Porous Media Corp.

Trademark Trial and Appeal Board

Jan 11, 2005

No. 76285935 (T.T.A.B. Jan. 11, 2005)

1/11/2005
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B.
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
Trademark Trial and Appeal Board
_____________
In re Porous Media Corporation
____________
Serial No. 76285935
_____________
Carl L. Johnson of Jacobson and Johnson for Porous Media
Corporation.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_____________
Before Hanak, Hairston and Rogers, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Porous Media Corporation (applicant) seeks to register
in typed drawing form CHEMFLEX for “general industrial use
filter media, namely, air filters for industrial
installations.” The application was filed on July 2, 2001
with a claimed first use date of June 1, 1992.
Citing Section 2(d) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark, as applied to applicant’s goods, is
Ser. No. 76285935
2
likely to cause confusion with the mark CHEMI-FLEX
previously registered in typed drawing form for
“environmental control apparatus, namely, air filtration
units for use in clean rooms.” Registration No. 2,237,756.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. 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.”).
Considering first the marks, we note that marks are
compared in terms of visual appearance, pronunciation and
connotation, if any. In terms of visual appearance, the
marks are extremely similar. Applicant’s mark (CHEMFLEX)
contains, in the identical order, all but two of the
characters found in the cited mark, namely, the letter “I”
and the hyphen. Moreover, in terms of pronunciation, the
two marks are at a minimum extremely similar. This is
Ser. No. 76285935
3
particularly true inasmuch as individuals would not
pronounce the hyphen in the cited mark. That is to say,
individuals would not pronounce the cited mark as CHEM
HYPHEN FLEX. Some individuals could also easily overlook
the internal letter “I” in the very middle of the cited
mark and thus would pronounce the two marks in the
identical manner. It must be remembered that there is no
correct pronunciation of a trademark. In re Belgrade Shoe
Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). Hence, even
if individuals noted the internal letter “I” in the cited
mark, many of these same individuals may still pronounce
the marks in an identical, or at a minimum, an extremely
similar manner. Finally, in terms of connotation, there is
no dispute that both marks bring to mind the words
“chemical” and “flexible.” Thus, the two marks have the
same connotation.
In its 16 page brief, applicant never even discussed
the issue of the similarity or dissimilarity of the marks.
Because the marks are extremely similar in terms of visual
appearance; are extremely similar (and for some people
identical) in terms of pronunciation; and are identical in
terms of connotation, we find that overall the marks are
extremely similar if not nearly identical. Thus, the first
Dupont “factor weighs heavily against applicant” because
Ser. No. 76285935
4
applicant’s mark is extremely similar if not nearly
identical to the cited mark. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
Turning to a consideration of applicant’s goods and
registrant’s goods, we note that because the marks are
extremely similar if not nearly identical, their
contemporaneous use can lead to the assumption that there
is a common source “even when [the] goods or services are
not competitive or intrinsically related.” In re Shell Oil
Co., 922 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
However, in this case we find that applicant’s goods and
registrant’s goods are clearly related. Both applicant’s
goods and registrant’s goods filter air. Moreover, as
applicant points out at page 13 of its brief, applicant’s
air filters and registrant’s air filtration units are both
purchased by the same users, namely, industrial buyers as
opposed to “laymen.”
Given the fact that applicant’s mark is extremely
similar to if not nearly identical to the registered mark
and the additional fact that both marks are used on goods
which are clearly related, we find that the contemporaneous
use of both marks would result in a likelihood of
confusion. Accordingly, we affirm the refusal to register.
Ser. No. 76285935
5
In arguing that confusion is not likely, applicant
sets forth three basic arguments. First, as just noted,
applicant states that the purchasers of both its goods and
registrant’s goods are industrial buyers who, unlike
laymen, are “careful [and] sophisticated” in their
purchases. (Applicant’s brief page 13). We do not dispute
the fact that industrial buyers are more careful and are
more sophisticated in making purchases than are laymen.
However, such purchaser sophistication is of very minimal
value in avoiding a likelihood of confusion when the marks
are so extremely similar to the point of being nearly
identical, as is the case here. Obviously, even the most
sophisticated purchasers in the world could not distinguish
applicant’s mark from registrant’s mark if they were
identical. While the marks in question here are not
absolutely identical, they are so extremely similar to the
point of being nearly identical such that purchaser
sophistication would simply not prevent a likelihood of
confusion.
Second, at pages 9 through 11 of its brief, applicant
argues that because there have been no instances of actual
confusion involving its mark and the registered mark that
therefore there is no likelihood of confusion. There are a
number of fatal flaws with applicant’s argument. First,
Ser. No. 76285935
6
there is nothing in the record from registrant indicating
that it has not experienced confusion involving its mark
and applicant’s mark. Second, applicant has made of record
no evidence whatsoever reflecting the extent to which it
has used its mark. For example, applicant has not even
indicated the number of air filters it has sold bearing its
mark CHEMFLEX. For all this Board knows, applicant’s sales
of its CHEMFLEX air filters could be so minimal that there
has been no meaningful opportunity for actual confusion to
even occur. Likewise, this Board has no knowledge as to
the extent to which registrant has used its mark CHEMI-
FLEX. Registrant’s use of its mark could also be so
minimal such that there has been no meaningful opportunity
for confusion to occur. Finally, there is nothing in the
record to reflect where applicant sells its air filters and
where registrant sells its air filtration units. Even
assuming purely for the sake of argument that applicant’s
and registrant’s sales were more than just minimal,
applicant’s sales and registrant’s sales could occur in
geographic areas that are quite removed from one another
such that there is simply no realistic possibility for
actual confusion to occur.
Finally, at pages 8 and 9 of its brief applicant
argues that because it purportedly used its mark CHEMFLEX
Ser. No. 76285935
7
before registrant used its mark CHEMI-FLEX that therefore
“applicant has superior rights to the use of the mark
CHEMFLEX.” Suffice it to say, that in an ex parte
proceeding such as this, applicant may not attack the
validity of the cited registration. This rule specifically
precludes an argument by applicant that it used its mark
prior to the time that the cited mark was used. In re
Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971).
Accordingly, even assuming purely for the sake of argument
that applicant did indeed continuously use its mark from a
point in time predating the first use of the cited mark,
this is legally irrelevant in an ex parte proceeding.
Decision: The refusal to register is affirmed.