Flowserve Management Company

Trademark Trial and Appeal Board

Sep 1, 2015

No. 86033484 (T.T.A.B. Sep. 1, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 1, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Flowserve Management Company
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Serial No. 86033484
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B. Joseph Schaeff of Dinsmore & Shohl LLP,
for Flowserve Management Company.
April E. Reeves, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Lykos, Shaw and Kuczma,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On August 9, 2013, Flowserve Management Company (“Applicant”) filed an
application to register on the Principal Register the mark U-MAG in standard
character format for goods ultimately identified as “industrial pumps, namely,
sealless magnetically driven plastic and metallic pumps with a thrust balancing
feature” in International Class 7.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground

1 Application Serial No. 86033484, filed under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a), alleging October 1, 1998 as the date of first use anywhere and in commerce.
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that Applicant’s mark so resembles the registered mark U SERIES in typed
format2 on the Principal Register for “centrifugal pumps” in International Class 7,
that, when used on or in connection with Applicant’s identified goods listed, it is
likely to cause confusion or mistake or to deceive.3 The registration includes a
disclaimer of the word SERIES apart from the mark as shown.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Trademark Examining Attorney denied the Request for
Reconsideration, the appeal was resumed. The appeal is now fully briefed.
Likelihood of Confusion Analysis
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). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods and services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24 (CCPA 1976). These factors are discussed below.

2 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. The mark on a typed drawing had to be typed entirely in capital letters. A typed
mark is the legal equivalent of a standard character mark. Trademark Manual of
Examining Procedure (“TMEP”) § 807.03(i) (July 2015).
3 Registration No. 1264726, registered on January 24, 1984; renewed.
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We commence our analysis with the second and third du Pont factors – a
comparison of the goods and established, likely-to-continue channels of trade.4 At
the outset we find that Applicant’s and Registrant’s goods are legally identical. This
is because we must compare Applicant’s and Registrant’s respective goods as they
are identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). Registrant’s broadly worded identification of
“centrifugal pumps” necessarily encompasses Applicant’s more narrowly identified
“industrial pumps, namely, sealless magnetically driven plastic and metallic pumps
with a thrust balancing feature.” The record shows that by definition, Applicant’s
magnetically driven industrial pumps are a specific type of centrifugal pump. Note
the following evidence made of record by the Examining Attorney:
• A Wikipedia entry entitled “Centrifugal pump” setting forth as a subcategory
“magnetic coupled pumps.” The entry notes that “magnetic coupled pumps” or
“magnetic drive pumps” differ from traditional centrifugal pumps insofar as “the
motor is coupled to the pump by magnetic means rather than by a direct mechanical
shaft. The pump works via a drive magnet, ‘driving’ the pump rotor, which is
magnetically coupled to the primary shaft driven by the motor. …” The entry also
discusses various advantages and disadvantages of magnetic drive pumps as
compared to traditional centrifugal pumps. (supplemental Office action dated
November 27, 2013, p. 8).5

4 Applicant has presented no arguments regarding the first and second du Pont factors in
its appeal brief. Nonetheless, we do not deem these issues conceded by Applicant; the Office
still bears the burden of proof.
5 See In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1382 n.2 (TTAB 2012)
(evidence obtained from Wikipedia considered because the non-offering party had an
opportunity to rebut the evidence).

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• Evidence that two third-parties offer for sale, respectively, “magnetically driven,
sealless, centrifugal pumps” and “centrifugal magnetic drive pump[s].” See excerpts
from Magnatex and Granger web sites (supplemental Office action dated November
27, 2013, pp. 3 and 10).
When the goods in question are of a technical nature, the Board may resort to
extrinsic evidence to determine or clarify how the term is used or understood in the
relevant industry or trade. See In re Edwards Life Sciences, 94 USPQ2d 1399
(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
determine the specific meaning of the description of goods.”). Thus, it is clear that
Applicant’s specialized goods are a mere subset of Registrant’s more broadly
delineated items.
Because the identifications of goods in the application and registration are
legally identical and unrestricted as to trade channels, we must also presume that
both Applicant’s and Registrant’s legally identical products travel in the same
ordinary trade and distribution channels and will be marketed to the same
potential consumers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908
(Fed. Cir. 2012) (even though there was no evidence regarding channels of trade
and classes of consumers, the Board was entitled to rely on this legal presumption
in determining likelihood of confusion); In re Yawata Iron & Steel Co., 403 F.2d 752,
159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same);
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American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Accordingly, the second and third
du Pont factors (the relatedness of the goods as described in the application and
registration and similarity of established, likely to continue trade channels) weigh
in favor of finding a likelihood of confusion.
Next we consider 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. Applicant argues
that purchasers of Applicant’s products are discriminating and knowledgeable
professional purchasers, given the nature of the goods and the relatively high price.
Applicant maintains that it amended its identification of goods to add the prefatory
language “industrial pumps, namely…” to make clear that the purchasers of
Applicant’s goods are not ordinary consumers but rather consumers with technical
knowledge in the field. Applicant also points to an advertising brochure for its
products showing various specialized applications for its industrial pumps such as
ultra-high purity manufacturing, water treatment, pharmaceutical manufacturing
and chemical processing. Applicant’s Request for Reconsideration dated November
7, 2014. As such, Applicant contends that because prospective purchasers of both
Applicant’s and Registrant’s goods are relatively sophisticated, they will be able to
distinguish the source.
Applicant’s arguments are unconvincing. On the record before us, there simply is
not enough evidence for us to find that consumers are likely to exercise more care in
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the purchase of these specialized types of products. Contrary to Applicant’s
assertion regarding the high price of the goods, the record shows that pumps used
for industrial purposes sell for approximately $110. See supplemental Office action
dated November 27, 2013, p. 10. That being said, even if we assume that
prospective purchasers do possess specialized knowledge and are not ordinary
members of the public, the fact that purchasers are sophisticated in a particular
field does not necessarily mean that they are sophisticated or knowledgeable in the
field of trademarks or immune from source confusion. See, e.g., Stone Lion Capital,
110 USPQ2d at 1163-64. We therefore deem this du Pont factor neutral.
We now direct our attention to the first du Pont likelihood of confusion factor,
which involves an analysis of the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (citation omitted). Our analysis cannot be predicated on dissecting the
marks into their various components; that is, the decision must be based on the
entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co.,
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667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark
should not be dissected and considered piecemeal; rather, it must be considered as a
whole in determining likelihood of confusion.”). Finally, we note that it is well-
settled that, where the goods are identical, typically less similarity is needed to
create a likelihood of confusion. See, e.g., Viterra, 101 USPQ2d at 1908; Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992) (“When marks would appear on virtually identical goods or services,
the degree of similarity necessary to support a conclusion of likely confusion
declines.”).
Applicant argues that the involved marks are different in sound, appearance,
meaning and commercial impression insofar as they each consist of a different
number of letters and syllables. Applicant also argues that the marks are distinct
because U-MAG is unitary due to its hyphen and U SERIES comprises two distinct
terms. Applicant further contends that the presence of “MAG” and “SERIES” in the
respective marks constitutes another distinguishing element based on the different
meanings of each term.
We acknowledge the differences in the marks pointed out by Applicant.
Nonetheless, we find that the letter “U” as the initial arbitrary term in both
Applicant’s and Registrant’s marks is dominant. In addition, Registrant has
disclaimed the descriptive word “SERIES.” Disclaimed matter generally will not
constitute the dominant part of a mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In re Nat’l Data Corp.,
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224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702
(TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”). The suffix “-MAG” in Applicant’s mark is highly
suggestive, if not descriptive, of Applicant’s magnetically driven industrial pumps.
For these reasons, the presence of these terms does little, if anything, to mitigate
the similarity in the marks. As explained by the Court of Appeals of the Federal
Circuit in weighing the dominance of an arbitrary initial term coupled with other
matter:
The Board correctly weighed the relative importance of VEUVE and
CLICQUOT. VEUVE is an arbitrary term as applied to champagne and
sparkling wine, and thus conceptually strong as a trademark. (internal
citation omitted). … To be sure, CLICQUOT is an important term in the
mark, but VEUVE nevertheless remains a “prominent feature” as the first
word in the mark and the first word to appear on the label. Not only is
VEUVE prominent in the commercial impression created by VCP’s marks,
it also constitutes “the dominant feature” in the commercial impression
created by Palm Bay’s mark. Veuve Clicquot Ponsardin, slip op. at 31-32
(VEUVE is first word in mark; significance of ROYALE is more laudatory
and less source-indicating than VEUVE or “widow”; arbitrary term
VEUVE contributes more to commercial impression of product than
ROYALE). The presence of this strong distinctive term as the first word in
both parties’ marks renders the marks similar, especially in light of the
largely laudatory (and hence non-source identifying) significance of the
word ROYALE.

Palm Bay, 73 USPQ2d at 1692.
We further find that Applicant’s use of a hyphen is of minimal importance to the
mark’s commercial impression. The hyphen is silent, and therefore does nothing to
distinguish it in sound from the registered mark.
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Applicant also argues that consumers are likely to focus less on the “U” in each
mark and more on the “SERIES” element of the Registrant’s mark because the
Registrant owns numerous “SERIES” marks preceded by alpha numeric
designations (for example, J SERIES, O SERIES, T SERIES, 10 SERIES, SF
SERIES) for the same types of goods identified in the cited registration here -
“centrifugal pumps.” See Request for Reconsideration dated November 7, 2014. To
the extent, if any, Applicant seeks to rely on the family of marks doctrine, it is
unavailable to applicants seeking to overcome a likelihood of confusion refusal in an
ex parte proceeding; the focus is on the mark an applicant is seeking to register and
not on any other marks the applicant may have used or registered. In re Cynosure,
Inc., 90 USPQ2d 1644, 1645 (TTAB 2009). By the same logic, other registrations
owned by a registrant in an ex parte proceeding are irrelevant because we are
obligated to focus on the applied-for mark and the cited registration.
In view thereof, we find that Applicant’s mark is similar in sound, appearance,
connotation and commercial impression to the cited registered mark. We therefore
find that the first du Pont factor weighs in favor of a likelihood of confusion.
Lastly, Applicant argues that the cited registration is not entitled to a broad
scope of protection, pointing to Registration No. 4063245 for the mark U-FLO for
various types of pumps, including “centrifugal pumps.” Applicant’s Response to
Office Action dated May 27, 2014. We cannot find, however, based solely on the
existence of a single third-party registration that Registrant’s mark is weak and
deserving of less protection. In any event, the Board is not bound by the prior
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decision of an examining attorney in allowing the foregoing mark for registration.
It has been noted many times that each case must be decided on its own facts. See
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)
(“Even if some prior registrations had some characteristics similar to [applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”).
After considering all of the evidence properly of record and arguments pertaining
to the du Pont likelihood of confusion factors, we find that there is a likelihood of
confusion between Applicant’s applied-for and Registrant’s registered marks.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.