Kewaunee Scientific Corp.

Trademark Trial and Appeal Board

Sep 23, 1999

No. 75140359 (T.T.A.B. Sep. 23, 1999)

Paper No. 11
RFC
THIS DISPOSITION IS NOT CITABLE AS PRECEDENT
OF THE TTAB 9/23/99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Kewaunee Scientific Corp.
________
Serial No. 75/140,359
_______
Sana Hakim of Bell, Boyd & Lloyd for Kewaunee Scientific
Corp.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______
Before Simms, Cissel and Wendel, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 26, 1996, applicant applied to register the
mark "FLEXTECH" on the Principal Register for "furniture,
namely, workstations designed to accommodate the technical
requirements and physical characteristics of work areas
that include desks, computer tables, riser units and
pedestals," in Class 20. The application was based on
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applicant’s claim of use of the mark on these goods in
interstate commerce since January 8, 1987.
The Examining Attorney refused registration under
Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used with the goods set forth in the
application, so resembles the mark shown below
which is registered1 for "office furniture; namely, desks,
tables, pedestals, shelves, partitions, printer tables,
file cabinets, bookcases, conference tables, typewriter
returns, corner tops, and keyboard supports," in Class 20,
that confusion is likely.
The Examining Attorney also found the identification-
of-goods clause in the application unacceptable, and
suggested language that would be sufficiently specific.

1 Registration No. 1,672,613, issued on the Principal Register
under Section 44 the Act to Decabois Inc. on Jan. 21, 1992.
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Applicant amended the application to identify the
goods as follows: "computer furniture, namely computer
tables in International Class 9; and Furniture,
namely desks, riser units and pedestals for workstations
designed to accommodate the technical requirements and
physical characteristics of work areas[,] in International
Class 20." The fee for the additional class was included.
Applicant also amended to claim first use of the mark on
the goods in both classes in interstate commerce on January
8, 1987. This amendment was supported by specimens of use
and an accompanying declaration of Eli Manchester, the
President and Chief Executive Officer of applicant. Also
submitted with applicant’s response to the first Office
Action was the declaration of Cynthia Freeze, the marketing
services manager of applicant. She stated that to the best
of her knowledge, there has been no actual confusion
between applicant’s mark and the registered mark cited as a
bar to registration under Section 2(d).
The Examining Attorney accepted the amendment to the
identification-of-goods clause, but made final the refusal
under Section 2(d) of the Act. Applicant appealed.
Briefs were filed by both applicant and the Examining
Attorney. Applicant attached to its reply brief an
additional declaration, but this evidence was untimely
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under Trademark Rule 2.142(d), so we have not considered
it.
No oral hearing was requested. Accordingly, we have
resolved this appeal based on the written record and
arguments before us.
The only issue is whether confusion is likely to
result from applicant’s use of its mark in connection with
the goods identified in the application in view of the
registered mark, as it is used in connection with the goods
identified in the registration. After careful
consideration, we conclude that it is.
Our determination that the refusal to register under
Section 2(d) the Act is appropriate is based on analysis of
all of the probative facts in evidence that are relevant to
the factors the Court identified as bearing on the issue of
likelihood of confusion in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). As is the
case in any likelihood of confusion analysis, two key
considerations in the case at hand are the similarities
between the marks and the similarities between the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Turning first to the goods, it appears that both
applicant and registrant market under their respective
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marks furniture such as tables and desks suitable for use
with computer equipment. As the Examining Attorney has
noted, applicant has not made any arguments with respect to
the Examining Attorney’s determination that the goods are
nearly identical.
Applicant’s only arguments on the issue of likelihood
of confusion are that the marks are dissimilar in
appearance, meaning and commercial impression, and that
applicant’s mark and the cited registered mark have
coexisted in the marketplace for nine years without any
evidence that actual confusion has occurred.
Applicant’s arguments are not persuasive. The test
for determining likelihood of confusion is not whether the
marks can be distinguished when subjected to a side-by-side
comparison. The test is whether they create similar
overall commercial impressions. Visual Information
Institute, Inc. v. Vicon industries Inc., 209 USPQ 179
(TTAB 1980). We must focus on the recollection of the
average purchaser of the goods, who normally retains a
general, rather than specific, impression of the trademarks
used on the products for which he or she is shopping.
Chemtron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537
(TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
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As the Examining Attorney points out, if the goods of
the respective parties are closely related, the degree of
similarity between the marks required to support a finding
of likelihood of confusion is not as great as would apply
with diverse goods. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ 2d 1698 (Fed. Cir.
1982), cert. denied, 506 U.S. 1034 (1994); ECI Division of
E Systems, Inc. v. Environmental Communications Inc., 207
the USPQ 443 (TTAB 1980). The goods in the case now before
us, as identified in the application and the cited
registration, appear to be closely related, if not the
same, so the marks need not be as similar in order for
confusion to be likely.
Turning then to the marks, we note that applicant’s
mark is essentially a transposition of the registered mark.
Notwithstanding the minor design elements in the registered
mark, that mark is essentially "TECHNO FLEX," while the
applicant’s mark the is "FLEXTECH." We agree with the
Examining Attorney that this transposition does not create
a different overall commercial impression sufficient to
avoid confusion. The commercial impressions these two
marks create are substantially similar because their
connotations or the same. As applied to the furniture
products identified in the application and registration,
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both marks are suggestive, and each mark makes the same
suggestion. The "FLEX" portion of each mark suggests that
the furniture is "flexible," such that it may be adjusted
or assembled from a variety of components in ways that will
accommodate different spaces to different uses and/or
users. The "TECH" component in applicant’s mark is an
abbreviated form of the word "technology," which is
suggestive of the computer equipment with which applicant’s
furniture is designed to be used. In the same sense, the
"TECHNO" component in the registered mark makes the same
suggestion. Notwithstanding the fact that the order of the
two components is reversed in these two marks, their
similar connotations result in very similar commercial
impressions.
We have no evidence that these products are
particularly expensive or are bought by particularly
sophisticated purchasers. In view of the fallibility of
the memory of the ordinary consumers who are potential
purchasers of this type of furniture, confusion is plainly
likely when these similar marks are used on a the same or
closely related goods.
We are not persuaded to the contrary by applicant’s
argument that it has no evidence that actual confusion has
occurred. Whether confusion has actually taken place is a
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factor to be considered, but the issue is still whether
confusion is likely. It is not necessary to show actual
confusion in order to establish that confusion is likely.
Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990). Moreover, in the
absence of admissible information concerning the nature and
extent of the marketing activities of the applicant and the
registrant under their respective marks during the asserted
contemporaneous use, we do not have any basis upon which to
conclude that there was any substantial opportunity for
confusion to have taken place, nor do we have any
indication as to what the experience of the registrant has
been in this regard. The fact that applicant is unaware of
the occurrence of any actual confusion therefore has no
meaningful bearing on the resolution of the question of
whether confusion is likely in this case.
We have no doubt that confusion is likely in this
case, but even if we did, such doubt would necessarily be
resolved in favor of the registrant, and against the
applicant, who had an affirmative duty to select a mark
that is dissimilar to the registered mark. Burroughs
Wellcome Co. v. Warner-Lambert Co., 203 USPQ 191 (TTAB
1979).
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In summary, we hold that confusion is likely because
the mark applicant seeks to register is little more than a
transposition of the two suggestive elements which make up
the registered mark, and both marks create essentially the
same commercial impression in connection with these
identical or very similar products by virtue of the
identical connotations of the same two suggestive
components. Accordingly, the refusal to register under
Section 2(d) of the Act is affirmed.
R. L. Simms
R. F. Cissel
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial & Appeal Board
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