International Rectifier Corporation

Trademark Trial and Appeal Board

Apr 16, 2009

No. 77040240 (T.T.A.B. Apr. 16, 2009)

Mailed:
April 16, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Rectifier Corporation
________

Serial No. 77040240
_______

Charles P. Lapolla of Ostrolenk, Faber, Gerb & Soffen, LLP,
for International Rectifier Corporation.

Myriah A. Habeeb, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Rogers, Drost, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

International Rectifier Corporation (“applicant”)
filed, on November 9, 2006, an application to register on
the Principal Register the mark µPFC (in standard character
format) for “semiconductors and integrated circuits” in
International Class 9.1 The application was amended during

1 Serial No. 77040240 was filed under Section 1(a) based on
applicant’s statement that the mark was first used anywhere
and in commerce on December 31, 1995.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Serial No. 77040240
2
its prosecution to seek registration pursuant to Section
2(f) (“acquired distinctiveness”), in order to overcome a
descriptiveness refusal.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark PFC (in standard character
form) for “flip chips; namely, electronic circuit chips” in
International Class 9.2
Applicant appealed. Both applicant and the examining
attorney filed briefs. The refusal to register is
affirmed.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act 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, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.

2 Registration No. 1800003, issued on October 19, 1993; renewed.

Serial No. 77040240
3
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
We first consider the similarity and dissimilarity
between the marks. Our focus is on whether the marks are
similar in sound, appearance, meaning, and commercial
impression. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). Here, the marks are nearly
identical inasmuch as applicant’s mark, µPFC, incorporates
the entirety of the registered mark, PFC. Visually and
phonetically, the only difference is the addition of the
“micro” or “mu” symbol, µ, at the beginning of applicant’s
mark.
As to connotation and commercial impression, we note
that by amending the application to seek registration under
Section 2(f), applicant has conceded the descriptiveness of
its mark, including the portion PFC which is an acronym for
“power factor correction.”3 Applicant also acknowledges
that, “[i]n all likelihood, the mark PFC as applied to [the

3 The examining attorney also attached a substantial amount of
evidence (with Office Action dated March 23, 2007) regarding
“power factor correction” demonstrating that it is commonly
abbreviated as PFC and is a technique used in connection with
semiconductors and integrated circuits. The evidence includes
printouts from applicant’s website showing that its
semiconductors are small, or “micro,” and “enables compliance
with PFC (THD) regulations.”
Serial No. 77040240
4
registrant’s] goods is also an acronym for ‘power factor
correction’.” Brief, p. 3. Thus, we agree with the
examining attorney in her observation that “to the extent
that the marks create an overall commercial impression
relating to power factor correction, they do so equally.”
Brief, (unnumbered) p. 4.
Accordingly, the commercial impressions created by the
marks are nearly the same; indeed, the only difference is
that consumers may confer some “micro” or small attribute
to applicant’s goods based on the µ prefix. Ultimately,
this difference does very little to distinguish the marks.
Indeed, even applicant itself acknowledged during the
prosecution of the application that use of the “micro”
prefix is not uncommon and that “[p]urchasers of
electronics products can be expected to look beyond the
component in Applicant’s mark and the cited “µ” marks and
look to the other elements of the marks, namely, the
different letter combinations and arrangements.”4
Overall, we find the marks are extremely similar
visually and aurally, and in terms of connotation.

4 Applicant’s response (dated September 27, 2007), p. 4, was in
reaction to the examining attorney’s first office action refusing
registration under Section 2(d) based on several registrations
for marks containing the mu prefix followed by a combination of
letters. The examining attorney subsequently narrowed the
refusal to Registration No. 1800003.
Serial No. 77040240
5
Accordingly, this du Pont factor weighs heavily in favor of
finding a likelihood of confusion.
We turn next to the similarity and dissimilarity of
applicant's goods, i.e., semiconductors and integrated
circuits, vis-à-vis registrant’s goods, i.e., flip chips;
namely, electronic circuit chips.
In making our determination regarding the relatedness
thereof, we must look to the goods as identified in the
involved application and cited registration. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973).
We note, at the outset of considering this du Pont
factor, that the greater the degree of similarity between
applicant's mark and the cited registered mark, the lesser
the degree of similarity between applicant's goods and
registrant's goods that is required to support a finding of
likelihood of confusion. See In re Opus One Inc., 60
USPQ2d 1812, 1815 (TTAB 2001). If the marks are the same,
as they nearly are in this case, it is only necessary that
there be a viable relationship between the goods in order
to support a finding of likelihood of confusion. See In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
Serial No. 77040240
6
(TTAB 1983). Furthermore, it is not necessary that the
goods at issue be similar or competitive, or even that they
move in the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
The record in this proceeding supports a finding that
the goods, as identified, are closely related because they
are extremely similar in nature and purpose. “Flip chips”
are defined as “one type of mounting used for semiconductor
devices, such as IC chips, which does not require wire
bonds...long used in the automotive industry, and is now
gaining popularity among manufacturers of cell phones,
pagers and microprocessors.”5 Thus, it appears from the
record that applicant’s goods, which are fairly broadly

5 Wikipedia.com entry, attached to Office Action dated March 23,
2008. See also, Dictionary.com definition (sourced from
Webster’s New Millenium Dictionary of English), attached to
Office Action date November 26, 2007.

Serial No. 77040240
7
identified as “semiconductors” and “integrated circuits,”
may actually encompass registrant’s goods. In other words,
if applicant’s goods are manufactured utilizing the “flip
chip” process, they may be called “flip chips.” Even if
applicant’s goods are not manufactured as such, the
evidence demonstrates that semiconductors and integrated
circuits can be used in some of the same devices or
applications as registrant’s flip chips or electronic
circuit chips, i.e., automobiles, pagers, microprocessors.
The examining attorney also made of record copies of
several use-based, third-party registrations with her final
Office action which show that various trademark owners have
adopted a single mark for goods of the kind that are
identified in both applicant's application and the cited
registration.6 Third-party registrations which individually
cover a number of different items and which are based on
use in commerce serve to suggest that the listed goods
and/or services are of a type which may emanate from a
single source. In re Infinity Broadcasting Corp., 60
USPQ2d 1214 (TTAB 2001); In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993). In particular, the evidence
shows that several companies that manufacture

6 Attached to Office action dated November 26, 2007.
Serial No. 77040240
8
semiconductors or integrated circuits, such as applicant’s,
may also manufacture “flip chips.”
Based on the record herein, we find that the
respective goods are closely related so that, when
identified by nearly identical marks, prospective
purchasers are likely to believe that they come from the
same source. Accordingly, the du Pont factor involving the
similarity and nature of the goods weighs strongly in favor
of finding that there is a likelihood of confusion.
Finally, we note one of applicant’s principal
arguments in favor of registration, that is, that the term
PFC is so weak that it should be accorded less protection.
Specifically, applicant argues that “the recognition of PFC
in the relevant industry and trade underscores both the
popularity of PFC as a trademark component and the narrow
scope of protection to which PFC is entitled.” Brief, p.
3. In support, applicant relies on the evidence of record
establishing the significance of PFC in the electronic
industry, as well as five applications and three
registrations for marks for PFC alone or incorporating the
term PFC in the mark.
In addressing applicant’s above argument, we initially
note that the cited mark is on the Principal Register,
without any claim of acquired distinctiveness. Thus, we
Serial No. 77040240
9
must accord the cited registration the presumption of
validity provided thereto by way of Trademark Act Section
7. Certainly, any argument that the registered mark is
descriptive (or any inference that the registration was
“procured fraudulently”)7 and thus not subject to any
protection is an attack on the validity of a registration
which is not permitted in an ex parte proceeding. In re
Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534 (Fed. Cir. 1997).
A review of the third-party applications and
registrations that applicant relies upon reveals that, at
the time of briefing, all three of the registrations were
“dead” (i.e., cancelled) and only one of the referenced
applications (for the mark POWERED BY MARVELL GREEN PFC)8
had not been abandoned. One live third-party application
for a mark containing the term PFC is entitled to very
limited, if any, probative value. Nonetheless, the record
does contain evidence that the term PFC refers to a
technique that may have relevance to registrant’s goods.
See, e.g., Exhibits 5-6 to Office Action dated March 23,
2007. Accordingly, we find that the registered mark may

7 On page 3 of applicant’s brief, applicant states the cited
registration “may have been procured fraudulently.”
8 Application Serial No. 77281553, a notice of allowance was
mailed on October 21, 2008. Office records do not indicate that
Serial No. 77040240
10
have some suggestive value in relation to registrant’s
goods.
Even though we find that the registered mark, PFC, has
some suggestive value in connection with registrant’s goods
and, as such, may be entitled to a narrower scope of
protection, the scope is still broad enough to prevent the
registration of a nearly identical mark for such closely
related goods. See King Candy Co. v. Eunice King's
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974)
(likelihood of confusion is to be avoided as much between
weak marks as between strong marks); see also, In re Farah
Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277, 278
(CCPA 1971).
In conclusion, because of the near identity of the
marks and the relatedness of the goods, trade channels and
classes of purchasers, we find that purchasers familiar
with registrant's goods offered under the mark PFC are
likely to believe, upon encountering applicant's mark µPFC
for the goods identified in its application, that they
originate with or are somehow associated with the same
entity.

a statement of use has been filed was also abandoned after the
filing of the briefs, on July 16, 2008.
Serial No. 77040240
11
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.