Kabushiki Kaisha Hitachi Seisakusho, DBA Hitachi, Ltd.v.Absolute Machine Tools, Inc.

Trademark Trial and Appeal Board

Jun 12, 2020

91238212 (T.T.A.B. Jun. 12, 2020)

wbc Mailed: June 12, 2020

Opposition No. 91238212

Kabushiki Kaisha Hitachi Seisakusho,
DBA Hitachi, Ltd.

v.

Absolute Machine Tools, Inc.

Before Cataldo, Wolfson and English,
Administrative Trademark Judges.

By the Board:

Absolute Machine Tools, Inc. (“Applicant”) seeks to register the mark HITACHI
SEIKI (“SEIKI” disclaimed), in standard characters, for “metalworking machine
tools, namely, vertical machining centers, multi-axis vertical machining centers,
compound machining centers, horizontal machining centers, grinding centers,
computer numerically controlled (CNC) machine tools, drilling and tapping centers,
lathes, computer numerically controlled (CNC) lathes, high speed precision lathes,
turning centers, multitasking turning centers, multitasking lathes, and 3-D printers,
ultrasonic assisted CNC machine tools, additive manufacturing machines for
manufacturing three-dimensional objects in the field of industrial and commercial
use” in International Class 7.1

1 Application Serial No. 87401829 was filed April 6, 2017, based on an allegation of
Applicant’s bona fide intention to use the mark in commerce under Section 1(b) of the
THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
General Email: TTABInfo@uspto.gov
Opposition No. 91238212

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By way of its amended pleading, 26 TTABVUE, Kabushiki Kaisha Hitachi
Seisakusho (“Opposer”) opposes registration of Applicant’s mark on the grounds of
lack of bona fide intent to use the mark in commerce, dilution and likelihood of
confusion with Opposer’s purported common law rights in the mark HITACHI for
“tools, machinery, and electronic and computer systems” and pleaded registrations
for:
• for “electric generators; electric motors; synchronous
frequency modifiers; phase shift condensers; electric converters; electric
transformers; voltage, current and motor speed controlling apparatus; electric
controls for automotion processes; electrical power distribution equipment;
electric precipitators; air cleaners and sterilizers; electric painting equipment;
electric welders; electric hand operated portable tools; household electric
appliances-namely, kitchen, laundry and lighting; telephone sets and equipment
for telephone systems; radio and television broadcasting equipment; radio and
television receiving sets; electron discharge tubes and parts” in International
Classes 7, 9, 11;2

• HITACHI in typed form3 for “metals, metal castings, and forgings-namely, special
steel bars and sheets, stainless steels, die steels, structural steels, heat resisting
steels, special steel for tools, cast steels, forged steels, and high speed metals” in
International Class 6; “rolling stock-namely, diesel electric locomotives and
funicular railway or cable cars, and parts of same; elevators and moving
stairways; mining machines-namely, winding machines, loading equipment,
conveyors, hydraulic hoists, rock drills, and parts of same; civil engineering
machines-namely, excavators, power cranes, tower cranes, tractors, cable cranes,
and parts thereof; winches, drag scrapers, bucket elevators, and pneumatic

Trademark Act, 15 U.S.C. § 1051(b). The English translation of SEIKI is “precision machine
tool.”
2 Registration No. 701233 issued July 19, 1960.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings.
A typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’
marks formerly were known as ‘typed’ marks, but the preferred nomenclature was changed
in 2003 to conform to the Madrid Protocol … we do not see anything in the 2003 amendments
that substantively alters our interpretation of the scope of such marks”); TMEP § 807.03(i)
(Oct. 2018).

Opposition No. 91238212

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conveyors; steam turbines, gas turbines, internal combustion engines, boilers,
water wheels and turbines, pumps, hydrocoupling and hydrotorque converters,
compressors, and vacuum pumps; machine tools-namely, milling machines,
numerically controlled machine tools, boring milling machines, gear
hobbing machines, surface grinders, and transfer machines, and parts
thereof; rolling mills, presses, hammers, crushers, and paper-making machines;
equipment for the chemical industries-namely, manufacturing plants for
synthetic fibers or synthetic resins, petrochemical plants, purification plants for
petroleum, synthetic plants for ammonia, industrial oxygen producing or tonnage
oxygen plants, gas separating equipment, and parts thereof; centrifugal
separators, printing machines, carburettors, can openers, sewing machines, and
rolls for rolling mills and printing machines” in International Class 7 (emphasis
added); “cast magnets, forged magnets, electric locomotives, battery locomotives,
spark plugs, starter dynamos, charging generators, and electric starting motors;
power driven hand tools-namely, portable electric drills, electric grinders, and
electric tools for woodworking; vacuum cleaners; and parts thereof” in
International Class 9; “electric and magnetic meters-namely, ampere meters,
voltmeters, wattmeters, watt-hour meters, and insulation resistance meters;
industrial measuring instruments-namely, thermometers, pressure-meters,
flowmeters, and dynamometers; electronic applied apparatuses-namely,
electronic computers, data processing apparatuses, automatic controlling
apparatuses, electron microscopes, particle accelerators, radar apparatuses, loran
apparatuses, and radio beacon apparatuses; scientific measuring instruments-
namely, mass spectrometers, magnetic resonance spectrometers,
spectrophotometers, photometers, PH meters, tiselius electrophoresis
apparatuses, and geiger counters” in International Class 9; “feed water purifiers
consisting of apparatus which purifies water for use in boilers, and electric dust
collectors consisting of apparatus which removes floating dust from foul air by the
corona discharge of high-voltage electricity;” and “stationary boilers” in
International Class 11; “rolling stock-namely, electric cars, diesel cars, passenger
cars, freight cars, tank cars, and monorail cars; and dump trucks” in International
Class 12; 4 and

• HITACHI in standard characters for “full line of computer hardware and
computer software for communications, data processing, information technology,
industry, and manufacturing; a full line of data storage devices; automated teller
machines; backup drives for computers; biometric finger vein recognition and
verification scanners; blank smart cards; cameras; CD players; CD recorders; CD-
ROM drives; central processing units (CPUs) for computers; computer hardware;
computer memory hardware; computer monitors; computer network adaptors;
computer network hubs, switches and routers; computer networking hardware;
computer peripherals; computer servers; data processors; digital signal

4 Registration No. 809784 issued June 14, 1966. Emphasis added to the identification of
goods.
Opposition No. 91238212

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processors; digital video recorders; DRAM cards; DVD camcorders; DVD drives;
DVD players; DVD recorders; DVD-RAM drives; DVD-RAM recorders; electric and
electronic video surveillance installations; electrical controllers; electron
microscopes; electronic computers; flash card readers; flash memory cards; flexible
service bandwidth manager for high bandwidth networks; hard disk drives; HDTV
broadcast cameras; infrared LEDs; insulated Gate Bipolar Transistors; integrated
circuits; inverters; LAN (local area network) operating software; LAN (local area
network) hardware; laptop computers; laser diodes; LCD monitors; LCD
projection televisions; liquid crystal displays; memory boards; memory card
writers; memory cards; microcontrollers; microprocessors; mobile computing and
operating platforms consisting of data transceivers, wireless networks and
gateways for collection and management of data; multiplexers; network access
server hardware; optical disk drives; optical line terminals; optical network
terminals; optical semiconductor amplifiers; photocopiers; plasma display panels;
plasma televisions; power controllers; printers; projection television tubes; radio
frequency identification (RFID) tags; RAID (redundant array of independent
disks) controllers; rectifiers; RFID readers; robots for personal, home, and
industrial use; scanners; semiconductors; sensors, namely, digital compasses,
position indicating magnetic encoders, giant magneto-resistive (GMR) sensors,
digital magnetic compass sensors and accelerometers; smart card authentication
hardware and software; smart card readers; televisions; transponders; TV
cameras; video encoders and decoders; WAN (wide area network) hardware; WAN
(wide area network) operating software” in International Class 9.5

See 26 TTABVUE 60-73.
In its amended answer, Applicant denies the salient allegations of the amended
notice of opposition and enumerates three affirmative defenses – laches, acquiescence
and estoppel. See 30 TTABVUE.
This case now comes up on: (1) Opposer’s combined motion, filed December 12,
2019, to dismiss Applicant’s affirmative defenses and for summary judgment based
on its claims of lack of bona fide intent to use the mark in commerce, dilution and
likelihood of confusion, see 32 TTABVUE; and (2) Applicant’s cross-motion for
summary judgment, filed Janaury 17, 2020, on the claims of lack of bona fide intent

5 Registration No. 3328528 issued November 6, 2007.
Opposition No. 91238212

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to use, dilution and likelihood of confusion in addition to asserting that Opposer lacks
standing to bring the notice of opposition. See 37 TTABVUE. Opposer’s combined
motions is fully briefed and Applicant’s cross-motion is opposed.6
I. Summary Judgment Standard
Summary judgment is an appropriate method of disposing of cases in which there
are no genuine disputes as to material facts, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(a). In deciding motions for summary judgment,
the Board must follow the well-established principles that, in considering the
propriety of summary judgment, all evidence must be viewed in a light favorable to
the non-movant, and all justifiable inferences are to be drawn in the non-movant’s
favor. The Board may not resolve disputes of material fact; it may only ascertain
whether such disputes are present. See Lloyd’s Food Prod. Inc. v. Eli’s Inc., 987 F.2d
766, 25 USPQ2d 2027, 2029-30 (Fed. Cir. 1993); Opryland USA Inc. v. Great Am.
Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme
Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1546 (Fed. Cir. 1992).
The burden is on the party moving for summary judgment to demonstrate the
absence of any genuine dispute of material fact, and that it is entitled to summary
judgment as a matter of law. Fed. R. Civ. P. 56(a). The burden of the nonmovant to
respond arises only if the summary judgment motion is properly supported. Adickes

6 Opposer’s withdrawal of Katie Bukrinsky as counsel of record is noted and made of record.
See 40 TTABVUE. The Board notes that the law firm of McDermott Will & Emery LLP
remains the law firm of record for Opposer.
The Board has considered the parties’ submissions and arguments and presumes the
parties’ familiarity with the factual bases for the motions, and does not recount them here
except as necessary to explain the Board’s order.
Opposition No. 91238212

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v. S.H. Kress & Co., 398 U.S. 144, 160-61 (1970). The initial burden at summary
judgment is greater than the evidentiary burden at trial. See TRADEMARK TRIAL AND
APPEA BOARD MANUAL (TBMP) § 528.01 (2019) and authorities cited therein. The fact
that the parties have filed cross-motions for summary judgment does not demonstrate
the absence of genuine disputes of material fact, or that we may resolve any such
disputes. Drive Trademark Holdings LP v. Inofin, 83 USPQ2d 1433, 1437 (TTAB
2007). To the contrary, we consider the evidence in view of each party’s burden as
movant and nonmovant.
II. Cross-Motions for Summary Judgment7
A. Initial Matters
a. Hearsay
Embedded as a footnote in Opposer’s reply brief is a motion to strike a portion of
the Prince-Ortner declaration as hearsay, namely, Ms. Prince-Ortner’s statement

7 In support of its motion for summary judgment, Opposer submits declarations from its
former attorney, Katie Bukrinsky, along with attached evidence including various printouts
from TESS and Applicant’s discovery responses to some of Opposer’s discovery requests. See
32 TTABVUE 230-408. Additionally, Opposer submits declarations along with attached
evidence from (i) its Vice President of Corporate Strategy & Business Development, Yushi
Akiyama, see 33 TTABVUE 3-81; (ii) its Senior Manager in the Accounting Control
Department, Financial Management Division, Finance Group, Masashi Hatakeyama, see 33
TTABVUE 82-83; (iii) Hitachi Automotive Systems Americas, Inc.’s (a subsidiary of Hitachi
Ltd.) Director of Business Planning, Shintaro Hinokuma and Marketing Manager, Amanda
Hayes, see 33 TTABVUE 84, 85-101; (iv) one of Hitachi Cable America, Inc.’s (a subsidiary of
Hitachi Ltd.) Chief Financial Officers and Directors of Finance, Wayne Gardner, see 33
TTABVUE 102-114; (v) Sullair A Hitachi Group Company’s (a subsidiary of Hitachi Ltd.)
Senior Director of Marketing and Communications, David C. Andrews, see 33 TTABVUE 115-
231; (vi) a member of its Corporate Brand & Communication Division, Kazunori Tsushima,
see 34 TTABVUE; (vii) its attorney, Robert Zelnick, see 41 TTABVUE 13-18; and (viii) its
Manager of Group 3, IP Platform Dept., Kanako Ouchi, see 41 TTABVUE 19-20.
In support of its cross-motion for summary judgment, Applicant submits the declaration of
its attorney, Clare Smith Long, along with various attached evidence including TESS
printouts, dictionary definitions, advertising and news materials; Opposer’s responses to
Opposition No. 91238212

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that her husband, “Steven Ortner, has verbally discussed with representatives from
Tong-Tai the idea for manufacturing Tong-Tai machinery under the Hitachi SEIKI
name.” See 41 TTABVUE 11 n.9; 38 TTABVUE 123 at ¶ 5. Inasmuch as the statement
is offered for the truth of the matter asserted and is not a statement of what the
declarant, Ms. Prince-Ortner, heard, the Board has disregarded this portion of the
declaration.8 See e.g., UMG Recordings Inc. v. Mattel Inc., 100 USPQ2d 1868, 1876
(TTAB 2011); Rocket Trademarks Pty. Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072
(TTAB 2011); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1372 (TTAB 1998); cf.
Anthony’s Pizza & Pasta Int’l, Inc. v. Anthony’s Pizza Holding Co., Inc., 95 USPQ2d
1271 (TTAB 2005) (testimony regarding how third parties answered their telephones
is not hearsay because deponent is merely testifying as to what she heard and not
whether the statement is true or not).
b. Affirmative Defenses
In its motion for summary judgment, Opposer moves to dismiss Applicant’s
affirmative defenses of laches, acquiescence and estoppel, asserting that “Applicant
is unable to prove any of its affirmative defenses as a matter of law.” 32 TTABVUE
26; see 41 TTABVUE 11.
Inasmuch as Applicant did not respond or otherwise address this portion of
Opposer’s motion, the motion is granted as conceded. Trademark Rule 2.127(a), 37

Applicant’s discovery requests; and Applicant’s responses to some of Opposer’s discovery
requests. See 38 TTABVUE 122. Applicant also submits the declarations of its Chief
Marketing Officer, Courtney Prince-Ortner and its President and CEO, Steven A. Ortner,
along with attached evidence. See 38 TTABVUE 123-24; 39 TTABVUE.
8 We hasten to add that consideration of this portion of the declaration would not change our
decision.
Opposition No. 91238212

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C.F.R. § 2.127(a). Applicant’s affirmative defenses of laches, acquiescence and
estoppel are hereby dismissed.9
B. Standing
Standing is a threshold issue that must be proven in every inter partes case. See
Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA
1982). To establish standing in an opposition proceeding, an opposer must show both
“a real interest” in the proceedings as well as a “reasonable basis” for its belief that it
would suffer damage if the mark is registered. See Empresa Cubana Del Tabaco v.
Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v.
Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). “Under the ‘real
interest’ requirement, an opposer must have ‘a legitimate personal interest in the
opposition.’ With respect to the second inquiry, the opposer’s belief of damage ‘must
have a reasonable basis in fact.’” Coach Servs. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012) (citations omitted). There is no
requirement that actual damage be pleaded or proved, or that plaintiff show a
personal interest in the proceeding different or beyond that of the general public. See
Blackhorse v. Pro-Football, Inc., 98 USPQ2d 1633, 1638 (TTAB 2011).
Applicant argues that although Opposer has met the “‘real interest’ test for
standing,” Applicant should be granted summary judgment because Opposer did not
plead and does not have a reasonable basis for its belief of damage and therefore,
lacks standing to bring this opposition. See 37 TTABVUE 7-11.

9 Denial of the motion to dismiss would not change our decision herein.
Opposition No. 91238212

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In its amended notice of opposition, Opposer asserts that it owns various
registrations for the mark HITACHI. Amended Petition at ¶ 8, 26 TTABVUE 69-70.
In its motion for summary judgment, Opposer includes TESS printouts of its pleaded
registrations for the mark HITACHI showing current status and title in Opposer.10
See 32 TTABVUE 234-41. In so doing, Opposer has made its pleaded registrations of
record for purposes of the motion for summary judgment. See Trademark Rules
2.122(e)(1) and (g), 37 C.F.R. § 2.122(e)(1) and (g); WeaponX Perf. Prods. Ltd. v.
Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1039 (TTAB 2018); Giersch v. Scripps
Networks, 90 USPQ2d 1020, 1022 (TTAB 2009); TBMP § 528.05(e).
Accordingly, and because Opposer’s registrations form the basis of a plausible
Section 2(d) claim, Opposer has established its standing to oppose registration of
Applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); Giersch, 90 USPQ2d at 1022; L.C. Licensing Inc. v.

10 The TESS printouts dated July 31, 2019 are reasonably contemporaneous with the filing
date of the motion. United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1042-1043
(TTAB 2014) (treating registration of record where opposer attached to its notice of opposition
a copy of an original registration certificate that issued 4 months before the filing of the notice
of opposition).
While not pleaded in its amended notice of opposition, Opposer also includes TESS printouts
of its various applications for the mark, and for marks including, HITACHI. See 32
TTABVUE 243-302. A plaintiff may not rely on an unpleaded claim. See TBMP § 314.
Further, a party may not obtain summary judgment on a claim or defense that has not been
pleaded. See Fed. R. Civ. P. 56(a); Asian & Western Classics B.V. v. Selkow, 92 USPQ2d 1478,
1480 (TTAB 2009); Bausch & Lomb Inc. v. Karl Storz GmbH & Co. KG, 87 USPQ2d 1526,
1528 n.3 (TTAB 2008); TBMP § 528.07(a); see also American Express Mktg. & Dev. Corp. v.
Gilad Dev. Corp., 94 USPQ2d 1294, 1297 (TTAB 2010) (“the Board will not hesitate to deny
any motion for summary judgment on an unpleaded claim or defense unless the motion for
summary judgment is accompanied by an appropriate motion to amend or is withdrawn and
refiled with such a motion to amend”).
In view thereof, to the extent Opposer seeks summary judgment based on its unpleaded
applications, the motion is denied.
Opposition No. 91238212

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Berman, 86 USPQ2d 1883, 1887 (TTAB 2008). In view thereof, Applicant’s cross-
motion for summary judgment for lack of standing is denied.
C. Priority and Likelihood of Confusion
Priority is not in issue here because opposer has proven that it owns registrations
for its pleaded mark. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1436 n.7 (TTAB 2012); Research in Motion Ltd. v. Defining Presence Mktg. Grp. Inc.,
102 USPQ2d 1187, 1190 (TTAB 2012). Accordingly, there is no genuine dispute of
material fact that Opposer has priority in the mark HITACHI as to the goods listed
in its registrations.
The Board’s determination of likelihood of confusion under Section 2(d) is based
on an analysis of all the facts in evidence that are relevant to the du Pont factors. See
In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973);
Miss Universe L.P. v. Comty. Mktg., Inc., 82 USPQ2d 1562, 1566 (TTAB 2007). We
consider all du Pont factors for which there is evidence of record but “may focus ... on
dispositive factors, such as similarity of the marks and relatedness of the goods.” Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed. Cir.
2001); see Mattel Inc. v. Funline Merchandise Co., 81 USPQ2d 1372, 1374 (TTAB
2006). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods. See Mattel,
Inc., 81 USPQ2d at 1374; Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Opposition No. 91238212

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Opposer argues that since the parties’ marks and goods provided thereunder are
similar, a likelihood of confusion exists. See 32 TTABVUE 19-24. Applicant argues
that Opposer might supply metals and other materials that “may eventually be
machined but otherwise have nothing to do with CNC machine tools”; that “the
products sold by Opposer or Opposer’s affiliates are not similar to anything which are
or will be offered by Applicant”; that Applicant’s goods are not “inexpensive, impulse
buys”; and that prior co-existing third party uses of HITACHI SEIKI in the United
States since the 1960s did not result in confusion. 37 TTABVUE 14-16; see Ortner
Declaration, 39 TTABVUE 3 at ¶¶ 12-16.
a. Similarity of Goods, Channels of Trade and Classes of
Consumers

With regard to the goods, channels of trade and classes of consumers, we must
make our determinations under these factors based on the goods as they are
identified in the registrations and application. See Stone Lion Capital Partners, LP v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming public may
perceive [the respective goods and services of the parties] as related enough to cause
confusion about the source or origin of the goods and services.’” In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett Packard, 62
USPQ2d at 1004). In a Section 2(d) determination, the goods and/or services do not
have to be identical or even competitive in order to find that there is a likelihood of
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confusion. In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I.
Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). It is sufficient for a finding
of likelihood of confusion if relatedness is established for any item encompassed in
the identification of goods or services in a particular class. Tuxedo Monopoly, Inc. v.
General Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Double
Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *6 (TTAB 2019); In re
Aquamar, Inc., 115 USPQ2d 1122, 1126, n.5 (TTAB 2015). Further, in the absence of
any limitations in either the plaintiff’s registration or defendant’s application with
respect to channels of trade, or classes of purchasers, we must assume that the parties
sell their respective goods in all of the usual trade channels for goods of that type. See
Mattel, Inc., 81 USPQ2d at 1374.
Here, the parties’ goods are legally identical in part. Applicant seeks to register
its mark for various “machine tools” including, “computer numerically controlled
(CNC) machine tools” and Opposer has registrations for various “machine tools”
including, “numerically controlled machine tools.” Both parties’ machine tools are
numerically controlled, and Applicant’s are further controlled by computer. Thus, the
machine tools identified in Opposer’s registration encompass Applicant’s more
narrowly described “machine tools.” See In re Hughes Furniture Indus., Inc., 114
USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of
‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and
commercial furniture.’”). Further, neither Opposer nor Applicant recite any
restrictions in their respective identifications of goods and therefore, the channels of
Opposition No. 91238212

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trade and classes of purchasers must be presumed to be the same. See, e.g., Cai v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018); Levi
Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373, 107 USPQ2d
1167, 1173 (Fed. Cir. 2013).
b. Similarity of the Marks
Turning to the marks, we consider Applicant’s mark HITACHI SEIKI and
Opposer’s marks HITACHI and compare them “in their entireties as to appearance,
sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The marks “‘must be considered
… in light of the fallibility of memory ….’” St. Helena Hosp., 774 F.3d 747, 113
USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD
Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The proper focus
is on the recollection of the average customer, who retains a general rather than
specific impression of the marks. Winnebago Indus., Inc. v. Oliver & Winston, Inc.,
207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). Where, as here, the marks appear on virtually identical or closely
related goods, the degree of similarity of the marks necessary to support a finding of
likely confusion is not as great as when the goods are different. See Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992).
Opposition No. 91238212

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The parties’ marks are nearly identical except for the addition of SEIKI, a
disclaimed term, in Applicant’s mark. SEIKI, as noted in Applicant’s application,
means “precision machine tool,” which is at least descriptive, if not generic, of the
various “machine tools” listed in Applicant’s application. In view of the highly
descriptive nature of SEIKI and because HITACHI is the first term of Applicant’s
mark and the only term in Opposer’s marks, HITACHI dominates the commercial
impression of the parties’ marks. See Century 21 Real Estate Corp., 23 USPQ2d at
1700 (upon encountering the marks, consumers will first notice the identical lead
word); Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the
first word to appear on the label); Presto Products Inc. v. Nice-Pak Products, Inc., 9
USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and remembered”). In short,
there are no genuine disputes of material fact that the marks are more similar than
dissimilar in their appearance, pronunciation, connotations, and overall commercial
impressions. The highly similar nature of the marks is a significant factor in the
likelihood of confusion analysis. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993).
c. Lack of Actual Confusion, Third Party Uses
Evidence of actual confusion is not required in order to establish likelihood of
confusion. See Fort James Operating Co. v. Royal Paper Convering, Inc., 83 USPQ2d
Opposition No. 91238212

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1624, 1629 (TTAB 2007 (citing Weiss Assoc. Inc. v. HRL Assoc. Inc., 902 F.2d 1546,
14 USPQ2d 1840 (Fed. Cir. 1990; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d
1768 (TTAB 1992); Guardian Prod. Co. Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB
1978)). Further, the absence of evidence of actual confusion herein is explained by the
fact that Applicant has not yet used its mark. See 37 TTABVUE 19-20 (Applicant
argues an intent to use its applied-for mark).
Central to Applicant’s arguments that no likelihood of confusion exists is its
reliance on the sale of “CNC machinery” in the United States by Hitachi Seiki USA,
a distributor on behalf of Hitachi Seiki Japan (later sold to Mori Seiki Ltd., a
“Japanese machine tool company”). 37 TTABVUE 5. Applicant asserts that Hitachi
Seiki USA sold these products under the HITACHI SEIKI mark, but that it filed for
bankruptcy in 2002 and sold off its assets in 2003. See 37 TTABVUE 5; Long
Declaration, 38 TTABVUE 3, 29-38. Applicant also asserts that HITACHI is “well
known” referencing an “Urban Dictionary” entry listing HITACHI as an abbreviation
for a product “Hitachi Magic Wand”; and that there are third-party resellers of
“original Hitachi Seiki parts … and more” and for reconditioning and rebuilding … of
Hitachi SEIKI machines.” 37 TTABVUE 3-5.
Opposer asserts that it reached an agreement with Mori Seiki Ltd. “which barred
Mori Seiki from manufacturing new products bearing HITACHI SEIKI”;11 that
“Hitachi Magic Wand was a product of Opposer sold in the United States”; that resale
and [“e]vidence that third-parties refurbish or service HITACHI SEIKI equipment”

11 Produced by Opposer in discovery. See 41 TTABVUE 7; Ouchi Declaration, 41 TTABVUE
19.
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is non-infringing use; and that based on regular monitoring of the market “no new
machines or machine tools bearing HITACHI SEIKI mark have been produced or sold
in the United States in 18 years.” 41 TTABVUE 7; Ouchi Declaration, 41 TTABVUE
19-20.
Applicant does not dispute that an agreement between Opposer and Mori Seiki
Ltd. exists or that Mori Seiki Ltd. was barred by that agreement from manufacturing
new products with the HITACHI SEIKI mark. Thus, sales of new CNC machinery
under the mark dwindled (or were non-existent) after 2002-2003. Applicant also does
not dispute that Hitachi Magic Wand was a product of Opposer. Lastly, as to third-
party resellers, it is settled that “the right of a producer to control distribution of its
trademarked product does not extend beyond the first sale of the product. Resale by
the first purchaser … is neither trademark infringement nor unfair competition.”
Sebastian Int’l, Inc. v. Longs Drug Stores Corp., 53 F.3d 1073, 34 USPQ2d 1720, 1074
(9th Cir. 1995); see also, e.g., NEC Elec. v. CAL Circuit Abco, 810 F.2d 1506, 1509 (9th
Cir.1987) (sale of genuine trademarked product by seller unauthorized to sell not a
violation of Lanham Act); Matrix Essentials v. Emporium Drug Mart, 988 F.2d 587,
593 (5th Cir.1993) (same); H.L. Hayden Co. v. Siemens Med. Sys., 879 F.2d 1005, 1023
(2d Cir.1989) (“[T]he unauthorized sale of a trademarked article does not, without
more, constitute a Lanham Act violation.”).
Based on the record, we are not persuaded that Applicant’s asserted third-party
uses are evidence that no likelihood of confusion would result in Applicant’s use or
registration of its mark for its applied-for goods. Moreover, it is well settled that the
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relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary
to show actual confusion to establish likelihood of confusion. Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002).
III. Conclusion
In view of the evidence of record, we find that Opposer is entitled, as a matter of
law, to a judgment in its favor as to its claim of likelihood of confusion. Opposer has
established the lack of genuine disputes of material fact as to its standing, priority,
and likelihood of confusion between the parties’ marks when used on the parties’
respective registered or applied-for goods, particularly as to Opposer’s “numerically
controlled machine tools” and Applicant’s “computer numerically controlled (CNC)
machine tools.” Where priority and likelihood of confusion are established as to a
particular good in a class, then the opposition must be granted as to the entire class.
See Tuxedo Monopoly, 209 USPQ at 988; Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71
USPQ2d 1844, 1847 n.9 (TTAB 2004).
IV. Decision
Opposer’s motion for summary judgment is hereby granted and judgment is
entered against Applicant on the claim of likelihood of confusion. Registration of
application Serial No. 87401829 is hereby denied.
In view of our decision herein, Opposer’s motion and Applicant’s cross-motion on
the claims of lack of bona fide intent to use and dilution are moot.