Dioptics Medical Products, Inc.

Trademark Trial and Appeal Board

May 4, 2007

No. 78453049 (T.T.A.B. May. 4, 2007)

Mailed:
May 4, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re Dioptics Medical Products, Inc.
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Serial No. 78453049
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Derek J. Westberg of Westberg Law Offices for Dipotics
Medical Products, Inc.

Justine Parker, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Holtzman, Zervas and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Dioptics Medical Products, Inc. seeks registration on
the Principal Register of the mark H2OVERX (standard
character claimed) for goods identified as “sunglasses,
clip-on sunglasses, protective eyewear, eyeglass cases,
eyeglass chains, eyeglass cords, and eyeglass cleaning kits
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78453049
2
comprised of eyeglass cleaning cloths” in International
Class 9.1
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used with its identified goods, so
resembles the registered mark H2OPTIX (in typed form)
for “sunglasses, sunglass cases and related sunglass
products, namely, retainers and head-straps” in
International Class 9 as to be likely to cause confusion,
mistake or deception.2
When the refusal was made final, applicant appealed
and briefs have been filed. We affirm the refusal to
register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201

1 Application Serial No. 78453049, filed July 19, 2004, alleging
a bona fide intention to use the mark in commerce under Trademark
Act Section 1(b). 15 U.S.C. §1051(b).

2 Registration No. 2085815, issued August 5, 1997; Section 8 and
15 affidavit accepted and acknowledged.

Serial No. 78453049
3
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
As to the goods identified in the application and the
cited registration, they are identical (sunglasses) or
otherwise related (applicant’s goods, eyeglass cases,
sunglass cases, eyeglass chains, eyeglass cords, on the one
hand, and registrant’s goods, sunglass cases and sunglass
retainers and head-straps, on the other). Applicant
concedes that the “goods are identical at least in part
since both are for sunglasses.” Br. p. 3. Further, with
regard, at least, to the identical goods, we must presume
that they will be sold in the same channels of trade and
will be bought by the same classes of purchasers, while the
related goods will be sold in some of the same channels of
trade, and will be bought by some of the same purchasers.
See Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994). In view of the
above, the du Pont factors of the similarity of the goods
Serial No. 78453049
4
and the channels of trade favor a finding of likelihood of
confusion as to the cited registration.
With regard to the conditions of sale, we note that
these goods are general consumer items and may be purchased
without a great deal of care.
We now consider whether applicant’s mark, H2OVERX, and
the mark in the cited registration, H2OPTIX, are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
In making this determination we recognize that where the
goods are identical, “the degree of similarity [between the
marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 877, 23 USPQ2d 1698,
1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992).
Examining the marks in terms of their appearance,
sound, meaning, and commercial impression, we find the
marks to be similar. The test of likelihood of confusion
is not whether the marks can be distinguished when
subjected to a side-by-side comparison. The question is
whether the marks create the same overall impression.
Visual Information Inst., Inc. v. Vicon Indus. Inc., 209
USPQ 179 (TTAB 1980). We must determine whether the marks
are sufficiently similar that there is a likelihood of
Serial No. 78453049
5
confusion as to source and, in making this determination,
we must consider the recollection of the average purchaser
who normally retains a general, rather than specific,
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975).
Both marks begin with H2O and end with X and they have
the same number of letters. The only distinguishing
features are the different letters in the middle, VER and
PTI. Trademarks may be confusingly similar in appearance
despite the addition, deletion or substitution of letters.
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 81 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). In
addition, it is undisputed that the marks share the same
meaning in that H2O in both marks connotes water and
suggests some relevance of water to the goods, i.e., that
they are used in or near water. Both marks also telescope
the O in H2O with terms that begin with O, OPTIX and OVERX.
OPTIX is a slight misspelling of the word OPTIC which is
defined as “of or relating to the eye or vision” and “any
of the lenses, prisms, or mirrors of an optical
instrument.” The American Heritage Dictionary of the
Serial No. 78453049
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English Language (4th ed. 2000).3 Thus, this term in
registrant’s mark is, at least, somewhat suggestive. We
find that because the marks begin with same prefix H2O and
the other elements share some similarities in that they
both begin with O and end with X, the marks have a similar
overall commercial impression and the H2O connotation
overshadows any distinction that may be drawn from the
difference in OPTIX and OVERX.
We are not persuaded by applicant’s argument that the
marks differ in sound because H2OVERX has five syllables
and H2OPTIX has four syllables. There is no correct
pronunciation of a trademark and applicant’s mark also
could be pronounced in four syllables. Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461 (TTAB 1985).
Applicant also argues, based on the meaning of H2O and
OPTIX, that the mark in the cited registration is weak.
There is no evidence of third-party use or registration of
the mark H2O for these or any types of goods. While
H2OPTIX may be somewhat suggestive, and, thus, not afforded
a broad scope of protection, given that we have identical
general consumer goods which may be purchased without a

3 The examining attorney’s request that the Board take judicial
notice of this dictionary definition is granted. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Serial No. 78453049
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great deal of care, the protection afforded this mark
certainly encompasses these circumstances. King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974) (even a weak mark is entitled to protection
against the registration of a similar mark for closely
related goods or services).
In conclusion, we find that because of the identical
and closely related goods, identical and/or overlapping
overlap in trade channels, the conditions of sale of a
general consumer item, and the close similarities in the
marks, confusion is likely between applicant’s mark and the
mark in the cited registration. To the extent there are
any doubts, we resolve them, as we must, in registrant’s
favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6
USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section
2(d) of the Trademark Act is affirmed.