Paul Hartmann AG

Trademark Trial and Appeal Board

Sep 11, 2003

No. 76291151 (T.T.A.B. Sep. 11, 2003)

Mailed: 11 SEP 2003
Paper No. 12
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Paul Hartmann AG
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Serial No. 76/291,151
_______
Kathleen G. Mellon of Young & Basile, P.C. for Paul
Hartmann AG.
Idi Aisha Clarke, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Bucher, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On July 27, 2001, Paul Hartmann AG (applicant) applied
to register the mark OMNITAPE (typed drawing) on the
Principal Register for goods ultimately identified as
“medicated plasters, materials for surgical and medical
dressings, bandages and bands for medical use, namely,
gauze, medicated gauze, and adhesive tape bandages" in
International Class 5.1
1 Serial No. 76/291,151. The application is based on applicant’s
ownership of German Registration No. 976,529.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/291,151
2
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). The examining attorney held that applicant’s
mark as used on its goods was likely to cause confusion, to
cause mistake, or to deceive in view of the cited
registration for the mark OMNI-TAPE, in typed form, for:
hook-and-loop fasteners that adhere upon self-contact
and padding material having hook-and-loop fasteners
that adhere upon self-contact, all for medical use;
namely, use in or as medical splints, straps, cinching
straps and belts; breathable liner padding
incorporating such hook-and-loop fasteners intended
for medical use; namely, use as a liner for medical
splints, straps, cinching straps and belts; medical
splits, straps, cinching straps and belts for medical
use; namely, restraint of the limbs and/or the body in
connection with operating tables, stretchers, wheel
chairs, braces, splints, crutches and the like
in International Class 10.2
After the examining attorney made the refusal final,
this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
2 Registration No. 1,901,189 issued June 20, 1995, affidavits
under Sections 8 & 15 accepted or acknowledged.
Ser No. 76/291,151
3
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
First, we compare applicant’s mark OMNITAPE and
registrant’s mark OMNI-TAPE. Both marks feature the same
terms, OMNI and TAPE, in the same order. The only
difference is the fact that applicant spells its mark as
one word while registrant connects the words “omni” and
“tape” with a hyphen. The marks are not significantly
different. Seaguard Corp. v. Seaward International, Inc.,
223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are
“essentially identical”). Similarly, the presence of a
hyphen does not significantly change the appearance of the
marks. “Applicant acknowledges that its mark OMNITAPE, and
the cited registered mark, OMNI-TAPE, are virtually
identical.” Response dated March 11, 2002, page 2. When
the marks are considered in their entireties, the marks
would still be pronounced identically and their meaning and
commercial impression would be the same. Therefore, we
agree that the marks OMNITAPE and OMNI-TAPE are virtually
identical.
Ser No. 76/291,151
4
The next factor we consider is whether the goods of
applicant and registrant are related. The key to this
issue is a comparison of the goods in the application’s and
registration’s identification of goods. Octocom Systems,
Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is
legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”). See also In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997) (punctuation in original), quoting, Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813, 1816 (Fed. Cir. 1987) (“‘Likelihood of
confusion must be determined based on an analysis of the
mark applied to the … [goods or] services recited in
applicant’s application vis-à-vis the … [goods or] services
recited in [a] … registration, rather than what the
evidence shows the … [goods or] services to be’”).
Ser No. 76/291,151
5
Applicant makes several arguments to counter the
examining attorney’s position that the goods are related.3
“While the marks may be similar, a purchaser would not
associate Applicant’s medical gauze and adhesive tape
bandages with hook-and-loop fasteners sold to manufacturers
of medical products such as splints, belts, cinching straps
and restraining straps for use on operating tables,
stretchers, crutches and wheel chairs.” Applicant’s Brief
at 8. “The Registrant is selling a component to
manufacturing entities.” Reply Brief at 2. “A person
would not go to a pharmacy and buy an OMNI-TAPE splint.”
Reply Brief at 2. However, the examining attorney
correctly points out that registrant’s goods are not
limited to sales to manufacturers. Indeed, “the
registration states that the goods may be used for ‘use in
or as medical splints.’” Examining Attorney’s Brief at 5
(emphasis in original). In as much as the registrant’s
identification of goods indicates that its goods can be
used as medical splints, we have no basis to limit
registrant’s goods to those that are sold as components to
manufacturers and not to the general public. Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
3 We have not considered applicant’s evidence submitted for the
first time with its appeal brief. 37 CFR § 2.142(d).
Ser No. 76/291,151
6
1983)(“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts
the usage of SQUIRT for balloons to promotion of soft
drinks. The Board, thus, improperly read limitations into
the registration”).
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). Furthermore,
when both parties are using virtually the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar.” Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981). See also In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993) (“[E]ven when goods or services are not competitive
or intrinsically related, the use of identical marks can
lead to an assumption that there is a common source”).
Ser No. 76/291,151
7
Here, we must assume that registrant’s hook-and loop
fasteners used as medical splints would be sold through the
same channels of trade to the same purchasers as
applicant’s gauze, medicated gauze, and adhesive tape
bandages. We simply cannot agree with applicant’s
assertion that the “goods are entirely different, are
promoted differently, travel in different channels of trade
and are sold to purchasers for different purposes.”
Applicant’s Brief at 12. While the goods are not the same,
we have no reason to conclude that the purchasers of
fasteners used as medical splints on one hand and medical
gauze and adhesive tape on the other hand would not
overlap. Both individuals and medical personnel may need
to use and purchase both gauze and a splint at the same
time. They would likely be sold in some of the same stores
such as pharmacies. We are unaware of any reason why the
promotion of these items would be different. While it is
possible that some of registrant’s products may be sold to
manufacturers, the identification of goods certainly does
not limit the mark to those channels of trade. While
applicant has included a page from a website and argued
that registrant’s “goods are clearly for industrial use,”
(Supplemental Response to Office Action, page 1), an
applicant cannot limit the scope of a registration in this
Ser No. 76/291,151
8
manner. Furthermore, even if the registrant only displays
a single item on a web page, that does not establish that
this is the only product on which registrant is using mark.
We conclude that when the marks OMNITAPE and OMNI-TAPE
are used on the goods in the application and registration,
there is a likelihood of confusion. We note that even if
we had any doubts about whether there is a likelihood of
confusion, we must resolve them in favor of the prior
registrant and against the newcomer. In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973); In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.