Newport Electronics, Inc.v.Newport Scientific Pty. Ltd.

Trademark Trial and Appeal Board

Sep 17, 2001

No. 91115002 (T.T.A.B. Sep. 17, 2001)

9/17/01

Hearing: Paper No. 19
June 19, 2001 HRW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Newport Electronics, Inc.

v.

Newport Scientific Pty. Ltd.
_____

Opposition No. 115,002
to application Serial No. 75/299,671
filed on May 28, 1997
_____

Robert Curcio of Delio & Peterson, LLC for
Newport Electronics, Inc.

Jeffrey D. Shewchuk of Kinney & Lange, P.A.
for Newport Scientific Pty. Ltd.
______

Before Quinn, Wendel and Holtzman, Administrative
Trademark Judges.

Opinion by Wendel, Administrative Trademark Judge:

Newport Scientific Pty. Ltd has filed an application
to register the mark NEWPORT SCIENTIFIC and design, as
shown below, for “food analysers for assessing and
determining viscosity properties of foodstuffs, including
milk and dairy products, cereals, grains, and derivative
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 115,002
2
products thereof such as cooked starch, bread, and
flour.”1

Newport Electronics, Inc. has filed an opposition to
registration of the mark on the ground of priority and
likelihood of confusion under Section 2(d) of the
Trademark Act. In the notice of opposition, opposer
alleges the manufacture, distribution and sale by it of
a wide variety of equipment for industrial applications
including analyzers and flowmeters since 1968; the use of
the mark NEWPORT for its products since 1968; the
ownership of several registrations for the mark NEWPORT
for industrial and scientific equipment including
analyzers and flowmeters;2 and the likelihood of confusion

1 Serial No. 75/299,671, filed May 28, 1997, claiming a first
use date of February 24, 1986 and a first use in foreign
commerce between the United States and Australia date of March
11, 1987. A disclaimer has been made of the word SCIENTIFIC.

2 Opposer alleges ownership of Registration Nos. 1,656,111;
1,794,794; 2,263,919; 2,106,737 and Application Serial No.
75/387,724 (later issued as Registration No. 2,337,118). These
registrations in their entireties cover the mark NEWPORT for a
wide variety of industrial and scientific equipment. We note
the following portions of certain of these registrations:
Registration No. 1,794,794, issued September 28, 1993,
for “meters and multimeters; namely, temperature meters
Opposition No. 115,002
3
with applicant’s use of the mark NEWPORT SCIENTIFIC in
connection with its analyzers for industrial
applications, namely analyzing the viscous properties of
foodstuffs.
Applicant, in its answer, denied the majority of the
allegations in the notice of opposition, although
admitting opposer’s ownership of the pleaded
registrations.
The Record
The record consists of the pleadings; the file of
the involved application; opposer’s testimony deposition,
and accompanying exhibits, of Michael Buskirk, opposer’s

... pressure meters... flow meters”;
Registration No. 2,263,919, issued July 27, 1999,
for “industrial and scientific equipment for measuring,
controlling, and/or regulating temperature, humidity,
pressure, strain, force, flow, level, pH, ... and
acquisition, display and retrieval of data regarding
temperature, humidity, pressure, strain, force, flow,
level, pH...namely, analyzers, namely, signal analyzers,
voltage analyzers, process loop analyzers; ... flowmeters,
namely, conductive fluid flowmeters, DC pulse style
flowmeters, electromagnetic flowmeters, analog input
flowmeters, high viscosity flowmeters, vortex flowmeters,
magnetic flowmeters, liquid flowmeter, high pressure
flowmeter, mechanical flowmeter, paddlewheel flowmeter,
position displacement flowmeters”;
Registration No. 2,106,737, issued October 21, 1997,
for “catalogs, technical and scientific handbooks,
textbooks, and technical reference textbooks about
measuring, controlling and/or regulating temperature,
humidity, pressure, strain, force, flow, level ...
and acquisition, display and retrieval of data regarding
temperature, humidity, pressure, strain, force, flow,
level ... .”

Opposition No. 115,002
4
Marketing Project Manager; copies of six registrations
owned by opposer3 and certain printed publications made of
record by opposer’s notice of reliance; applicant’s
testimony depositions, and accompanying exhibits, of Dick
T. Metzger, Product Manager of Foss North America and
Rodney Booth, Managing Director of applicant; copies of
third-party registrations and web pages made of record by
applicant’s notice of reliance;4 and opposer’s rebuttal
evidence of copies of official records introduced by
means of a notice of reliance. Both parties have filed
briefs and both participated in an oral hearing of the
case.
Opposer was incorporated in 1965 and began using its
NEWPORT mark in the 1960’s. Opposer’s business is signal
conditioning and electronic instrumentation, with its
main manufacture being digital instrumentation. Opposer

3 Only three of these registrations are pleaded registrations.
Copies were not made of record of either Registration Nos.
1,794,794 or newly issued 2,337,118. Copies were made of two
registrations in which the mark covered is not NEWPORT in typed
drawing form but rather N NEWPORT in a design format. Moreover,
although opposer describes the copies made of record as being
“status” copies, these are not status and title copies of the
registrations as are prepared and issued by the Office. They
are merely photocopies of the registrations or printouts
obtained from the Office search system, which fail to show the
current status and title of the registrations.

4 Although applicant has not followed the proper procedure in
making these web pages of record, see Raccioppi v. Apogee, Inc.,
Opposition No. 115,002
5
sells its products to process industries in general,
including the oil industry, the food processing industry,
the chemical processing industry, the pharmaceutical
industry, and others. Specific longstanding customers of
opposer in the food processing industry to whom opposer
has been selling goods since prior to 1986 include
Ralston Purina, Miller Brewing, and Quaker Oats. The
types of products sold to the food processing industry
include temperature measurement products, flow and
pressure measurement products, and calorimeters for pH
measurement. Opposer manufactures products which have
been used to control viscosity, such as its temperature
and pressure products. Specifically, some printing
customers control the viscosity of their ink by
controlling the temperature and flow of the product.
Opposer has promoted its mark and products in the
food processing industry by advertisements in trade
journals, press releases and through trade shows.
Opposer has been listed in equipment directories directed
to the food processing industry since prior to 1986.
Opposer sells its products to the food processing
industry either directly, through authorized
distributors, or through trade shows and has done so

47 USPQ2d 1368 (TTAB 1998), opposer has not objected thereto.
Opposition No. 115,002
6
since prior to 1986. By the introduction of annual
reports from 1972-1989 opposer has demonstrated that
opposer has produced instruments for the measurement of
flow since at least 1972. In the 1979 report (Exhibit 5)
the following description is given of opposer’s products:
Newport digital panel meters are used to measure
and display electrical signals related to
physical parameters such as temperature, pressure
flow, speed and weight. Such parameters are
measured
by sensors that convert stimuli from physical
phenomena to electrical signals.

Use of opposer’s NEWPORT mark on instruments of this
nature since at least 1972 has also been demonstrated.
Opposer has been selling products to the food
processing industry, in particular instruments to measure
flow, since at least 1972. One type of flow measurement
instrument presently being sold is the paddlewheel flow
sensor which is ideal for solutions having low viscosity
and low suspended solid content. (Exhibit 23). These
flow sensors sell for $200-$225. In general, opposer has
more than 50 customers, and probably over 100, in the
food processing industry.
Applicant was incorporated in 1985 in Australia for
the purpose of developing a device to test for weather
damage to wheat. The outcome of this project was

Accordingly, the web pages are considered of record.
Opposition No. 115,002
7
applicant’s product, the Rapid Visco Analyser, prototypes
of which were introduced to the market in 1985-1986 and
first sold commercially in 1987. The basic concept of
this instrument revolves around cooking a sample of
ground wheat in water and measuring the viscosity of the
resulting paste. Although originally developed to
measure the activity of alpha-amylase in weather damaged
wheat, uses of the instrument have expanded to measure
the viscous properties of the starch that comprises the
sample by means of the cooking process and has been
applied to all grains containing starch or manufactured
or modified starches, all of which is highly useful to
the food industry. In operation, the sample in slurry
form, is stirred with a paddle and the torque required to
keep the paddle at a constant speed while the sample is
heated and/or cooled is recorded. The torque is then
equated to a number in centipoise which is a universal
number used to indicate viscosity measurements. The
instrument is used, inter alia, by grain traders, flour
millers, bread, cake and biscuit bakers, starch refiners,
plant breeders, seed companies, pet, snack and breakfast
food extruders, breweries and maltsters. (Applicant’s
Exhibit 3).
Opposition No. 115,002
8
In 1988 Foss Food Technology, later known as Foss
North America (Foss), became applicant’s exclusive
distributor in the United States. Since that time
applicant, through Foss, has sold about 300 units in the
United States. There are various models, ranging in
price from around $34,000 to $14,000. Sales are advanced
by means of the Foss sales force, by advertisements in
certain magazines such as Cereal Foods World and by
participation in trade shows. A sale is typically made
after direct contact of a Foss regional sales manager
with someone in the food industry and following
considerable interchange, and perhaps a demonstration of
the product. The same type of selling process is used by
applicant’s two main competitors. Applicant’s products
are not available through retail locations or over the
Internet. In general, purchasers of applicant’s product
are persons in corporations in research and development
positions who typically have advanced technical degrees
and very experienced work backgrounds. Another group of
customers are academic scientists in universities or
organizations who use the instrument for developing new
genetic material or applications for cereal crops. In
most instances, the sale involves a multi-person decision
Opposition No. 115,002
9
making process. Most installations are performed by Foss
employees.
Applicant’s witness Mr. Booth named four other
“Newport” companies in the instrumentation field, namely,
Newport Corporation, a supplier of optical equipment and
instrumentation; Newport Components, a supplier of
electrical equipment; Newport Glass, a supplier of
special optical glass blanks; and a Newport Scientific
company from Jessup, Maryland, a supplier of high-
pressure pumps and hygrometers and hygrometric controls
and recorders.
Applicant’s witness Dick Metzger defined “viscosity”
as
“the resistance to the flow of a liquid.” (Deposition
p.75). While he agreed that “flow” might be considered a
parameter in the measurement of velocity, he was not
aware of any flowmeter which could be used to measure
viscosity. Mr. Booth described “flow measurements” as
being used to “ascertain the quantity of fluid passing
through a pipe,” whereas the “viscosity” is a property of
the liquid itself and the term “viscous properties” is
used to describe “the performance of a material under
different changes of temperature and shear rate.”
(Deposition p.77-78).
Opposition No. 115,002
10

The Opposition
Considering first the issue of priority, we note
that, as previously pointed out, the copies of its
registrations which opposer has made of record by means
of its notice of reliance do not qualify as status and
title copies of the registrations. Although applicant
has admitted in its answer that opposer is the owner of
the registrations pleaded in the notice of opposition,
applicant has made no admission as to the status of these
registrations. Thus, the issue of priority cannot be
determined on the basis of opposer’s ownership of valid
and subsisting registrations. Cf. King Candy Co., Inc.,
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). Nonetheless, we find the evidence of
record sufficient to establish that opposer has marketed
digital panel instrumentation under its NEWPORT mark,
particular instruments for flow measurement, since at
least 1972. Applicant has neither shown nor claimed use
earlier than at least 1986. Opposer has clearly
established priority and applicant has made no arguments
to the contrary.
Turning to the issue of likelihood of confusion, we
take under consideration all of the du Pont factors which
Opposition No. 115,002
11
are relevant under the present circumstances and for
which there is evidence of record. See E.I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
We look first to the marks of the parties and the
similarity or dissimilarity thereof. Opposer’s mark as
pleaded is the typed mark NEWPORT. Opposer has also made
registrations of record in which the mark is N NEWPORT in
the following design format:

Applicant’s mark is NEWPORT SCIENTIFIC and design, as
previously depicted.
Opposer contends that its marks and the mark of
applicant are essentially identical, in that the word
NEWPORT is identical and the latter portion of
applicant’s mark, the term SCIENTIFIC, is a generic term
which “neither adds to nor detracts from” the commercial
impression of the mark. Applicant, on the other hand,
insists that the design portion and the SCIENTIFIC
portion of its mark cannot be ignored. Applicant argues
that the fanciful design element is just as prominent as
the word portion of its mark and would have considerable
source-indicating significance. Applicant also argues
Opposition No. 115,002
12
that the additional word SCIENTIFIC serves to distinguish
applicant’s mark as a whole from opposer’s marks.
Although the marks involved must be considered in
their entireties, there is nothing improper, under
appropriate circumstances, in giving more or less weight
to a particular portion of a mark. See In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Moreover, although descriptive or disclaimed matter
cannot be ignored in comparing the marks, it is also a
fact that consumers are more likely to rely on the non-
descriptive portion of a mark as an indication of source.
See Hilson Research Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423 (TTAB 1993). In addition, it
is the word portion of a mark, rather than the design
features, unless particularly distinctive, that is more
likely to be remembered and relied upon by purchasers in
referring to the goods and thus it is the word portion
that will be accorded more weight in determining the
similarity of the involved marks. See Ceccato v.
Manifattura Lane Gaetano Marzotto & Figli S.p.A., 32
USPQ2d 1192 (TTAB 1994).
Applying these principles, we find the word NEWPORT
to be the dominant portion of both opposer’s and
applicant’s marks. The descriptive term SCIENTIFIC in
Opposition No. 115,002
13
applicant’s mark, and acknowledged as being descriptive
by applicant by its disclaimer thereof, has little
source-indicating significance. Moreover, even though
the design feature of applicant’s mark may be fanciful
and perhaps eye-catching, it is the word portion, and
particularly the word NEWPORT which will be remembered
and relied upon by purchasers in calling for the goods.
All in all, we find the marks, when considered in their
entireties, highly similar in overall commercial
impressions.
Considering next the respective goods, opposer takes
the position that both opposer’s and applicant’s goods
are electronic instruments for analyzing, measuring and
controlling variable parameters and thus are functionally
similar. Opposer argues that its goods are inclusive of
devices capable of measuring time, temperature, torque,
speed and more directly, flow and flow rate and that at
least some of its products have been used collectively to
measure and control viscosity, as in controlling the
viscosity of ink or oil. Thus, argues opposer, the
nature of applicant’s food analyzers for determining the
viscosity of foodstuffs, which makes independent
measurements of time, torque and temperature to determine
the viscosity, is consistent with the discrete parametric
Opposition No. 115,002
14
measurements performed by a number of instruments
produced and sold by opposer.
Applicant contends that the goods of the parties are
drastically different, applicant’s food analysis
equipment being totally separate from the electrical
analysis equipment of opposer. Applicant argues that the
purpose of opposer’s paddlewheel flow sensors, which are
“apparently the goods which [opposer] deems closest to
the food analyzers,” is to make a purely quantity
measurement, namely, the quantity of material moving past
a point in a pipeline. By contrast, applicant argues,
its food analyzers determine the viscosity of foodstuffs
at multiple points along the heating/cooking cycle or, as
stated in the identification of goods, the “viscosity
properties” of the material.
Applicant argues that the term “flow” as used in
connection with a flowmeter has a much different meaning
than when used in the definition of “viscosity” as
“resistance to flow.” A flowmeter measures a quantity of
material moved or the speed at which it is moved, whereas
“viscosity” is a parameter of the internal state of a
fluid.
Applicant asserts that the mere fact that “flow” is one
of the parameters which may be used to derive viscosity
Opposition No. 115,002
15
should not be determinative. Time is a similar
parameter; yet, applicant argues, a stopwatch is not
similar to a flowmeter and neither a flowmeter nor a
stopwatch is similar to applicant’s food analyzers for
determining viscosity properties.
Applicant further argues the cost differential in
the goods of the parties as a distinguishing factor,
applicant’s food analyzers usually selling for over
$20,000 whereas opposer’s paddlewheel flow sensors sell
for $200-$225. In addition, applicant asserts there is
no cross-over of record between companies that market
either food analyzers such as applicant’s or viscometers
of any type and flowmeters, pointing to testimony of
Rodney Booth that to his knowledge there was no such
cross-over. (Deposition pp. 74-76).
As for the analyzers upon which opposer is relying
in its notice of opposition, applicant notes that none of
opposer’s registrations cover “analyzers” in general, but
rather the two which contain references to analyzers
specifically limit the same to “signal analyzers, voltage
analyzers and process loop analyzers.” All of these,
applicant asserts, are not at all similar to food
analyzers.
Opposition No. 115,002
16
As a general principle, it is not necessary that the
goods of the parties be similar or even competitive to
support a holding of likelihood of confusion. It is
sufficient if the respective goods are related in some
manner and/or that the conditions surrounding their
marketing are such that they would be encountered by the
same persons under circumstances that could, because of
the similarity of the marks used thereon, give rise to
the mistaken belief that they emanate, or are associated
with, the same source. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993) and the cases cited
therein.
From the basic definitions of “flow” and
“viscosity,” it is apparent that the flowmeters of
opposer and the food analyzers for determining viscosity
properties of applicant, sometimes referred to as
“cooking viscometers,” are not similar types of
instrumentation used for similar purposes. Although flow
may be considered as one of the parameters involved in
the determination of viscosity, the complex measurement
of the viscosity properties of a material over a range of
temperatures and a period of time is a much different
measurement from that of flow at a particular point in a
system. Clearly the objectives for the use of
Opposition No. 115,002
17
applicant’s food analyzers are far different from the
flowmeters of opposer. In a similar vein, the specific
analyzers of opposer differ significantly in operation
and purpose from the food analyzers of applicant.
Nonetheless, the question is not whether the goods
of the parties are similar or even competitive, but
rather whether a relationship of some type exists between
the goods and/or whether they would be likely to be
encountered by the same persons who might believe that
emanate from the same source, if similar marks are used
thereon. In this respect, we have little evidence of
record to guide us in determining the exact points of use
of opposer’s various digital panel instruments. Opposer
simply has produced evidence that its products have been
marketed continually over the years to the food
processing industry. We can only assume, from the nature
of the measurements being made, particularly by the
flowmeters on which opposer has placed its emphasis in
this opposition, that these are instruments used in the
food processing itself, or “on-line,” to control or
measure process parameters, rather than in any laboratory
or scientific studies being conducted with respect to the
foodstuffs involved. Such an assumption appears to be
totally in line with opposer’s testimony to the effect
Opposition No. 115,002
18
that its products are sold to the process industry in
general.
Applicant’s food analyzers, on the other hand, have
been shown to be used in the laboratory, whether
commercial or academic, for the study of the viscous
properties of various foodstuffs, normally starch-
containing materials. This differentiation in area of use
and purpose for use leads us to conclude that, regardless
of the fact that opposer’s instruments may measure some
of the individual parameters which are involved in a
viscosity measurement or may be used to control
viscosity in an industrial process, the products of the
parties are not sufficiently related that purchasers
would be likely to assume a common source.
This leads us to a consideration of the channels of
trade for the respective products. There is no question
that the goods of both are marketed to the food
processing industry in general. Opposer has named
specific customers, including a cereal manufacturer and a
brewery, which are similar to those of applicant.
Opposer’s products have been listed in equipment
directories for the food processing industry.
Applicant’s product is by definition directed to use in
the food industry.
Opposition No. 115,002
19
The distinctions come in the means by which sales
are carried out. Applicant has shown that its sales are
advanced by direct contact between a sales representative
of applicant’s exclusive distributor Foss and the
potential customer, who usually is a person with an
advanced technical degree and an experienced work
background. The sales process involves considerable
interchange and a multi-level decision making process.
The product is installed by Foss employees. Applicant
has introduced testimony that applicant’s products are
not sold through any retail locations and cannot be
purchased over the Internet.
Opposer, on the other hand, has made no evidence of
record of any such personalized sales operation or of the
nature of its customers. Applicant has introduced a
portion of opposer’s website showing that opposer’s
products such as the paddlewheel flow sensors can be
purchased over the Internet.
Moreover, although two parties conduct business not
only in the same fields but also with some of the same
companies, the mere purchase of the goods of both parties
by the same institution does not, by itself, establish
similarity of trade channels or overlap of customers.
The likelihood of confusion must be shown to exist not in
Opposition No. 115,002
20
a purchasing institution, but in a customer or purchaser.
Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388,1391 (Fed. Cir.
1992), citing Astra Pharmaceuticals Prods. v. Beckman
Instruments, 718 F.2d 1201, 220 USPQ 786, 790 (1st Cir.
1983). Here we have evidence that applicant’s food
analyzers are purchased by highly experienced persons
with advanced technical degrees and that the actual
purchase goes through a multi-level chain of approval.
The purchases are obviously directed toward use of the
food analyzers in a laboratory setting.
There is no evidence of record, however, as to the
particular purchasers of opposer’s products or the
selling process involved. From the very differences in
the nature and the costs of the goods of the parties, we
can only assume that opposer’s products are purchased by
other than laboratory personnel and are intended for use
in the food processing areas per se. Thus, although the
goods of the parties may both be purchased by the same
companies in the food processing industry, we are led to
conclude that there is little likelihood that the actual
purchasers of these goods would be the same.
Here the channels of trade factor is closely
intertwined with the du Pont factor directed to the
Opposition No. 115,002
21
conditions under which the purchases are made and the
sophistication of the purchasers making these purchases.
Opposer argues that, even though applicant’s customers
may be sophisticated, this is not a conclusive factor
against likelihood of confusion in this case, given the
wide variety of electronic products for industrial and
scientific use marketed by opposer.
We cannot ignore, however, the expense involved in
the purchase of applicant’s food analyzers, running from
$14,000-$34,000 or the level of expertise of those
involved in the purchase of these analyzers. By
contrast, the only evidence of record with respect to
opposer’s goods shows products ranging from $200-$225.
The level of expertise or nature of the purchasers of
opposer’s products is unknown. As stated in Electronic
Design & Sales, again citing Astra, “there is always less
likelihood of confusion where the goods are expensive and
purchased after careful consideration.” Id. at 21 USPQ
1392. We find the nature of the goods, the
individualization of the sales and the level of expertise
of the purchasers to be strong factors in applicant’s
favor.
Applicant has also introduced evidence with respect
to the use of similar Newport marks by third-parties for
Opposition No. 115,002
22
similar goods. Although applicant argues that there are
a large number of Newport marks being used in the United
States, the testimony of Mr. Booth was limited to the use
by four other companies of Newport marks in the
instrumentation field. The use or registration of
Newport marks for non-similar goods or services is
irrelevant and applicant’s evidence to this effect has
been given no consideration. Opposer argues, however,
that it has sought to enforce its mark and has made of
record evidence of the consent decree whereby one of the
four companies named by applicant, Newport Components and
related companies, is enjoined from using the word
“Newport” and of the infringement action which it is
taking against another of the companies, Newport
Corporation. (Exhibits 40 and 41). The evidence is
clearly insufficient to establish that NEWPORT is a
commonly used mark in the instrumentation field or that
opposer’s mark is entitled to less than the normal scope
of protection.
Finally, applicant has raised the factor of the
absence of any evidence of actual confusion, despite the
Opposition No. 115,002
23
concurrent use of the marks since at least 1987. This
factor also inures to applicant’s benefit.5
Accordingly, on the basis of the cumulative
differences in the nature of the goods, the differences
in the actual purchasers of the goods, the nature of the
process involved in the purchase of applicant’s goods,
and the sophistication of the purchasers involved in the
selection of applicant’s food analyzers, we find no
likelihood of confusion, despite the similarity of the
marks. As stated in Electronic Design & Sales, 21 USPQ2d
at 1391, citing Witco Chem. Co. v. Whitfeld Chem. Co.,
418 F.2d 1403, 164 USPQ 43, 44-45 (CCPA 1969), aff’g. 153
USPQ 412 (TTAB 1967):
We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake
or with de minimis situations but with the
practicalities of the commercial world, with
which the trademark laws deal.

Decision: The opposition is dismissed.

5 Opposer’s argument that the advertising by Foss often fails to
show use in a clear and complete fashion of applicant’s mark in
connection with the goods is irrelevant to the issue of
likelihood of confusion, the only issue before us.