Man Turbo AG

Trademark Trial and Appeal Board

Mar 11, 2008

No. 79022157 (T.T.A.B. Mar. 11, 2008)

Mailed:
March 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Man Turbo AG
________

Serial No. 79022157
_______

Cecelia M. Perry of McGlew and Tuttle, P.C. for Man Turbo
AG.

Napoleon K. Sharma,1 Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Grendel and Drost, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Man Turbo AG, applicant herein, seeks registration on
the Principal Register of the mark depicted below

1 A different Trademark Examining Attorney handled this
application prior to appeal.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 79022157
2
for goods identified in the application, as amended, as
“power operated blowers, vacuum condensors, vacuum turbines
not for land vehicles, vacuum pumps, for the pulp and paper
industry.”2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the identified goods, so resembles the
mark TURBO-AIR, previously registered (in typed or standard
character form) for goods identified in the registration as
“air compressors and parts therefor,”3 as to be likely to
cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. The appeal
is fully briefed. After careful consideration of the
evidence of record and the arguments of counsel, we affirm
the refusal to register.
Initially, we sustain the Trademark Examining
Attorney’s objection to the evidence submitted by applicant
for the first time with its appeal brief. Such evidence is
untimely and shall be given no consideration. See

2 Serial No. 79022157, filed on December 19, 2005. The
application was filed pursuant to Trademark Act Section 66(a),
based on International Registration No. 0382815.

3 Reg. No. 0980998, issued on March 26, 1974. Section 8
affidavit accepted, Section 15 affidavit acknowledged. Second
renewal from August 20, 2005.
Ser. No. 79022157
3
Trademark Rule 2.142(d), 37 C.F.R. §2.142(d). We add,
however, that our decision herein would be the same even if
we had considered applicant’s untimely evidence.
Our likelihood of confusion 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. Palm Bay Imports, Inc., supra.
The test, under the first du Pont factor, is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
Ser. No. 79022157
4
Applying these principles in the present case, we find
as follows. Initially, we reject applicant’s argument that
its mark TURBAIR would be perceived and syllabicated as a
combination of the arbitrary or nonsense elements TUR and
BAIR. Rather, we find that as applied to applicant’s
identified goods, the mark readily would be perceived and
syllabicated as a combination of TURB and AIR. As applied
to applicant’s goods, which include “vacuum turbines,” the
first syllable of the mark would not be perceived to be
TUR, but rather as TURB, short for “turbine.” Likewise, as
applied to applicant’s goods, which include “power operated
blowers,” the second syllable of the mark would be
understood to be AIR, not BAIR. As applied to applicant’s
goods, the designations TURB and AIR make immediate sense
and would be readily recognized as referring to “turbine”
and “air.” Given this obvious significance of the elements
of the mark, there is no reason that purchasers would
instead view the mark as a combination of the nonsense
syllables TUR and BAIR.
Comparing the marks in terms of appearance, we find
that the marks are similar to the extent that both begin
with the letters TURB and end with the letters AIR. The
marks look different to the extent that the registered
TURBO-AIR mark includes a hyphen as well as the additional
Ser. No. 79022157
5
letter “O” attached to “TURB.” However, we find that these
points of dissimilarity in appearance are outweighed by the
overall similarity which results from the fact that the
marks share seven identical letters in the same order,
beginning and ending the same way.
In terms of sound, we find that the marks are similar.
The first and last syllables of each of the respective
marks are pronounced identically, i.e., TURB and AIR, with
the stress on TURB. An additional syllable “o” would be
pronounced in the middle of the cited registered mark,
giving that mark three syllables instead of two. However,
we find that this point of dissimilarity is outweighed by
the similarity resulting from the identical-sounding and
identically-stressed first and last syllables.
In terms of connotation, we find that the marks are
essentially identical. The TURB in applicant’s mark and
the TURBO in the cited registered mark both would be
understood as being short for “turbine.” The AIR in both
marks means the same thing, i.e., “air.” Viewed in their
entireties, each of the marks connote “turbine air.”
Likewise in terms of commercial impression, the marks
are essentially identical. As applied to the goods
identified in the application and the cited registration,
Ser. No. 79022157
6
respectively, both marks create the commercial impression
“turbine air.”
Viewing the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we find that they are similar. The first du Pont factor
weighs in favor of a finding of likelihood of confusion.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as identified in
the application and in the cited registration. It is
settled that it is not necessary goods be identical or even
competitive in order to find that the goods are related for
purposes of our likelihood of confusion analysis. That is,
the issue is not whether consumers would confuse the goods
themselves, but rather whether they would be confused as to
the source of the goods. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the goods be
related in some manner, or that the circumstances
surrounding their use be such, that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Ser. No. 79022157
7
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978). Finally, it is settled that our analysis must
be based on a comparison of the goods as they are
identified in the application and in the cited
registration, regardless of what the evidence might show to
be any differences between the respective goods as actually
marketed by the applicant and registrant. In re Elbaum,
211 USPQ 639 (TTAB 1981).
Applying these principles in the present case, we find
that applicant’s “power operated blowers, vacuum
condensors, vacuum turbines not for land vehicles, vacuum
pumps, for the pulp and paper industry,” are sufficiently
related to the “air compressors and parts therefor”
identified in the cited registration that source confusion
is likely to result from the use of confusingly similar
marks on the respective goods. The relatedness of the
goods is evidenced clearly by the fact that applicant’s
original identification of goods included “compressors,”
and applicant’s first amended identification of goods
included “vacuum compressors.” These are the same as, or
closely related to, registrant’s goods as identified in the
cited registration.
Ser. No. 79022157
8
Additionally, the Trademark Examining Attorney has
made of record four third-party use-based registrations
which include in their respective identifications of goods
both applicant’s types of goods and registrant’s types of
goods. Registration Nos. 2331616 and 2700156 each include
both “air compressors” and “vacuum pumps.” Registration
No. 2863308 includes both “blowers” and “air compressors.”
Registration No. 2984846 includes “blowers,” “vacuum
pumps,” and “air compressors.” Although such registrations
are not evidence that the marks shown therein are in use or
that the public is familiar with them, they nonetheless
have probative value to the extent that they serve to
suggest that the goods listed therein are of a kind which
may emanate from a single source under a single mark. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467
(TTAB 1988).
Based on this evidence, we find that applicant’s goods
as identified in the application are similar and related to
the goods identified in the cited registration. The second
du Pont factor weighs in favor of a finding of likelihood
of confusion.
The third du Pont factor requires us to consider
evidence regarding the similarity or dissimilarity of the
Ser. No. 79022157
9
trade channels for the goods as identified in the
application and in the cited registration. We note that
applicant has limited its trade channels to the pulp and
paper industry. However, the identification of goods in
the cited registration contains no such limitation, and we
presume that registrant’s air compressors would be used in
all normal industries for such goods, including the pulp
and paper industry. Moreover, the Trademark Examining
Attorney has made of record a printout from registrant’s
website (www.fluiddenergy.com) which shows that registrant
in fact markets its goods to the pulp and paper industry,
among other industries. We find that the trade channels
are similar, and that the third du Pont factor accordingly
weighs in favor of a finding of likelihood of confusion.
The fourth du Pont factor requires us to consider
evidence regarding the conditions of purchase. It is
likely that applicant’s goods as identified in the
application would include goods which are fairly expensive
and purchased with care by knowledgable purchasers in the
pulp and paper industry. To that extent, the fourth du
Pont factor weighs against a finding of likelihood of
confusion.
The sixth du Pont factor requires us to consider
evidence pertaining to the number and nature of similar
Ser. No. 79022157
10
marks in use on similar goods. Applicant has submitted no
evidence to support its contention that the strength of the
registered TURBO-AIR mark is diluted by third-party use of
other TURBO marks. Applicant’s third-party registration
evidence has been stricken as untimely, but even if it had
been considered, it would not constitute evidence of actual
use by third parties of similar marks on similar goods.
See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992). Moreover, even if we assume
that the registered TURBO-AIR mark is somewhat suggestive,
it is still entitled to protection from confusingly similar
marks used on similar goods. King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (C.C.P.A.
1974). The sixth du Pont factor is neutral in our analysis.
Finally, under the seventh and eighth du Pont factors,
we consider evidence pertaining to the presence or absence
of actual confusion. Applicant contends that applicant and
registrant have been using their respective marks in the
United States for forty years without any instances of
actual confusion. We note, however, that in this ex parte
proceeding we have not heard from registrant on this issue.
Nor does the record establish the nature and extent of
applicant’s and registrant’s actual sales and use of their
respective marks in the United States. In these
Ser. No. 79022157
11
circumstances, we cannot conclude that there has been any
substantial opportunity for actual confusion to have
occurred, and the absence of actual confusion therefor is
entitled to limited probative value. In any event, an
absence of actual confusion would not be dispositive in
this case because the issue is likelihood of confusion, not
actual confusion. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990). The seventh and eighth du Pont factors are
essentially neutral in this case, or if they weigh in
applicant’s favor, they do so only to a limited extent.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists. Even if applicant’s
purchasers may be knowledgable and there may have been no
actual confusion, those factors are outweighed, in our
likelihood of confusion analysis, by the high degree of
similarity between the marks and the relatedness of the
identified goods and trade channels.
To the extent that any doubts might exist as to the
correctness of our conclusion that confusion is likely, we
resolve such doubts against applicant. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025
Ser. No. 79022157
12
(Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe,
Inc. supra.

Decision: The refusal to register is affirmed.