Novatek Microelectronics Corp.

Trademark Trial and Appeal Board

Jun 23, 2009

No. 77018651 (T.T.A.B. Jun. 23, 2009)

Mailed: June 23, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Novatek Microelectronics Corp.
________

Serial Nos. 77018651 and 77018667
_______

Scott W. Petersen of Holland & Knight LLP, for Novatek
Microelectronics Corp.

April A. Hesik, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Hairston, Rogers and Drost, Administrative Trademark
Judges.

Opinion by Hairston, Administrative Trademark Judge:

Applications were filed by Novatek Microelectronics
Corp. to register the NOVATEK and design marks, reproduced
below,

(Serial No. 77018651)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 77018651 and 77018667
2

(Serial No. 77018667)
for goods and services ultimately identified as:
semi-conductor components, namely, semi-conductor memories;
semi-conductor diodes, semi-conductor chips, structured
semi-conductor wafers, semi-conductor transistors,
integrated circuits” in International Class 9; and “design,
maintenance, testing and analysis of computer software
systems and programming for the semi-conductor industry” in
International Class 42.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
each of applicant’s marks, when applied to its goods and
services, so resembles the mark NOVATEC, which is
registered for “research and development in the field of
manufacturing processes for the production of electronic
components and products; and research and development in
the field of packaging processes for the packaging of

1 Serial Nos. 77018651 and 77018667 were both filed October 11,
2006 and allege a date of first use anywhere of May 28, 1997 and
a date of first use in commerce of April 16, 1999. Although
applicant uses the term “semi-conductor” in the identifications
of its goods and services, throughout our decision we have used
the term “semiconductor” (without a hyphen).
Ser Nos. 77018651 and 77018667
3
electronic components and products,”2 as to be likely to
cause confusion, mistake or deception.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
Because the issue in each case is essentially the same, the
appeals have been treated in a single opinion.3
Our 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. 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. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

2 Registration No. 2532388 issued January 22, 2002; Section 8
affidavit accepted; Section 15 affidavit acknowledged.
3 We also note that the record is essentially the same in each
case.
Ser Nos. 77018651 and 77018667
4
We turn first to the du Pont factor of whether
applicant’s NOVATEK and design marks, and the cited
registered mark, NOVATEC, are similar or dissimilar, when
compared in their entireties in terms of appearance, sound,
connotation and commercial impression. The test under this
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 and/or services offered under
the respective marks is likely to result. Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
In terms of appearance, we find that the literal
portion of each of applicant’s NOVATEK and design marks is
substantially similar to the cited registered mark NOVATEC.
The only difference is the final letters “K” and “C,”
which is insufficient to distinguish the marks. In
addition, the minor stylization and design elements in
Ser Nos. 77018651 and 77018667
5
applicant’s marks are insufficient to distinguish such
marks from the cited registered mark. When a mark consists
of a word portion and a design portion, the word portion is
more likely to be impressed upon a purchaser’s memory and
to be used in calling for the goods and/or services. In re
Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Considering the respective marks as a whole, we find that
they are similar in appearance.
In terms of sound, we find that applicant’s marks and
the cited registered mark are essentially identical. While
there is no correct pronunciation of a mark, meaning there
is no way to predict precisely how a mark will be
pronounced when spoken, the marks involved in this case are
phonetic equivalents. We have no basis upon which to
conclude that they would be pronounced differently and they
are likely to be pronounced the same.
In terms of connotation and commercial impression, we
find that the respective marks, when viewed in their
entireties, have no apparent meaning. There is nothing in
the record to indicate that NOVATEK, as a whole, means
anything in particular; the same is true for NOVATEC.
Applicant argues, however, that the suffixes –TEK and
-TEC have different meanings which give the respective
Ser Nos. 77018651 and 77018667
6
marks different connotations and commercial impressions.
Specifically, applicant asserts that:
The “Tec” suffix of the cited registration is a
literal abbreviation for “Technology.” The “Tek”
suffix can be a fanciful reference to
“technology, but is the common acronym for “Time
Equals Knowledge.” Also, “NovateC” offers a
French ending to the mark while “NovateK”
suggests a Slavik or perhaps Croatian spelling.
(emphasis in original) (Brief, p. 2)

The problem is that applicant offered no support for
its contention that “TEC” is a recognized abbreviation for
the term “technology.” Nor has applicant offered any
support for its contention that “TEK “is the common acronym
for “Time Equals Knowledge,” and there is nothing of record
showing how this phrase relates to applicant’s goods and
services. Similarly, applicant offered no support for its
contention that the respective marks have different
“foreign” endings which result in different commercial
impressions.4 In short, we are unable to conclude, based on
applicant’s mere argument, that the respective marks have
different connotations and commercial impressions.

4 Applicant did, however, “invite the Examiner and this Board to
Google” the terms “TEC” and “TEK” for information concerning the
terms’ origins. (Applicant’s brief, p. 3) Suffice it to say that
if applicant wanted this Board to consider information concerning
the origin of these terms, applicant should have made such
information properly of record during the prosecution of the
applications.
Ser Nos. 77018651 and 77018667
7
In sum, we find that applicant’s marks and the cited
registered mark are highly similar in terms of appearance,
and that, as phonetic equivalents, they are legally
identical in sound. Furthermore, we find no significant
differences in the connotations and overall commercial
impressions of the respective marks that might otherwise
make confusion unlikely to result from use of the marks on
similar or related goods and services. We find that this
du Pont factor weighs in favor of finding a likelihood of
confusion.
Applicant argues that marks which consist of the term
NOVATEC and variations thereof (i.e., NOVATEK, NOVATECH,
and NOVATECK) are weak marks which are therefore entitled
to only a limited scope of protection. In support of its
position, applicant submitted copies of sixty-eight third-
party applications and registrations for such marks.
However, the existence of these third-party applications
and registrations is entitled to little weight in our
likelihood of confusion determination. Such applications
and registrations are not proof that consumers are familiar
with the marks shown therein so as to be accustomed to the
existence of the same or similar marks in the marketplace.
Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177
USPQ 462 (CCPA 1973); and Richardson-Vicks, Inc. v.
Ser Nos. 77018651 and 77018667
8
Franklin Mint Corp., 216 USPQ 989 (TTAB 1982).
Furthermore, to be entitled to any probative weight, the
third-party marks must cover goods and services similar to
the ones involved in this case. Only three of the third-
party registrations cover goods or services arguably
related to those involved herein, and one of such
registrations is owned by the cited registrant herein.
Finally, the third-party applications have no evidentiary
value other than to show that they were filed. In re
Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699 (TTAB
1992). Thus, the du Pont factor of the number and nature
of similar marks in use on similar goods and services is
neutral.
We next turn to a consideration of the du Pont factor
of the similarity or dissimilarity of the goods and/or
services. It is not necessary that the respective goods
and/or services be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods and/or services are related
in some manner, or that the circumstances surrounding their
marketing are 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
Ser Nos. 77018651 and 77018667
9
associated with the same source, or that there is an
association or connection between the sources of the
respective goods and/or services. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
In addition, the issue of likelihood of confusion is
determined on the basis of the goods and services as set
forth in the involved applications and the cited
registration, and not in light of what such goods and
services are asserted to actually be. See, e.g., Octocom
Systems, Inc. v. Houston Computers Services, Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). Thus, where applicant’s
and registrant’s goods and services are broadly identified
as to their nature and type, it is presumed in each
instance that in scope the applications and registration
encompass not only all the goods and services of the type
described therein, but that the identified goods and
services move in all channels of trade which are normal for
those goods and services and that they would be purchased
Ser Nos. 77018651 and 77018667
10
by all potential buyers thereof. See, e.g., In re Elbaum,
211 USPQ 639 (TTAB 1981).
Applying these principles to the goods and services in
this case, we find that applicant’s semiconductor
components are related to registrant’s research and
development services in the field of manufacturing
processes for the production of electronic components and
products. Applicant argues that its goods are limited to
semiconductor components whereas registrant’s services do
not include semiconductor components. However, as the
examining attorney notes, semiconductor components,
including integrated circuits, are types of electronic
components.5 Thus, we must presume that registrant’s
services encompass research and development in the field of
manufacturing processes for the production of
semiconductors and research and development in the field of
packaging processes for the packaging of semiconductors.
In other words, we cannot distinguish applicant’s goods and
registrant’s services on the basis argued by applicant.

5 In this regard, the examining attorney submitted the following
definitions from The American Heritage Dictionary of the English
Language (Fourth Edition, 2009):
“semiconductor”: 2. An integrated circuit or other electronic
component containing a semiconductor as a base material.
“integrated circuit”: A complex set of electronic components and
their interconnections that are etched or imprinted onto a tiny
slice of semiconductor material.
Ser Nos. 77018651 and 77018667
11
In support of her contention that such goods and
services are related, the examining attorney made of record
use-based third-party registrations for marks which cover
semiconductors and/or semiconductor components, on the one
hand, and research and/or development services in the field
of manufacturing processes for the production of
semiconductors. Examples include: Registration No.
2590575 for “electrical and electronic components, namely
semiconductors, semiconductor chips … research and
development services relating to the aforesaid;”
Registration No. 3275586 for “semiconductor diodes …
semiconductors, semiconductor wafers … providing research
and development … services in the field of semiconductor
manufacturing;” Registration No. 3334331 for
“semiconductors … technical consultancy in relation to the
production of semiconductors;” and Registration No. 3557650
for “semiconductors … technical research.” Use-based
third-party registrations are relevant to the extent that
they may suggest that goods and/or services are related.
See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
(TTAB 1988) [Although third-party registrations “are not
evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them,
[they] may have some probative value to the extent that
Ser Nos. 77018651 and 77018667
12
they may serve to suggest that such good or services are
the type which may emanate from a single source”]. See
also In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993). In this case, the registrations suggest that a
single entity is the source of semiconductor components, on
the one hand, and research and development services in the
field of manufacturing processes for the production of
semiconductors, on the other hand.
In addition, the examining attorney submitted Internet
printouts showing that the same entities manufacture
semiconductor components and render research and/or
development services in the field of manufacturing
processes for the production of semiconductors. For
example, Kyocera offers “cutting edge semiconductor package
products” and “operates research and development facilities
for … components …” (http://global.kyocera.com). Advanced
Linear Devices, Inc. “develops and manufactures a full line
of precision CMOS linear integrated circuits …”
(www.chipdocs.com). Allegro Micro Systems, Inc.
“specializes in the design and manufacture of advanced
mixed-signal (analog+digital) integrated circuits”
(www.chipdocs.com). Davicom Semiconductor, Inc. “designs,
develops and markets cost-effective integrated circuit (IC)
Ser Nos. 77018651 and 77018667
13
solutions for mainstream networking and communications
applications” (www.chipdocs.com).
It is well-settled that confusion is likely to result
from the use of the same or similar mark for goods, on the
one hand, and for services involving those goods, on the
other hand. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988) [BIGG’S (stylized) for
retail grocery store and general merchandise store services
held likely to be confused with BIGGS and design for
furniture]; In re United Service Distributors, Inc., 229
USPQ 237 (TTAB 1986) [design for distributorship services
in the field of health and beauty aids held likely to be
confused with design for skin cream]; and Steelcase Inc. v.
Steelcare Inc., 219 USPQ 433 (TTAB 1983) [STEELCARE for
refinishing of furniture, office furniture, and machinery
held likely to be confused with STEELCASE for office
furniture and accessories]. In view of the foregoing, we
find that applicant’s semiconductor components are
sufficiently related to registrant’s research and
development services in the field of manufacturing
processes for electronic components and products that, when
offered under the involved marks, confusion is likely to
occur.
Ser Nos. 77018651 and 77018667
14
We also find that applicant’s services of design,
maintenance, testing and analysis of computer software
systems and programming for the semiconductor industry are
related to registrant’s research and development services
in the field of manufacturing processes for electronic
components and products. Again, we must presume that
registrant’s services encompass research and development in
the field of manufacturing processes for the production of
semiconductors. The examining attorney submitted use-based
third-party registrations for marks which cover both
applicant’s and registrant’s types of services. Examples
include: Registration No. 3078667 for “software
engineering services … product research and development
services relating to … semiconductor chips or devices;”
Registration No. 2752747 for “microprocessor programming
for others of programs used in electronic chips, integrated
circuits …. research and development of techniques for
implementation of … cards with electronic chips, integrated
circuits;” Registration No. 2830416 for “authentication in
the fields of software, circuits and integrated circuits …
computer software design for others … research and
development of new products for others … in the field of
software and electronics;” Registration No. 3248723 for
“Product research and development … in the areas of …
Ser Nos. 77018651 and 77018667
15
integrated circuits … chip design … maintenance of computer
software;” and Registration No. 3143647 for “computer
software used to maintain and operate computer system for
others … semiconductor … development for others.” These
registrations suggest that a single entity is the source of
design, maintenance, testing and analysis of computer
software systems and programming for the semiconductor
industry and research and development services in the field
of manufacturing processes for electronic components and
products.
In addition, the examining attorney submitted Internet
printouts showing that the same entities offer computer
software system services for the semiconductor industry and
research and development services in the field of
manufacturing processes for semiconductors. For example,
Coventor, Inc. is a provider of modeling and analysis
automation software for semiconductor companies and
develops specific software offerings which allow companies
to reduce time-to-market and production costs in the
manufacturing process (www.conventor.com). FABNexus, Inc.
offers software development services for semiconductor
manufacturing (www.fabnexus.com). Nakota Software offers
software design services for semiconductor manufacturing
and develops specific products for the improvement of the
Ser Nos. 77018651 and 77018667
16
semiconductor manufacturing process. (www.nakota-
software.com). Under the circumstances, we find that
applicant’s services of design, maintenance, testing and
analysis of computer software systems for the semiconductor
industry, on the one hand, and registrant’s research and
development services in the field of manufacturing
processes for electronic components and products, on the
other hand, are sufficiently related that, when offered
under the involved marks, confusion is likely to occur.
Furthermore, in view of the relatedness of applicant’s
and registrant’s goods and services, we find that they
would be sold in the same or overlapping trade channels and
to many of the same purchasers, i.e., manufacturers of
semiconductors. The du Pont factors of the similarity of
the goods and services, trade channels and purchasers also
weigh in favor of finding a likelihood of confusion.
Under the du Pont factor relating to conditions of
purchase, we find that from the identifications of
applicant’s and registrant’s goods and services, they are
of a type which would be purchased by, or in consultation
with, persons knowledgeable in the field of semiconductors.
However, the fact that the purchasers would typically be
knowledgeable “does not preclude their mistaking one
trademark for another” or demonstrate that they otherwise
Ser Nos. 77018651 and 77018667
17
would be entirely immune from confusion as to source or
sponsorship. Wincharger Corp. v. Rinco, Inc., 297 F.2d
261, 132 USPQ 289, 292 (CCPA 1962). See also In re
Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983). We find that this
du Pont factor weighs slightly against a finding of
likelihood of confusion.
Finally, we turn to the du Pont factor concerning the
lack of instances of actual confusion. Applicant asserts
that it and the registrant have used their respective marks
concurrently for ten years without any instances of actual
confusion, and this shows that confusion is not likely to
occur. We are not persuaded by this argument. Applicant
has not provided any evidence as to the extent of its use,
nor is there any evidence as to registrant’s use, such that
we can determine whether there has been a meaningful
opportunity for confusion to occur. Moreover, the test
under Section 2(d) is not actual confusion but likelihood
of confusion. See In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003)[“uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value.”] Thus, the du Pont factor of
the lack of instances of actual confusion is neutral.
Ser Nos. 77018651 and 77018667
18
Balancing the du Pont factors in this case, we
conclude that a likelihood of confusion exists, in view of
the similarity of the respective marks, goods and services,
trade channels and purchasers.
Decision: The refusals to register in application
Serial Nos. 77018651 and 77018667 are affirmed.