Freedom Scientific, Inc.

Trademark Trial and Appeal Board

Jul 28, 2016

No. 86251781 (T.T.A.B. Jul. 28, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: July 28, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board

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In re Freedom Scientific, Inc.

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Serial No. 86251781

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Debra Deardourff Faulk of Gray Robinson, P.A.
for Freedom Scientific, Inc.
Alison Keeley, Trademark Examining Attorney, Law Office 113,
Odette Bonnet, Managing Attorney.
_____

Before Zervas, Lykos and Kuczma,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
Freedom Scientific, Inc. (“Applicant”) seeks to register on the Principal Register
the mark XMag in standard characters for goods ultimately identified as “portable
magnifier in the nature of magnifying close-up camera for use in connection with a
computer monitor for low-vision users, namely low vision production and warehouse
Serial No. 86251781
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personnel to produce an enlarged image of an object for inspection purposes” in
International Class 9.1
The Trademark Examining Attorney refused registration of Applicant’s mark
pursuant to Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark (stylized)
for “[o]bjectives, namely, optical lenses, and optical lens assemblies comprising one
or more optical lenses and optical lens holders” in International Class 9,2 that, when
used on or in connection with Applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
When the refusal was made final, Applicant appealed and requested
reconsideration and offered a proposed amendment to its identification of goods. The
Trademark Examining Attorney maintained the refusal to register and after issuing
a new requirement to amend the identification of goods, ultimately denied the request
for reconsideration.3 Thereafter, the appeal was resumed and is now fully briefed.

1 Application Serial No. 86251781, filed April 14, 2014, under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
2 Registration No. 3580702, issued February 24, 2009 on the Principal Register; registered
pursuant to Trademark Act Section 66(a), 15 U.S.C. § 1141f(a); Section 71 and 15 affidavit
and declaration accepted and acknowledged. See Madrid Protocol Implementation Act of
2002, Pub. Law 107–273, 116 Stat. 1758, 1913–1921 (“MPIA”).
3 In the request for reconsideration, Applicant amended the original identification of goods
from “a portable electronic magnifier, namely, a close-up camera for use by production and
warehouse personnel to produce an enlarged image of an object for inspection purposes” to
“portable magnifier in the nature of magnifying camera for use in connection with a computer
monitor for low-vision users and for use by production and warehouse personnel to produce
an enlarged image of an object.” This prompted the Examining Attorney to issue a new
requirement based on the amended identification of goods, namely that Applicant amend the
identification of goods within the scope of the original wording in the application. Applicant
complied by amending the identification to the wording to “portable magnifier in the nature
of magnifying close-up camera for use in connection with a computer monitor for low-vision
Serial No. 86251781
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For the reasons set forth below, we affirm the Section 2(d) refusal.
I. Evidentiary Issue
Before addressing the substance of this appeal, we will consider the Examining
Attorney’s objection to Applicant’s submission of third-party registrations with its
main brief as untimely (Appendices A and B). Applicant acknowledges that the
registrations are late-filed, but contends that the Examining Attorney “specifically
pointed” to the evidence in her brief and relied upon the registrations in making her
determination.
Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d), provides in relevant part that
“[t]he record in the application should be complete prior to the filing of an appeal. The
Trademark Trial and Appeal Board will ordinarily not consider additional evidence
filed with the Board by the appellant or by the examiner after the appeal is filed.”
Untimely evidence may, however, be considered due to the actions of the non-offering
party despite its untimeliness if the non-offering party does not object to the new
evidence, and discusses the new evidence or otherwise affirmatively treats it as being
of record. Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) §
1207.03 (“Evidence Considered Due to Actions of NonOffering Party”) (2016). See,
e.g., In re Heeb Media LLC, 89 USPQ2d 1071, 1072 (TTAB 2008).
It is clear that the Examining Attorney timely interposed an objection to
Applicant’s late-filed evidence with her brief and did not rely on this evidence in

users, namely low vision production and warehouse personnel to produce an enlarged image
of an object for inspection purposes.”
Serial No. 86251781
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refusing registration of Applicant’s applied-for mark. Her reference to the late-filed
evidence in her brief was in the context of reiterating the objection that the evidence
was untimely, with the qualifying statement that even if the evidence were
considered, it fails to support Applicant’s position that the involved goods are
unrelated.4 She therefore did not treat the evidence as if it were of record.
In view thereof, the objection is sustained, and the new evidence submitted
concurrently with Applicant’s appeal brief has been given no consideration.5 See e.g.,
In re Fiat Group Marketing & Corporate Communications S.p.A., 109 USPQ2d 1593,
1596 (TTAB 2014) (examining attorney’s objection to applicant’s submission of
registrations with appeal brief sustained). See also TBMP § 1207.01 (2016) and cases
cited therein at Note 1.
II. Applicable Law
We now consider the substantive refusal before us. 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. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper

4 Examining Attorney Brief at 9 TTABVUE 18.
5 Consideration of the late-filed evidence would not have altered our determination.
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Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). These factors and others are
discussed below. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78
USPQ2d 1944 (Fed. Cir. 2006) (even within du Pont list, only factors that are
“relevant and of record” need be considered).
A. The Marks

We commence with 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 (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) (quoting Leading Jewelers Guild,
Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB 2007)). The focus is on
the recollection of the average purchaser, who normally retains a general rather than
a specific impression of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Our analysis cannot
be predicated on dissection of the involved marks. Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather,
we are obliged to consider the marks in their entireties. Id. See also Franklin Mint
Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is
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axiomatic that a mark should not be dissected and considered piecemeal; rather, it
must be considered as a whole in determining likelihood of confusion.”).
Applicant argues that the involved marks are different because Applicant’s mark
consists of the single term XMag whereas Registrant’s mark is comprised of two
distinct components separated by a period starting with “mag” and ending with “x.”
Applicant also contends that because the cited mark is a “complete reverse
combination” of Applicant’s mark, it projects a distinct connotation and commercial
impression.6 Applicant explains that its applied-for mark suggests “extra or (‘X’-tra)
magnification/magnitude or that some multiplication of the magnification itself is
occurring, not that another object is magnified” whereas the cited mark conveys “a
more descriptive impression, namely that the product sold will magnify something X
times.”7
Where the primary difference between marks is the transposition of the elements
that compose the marks, and where this transposition does not change the overall
commercial impression, there may be a likelihood of confusion. See, e.g., In re Wine
Soc’y of Am. Inc., 12 USPQ2d 1139, 1142 (TTAB 1989) (holding THE WINE SOCIETY
OF AMERICA and design for wine club membership services including the supplying
of printed materials, and AMERICAN WINE SOCIETY 1967 and design for
newsletters, bulletins, and journals, likely to cause confusion); In re Nationwide
Indus., Inc., 6 USPQ2d 1882, 1884 (TTAB 1988) (holding RUST BUSTER (with RUST

6 Applicant’s Brief, p. 9; 7 TTABVUE 10.
7 Id. at 8; 7 TTABVUE 9.
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disclaimed) for rust-penetrating spray lubricant, and BUST RUST for penetrating
oil, likely to cause confusion). However, if the transposed mark creates a distinctly
different commercial impression, then confusion is not likely. See, e.g., In re Best
Prods. Co., 231 USPQ 988, 989-90 (TTAB 1986) (holding BEST JEWELRY and design
(with JEWELRY disclaimed) for retail jewelry store services, and JEWELERS’ BEST
for bracelets, not likely to cause confusion).
We find that the transposition of the terms “x” and “mag” in the involved marks
does not obviate the likelihood of confusion. That is to say, when considered as a
whole, both Applicant’s and Registrant’s marks convey similar meanings and
commercial impressions. “Mag” is a well-known abbreviation in the scientific field for
“magnification.”8 The letter “x” is an abbreviation in mathematics for “multiplied
by.”9 The record also shows that in the inspection field, the letter “x” preceded by a
number is the designation used to denote the level of magnification.10 That being said,
when “mag” is combined with the letter “x”, it projects a similar connotation,
regardless of the order. As aptly put by the Examining Attorney, “…consumers could
read ‘XMAG’ as ‘X times Magnification’ and have the same meaning as ‘Magnify X

8See Acronyms and Slang (www.acronymsandslang.com). The Board may take judicial notice
of online dictionaries that exist in printed format or have regular fixed editions. See, e.g., In
re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013). See also In re Hotels.com,
L.P., 87USPQ2d 1100, 1103 (TTAB 2007) (definition from The American Heritage Dictionary
of the English Language, retrieved from bartleby.com website), aff’d, 573 F.3d 1300, 91
USPQ2d 1532 (Fed. Cir. 2009).
9 Acronym Finder (www.acronymfinder.com) (search results for “x”) attached to October 10,
2014 Office Action.
10 See, e.g., excerpt from Vision Engineering web site (visioneng.us) attached to November
11, 2015 Office Action.
Serial No. 86251781
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Times’….”11 We acknowledge the presence of a period in the cited mark and absence
thereof in Applicant’s mark; however, in this particular instance, this distinction does
little, if anything at all, to alter the meaning and commercial impression. Cf. In re
Vanilla Gorilla L.P., 80 USPQ2d 1637, 1639 (TTAB 2006) (noting that “the addition
of punctuation marks to a descriptive term would not ordinarily change the term into
a non-descriptive one”).
In addition, the stylization in the cited mark fails to obviate the similarities.
Applicant has applied to register its mark in standard character format, meaning
that it may be displayed in any lettering style, including the font displayed in the
cited mark. See Trademark Rule 2.52(a), 37 C.F.R. § 2.52(a). See also, In re Viterra
Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf
Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010).
Thus, when considered as a whole, both Applicant’s mark XMag and Registrant’s
mark are similar in appearance, sound, connotation and commercial
impression. Both marks imply that the identified products are designed to enhance
magnification. The first du Pont factor therefore weighs in favor of finding a
likelihood of confusion.
B. The Goods
The next step in our analysis is a comparison of the goods identified in Applicant’s
application vis-à-vis the goods identified in the cited registration, the second du Pont
factor. See Stone Lion, 110 USPQ2d at 1161; Octocom Systems, Inc. v. Houston

11 Examining Attorney Brief at 9 TTABVUE 9.
Serial No. 86251781
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Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is
settled that it is not necessary that the respective goods be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. The respective goods need only be “related in some manner and/or
if the circumstances surrounding their marketing [be] such that they could give rise
to the mistaken belief that [the services] emanate from the same source.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). See also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386,
1388 (TTAB 1991). Evidence of relatedness may include news articles and/or evidence
from computer databases showing that the relevant goods/services are used together
or used by the same purchasers; advertisements showing that the relevant
goods/services are advertised together or sold by the same manufacturer or dealer;
and/or copies of prior use-based registrations of the same mark for both applicant’s
goods/services and the goods/services listed in the cited registration. See, e.g., In re
Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding pepper sauce and agave related
where evidence showed both were used for the same purpose in the same recipes and
thus consumers were likely to purchase the products at the same time and in the
same stores). The issue is not whether purchasers would confuse the goods, but rather
whether there is a likelihood of confusion as to the source of these goods. L’Oreal S.A.
v. Marcon, 102 USPQ2d 1434, 1439 (TTAB 2012).
Serial No. 86251781
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Applicant argues that the involved goods are unrelated, pointing to specific
differences in the products, including that its “magnification hardware is digital, not
optical, and designed explicitly for low vision users”; that it “integrates a high
definition camera and monitor to offer sharper images at all magnification levels”;
and that the camera component “swings in a 330 degree arc and has an infinite focus
mode for looking at distant details such as material flow along a factory floor or traffic
in a container terminal or harbor.”12 By contrast, Applicant contends that
Registrant’s goods magnify “through an actual lens like a magnifying glass or
microscope” that is “analog, not digital”; and that Registrant’s goods “do not record
still images nor have infinite focus mode” thereby making the capabilities quite
disparate. Id.
Applicant’s arguments are unconvincing. While Applicant’s computer hardware
may indeed be digital and not optical as Applicant asserts, this fails to serve as a
distinguishing characteristic. In fact, none of the distinguishing traits Applicant
points to are of relevance since we must compare the goods as worded in the
identification. Applicant’s goods clearly are identified as a type of “magnifying close-
up camera.” For this reason, Applicant’s and Registrant’s goods, by their very nature,
are complementary products. An “objective” is defined as “the lens or combination of
lenses forming the image in a camera or projector.”13 Insofar as Applicant’s goods are
specialized inspection cameras, it logically follows that Registrant’s goods are

12 Applicant’s Brief, p. 12; 7 TTABVUE 13.
13 Collins American English Dictionary (www.collinsdictionary.com/american) (definition of
“objective”) attached to July 25, 2014 Office Action.
Serial No. 86251781
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component parts which serve to magnify the image of the inspected object. And even
if this were not the case, both Applicant’s and Registrant’s goods as set forth in their
respective identifications may be construed to perform the same function. This is
because the goods in the cited registration are not limited to any particular type of
use or purpose. Consequently, while Applicant has limited the stated function of its
“portable magnifier in the nature of magnifying close-up camera” to “for use in
connection with a computer monitor for low-vision users, namely low vision
production and warehouse personnel to produce an enlarged image of an object for
inspection purposes”, Registrant’s “[o]bjectives, namely, optical lenses, and optical
lens assemblies comprising one or more optical lenses and optical lens holders”
contain no such restriction. We must therefore assume that Registrant’s goods may
be used for the same purpose – namely to magnify images of objects for inspection
purposes. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Under this same logic, the fact that
the goods in the cited registration are not specifically designated for the visually
impaired is irrelevant. Again, while Applicant has restricted its goods to “low vision
users”, because Registrant has no such limitation regarding the end user or
consumer, we must assume that the goods are designed for all consumers, including
the visually impaired. Our determination is supported by the record which shows that
in the optics inspection industry,
Cameras are used to capture image data from an examined object or
location for a number of imaging applications such as machine vision or
factory automation. Cameras are imaging components that interface with
imaging lenses. … Imaging lenses are used to view objects in imaging
Serial No. 86251781
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systems. Imaging lenses are imaging components used in imaging systems
to focus on an image of an examined object onto a camera sensor. Depending
on the lens, imaging lenses can be used to remove parallax or perspective
error or provide adjustable magnifications, field views, or focal lengths.14

Furthermore, the evidence summarized below shows that it is not uncommon for
Applicant’s and Registrant’s goods to either be used together; sold together as a unit;
sold separately by the same manufacturer under the same trademark; or used
interchangeably for inspection purposes:
Qioptia Photonics for Innovation (qioptiq.com) offering both standard and
custom made inspection cameras and lenses: “The optics make the image –
which is why Qioptia has a full range of inspection cameras designed for a
variety of tasks. … Qioptia has a complete range of machine vision lenses.”15

EO Edmunds Optics Worldwide, World’s Largest Inventory of Optical
Components (edmunoptics.com) offering both cameras and lenses for
inspection purposes. “Edmund Optics “Edmunds Optics’ TECHSPEC
Hypercentric Lenses provide a converging view of an object, simultaneously
focusing on the top and surrounding sides. This eliminates the need for
multiple camera and imaging lens setups in machine vision or identification
applications, saving time and expense. Edmunds Optics’ TECHSPEC
Hypercentric Lenses are excellent when used for inspecting parts, including
pharmaceutical vials, batteries or automotive parts. Optimized for use with
monochromatic light, these versatile imaging lenses provide a conical
shaped working area.16

Teledyn Dalsa (teledyndalsa.com) showing inspection lenses and cameras
originating from the same source, and explaining the relationship between
the two products: “The lens gathers the light reflected (or transmitted) from
the part being inspected, and forms an image in the camera sensor. The
proper lens allows you to see the field-of-view you want and to place the
camera at a convenient working distance from the part.”17

14 EO Edmunds Optics Worldwide, World’s Largest Inventory of Optical Components
(edmunoptics.com) attached to October 10, 2014 Office Action.
15 October 10, 2014 Office Action.
16 Id.
17 Id.
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Scienscope (scienscope.com) showing optical and video inspection systems
comprised of cameras and lenses originating from the same source and sold
under the same mark: “At Sciencscope we offer two different types of video
inspection systems – our MZ7A Series, or Micro Zoom series, or our MAC
series. This optical video inspection system can provide a high
magnification image without chromatic aberration and distortion. Micro
Zoom Video Inspection Systems have high magnification applications, nor
chromatic aberration and distortion, detented zoom body for repeatable
settings, inter-exchangeable objective lens and couplers, variable
magnification configurations, and much more.”18

Vision Engineering (visioneng.us) showing digital inspection and
magnification systems, including magnifiers and cameras, originating from
the same source.19

In addition, the Examining Attorney made of record third-party, used-based
registrations showing that the same entity has registered a single mark identifying
both Applicant’s and Registrant’s goods or the legal equivalent thereof. By way of
illustration, we highlight the following:
Registration
No.
Mark Highlighted Goods
312317320 WOLLENSAK Optical inspection apparatus for
industrial use; Optical lens sights;
Optical lenses; Optical or telescopic
lens sights; Cameras; Cameras
shutters; Microscopes and parts
thereof
362502121 NAVITAR Optical lenses; opto-mechanical and
opto-electrical systems comprised
of, namely, camera and lens with
assemblies sold as a unit for
machine vision to provide visual
information in processes of machine
assembly, testing, and inspection,

18 November 11, 2015 Office Action.
19 Id.
20 See November 11, 2015 Office Action.
21 See id.
Serial No. 86251781
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machine automation, machine
robotics, machine assembly,
machine imaging for capturing
visual information in visual form,
machine testing, machine
measuring, machine inspection,
machine simulation, machine
surveillance, and projection display
for use in semiconductor
manufacture, electronic imaging,
telecommunications, biometrics,
photonics, non-contact
measurement, biotechnology and
life science
383437822 AOET
(stylized)
Optical lenses; Optical glasses;
Magnifying glasses; lenses for
digital cameras; lenses for
camcorders; lenses for scanners;
lenses for barcode readers;
Cameras; Lens; electronic imaging
apparatus, namely, optical engines;
Electronic and optical
communications instruments and
components, namely, optical
transceivers.
386201323 SOPTOP
(stylized)
Cameras; Microscopes; Optical
inspection apparatus for industrial
use; Optical lenses
429634724 CALIN Camcorders; Cameras For Use In
Photography; Digital Cameras;
Optical Lenses; Parts For Optical
Lenses, Namely, Objectives;
Optical Inspection Apparatus And
Instruments; Optical Glasses;
Optical Goods, namely, Optical
Character Recognition Apparatus
438558825 UOVISION
(stylized)
Optical lenses; Photographic
cameras; Video recorders

22 See October 10, 2014 Office Action.
23 See November 11, 2015 Office Action.
24 See id.
25 See October 10, 2014 Office Action.
Serial No. 86251781
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475168026 LIEQI Cameras; Optical inspection
apparatus; Optical lenses
As a general proposition, although use-based third-party registrations alone are not
evidence that the marks shown therein are in use or that the public is familiar with
them, they nonetheless may have probative value to the extent they may serve to
suggest that the goods are of a kind that emanate from a single source. See In re
Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). This constitutes further evidence
that consumers may expect to find both Applicant’s and Registrant’s goods as
identified in the involved application and cited registration as emanating from a
common source, and as such, the goods are closely related. In view of the evidence of
record, we find that the goods identified in the application and registration are closely
related and complimentary in nature. As such, the second du Pont factor also weighs
in favor of finding a likelihood of confusion.
C. Trade Channels
Next we consider established, likely-to-continue channels of trade, the third du
Pont factor. Because the identifications in the application and cited registration for
the mark have no restrictions on channels of trade, we must presume that the goods
travel in all channels of trade appropriate for such goods, which the aforementioned
evidence shows include online retailers specializing in inspection cameras and lenses.

26 See November 11, 2015 Office Action.
Serial No. 86251781
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See In re Viterra Inc., 101 USPQ2d at 1908 (quoting Hewlett-Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). As such,
the third du Pont factor regarding the similarity or dissimilarity of established, likely
to continue trade channels also favors a finding of likelihood of confusion.
D. Conditions of Sale and Classes of Purchasers
Lastly, 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, namely low-vision users,
are discriminating and highly knowledgeable, given the nature and specialized
purpose of the goods. As Applicant maintains, its goods are not marketed to ordinary
consumers but rather visually impaired “production and warehouse personnel” who
are seeking a product to improve their sight for “inspection purposes.”
We agree. Applicant’s identified goods by their intrinsic nature are of a type
purchased by professionals who are sophisticated and knowledgeable in their
purchasing decisions, and would be highly familiar with the nature, use and purpose
of Applicant’s products. See Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992) (“sophistication is
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.”).
Serial No. 86251781
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Based on the identification of goods alone, we can find that the target consumer, “low
vision production and warehouse personnel” will exercise a high degree of care when
making purchasing decisions. This is especially true, given that the task of inspection
requires accurate sight. We therefore find that for the reasons articulated by
Applicant, the sophistication of the purchasers and conditions of sale diminish the
likelihood of confusion.
III. Conclusion
After considering all of the evidence of record and arguments pertaining to the
du Pont likelihood of confusion factors, while the sophistication of the consumers and
conditions of sale diminish the likelihood of confusion, this is outweighed by the
similarity of the marks in sound, appearance, connotation and commercial
impression, the close relationship of the goods and identical trade channels. We treat
as neutral any du Pont factors for which there is no evidence or argument of record.
We therefore find that there is a likelihood of confusion between Applicant’s and
Registrant’s marks for the goods identified therein.
Decision: The Section 2(d) refusal is affirmed.