and the Examining Attorney have filed briefs. We affirm as
to both grounds.
The Identification of Goods
Applicant identified his goods as “wipes to clean
computer screens” in International Class 21, when he filed
the application. In the first Office action, the Examining
Attorney required Applicant to clarify the identification.
In compliance with that requirement, in a response dated
Serial No. 76670805
3
May 18, 2007, Applicant requested amendment of the
identification of goods to “disposable wipes impregnated
with cleansing compounds for wiping clean flat computer
screens” in International Class 3, which we will refer to
as the “operative” identification of goods. In the Office
action which immediately followed that response, dated June
18, 2007, the Examining Attorney stated, “The amendment to
the identification is accepted.”
In a later response, dated October 10, 2008, Applicant
requested further amendment of the identification of goods
to “cleaning preparations, namely, cloths chemically and
not chemically treated to clean flat display screens, and
not non-flat objects and surfaces” in International Class
5, which we will refer to as the “proposed” identification
of goods.2
In the Office action which immediately followed this
response, dated October 31, 2008, the Examining Attorney
advised Applicant that his proposed amendment was
unacceptable because it broadened the operative
identification, that is, the identification applicant
requested on May 18, 2007, and the Examining Attorney
accepted on June 18, 2007, “disposable wipes impregnated
Serial No. 76670805
4
with cleansing compounds for wiping clean flat computer
screens.” The Examining Attorney explained that the
operative identification limited the identification to
products which are both “disposable” and “impregnated with
cleaning compounds.” In the action the Examining Attorney
also explained that the proposed identification would
broaden the scope of the operative identification by
removing these limitations.3 In his brief the Examining
Attorney also argues that the amendment from “flat computer
screen” in the operative identification to “flat display
screens” in the proposed identification would also
impermissibly broaden the operative identification of
goods.
In his appeal brief Applicant complicates matters
still further. With his brief, Applicant placed in the
record a copy of a letter from Applicant to his attorney,
Myron Amer. The Examining Attorney states explicitly in
his brief that he does not object to the inclusion of this
evidence which might otherwise be excluded as late-filed.
The letter is dated September 22, 2008 and, therefore, it
followed Applicant’s filing of the operative identification

2 The Class 5 classification proposed by Applicant covers medical
goods; applicant did not explain why the proposed identification
would fall into this class.
3 The Examining Attorney also advised Applicant that the proper
class is International Class 3, not 5.
Serial No. 76670805
5
on May 18, 2007, and preceded the filing of Applicant’s
proposed identification on October 10, 2008, the further
amendment the Examining Attorney has rejected. In the
letter Applicant explains to Mr. Amer that he is concerned
with the identification of goods and states, “The Navi-
Clean is NOT ‘disposable’ and they are to clean ‘GPS
NAVIGATION SCREENS’ NOT computer screens like it says.”
(Emphasis in the original). Applicant states further, “The
Exact Description of Goods and Services I Would Have Used
Was: ‘Specially Treated and Non Treated Cloths Designed to
Clean GPS Navigations (sic) Screens.’”
In his main brief Mr. Amer argues that the proposed
amendment to the identification of goods “… was to
implement Applicant’s instruction as expressed to the
trademark attorney….” Applicant’s Main Brief at 2.
Applicant’s letter to Mr. Amer also refers to a
conversation Applicant, not Mr. Amer, apparently held with
the Examining Attorney. In that regard, the letter from
Applicant to Mr. Amer states, “I spoke with Mark Sparacino
in regard to the suspension. He was very nice and told me
the same thing you did as far as still being able to use
the ‘TM’. I expressed my concern with the fact that the
description of goods and services is incorrect.”
Serial No. 76670805
6
Based on this statement in the letter from Applicant
to Mr. Amer, in his reply brief Mr. Amer states, “Whether
intended or not, Examiner Sparacino endorsed the amendment
to goods and if such amendment expands the scope (which
applicant’s counsel argues otherwise) it is not correct to
state ‘Applicant provides no explanation as to why the
proposed amendment to the identification of goods does not
expand the scope of the accepted identification (citation
omitted).’”
First, we find no basis in Applicant’s letter to Mr.
Amer to conclude that the Examining Attorney in any way
“endorsed” or even considered any amendment in a
conversation with Applicant. For that reason, among
others, we decline to give any consideration to the remarks
regarding the identification of goods in the letter from
Applicant to Mr. Amer. See, e.g., Trademark Manual of
Examining Procedure § 601.02 (5th ed. 2007). More
importantly, Mr. Amer, acting as the duly appointed
attorney for Applicant, filed the two amendments in
question in accordance with that appointment, the operative
identification filed on May 18, 2007 and the proposed
identification filed on October 10, 2008. We must and will
confine our consideration to those two identifications, the
only amendments which are of record.
Serial No. 76670805
7
Trademark Rule 2.71(a) states, “The applicant may
amend the application to clarify or limit, but not to
broaden, the identification of goods and/or services.”
Furthermore, in In re Swen Sonic Corp., 21 USPQ2d 1794
(TTAB 1991), the Board first considered the legal issue
presented here, that is, whether it is proper to look to
the original identification of goods or an accepted,
amended identification of goods in determining whether a
subsequent, further amendment would broaden the
identification in violation of Trademark Rule 2.71(a). In
that case the Board stated, “… applicant narrowed its
identification of goods to read ‘ultrasonic-activated
bathtubs’ in Class 11. Subsequently, applicant attempted
to revoke the amended identification of goods and
substitute ‘ultrasonic cleaning tanks’ in Class 9. Since
the proposed identification of goods neither narrowed nor
clarified the identification of goods, the examining
attorney's refusal to accept the substitute identification
of goods is affirmed.” Id. at 1796. Thus, it is the
accepted amended identification of goods which controls for
the purpose of determining whether a subsequent proposed
amendment may broaden the identification.
Under the Swen Sonic standard we conclude that
Applicant’s proposed identification of goods would broaden
Serial No. 76670805
8
the operative identification, that is, the identification
Applicant had filed earlier and which the Examining
Attorney had accepted. We agree with the Examining
Attorney that the proposed amendment would broaden the
operative identification by deleting the limitation to
“disposable” wipes and by expanding the scope from “wipes
impregnated with cleansing compounds” to “cloths chemically
and not chemically treated.”
Accordingly, for the purposes of our consideration of
the likelihood-of-confusion refusal, the operative
identification of goods is “disposable wipes impregnated
with cleansing compounds for wiping clean flat computer
screens in International Class 3.”
Likelihood of Confusion
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion….” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977), sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods in
Serial No. 76670805
9
the application and the cited registration. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976)(“The 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.”).
Applicant’s arguments regarding likelihood of
confusion are so brief that we quote them in their
entirety. In his main brief Applicant argues:
… it is respectfully submitted that applicant’s
mark and the noted registrant’s mark, to wit:
NAVI-CLEAN and NAVI-WIPE (underlinings added)
differ in their second words “clean” and “wipe”
which, applicant contends, obviates any
likelihood of confusion and also because of the
caveat exclusion in applicant’s recited goods of
“non-flat objects and surfaces.”

The differences in the goods, despite the
common use of NAVI, obviate the likelihood of
confusion. To this end, applicant relies on TMEP
§1207.01(2)(i):

If the goods or services in
question are not related or marketed in
such a way that they would be
encountered by the same persons in
situations that would create the
incorrect assumption that they
originate from the same source, then,
even if the marks are identical,
confusion is not likely. (Citing Local
Trademarks, Inc. v. Handy Boys Inc., 16
USPQ2d 1156 (TTAB 1990), Quartz
Radiation Corp. v. Comm/Scope Co., 1
USPQ2d 1668 (TTAB 1986).

Serial No. 76670805
10
Applicant’s position is that on the record,
it would have to, BUT HAS NOT BEEN. (sic)
established that the respective goods are
marketed in a way that they would be encountered
in a situation that would create the incorrect
assumption that they originate from the same
source (underlining added).

Applicant’s Brief at 2-3.
In his Reply Brief Applicant argues further:
It is apparent that both applicant and
registrant use NAVI as short for NAVIGATIONAL,
the full word NAVIGATIONAL being known by common
experience to be in common use in the trade for
GPS, i.e. Global Positioning Satellite.

As such, the short form for Navigational,
namely NAVI is not dominant over the words CLEAN
and WIPE, based solely on the Examining
Attorney’s assertion, an assertion which is
certainly not proved by the dictionary
definitions of CLEAN and WIPE.

In the context of the recited goods, the
meanings of CLEAN and WIPE are radically
different. CLEAN, to remove a “spot” hardened on
a screen would require a cloth, chemically or not
chemically treated, whereas a disposable paper
tissue would not.

The respective marks ending in the words
CLEAN and WIPE are sufficiently different in
appearance, sound and meaning to obviate the
likelihood of confusion, and accordingly, it is
respectfully requested that the Final Refusal
should be overruled.

Applicant’s Reply Brief at 2.
On the other hand, the Examining Attorney argues that
the goods in the application and the cited registration, as
identified, are identical. The Examining Attorney also
Serial No. 76670805
11
argues that the respective marks, NAVI-CLEAN and NAVI-WIPE,
are similar because each begins with NAVI, because NAVI is
dominant in each of the marks in that CLEAN and WIPE are
highly descriptive and consequently relatively weak.
First we consider the respective goods. The goods in
the application and the cited registration need not be
identical to find likelihood of confusion under Section
2(d) of the Trademark Act. They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the goods originate from the same source.
See On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods we must consider
the goods as identified in the application and
registration. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
Serial No. 76670805
12
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”).
Applicant’s goods are identified as “disposable wipes
impregnated with cleansing compounds for wiping clean flat
computer screens” in International Class 3. The goods in
the cited registration are identified as “disposable
impregnated paper tissue for use in cleaning objects and
surfaces.”
We conclude that the respective goods, as identified,
are, at least in part, overlapping and identical. The
goods identified in the cited registration encompass the
goods identified in the application.
Also, we reject Applicant’s argument with regard to
the differences in the marketing of the respective goods.
In view of the fact that the goods as identified are, at
least in part, overlapping and identical, and in the
absence of any trade-channel limitations in either
identification, we must also conclude that the respective
goods are marketed to the same potential purchasers through
the same trade channels. See Interstate Brands Corp. v.
Serial No. 76670805
13
McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000); and In re
Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Before proceeding to consider the marks, we note that,
“the degree of similarity [between the marks] necessary to
support the conclusion of likely confusion declines” when
the goods or services are identical. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506 U.S.
1034 (1992).
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.”
Serial No. 76670805
14
We find Applicant’s arguments with regard to the marks
unpersuasive. We have no basis to conclude, on this
record, that NAVI is a recognized abbreviation for
NAVIGATIONAL. Also, on this record there is no basis on
which to conclude that potential purchasers would associate
either NAVI or NAVIGATIONAL with the goods identified in
either the application or the cited registration. Neither
identification makes specific reference to any navigational
devices, GPS or otherwise.
In view of Applicant’s failure to provide any evidence
to support his position, we find Applicant’s dismissive
attitude toward the Examining Attorney’s evidence regarding
the descriptive meanings of “clean” and “wipe” particularly
unpersuasive. In fact, we do not even need to resort to
the dictionary definitions the Examining Attorney provided
to conclude that “clean” and “wipe” are highly descriptive
of the goods at issue here. Applicant himself used the
terms “clean” and “wipe(s)” in identifying his own goods
when he filed the application and again in the amended,
operative identification of goods. See also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
Therefore, we conclude that NAVI is the dominant term
in each of the marks at issue. We also note that NAVI
appears first in each of the marks. Presto Products, Inc.
Serial No. 76670805
15
v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988)(“… [it is] a matter of some importance since it is
often the first part of a mark which is most likely to be
impressed upon the mind of a purchaser and remembered.”).
We also reject Applicant’s contention that “clean” and
“wipe” so differ in connotation or commercial impression
that they distinguish the marks. Each conveys, in an
obvious way, the purpose of the relevant products. We find
no distinction between the connotation or commercial
impressions of the respective marks.
When we view the respective marks in their entireties,
we conclude that NAVI-CLEAN and NAVI-WIPE are similar in
appearance, sound, connotation and commercial impression.
The Procter & Gamble Company v. Conway, doing business as
The Certified Chemical and Equipment Co., 419 F.2d 1332,
164 USPQ 301 (CCPA 1970) (MISTER STAIN for a stain removing
compound held confusingly similar to MR. CLEAN for a
cleanser and detergent and similar products); The Procter &
Gamble Company v. Lewis Research Labs Co., Inc., 222 USPQ
359 (TTAB 1984) (MR. RUST for rust and stain remover held
confusingly similar to MR. CLEAN for sudsing cleaner,
cleanser, and detergent).
Finally, after considering all evidence and arguments
bearing on the du Pont factors, we conclude that there is a
Serial No. 76670805
16
likelihood of confusion between Applicant’s NAVI-CLEAN mark
when used in connection with “disposable wipes impregnated
with cleansing compounds for wiping clean flat computer
screens” in International Class 3 and the registered NAVI-
WIPE mark used in connection with “disposable impregnated
paper tissue for use in cleaning objects and surfaces” in
International Class 21.
Decision: We affirm the refusal under Trademark Act
Section 2(d), and we affirm the refusal to permit the
proposed amendment to the operative identification of goods
under Trademark Rule 2.71(a).