Formax, Inc.

Trademark Trial and Appeal Board

Oct 14, 2009

No. 77298497 (T.T.A.B. Oct. 14, 2009)

Mailed:
October 14, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Formax, Inc.
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Serial Nos. 77298497 and 772985011
_______

Sean Fifield and Christine E. Obrochta of Locke Lord
Bissell & Liddell LLC for Formax, Inc.

Christina Brightmire King, Trademark Examining Attorney,
Law Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Walsh and Ritchie, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Formax, Inc. (applicant) has applied to register both
POWERMAX and POWERMAX4000 in standard characters on the
Principal Register for goods identified as “industrial
electric food processing machines, namely, machines for

1 We are deciding both referenced appeals in a single opinion
because the applications involve the same applicant and related
marks, POWERMAX (Serial No. 77298497) and POWERMAX4000 (Serial
No. 77298501), and because the appeals present the same issue.
The records in the two applications and the appeals are virtually
identical; for convenience we will refer to the record in Serial
No. 77298501 in this opinion.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial Nos. 77298497 and 77298501
2
slicing food products for packing and packaging in
commercial quantities, and parts therefor” in International
Class 7. Both applications are based on applicant’s
statement of its bona fide intention to use the mark in
commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
In both applications, the Examining Attorney has
issued a final refusal under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), based on a likelihood of confusion
between applicant’s marks and the mark in Registration No.
2817553, POWERMAX in standard characters, registered on the
Principal Register for goods identified as “electric food
blenders” in International Class 7. The registration
issued on February 24, 2004, and it is active.
Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We reverse as to both
applications.
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
Serial Nos. 77298497 and 77298501
3
factors to consider in determining likelihood of confusion.
In that opinion, the Court also recognized that one factor
may be dominant in a particular case. Id.
In this case, the dominant factors are: Factor 2 -
the similarity or dissimilarity and nature of the
respective goods; Factor 3 - the similarity or
dissimilarity of the trade channels for the respective
goods; and Factor 4 - the conditions under which and the
buyers to whom sales are made, that is, a purchase based on
impulse versus a purchase undertaken with care by a
sophisticated purchaser. Id. In this case, these three
factors are not only closely related but essentially
inseparable. Accordingly, we will discuss these factors
together.
In general, the goods of the applicant and the
registrant need not be identical to find a likelihood of
confusion under Trademark Act Section 2(d). We may find
the goods to be related if the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the goods originate from or are
associated with the same source. See 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 cited
Serial Nos. 77298497 and 77298501
4
registration. 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.”).
The Examining Attorney argues, “Identical marks are
being used in food processing.” Examining Attorney’s Brief
at 5. The Examining Attorney argues further that we should
rely on the third-party registrations she has provided
which “… demonstrate that it is common practice to use the
same mark for electric food blenders and electric food
processing machines and/or electric food slicers.” Id.
The Examining Attorney also argues that applicant’s
identification of goods “… could encompass food slicers
used in other commercial facilities such as delis and
stores that utilize the packaging function.” Id. at 6.
In addition, the Examining Attorney argues that
applicant construes the identification of goods in the
cited registration too narrowly, and that the registrant’s
goods could include industrial food blenders. The
Examining Attorney argues still further that industrial
food blenders are related to applicant’s goods. The
Examining Attorney also relies on evidence from various
websites and other sources to support her position.
Serial Nos. 77298497 and 77298501
5
On the other hand, applicant argues that there are
vast differences between its goods and the goods identified
in the cited registration: “The Applicant’s Mark and the
Cited Mark attach to entirely distinct goods used by two
entirely different consuming groups. Applicant has
identified, and applies its mark to, a massive industrial
packing and packaging machine for use in a food packing and
packaging plant, whereas Braun [owner of the cited
registration] has identified an ordinary appliance (i.e.,
an ‘electric food blender’) in the Cited Registration.”
Applicant’s Brief at 8.
To support its position, among other evidence,
applicant has provided two affidavits from its Business
Development Manager to explain the nature of the goods
identified in its application, the channels of trade for
those goods, and the conditions related to the purchase.
See Affidavits of Brian Sandberg, dated July 15, 2007, and
February 20, 2009, attached to Reponses of July 17, 2008,
and February 22, 2009 respectively.
Applicant markets its goods through a dedicated sales
force to meat-packaging companies, food product
manufacturers, and their suppliers and subcontractors. The
particular machine to which the mark is applied lists for
$500,000.00. It weighs in excess of five tons, and its
Serial Nos. 77298497 and 77298501
6
dimensions are just over 177 ins. x 116 ins. x 74 ins. The
machine can process up to 3.6 tons of meat products per
hour and produce up to 120 stacks of sliced meat per
minute. Id.
Applicant delivers the machines by truck to a
manufacturing plant. The installation takes two days and
requires hookups to the plant’s electrical, water and air
systems. Applicant typically provides to the purchaser
five days of on-site training in the operation of the
machine. Id.
We find applicant’s arguments and evidence highly
persuasive. We recognize that the particular machine
applicant describes in detail is the largest such machine
it offers and that the identification of goods in the
application may include machines of smaller capacity and
machines which differ in other respects from the one
described. Nonetheless, the record indicates that the
machine is representative of the essential characteristics
of “industrial electric food processing machines, namely,
machines for slicing food products for packing and
packaging in commercial quantities, and parts therefor.”
See, e.g., Attachments to Applicant’s Response of February
23, 2009, from meatpoultry.com and wattpoultry.com.
Moreover, we likewise conclude that the Examining
Serial Nos. 77298497 and 77298501
7
Attorney’s construction of the applicant’s identification
of goods is overly broad and not supported by the evidence.
Applicant identifies its goods as “industrial electric
food processing machines, namely, machines for slicing food
products for packing and packaging in commercial
quantities, and parts therefor.” (emphasis added) In
presenting her arguments the Examining Attorney
consistently disregards or discounts the importance of the
terms “industrial” and “in commercial quantities.” The
Examining Attorney also tends to discount the fact that the
identification specifies that the machines both slice and
package the products. We construe the stated limitations
in applicant’s identification as effectively limiting the
goods to industrial machines performing both a slicing and
packaging function used in a food processing plant, as
applicant argues.
We base this construction on applicant’s affidavits
and the other evidence of record. In doing so we reject
the Examining Attorney’s contention that applicant has used
this evidence to limit its identification improperly beyond
the limitations stated in the identification. We conclude
that the evidence applicant provided sheds necessary light
on the significance of the identifications of goods at
issue here. In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB
Serial Nos. 77298497 and 77298501
8
1990) (“… when the description of goods for a cited
registration is somewhat unclear, as is the case herein, it
is improper to simply consider that description in a vacuum
and attach all possible interpretations to it when the
applicant has presented extrinsic evidence showing that the
description of goods has a specific meaning to members of
the trade.” (internal citations omitted)). See also In re
W.W. Henry Co., 82 USPQ2d 1213, 1215 (TTAB 2007). We have
considered applicant’s evidence in that light and not as an
improper attempt to restrict its goods as identified in the
application.
Likewise, the evidence of record fails to substantiate
the Examining Attorney’s contention that the goods
identified in the cited Braun registration, “electric food
blenders,” could include industrial equipment used in a
food processing plant. While goods identified in the cited
registration may not be as narrow as applicant contends,
neither is it reasonable to conclude that these goods could
include industrial food blending equipment.
When we view the record as a whole, it demonstrates
that “industrial” food blenders are distinct from “electric
food blenders.” Furthermore, even if we construed the
identification in the cited registration to include
industrial equipment, the record does not establish that
Serial Nos. 77298497 and 77298501
9
the industrial slicing and packaging machines identified in
the application would necessarily be related to industrial
electric food blenders.
In fact, the full record shows that there is a
category of appliances, including food slicers and electric
food blenders, which are suitable for home use, and a
category of appliances, also including food slicers and
electric food blenders, which are suitable for use in
retail and commercial establishments, such as, delis,
restaurants and food markets. Both categories are distinct
from the “industrial” category to which applicant’s goods
belong. The retail and commercial appliances are generally
for use on a counter top, small in size, and relatively
inexpensive, at least relative to applicant’s goods.2
The evidence suggests that these two categories of
products may be related or even overlap, but that is not
the question before us. The goods identified in the cited
registration are certainly in the former of these two
categories and likely also in the latter. Thus, we
conclude that both of these two categories could include

2 Based on a review of the prices of electric food blenders used
in households and light commercial settings shown in the record,
applicant asserts that they range in cost from $39.95 to
$1049.00. In like fashion, applicant asserts that the food
slicers of record range in cost from $179.00 to $6,191.00. Id.
at 5. Applicant’s Brief at 4. The Examining Attorney does not
dispute this analysis.
Serial Nos. 77298497 and 77298501
10
the goods identified in the cited registration, “electric
food blenders.” These goods are sold through conventional
retail and perhaps wholesale channels to a broad consumer
group including the general public and operators of retail
and commercial establishments.
The full record also shows that there is yet another
category of industrial equipment for use in slicing and
packaging food products, as well as for use in other
processing functions. This equipment is used in food
processing plants to produce packaged food on a commercial
scale. The finished packaged food ultimately may very well
be sold through retail delis and food markets. We conclude
that the goods identified in the application are in this
category, and further that this category is totally
distinct from the two categories of goods we discussed
above. This industrial equipment is generally sold
directly to the operators of food processing plants, a
distinct and sophisticated class of purchasers. In re
Shipp, 4 USPQ2d 1174, 1176 (TTAB 1987). It is also evident
that a high degree of care would attend the decision to
purchase the goods identified in the application and that
the potential purchasers, operators of food processing
plants, are sophisticated.
Serial Nos. 77298497 and 77298501
11
With regard to the Examining Attorney’s evidence, we
find the Examining Attorney’s reliance on the third-party
registrations misplaced. Not one of the registrations
covers the two specific types of goods identified in the
application and the cited registration. Accordingly, we
find the third-party registrations lacking in significant
probative value in this case.
We also concur with applicant in concluding that none
of the industrial equipment which the Examining Attorney
alleges to be within the scope of “electric food blenders”
is ever identified as such in the evidence of record.
Rather, this equipment is identified as “ribbon blenders,”
as “industrial food mixers” or in a similar manner which
effectively distinguishes this equipment from the goods
identified in the registration. See, e.g., Attachments to
Office Action of March 21, 2009, from ribbonblenders.com
and marionmixers.com. Again, in this analysis, we are not
imposing limitations on the identification in the cited
registration through extrinsic evidence, but merely
construing the identification in light of relevant evidence
and reason. Cf. In re Bercut-Vandervoort & Co., 229 USPQ
763, 764-765 (TTAB 1986).
We also reject the Examining Attorney’s reliance on
the text from the aptkitchen.com website. Id. The pages
Serial Nos. 77298497 and 77298501
12
from this site discuss the selection of “kitchen equipment”
primarily for homes. The discussion includes headings for
“The Medium Duty of the Economy Slicers” and “The Heavy
Duty Industrial Slicers.” The Examining Attorney argues
that this use of “Industrial” shows that applicant’s
identification of goods could include slicers for use in a
home or light commercial setting. Again, reliance on this
isolated, confusing use of “industrial” is misplaced. It
stands in stark contrast to the rest of the record. Also,
this use in no way corresponds to the totality of the
identification of goods in the application, “industrial
electric food processing machines, namely, machines for
slicing food products for packing and packaging in
commercial quantities, and parts therefor.”
Overall, we find the Examining Attorney’s evidence
insufficient to support the broad construction of the
identifications of goods in the application and the cited
registration the Examining Attorney urges us to adopt. In
fact, on balance, the Examining Attorney’s evidence
supports the construction applicant urges, and the
construction we adopt as most reasonable in this case.
Accordingly, we conclude that the goods identified in
the application and the cited registration are unrelated,
that the goods travel through distinct trade channels to
Serial Nos. 77298497 and 77298501
13
different classes of potential purchasers, and that the
potential purchasers of applicant’s goods are
sophisticated.
Applicant has also submitted copies of third-party
registrations – registrations for other POWERMAX marks – to
show that POWERMAX is a weak mark. We agree with the
Examining Attorney’s criticism of these registrations on
the grounds that they do not cover relevant goods.
Accordingly, we do not find this evidence probative and
have not relied on this evidence in reaching our decision
here. Cf. Knight Textile Corp. v. Jones Investment Co., 75
USPQ2d 1313, 1316-1317 (TTAB 2005).
As to the marks more generally, we conclude that
applicant’s POWERMAX mark is identical to the cited mark
and that applicant’s POWERMAX4000 mark is highly similar to
the cited mark. Nonetheless, we find that confusion is not
likely here, even in the case of identical marks, due to
the overriding, substantial differences between the
respective goods and channels of trade and the
sophistication of the purchasers of applicant’s goods.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any we have not
specifically discussed here, we conclude that there is not
a likelihood of confusion between applicant’s POWERMAX and
Serial Nos. 77298497 and 77298501
14
POWERMAX4000 marks when used in connection with “industrial
electric food processing machines, namely, machines for
slicing food products for packing and packaging in
commercial quantities, and parts therefor” and the
registered POWERMAX mark when used in connection with
“electric food blenders.”
Decision: We reverse the refusals to register
applicant’s marks under Trademark Act Section 2(d) in both
applications.