Peng

Trademark Trial and Appeal Board

Mar 6, 2008

No. 76662699 (T.T.A.B. Mar. 6, 2008)

Mailed:
March 6, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Peng
________

Serial No. 76662699
_______

Michael A. Painter of Isaacman, Kaufman & Painter, P.C.
for Heidi Peng.

Benjamin T. Allen, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Heidi Peng (Applicant) has applied to register the
mark shown below for “battery chargers and voltage
inverters” in International Class 9.1

1 Application Serial No. 76662699, filed July 7, 2006, claiming a
bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 76662699
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The Examining Attorney has finally refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§ 1052(d), based on a likelihood of confusion with two
registrations owned by different parties:
Registration No. 1859461 for the mark MARKON in
typed form for “electric generators and
alternators” in International Class 7; the
registration issued on October 25, 1994; the
registration has been renewed;

and

Registration No. 1139855 for the mark shown here
for “capacitors and varistors” in International
Class 9; the registration issued on September 23,
1980; the registration has been renewed.

Applicant has appealed the refusal. Applicant and the
Examining Attorney have filed briefs. We affirm the
refusal as to the MARKON registration, but reverse the
refusal as to the MARCON and Design mark.
EVIDENTIARY OBJECTION
Before proceeding to the merits we must address the
Examining Attorney’s objection to evidence Applicant
submitted for the first time with her appeal brief.
Serial No. 76662699
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Specifically, Applicant submitted evidence related to the
goods identified in the application and cited registrations
from Wikipedia, an online encyclopedia. Applicant also
asks that we take judicial notice of this evidence. The
Examining Attorney has objected to this evidence as
untimely. The Examining Attorney’s objection is well
taken. The record must be complete prior to appeal,
subject to certain exceptions not relevant here. See 37
C.F.R. § 2.142(d). Applicant’s submission here is
manifestly late.
Furthermore, we will not take judicial notice of
evidence from Wikipedia or other sources which are
available only online. See In re CyberFinancial.Net Inc.,
65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also In re IP
Carrier Consulting Group, 84 USPQ2d 1028 (TTAB 2007)
(Wikipedia evidence only admissible when there is an
opportunity to verify its accuracy). Accordingly, we have
not considered the Wikipedia evidence. Nonetheless, we
note that, if we had considered it, we would not decide the
case differently.
LIKELIHOOD OF CONFUSION
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
Serial No. 76662699
4
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the goods of
the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976)(“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will consider each of the factors
as to which Applicant or the Examining Attorney presented
arguments or evidence.
The Goods
The goods of Applicant and the registrants need not be
identical to find a likelihood of confusion under Trademark
Act Section 2(d). They need only be related in such a way
that the circumstances surrounding their marketing would
result in relevant consumers mistakenly believing that the
goods originate from or are associated with the same
source. See On-Line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re
Serial No. 76662699
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International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
First we will consider whether Applicant’s goods are
related to the goods in the MARKON registration.
Accordingly, we must determine whether Applicant’s “battery
chargers and voltage inverters” are related to the
registrant’s “electric generators and alternators.”
Applicant emphasizes the technical and functional
differences between its products and those in the cited
registration. Applicant asserts that its products, battery
chargers and voltage inverters, “… are electronic devices
to either recharge the energy in a battery or convert a
direct current source to an alternating current source.”
Applicant’s Brief at 6. On the other hand Applicant
asserts that electric generators and alternators “convert
mechanical energy to alternating current electrical
energy.” Id. at 4. Applicant criticizes the Examining
Attorney’s use of definitions which Appicant believes to be
too broad. Applicant states, “Where the goods, users and
channels of trade employed to sell the respecitve goods are
totally divergent, there is no relationship between the
goods sufficient to refuse registration.” Id. at 6.
Applicant concludes, as follows: “Given the standard of
what constitutes related goods, the record does not support
Serial No. 76662699
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any logical association between or joinder between the
goods defined in the application and the respective
registrations.” Id. In her argument Applicant does not
address any of the evidence the Examining Attorney
submitted to show that the goods are related, other than
the dictionary definitions.
The Examining Attorney argues that Applicant’s goods
and the goods identified in the MARKON registration are
related. To support this position the Examining Attorney
provided dictionary definitions of the goods, copies of
pages from Internet web sites showing that the respective
goods are offered for sale by the same party, and third-
party, use-based registrations showing registration of the
same mark for both types of goods.
Although the dictionary entries are of limited
probative value in determining whether the goods at issue
here are related, for completeness we begin by noting the
definitions the Examining Attorney provided from
encarta.msn.com:
Applicant’s Goods
“battery charger” – “device for restoring power
to batteries: a device for restoring power to
electrical batteries”; and

“inverter” – “2. device converting current; a
device that changes direct current into
alternating current and is commonly used on boats
Serial No. 76662699
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to operate devices such as radios from
batteries”;

Goods in MARKON Registration
“generator” – “1. device for producing
electricity: a machine or device that is used to
convert mechanical energy, such as that provided
by the combustion of fuel or by wind or water,
into electricity”; and

“alternator” – “generator of alternating current:
a device that generates alternating current,
especially in a car.”

The Examining Attorney also provided examples from the
Internet of entities involved in producing and supplying
electrical equipment which offer the types of goods
identified in both the application and the cited
registration. For example, the baldor.com web site offers
both inverters and generators; the hardysolar.com web site
offers inverters, generators and alternators; the
windandsun.com web site offers both generators and
inverters; the mastervolt.com web site offers battery
chargers, inverters and generators; the expertelectric.com
web site offers battery chargers, inverters and generators;
and the goodallmfg.com web site offers battery chargers and
generators. See Attachments to Final Office Action.
Finally the Examining Attorney has provided several
third-party, use-based registrations showing that the same
mark has been registered for both types of goods, for
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example: Registration No. 721168 which includes both
electric generators and electric battery chargers; No.
2214833 which includes electric generators, battery
chargers and electrical inverters; No. 740864 which
includes battery chargers, generators and inverters; No.
967400 which includes generators and battery chargers; and
No. 1550740 which includes battery chargers and motor-
driven electric generators for use in machines. Id.
These registrations provide some further evidence that
the goods in the application and the goods in the cited
registration are the types of goods which may emanate from
the same source. In re TSI Brands Inc., 67 USPQ2d 1657,
1659 (TTAB 2002); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993).
As we noted, Applicant has addressed neither the
Internet evidence nor the third-party registration in her
arguments. This evidence directly contradicts Applicant’s
assertion that, “… the record does not support any logical
association between or joinder between the goods defined in
the application and the respective registrations.”
Applicant’s Brief at 6. Based on the evidence of record,
in particular, the Internet evidence and the third-party
registrations, we conclude that the goods in the
application and the goods in the cited MARKON registration
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are related. We also note that the evidence indicates
that, even though the respective goods may be technically
and functionally different, the types of equipment in
question are generally placed in the same category for sale
as commercially related products.
Next we consider whether the goods in the application
are related to the goods in the cited MARCON and Design
registration. Accordingly, we must determine whether
Applicant’s “battery chargers and voltage inverters” are
related to the registrant’s “capacitors and varistors.” On
this question, we have before us the same essential
arguments and evidence from both Applicant and the
Examining Attorney as we had regarding the cited MARKON
registration. Again, for the sake of completeness we note
the relevant encarta.msn.com defintions for the goods in
the MARCON and Design registration:
Goods in MARCON and Design Regisration
“capacitor” – “electrical storage component: an
electrical component used to store a charge
temporarily, consisting of two conducting
surfaces separated by a nonconductor dielectric”;

“varistor” – “variable resisitor: a two-element
semiconductor with nonlinear resistance in which
the resistance drops as the applied voltage
increases. Varistors are often used as a safety
device to short-circuit transient high voltages
in electronic circuits.”

Serial No. 76662699
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In the case of the cited MARCON and Design
registration, in the Internet evidence, we find no evidence
that battery chargers and inverters are sold with
capacitors and varistors. In fact, the evidence suggests
that the products are fundamentally different. That is,
while Applicant’s goods are finished products, the goods in
the cited MARCON and Design registration are components of
finished electronic products. See, e.g., Attachment to
Final Office Action from highenergycorp.com. Likewise,
among the third-party registrations we find very few
examples of registrations which include both types of
goods.
Therefore, although Applicant’s mark and the cited
MARCON and Design mark may indeed be similar, the lack of
evidence to establish that the relevant goods are related
compels a determination on this record that there is no
likelihood of confusion. Accordingly, in the absence of
sufficient evidence to establish that these goods are
related, we conclude that these goods are not related.
Consequently, we find that the Office has not established a
likelihood of confusion based on Rregistration No. 1139855
for the MARCON and Design mark.
Serial No. 76662699
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The Marks
We now proceed to compare Applicant’s mark with the
cited MARKON mark. In comparing the marks we must consider
the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
must be on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks.” Sealed Air Corp. v. Scott Paper
Co., 190 USPQ 106, 108 (TTAB 1975) (internal citations
omitted).
Applicant argues that the marks differ. Specifically,
Applicant argues that the Examining Attorney failed to
consider the marks in their entireties and failed to
recognize differences in appearance and sound between the
marks. Applicant states further, “The letter ‘X’ and the
Serial No. 76662699
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design feature are both integral parts of Applicant’s mark.
The refusal to register the subject mark fails to consider
the commercial impression of all the portions of
Applicant’s mark.” Applicant’s Brief at 9.
On the other hand, the Examining Attorney argues that
the marks are similar when viewed in their entireties.
Specifically, the Examining Attorney argues that the
literal element is the dominant element in Applicant’s mark
and that the literal elements in Applicant’s mark, MARXON,
and the cited mark, MARKON, are similar. The Examining
Attorney argues further that the design element in
Applicant’s mark is minimal and insufficient to distinguish
the marks.
We concur with the Examining Attorney and conclude
that the marks, when viewed in their entireties, are
similar.
First, we conclude that here, as is most often the
case, the literal elements of the marks are dominant. See
In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d
1531, 1534-35 (Fed. Cir. 1997). In this case, the design
element in Applicant’s mark, which Applicant did not even
describe in her application, is relatively minor; it is
integrated with and subordinate to the literal element in
Applicant’s mark. Furthermore, the literal element is the
Serial No. 76662699
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only element in the cited registered mark. Finally, in
this case the common axiom regarding marks with both
literal and design elements applies, that is, literal
elements are more significant because purchasers use the
literal elements in requesting the goods. See CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983).
Although there are specific differences between the
marks in appearance, the differences are far less
significant than the similarities. Again, the design
element in Applicant’s mark is minor. Furthermore, the
cited mark is in typed form, and therefore, the cited
registration covers the registered mark in all reasonable
manners of display, including displays similar to the
display of Applicant’s mark. The difference in the literal
elements, the “X” in Applicant’s mark versus the “K” the
cited registered mark, is subtle and not significant.
Accordingly, we conclude that the marks are similar in
appearance.
We also conclude that the marks are similar in sound.
Here too, while it is arguable that the marks may be
pronounced differently due to the slight difference in
spelling, the difference in pronunciation would be subtle
and not significant. Furthermore, as the Examining
Attorney points out, there is no “correct” pronunciation of
Serial No. 76662699
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a trademark. Centraz Industries Inc. v. Spartan Chemical
Co., 77 USPQ2d 1698, 1701 (TTAB 2006); Kabushiki Kaisha
Hattori Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).
Accordingly, we conclude that the marks are similar in
sound.
Neither Applicant nor the Examining Attorney had
presented specific arguments with regard to the connotation
of either mark. The literal elements of both marks consist
of what appear to be coined terms. To the extent that the
marks may possess “connotations” the connotations of the
marks are likely to be similar due to the similarity in
appearance and sound. Accordingly we conclude that the
marks are similar in connotation.
The same analysis essentially applies with regard to
the commercial impressions of the marks. While Applicant
argues that the overall commercial impression of her mark
differs from that of the cited registered mark, based on
the design element and the difference in spelling, we do
not agree. For the reasons we discussed above, we conclude
that the differences between the marks are not significant,
and therefore, the commercial impressions of the marks do
not differ significantly.
Therefore, we conclude that Applicant’s MARXON and
Design mark and the cited MARKON mark are similar in
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appearance, sound, connotation and commercial impression,
and similar overall.
Other Arguments
Throughout Applicant has argued that the coexistence
of the two prior registrations cited here indicates that
there would not be a likelihood of confusion between
Applicant’s mark and either of the cited marks. In this
regard, we note that we are sustaining the Section 2(d)
refusal here based on only one of the two cited
registrations, the MARKON registration. More importantly,
we must decide each case on the record before us; decisions
on prior applications do not dictate a particular decision
here. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564 (Fed. Cir. 2001).
CONCLUSION
Finally, based on all evidence of record in this case
related to the du Pont factors, we conclude that there is a
likelihood of confusion between Applicant’s MARXON and
Design mark when used in connection with “battery chargers
and voltage inverters” and the cited MARKON mark when used
in connection with “electric generators and alternators.”
We conclude so because the marks are similar and the
identified goods are related.
Serial No. 76662699
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Decision: We affirm the refusal to register the mark
under Trademark Act Section 2(d) based on Registration No.
1859461. However, we reverse the refusal to register the
mark under Trademark Act Section 2(d) based on Registration
No. 1139855. Registration is refused.