Pantech Co., Ltd.

Trademark Trial and Appeal Board

Apr 27, 2010

No. 77501046 (T.T.A.B. Apr. 27, 2010)

Hearing: Mailed: April 27, 2010
March 11, 2010

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Pantech Co., Ltd.
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Serial No. 77501046
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Hae-Chan Park and Wayne M. Hedge of H.C. Park & Associates,
PLC for Pantech Co., Ltd.

Courtney McCormick, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Hairston, Zervas and Mermelstein, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Pantech Co., Ltd. filed an application to register the
mark PANTECH BREEZE for goods ultimately identified as
“wireless telephone transmitters and receivers for use
other than broadband wireless access” in International
Class 9.1

1 Application Serial No. 77501046, filed on June 17, 2008,
alleging first use anywhere and in commerce on May 27, 2008.
THIS OPINION IS NOT A
PRECEDENT OF
THE TTAB
Serial No. 77501046
2
The trademark examining attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when used in connection with applicant’s goods, so
resembles the previously registered mark BREEZEACCESS for
“equipment and accessories for broadband wireless access,
namely, computer hardware, computer software for broadband
wireless access, cables, modems, telephones,
telecommunications switches, antennas, transmitters,
receivers, boards for broadband wireless access, wireless
adapters, and wireless network bridges,”2 as to be likely to
cause confusion.
When the refusal was made final, applicant appealed.
Both applicant and the examining attorney filed briefs, and
appeared at the oral hearing.
Our likelihood of confusion determination under
Trademark Act 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 and 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

2 Registration No. 2671432, issued on January 7, 2003; Section 8
affidavit accepted, Section 15 affidavit filed.
Serial No. 77501046
3
USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling
Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003);
and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531 (Fed. Cir. 1997). In any likelihood of confusion
analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We first turn to a consideration of the goods. It is
well settled that it is not necessary that the goods at
issue be similar or competitive, or even that they move in
the same channels of trade, to support a holding of
likelihood of confusion. It is sufficient instead that the
respective goods are related in some manner, and/or that
the conditions and activities surrounding the marketing of
the goods are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. See In
re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
In order to show a relationship between the respective
goods, the examining attorney has made of record a large
Serial No. 77501046
4
number of use-based third-party registrations which
indicate that entities have registered their marks for
goods of the type listed in applicant’s application and for
goods of the type listed in the cited registration.
Although third-party registrations are not evidence that
the marks shown therein are in commercial use, or that the
public is familiar with them, they nevertheless are
probative evidence to the extent that they suggest that the
goods or services identified therein are of a type which
may emanate from a single source under a single mark. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86
(TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467 (TTAB 1988). In addition, the examining attorney
submitted printouts of the web pages of several entities
which offer wireless telephone transmitters and receivers
for use other than for broadband wireless access, on the
one hand, and equipment and accessories of the type listed
in the cited registration for broadband wireless access, on
the other hand, under a single mark. Based on this
evidence, we find that the respective goods are related.
As regards the trade channels and classes of
purchasers, we note that there are no trade channel
restrictions or limitations in either applicant’s
identification of goods or registrant’s identification of
Serial No. 77501046
5
goods. We therefore must presume that the respective goods
are marketed in all normal channels of trade for such goods
and to all the usual classes of purchasers for such goods.
In re Elbaum, 211 USPQ 639 (TTAB 1981). Indeed, the
webpage printouts submitted by the examining attorney show
that applicant’s and registrant’s types of goods are
offered by cell phone providers to ordinary consumers.
Thus, at the very least, the channels of trade and
purchasers are overlapping.
Turning then to the marks, there has been extended
discussion in the briefs and in the oral argument
concerning what portion of each mark may be considered the
dominant element, with the examining attorney asserting
that the word BREEZE is the dominant portion of each mark.
Furthermore, the examining attorney maintains that the
addition of a house mark to a registered mark does not
avoid confusion, and that in this case, applicant’s
addition of its house mark, PANTECH, to the registered mark
does not avoid confusion.
The dominant element of a mark means the portion that
is likely to be noted as signifying the source of the
goods. We agree with the examining attorney that the word
BREEZE in the cited registration should be given more
weight in our likelihood of confusion analysis. ACCESS is
Serial No. 77501046
6
a descriptive term for registrant’s goods which are used in
connection with broadband wireless access, and therefore
consumers are not likely to regard it as having much
source-identifying value. We do not agree, however, that
the word BREEZE, as used in applicant’s mark, should be
given more weight. Rather, the term PANTECH dominates in
applicant’s mark because it is often the first portion of a
mark that is more likely to make an impression on potential
purchasers. See Presto Products Inc. v. Nice-Pac Products,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Moreover, PANTECH
appears to be a distinctive, coined term, with no meaning
(other than as a trademark), while BREEZE is an arbitrary
term, suggestive of the notion that applicant’s goods are
easy to use.3 Applicant does not dispute that PANTECH is
its house mark, and the examining attorney is correct that
the addition of a house mark to a registered mark may not
avoid confusion with the registered mark. In this case,
however, applicant has not simply added its house mark to
the registered mark. In other words, applicant’s mark is
not PANTECH BREEZEACCESS.

3 In this regard, we take judicial notice that the word “breeze”
is defined as, inter alia: “Informal. an easy task; something
done or carried on without difficulty.” Random House Online
Dictionary (2010). The Board may take judicial notice of
dictionary definitions. University of Notre Dame du Lac v. J.C.
Gourmet Food Imports Co., 213 USPQ 594, 595 (TTAB 1992), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Serial No. 77501046
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When we compare the marks in their entireties, and
give appropriate weight to the dominant portion of each
mark, we find that they are different in appearance, sound,
meaning and commercial impression. Obviously, the word
PANTECH in applicant’s mark and the word ACCESS in the
cited mark, give the marks a different appearance and
sound. As for the meanings of the marks, we have already
discussed the descriptiveness of ACCESS, and when this word
is coupled with BREEZE in connection with registrant’s
goods, applicant’s mark suggests equipment and accessories
that provide “easy access” to the internet. Applicant’s
mark, PANTECH BREEZE, on the other hand, does not have this
specific connotation, especially since applicant’s goods
are for use other than broadband wireless access. Thus,
PANTECH BREEZE and BREEZE ACCESS also convey different
connotations and commercial impressions.
Having considered the evidence of record as it
pertains to the relevant likelihood of confusion factors,
we find that confusion is unlikely to result from the
contemporaneous use of applicant’s mark PANTECH BREEZE and
registrant’s mark BREEZE ACCESS, even though the marks are
used on related goods that move in the same channels of
trade to the same classes of consumers. We find that the
dissimilarity of the marks simply outweighs the other
Serial No. 77501046
8
factors. See Kellogg Co. v. Pack’em Enterprises Inc., 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Decision: The refusal to register is reversed.