Ferromatik Milacron India Private Limited

Trademark Trial and Appeal Board

Jun 9, 2014

No. 85856271 (T.T.A.B. Jun. 9, 2014)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ferromatik Milacron India Private Limited
_____

Serial No. 85856271
_____

John W. Gregg, Attorney at Law,
for Ferromatik Milacron India Private Limited.
Jennifer D. Richardson, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Quinn, Lykos and Shaw,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Ferromatik Milacron India Private Limited (“Applicant”) seeks registration on
the Principal Register of the mark ELEKTRON, in standard character format, for
“all-electric injection molding machines” in International Class 7.1
Applicant has appealed the Trademark Examining Attorney’s final refusal to
register the mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the

1 Application Serial No. 85856271, filed on February 21, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 85856271
- 2 -

following three registered marks each owned by a different entity that when used
on or in connection with Applicant’s identified goods, it is likely to cause confusion
or mistake or to deceive:
Registration No. 4029336 owned by Ushio America, Inc. for the mark U-
ELEKTRON, in standard character format, for “electron beam machines
comprising electron beam source emitters, exposure chambers, vacuum pumps
and electronic controllers for use in industrial, scientific, advanced
manufacturing applications, including, the curing of inks, coatings and
adhesives, surface treatment, materials engineering, and sterilization” in
International Class 7;2

Registration No. 3275586 owned by Tokyo Electron Limited for the mark
TOKYO ELECTRON, in standard character format, for “metal working
machinery” in International Class 7,3 and

Registration No. 2339103 owned by Blitzrotary GmbH for the mark
ELEKTRON for “electrically operated welding machines” in International Class
7.4

When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the Request for
Reconsideration, the Appeal was resumed. We reverse the refusal to register.
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). As a general proposition, in analyzing likelihood of confusion, two
key, although not exclusive, considerations are the similarities between the marks

2 Registered September 20, 2011.
3 Registered August 7, 2007, Sections 8 and 15 affidavits accepted and acknowledged.
4 Registered April 4, 2000, Sections 8 and 15 affidavits accepted and acknowledged;
renewed.
Serial No. 85

and the
Howard
some in
567. Se
F.2d 71
At th
the mar
impress
part, of
Imports
73 USP
term is
both its
strength
2006) (i
are own
2339103
oldest R
as “a ve
travels

5 Indeed
Enterpri
856271
similaritie
Paper Co
stances, o
e e.g., Elec
3, 21 USPQ
e outset w
ks in their
ion, Applic
the term
, Inc. v. Ve
Q2d 1689
a factor in
inherent
. Tea Boa
nternal cit
ed by thr
for the m
egistratio
ry small
around the

, in some ca
ses Inc., 95
s between
., 544 F.2
ther du Po
tronic Des
2d 1388,
e acknowl
entiretie
ant’s and
ELEKTRO
uve Clicq
(Fed. Cir
our analy
strength b
rd of India
ations omi
ee differe
ark ELEK
n of the th
particle of
nucleus o

ses, a sing
1 F.2d 330,
the goods
d 1098, 1
nt factors
ign & Sal
1391 (Fed.
edge that i
s as to app
Registrant
N or the
uot Ponsar
. 2005). H
sis. In det
ased on t
v. Republ
tted). We
nt entities
TRON, w
ree cited
matter th
f an atom
le factor m
21 USPQ2d
- 3 -
or service
92 USPQ
may also
es Inc. v. E
Cir. 1992)
n compari
earance, s
s’ marks a
phonetic
din Maiso
owever, th
ermining t
he nature
ic of Tea, I
observe th
. We furt
hich is id
Registratio
at has a
.” See the
ay be dispo
1142 (Fed
s. See Fed
24, 29 (C
be pivotal
lectronic
.5
ng the sim
ound, con
re compri
equivalen
n Fondee
e relative
he strengt
of the ma
nc., 80 US
at the thre
her observ
entical to
ns. The w
negative
online ver
sitive. See e
. Cir. 1991)
erated Foo
CPA 1976
. du Pont,
Data Syste
ilarity or d
notation a
sed, either
t thereof.
En 1772, 3
strength
h of a ma
rk itself a
PQ2d 188
e cited reg
e that Re
Applicant
ord “elect
charge of
sion of Me
.g., Kellogg
.
ds, Inc. v.
). Howeve
177 USP
ms Corp.,
issimilari
nd comme
in whole o
See Palm
96 F.3d 1
of this sh
rk we cons
nd its ma
1, 1889 (T
istered m
gistration
’s mark, is
ron” is def
electricity
rriam Web
Co. v. Pac
Fort
r, in
Q at
954
ty of
rcial
r in
Bay
369,
ared
ider
rket
TAB
arks
No.
the
ined
and
ster
k'em
Serial No. 85856271
- 4 -

dictionary at www.merriam-webster.com.6 It therefore appears that the term
“elecktron” or the phonetic equivalent thereof as applied to machinery is weak, and
at best highly suggestive of Applicant’s and Registrants’ goods. This factor weighs
in favor of not finding a likelihood of confusion.
With regard to the second du Pont factor, the similarity or dissimilarity of the
goods as described in the Application and Registrations, the Examining Attorney
submitted evidence, including third-party registrations and web sites, to show that
the same entity provides Applicant’s and Registrants’ respective goods under the
same mark, and that such goods are sold to the same end-users -- manufacturers. In
addition, the Examining Attorney contends that Applicant’s “all-electric injection
molding machines” are related to the machinery equipment sold under the
registered marks U-ELEKTRON and TOKYO ELECTRON because they are all
used in the manufacture of plastics. We are not persuaded. Here the only true
similarity between Applicant’s and Registrants’ goods are that they all fall under
the general category of machinery used in the manufacturing industry, and may in
some instances be used to produce goods comprised of the same material. As
identified, each of Applicant’s and Registrants’ machines performs quite different
functions. Applicant’s machines produce molded articles. By contrast, Registrant’s
goods under the U-ELEKTRON mark are electron beam machines used to produce

6 This Board may take judicial notice of dictionary definitions, including definitions in
technical dictionaries, translation dictionaries and online dictionaries which exist in
printed format. See, e.g., In re Future Ads LLC, 103 USPQ2d 1571, 1572 (TTAB 2012)
(judicial notice taken of definition from online dictionary stating it was from a specified
print dictionary); In re Premiere Distillery LLC, 103 USPQ2d 1483, 1484 (TTAB 2012)
(judicial notice taken of online dictionary reference based on Random House Dictionary).
Serial No. 85856271
- 5 -

a variety of goods; Registrant’s goods under the TOKYO ELECTRON mark are
metal working machines used for cutting or joining pieces of metal; and Registrant’s
goods under the ELEKTRON mark are electrically operated welding machines
used for joining pieces of metal. This factor also weighs against finding a likelihood
of confusion.
More importantly, we find critical here the fourth du Pont factor, the conditions
under which the goods are likely to be purchased, e.g., whether on impulse or after
careful consideration, as well as the degree, if any, of sophistication of the
consumers. As identified, Applicant’s and Registrants’ machines are not the typical
consumer products sold in the traditional wholesale or retail outlets (i.e. stores,
online websites) to the average consumer. Rather, the goods at issue here are
specialized types of machinery used in the manufacturing industry, and therefore
require considerable care to select the appropriate product suitable for the intended
manufacturing application. Consistent therewith, Applicant introduced into the
record the affidavit of Andrew Keith Stirn, Applicant’s “Global All Electric Product
Manager for the marketing and sale of injection molding machinery products”
explaining the nature of Applicant’s goods, cost and conditions of sale. See Edwards
Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010)
(“However, applicant has submitted extrinsic evidence to demonstrate the meaning
of its description of goods, not to restrict or limit the goods. Where, as here,
applicant's description of goods provides basic information, and the goods are of a
technical nature, it is entirely appropriate to consider extrinsic evidence to
Serial No. 85856271
- 6 -

determine the specific meaning of the description of goods.”). The affidavit states in
relevant part:
2. In general, injection molding machines process raw materials to produce
molded articles by (1) conditioning raw materials in the form of pellets and/or
powder to produce a flowable homogenous mass; accumulating a predetermined
volume of the mass; forcing the predetermined volume into mold cavities formed
by engagement of mating mold members; allowing the material to cure within
the mold cavities sufficiently to permit handling without deformation; and
disengaging the mating mold members to permit removal of the molded articles.
…
4. Injection molding machines are supplied directly to end users and supplied
through machinery resellers. End users include independent contract (“custom”)
molders that mold articles designed by their (unrelated) end customers; and,
“captive molders” that supply molded articles designed by affiliated businesses.
Injection molded articles are found in a wide spectrum of goods including:
general consumer goods such as personal care products, computer products,
personal communication products, containers and packaging for
pharmaceuticals, food and beverages; recreational items and toys; appliance and
furniture components, hardware and plumbing items, electrical, refrigeration
and HVAC enclosures; and in items used in all types of transportation (wheeled
vehicles, aircraft, floating vessels, rail), and in military devices (weapons,
communications equipment, elements of uniforms, protective gear); and in
medical devices and laboratory equipment.

5. On information and belief, Applicant’s goods are offered at base prices in
excess of $200,000 per injection molding machine. Purchasers normally rely on
purchasing agents specializing in procurement of injection molding machinery
who are informed by the intended application(s) of the purchaser and the
supplier’s machinery and equipment specifications. Machine selection depends
on characteristics of the material to be processed, the size of the articles to be
produced, injection capacity (capacity of material accumulation and purge
(forced transfer to mold cavities)) and clamp force required to contain material
within mold cavities. Auxiliary equipment for conditioning and conveying raw
material as well as handling of molded articles can add significantly to the
complexity of procurement. Because of the costs involved and the complexities of
machinery and equipment selection, purchasers must justify their expenditures
for machinery and equipment on the basis of overall return on investment with
consideration given to initial costs of procurement, costs of operation and
maintenance and depreciated value at the time of divestiture of machinery and
equipment procured.

Serial No. 85

It is
equipme
high lev
complex
product
purchas
expensiv
expendi
investm
injection
the casu
custom
purchas
whom w
It al
“captive
machine
also be
knowled
they wo
For t
this cas
856271
clear tha
nt manda
el of spec
and requ
s to be p
e. It is a
e at base
ture whic
ent. Obvio
molding
al consum
molders
ing agent
e treat as
so appear
” molders
ry. Howev
prospecti
geable ab
uld be able
hese reas
e. See Elec
t the int
tes not on
ialized ex
ires consi
roduced,
lso clear
prices exce
h would
usly, due
machines”
er. Rathe
and “capti
s specializ
highly kno
s that the
, are distin
er, even if
ve purcha
out manu
to disting
ons, we fin
tronic Des
rinsic nat
ly careful,
pertise. In
deration o
injection
that App
eding $20
be carefu
to their h
are not th
r, the ult
ve molde
ing in pr
wledgeabl
ultimate
ct from t
we were
sers of R
facturing
uish the s
d the four
ign & Sale
- 7 -
ure of Ap
deliberati
deed, the
f multiple
capacity a
licant’s m
0,000, the
lly resear
igh cost a
e types o
imate con
rs,” who
ocuremen
e, sophisti
end users
he purcha
to assume
egistrants
equipment
ource of ea
th du Pon
s Inc., 21
plicant’s g
ve purcha
purchasi
variables
nd clamp
anufactur
reby maki
ched and
nd special
f item tha
sumer of
in turn r
t of inject
cated purc
of Applic
sers of Re
that these
’ goods, b
and pos
ch product
t factor to
USPQ2d a
oods as
sing decisi
ng proces
(such as t
force) un
ing equip
ng it a sign
vetted f
ized natur
t would be
Applicant’
ely on th
ion moldi
hasers.
ant’s good
gistrants’
same pur
ecause th
sess techn
.
play a do
t 1391 (“so
manufactu
ons but al
s is unusu
he size of
ique to
ment is q
ificant ca
or return
e, “all-ele
purchase
s products
e expertis
ng machi
s, custom
other type
chasers w
ey are hi
ical exper
minant ro
phisticatio
ring
so a
ally
the
each
uite
pital
on
ctric
d by
are
e of
nery
and
s of
ould
ghly
tise,
le in
n is
Serial No. 85856271
- 8 -

important and often dispositive because sophisticated consumers may be expected
to exercise greater care;” finding no likelihood of confusion resulting from the
contemporaneous use of E.D.S. and EDS despite the fact that “the two parties
conduct business not only in the same fields but also with some of the same
companies.”). See also J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 23:101 (4th ed. 2009) (“Where the relevant buyer class is composed
solely of professional, or commercial purchasers, it is reasonable to set a higher
standard of care than exists for consumers.”). Accordingly, we find that the Office
has not satisfied its burden of proving that confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is reversed.