General Semi-conductor, Inc.

Trademark Trial and Appeal Board

Mar 10, 2005

No. 76231575 (T.T.A.B. Mar. 10, 2005)

Mailed: March 10, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re General Semiconductor, Inc.
________

Serial No. 76231575
_______

Michael G. Voorhees and Wendy K. Marsh of McKee, Voorhees &
Sease for General Semiconductor, Inc.

Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Chapman and Rogers, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:

On March 27, 2001, General Semiconductor, Inc. (a
Delaware corporation) filed an application to register on
the Principal Register the mark SMF for “semiconductors” in
International Class 9. The application is based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76231575
2
ground that applicant’s mark so resembles the SMF-281 and
SMF-28e2 marks, both registered by Corning Incorporated, and
both for “optical fiber” in International Class 9, that
when applicant’s mark is used on or in connection with its
identified goods, there is a likelihood of confusion,
mistake or deception.
Applicant has appealed, and briefs have been filed.
An oral argument has not been held.3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities

1 Registration No. 2581203, issued June 18, 2002.
2 Registration No. 2675475, issued January 14, 2003. The mark in
this registration is presented in special form to the extent that
the letter “e” is in lower case.
3 Applicant requested an oral argument, but its request did not
comply with Trademark Rule 2.142(e)(1), which expressly states
that the “request therefor should be made by a separate notice….”
See also, TBMP §802.02 (2d ed. rev. 2004). Instead, applicant’s
request for an oral argument is embedded on page 6 of its 7-page
brief on the case. When a request for oral argument is not made
by separate notice, it is administratively extremely difficult,
if not impossible, for the Board to note the request, and take
appropriate action thereon. The administrative difficulties
arise whether an applicant files paper documents or electronic
submissions to the Board.
Ser. No. 76231575
3
between the marks and the similarities between the goods
and/or 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).
The salient question to be determined is not whether
the goods of the parties are likely to be confused, but
rather whether there is a likelihood that the public will
be misled to believe that the goods offered under the
involved marks originate from a common source. See J.C.
Hall Company v. Hallmark Cards, Incorporated, 340 F.2d 960,
144 USPQ 435, 438 (CCPA 1965); and The State Historical
Society of Wisconsin v. Ringling Bros.-Barnum & Bailey
Combined Shows, Inc., 190 USPQ 25, 30 (TTAB 1976).
We consider first the marks. Applicant’s mark SMF is
highly similar to each of the cited marks, SMF-28 and SMF-
28e. The only difference is that applicant did not include
in its mark the hyphen or the numeric or alphanumeric
designations appearing after the letters “SMF” in the
registered marks. These minor differences would not
obviate any likelihood of confusion. See Spoons
Restaurants Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d unpub’d (Fed. Cir., June 5, 1992). Moreover,
the numeric and alphanumeric designations following the
Ser. No. 76231575
4
letters “SMF” in registrant’s marks would likely be
perceived by consumers as model or style numbers. We find
that applicant’s mark is similar in appearance and sound to
each of the cited registrations.
As to connotation, all we have in the record is
applicant’s response to the Examining Attorney’s request
for information as to any meaning or significance the
letters have in the relevant trade, including whether SMF
is an abbreviation or acronym. Applicant stated that it is
“not aware that [SMF] has any particular meaning in the
relevant trade.” (Response, February 4, 2004.) Thus,
whatever the connotation of the letters SMF, it is
presumptively the same for both applicant’s and
registrant’s marks.
We find that applicant’s mark is highly similar in
sound, appearance, connotation and overall commercial
impression to each of the two cited registered marks. See
Weiss Associates Inc. v. HRL Associates, Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990).
Applicant contends that the cited marks are weak and
as evidence thereof it submitted copies from the USPTO’s
Trademark Electronic Search System (TESS) of two third-
party registrations and two third-party applications. The
records indicate that the third-party applications had been
Ser. No. 76231575
5
approved for publication, but were later abandoned by those
respective applicants. The two third-party applications
are not probative except as evidence that the respective
applications were filed on particular dates. We do not
agree with applicant’s argument that the reason the
applications were allowed for publication must be the
differences in the marks and the goods and this “can be
inferred.” (Brief, p. 6.) To the contrary, this is mere
speculation on applicant’s part. It is likewise pure
speculation by applicant as to why the respective third-
party application owners abandoned those applications.
(Reply brief, p. 4.)
The two third-party registrations submitted by
applicant are (1) Registration No. 2693365 for the mark SMF
2000, and (2) Registration No. 2693366 for the mark SMF
166, both for “non-magnetic steel in sheet, rod, bar and/or
billet form” in International Class 6 and “drilling
machines and parts thereof” in International Class 7, and
both issued to S.M.F. International Societe Anonyme. These
are not persuasive because they are for goods unrelated to
applicant’s “semiconductors” and the cited registrant’s
“optical fiber.” Most importantly, third-party
registrations do not establish that the marks shown therein
are in use, much less that consumers are so familiar with
Ser. No. 76231575
6
them that they are able to distinguish among such marks.
There is no evidence of record of any use by any party
(including applicant, the cited registrant or any third-
party) of any mark including the letters SMF for
semiconductors or optical fiber or any other goods or
services.
To the extent applicant is arguing that inconsistent
actions were taken by Examining Attorneys, the record
history of each of the two cited registrations as well as
the records of the third-party registrations are not before
us. Moreover, neither the Board nor any Court is bound by
prior decisions of Trademark Examining Attorneys, and each
case must be decided on its own merits, on the basis of the
record therein. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001). See also, In re
Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001).
Furthermore, even weak marks are entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976).
Turning next to a consideration of the goods involved
in this case, we start with the well-settled principle that
goods or services need not be identical or even competitive
Ser. No. 76231575
7
to support a finding of likelihood of confusion. Rather,
it is enough that the goods or services are related in some
manner or that the circumstances surrounding their
marketing are such that they would likely be seen by the
same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they emanate from or are in some way associated with
the same producer or that there is an association between
the producers of each party’s goods or services. See In re
Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992); and In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991). Further, the
question of likelihood of confusion in Board proceedings
regarding the registrability of marks, must be determined
based on an analysis of the goods or services identified in
applicant’s application vis-a-vis the goods or services
recited in the registration(s). See Octocom Systems Inc.
v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d
1783 (Fed. Cir. 1990); and Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, both registered marks are for “optical
fiber,” while applicant intends to offer “semiconductors.”
In support of the refusal to register, and particularly the
relatedness of the respective goods, the Examining Attorney
has submitted printouts of excerpted stories retrieved from
Ser. No. 76231575
8
the Nexis database and printouts from Internet websites to
show that semiconductors and optical fiber are used in
conjunction with one another and they are related
industries. Examples of this evidence are set forth below:
Headline: Sumitomo Elec Ties Up With
Alcatel in Fiber-Optic Technology
…Under the deal, the two companies will
mutually license patents and production
expertise related to optical fiber and
cable, it said. The Japanese firm
already sells high-performance optical
fiber and compound semiconductors to
Alcatel. … “AFX News Limited,” May 29,
2001;

Headline: Photonic Chips
Photonic Chips are wafer-based,
integrated, optical sub-assemblies for
high-volume telecommunication and data
communications applications. They
combine miniature optic and electronic
components onto semiconductor wafer
assemblies for use with optical fibers
that have large voice, data, and video
data-transfer capabilities. “Design
News,” May 7, 2001;

Headline: American Microsystems Inc….
…Sensors Unlimited Inc. named Clifton
Draper to its executive team. Draper
will be retiring from Lucent
Technologies, bringing to Sensors over
23 years experience in optical fiber
and semiconductor device manufacturing
research, as well as fundamental
research in the field of laser
interactions with materials. …
“Microwave Journal,” February 1, 2001;

Headline: Phyworks Claims Chip First…
Phyworks Ltd. a fabless semiconductor
company developing innovative
electronic solutions to overcome signal
Ser. No. 76231575
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degradation on optical fibers,
announced that it has begun to ship
samples of its PHY 1060 Electronic
dispersion Compensation (EDC)
integrated circuit (IC) to customers
for evaluation. … “Fiber Optics Weekly
Update,” February 20, 2004;

Headline: Corning Inc.
…Principal businesses: Optical fiber
and cable, specialty glass, ceramic
pollution control products,
semiconductor materials. “Star-Gazette
(Elmira, NY),” July 23, 2003;

Headline: A Second Chance for X-ray
Lithography?…
J-Mar uses a solid-state laser to blast
short, powerful light pulses at a thin,
moving copper strip, creating a high-
energy plasma that emits X rays with a
wavelength of about 1 nanometer. The X
rays are collected and carried through
a bundle of tiny optical fibers called
a collimator to a semiconductor
stepper, which uses X rays to expose
circuit patterns on wafers coated with
photosensitive materials. … “Electronic
Business,” July 10, 2003;
Headline: Wild, Wireless West
…Already successful in traditional
areas like steel, copper wiring and
optical fiber for power and
telecommunications applications, Walsin
also has semiconductor experience
through its stake in Winbond
Electronics Corp. … “Electronic
Engineering Times,” August 12, 2002;

Corning Products + Services
…
Optical Fiber
Corning Optical Fiber produces a wide
range of optical fiber products
designed to perform in a variety of
applications…
…
Ser. No. 76231575
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Semiconductor Optics
Corning Semiconductor Optics expands
the capabilities of wavelength
technology through the application… .
www.corning.com (the cited registrant);
and

Fujitsu
Compound Semiconductors
Fujitsu designs and manufactures key
lightwave/optoelectronic components for
many high-speed optical networks and
microwave components for wireless
communication systems.
www.fcsi.fujitsu.com/products.htm.

In addition to the Nexis and Internet evidence, the
Examining Attorney also submitted copies of several third-
party registrations, based on use in commerce, indicating
the same entities offer semiconductors and optical fiber
under the same mark. See, for example, Registration No.
2622346 for, inter alia, “semiconductor, …” and “optical
fiber, …”; Registration No. 2636018 for, inter alia, “…
optical fibers, …” and “… semiconductor panels, …”; and
Registration No. 2249955 for, inter alia, “optical fiber
cable, …” and “semiconductors.”
When considering the third-party registrations
submitted by the Examining Attorney, we remain mindful that
such registrations are not evidence that the marks shown
therein are in use or that the public is familiar with
them. Such third-party registrations nevertheless have
some probative value to the extent they may serve to
Ser. No. 76231575
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suggest that such goods are of a type which emanate from
the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB 1988). Thus,
the third-party registrations submitted by the Examining
Attorney are further evidence of the relatedness of the
respective goods.
The Nexis and Internet evidence, as well as the third-
party registrations which include both items of goods in
the identifications of goods, all show a commercially
significant relationship between these two specifically
different products, such that consumers may well expect the
two items to emanate from a single source. That is,
applicant’s identified goods and the goods listed in the
cited registrations are related in the mind of the
consuming public as to origin. See Hewlett-Packard Company
v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002)(“even if the goods and services in
question are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin of the goods and services”).
We find that applicant’s semiconductors and
registrant’s optical fiber are related goods. See
Ser. No. 76231575
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Transitron Electronic Corp. v. Weston Instruments, Inc.,
147 USPQ 503 (TTAB 1965).
Applicant’s argument that “[its] semiconductors are
completely unrelated to the [registrant’s] optical fibers”
(reply brief, p. 3, emphasis in original) is not
persuasive. It is clear that the products involved herein
are different products. However, we have found that the
Examining Attorney established a prima facie showing that
these different products, “semiconductors” and “optical
fiber,” are related goods. Applicant’s argument to the
contrary, that the goods are “completely unrelated,” is not
supported by rebuttal evidence. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009, 1010 (Fed. Cir.) (The issue in the
case was mere descriptiveness, but the Court discussed an
applicant’s burden of coming forward with evidence in
support of its arguments.)
We find that the goods, as identified, could be
offered through the same or at least overlapping channels
of trade, to the same or at least overlapping classes of
purchasers.
Although not raised by applicant,4 we recognize that
the involved goods would not be purchased on impulse, but

4 In applicant’s reply brief (p. 2), it argued that in any ex
parte case there are several du Pont factors which are “usually
Ser. No. 76231575
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rather would be purchased with care, and may be purchased
only by sophisticated purchasers. However, even if
purchased with care, and by sophisticated purchasers, these
purchasers are not immune from confusion as to the source
of services, particularly when they are sold under similar
marks. See Wincharger Corporation v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289 (CCPA 1962); and In re Decombe, 9 USPQ2d
1812 (TTAB 1988).
In view of the highly similar marks, the relatedness
of these goods, and the same or overlapping channels of
trade and purchasers, we find that applicant’s mark SMF for
its identified goods is likely to cause confusion with the
marks SMF-28 and SMF-28e in the cited registrations.
While we do not have doubt on the question of
likelihood of confusion in this case, if there were such
doubt, it must be resolved against applicant as the
newcomer, as applicant has the opportunity of avoiding
confusion, and is obligated to do so. See TBC Corp. v.
Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997);

the most relevant,” listing six factors, including the conditions
of sale, i.e., impulse versus sophisticated purchasing. However,
applicant made no argument with regard to this factor. (Indeed,
applicant had also listed “valid consent agreement” in its list
of du Pont factors arguably generally relevant in ex parte cases,
but there is no consent agreement of record herein.)
Ser. No. 76231575
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and 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 as to both cited
registrations.