Pulsafeeder,Inc.

Trademark Trial and Appeal Board

Jul 17, 2006

No. 78377288 (T.T.A.B. Jul. 17, 2006)

Mailed: July 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Pulsafeeder, Inc.
___________

Serial No. 78377288
___________

Dennis A. Gross of The Hill Firm for Pulsafeeder, Inc.

Zhaleh Delaney, Trademark Examining Attorney, Law Office 116
(M.L. Hershkowitz, Managing Attorney).
____________

Before Hairston, Walters and Drost, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Pulsafeeder, Inc. has filed an application to register
the mark OMNI in standard character form on the Principal
Register for “mechanical diaphragm metering pumps used in
chemical metering,” in International Class 9.1
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so

1 Serial No. 78377288, filed March 2, 2004, based on an allegation of a
bona fide intention to use the mark in commerce. Applicant submitted an
amendment to allege use on June 10, 2005, alleging first use and use in
commerce as of May 2, 2005. The amendment to allege use was approved.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 78377288

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resembles the two marks shown below, owned by the same party
and previously registered for the goods noted, that, if used
on or in connection with applicant’s goods, it would be
likely to cause confusion or mistake or to deceive.

• Flow measurement and control computers for the
measurement of liquid hydrocarbon and gas flows, in
International Class 9.2

OMNICOM
[standard character form]

• PC-based computer software used to communicate with
devices for the measurement of liquid and gas flow, in
International Class 9; and
• Computer program user manuals for use in communication
with devices for the measurement of liquid and gas
flow, in International Class 16.3

Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
Regarding the marks, the examining attorney contends
that the literal portions of the respective marks are
identical or highly similar; and that the word “omni” is

2 Registration No. 2698971, filed on June 11, 1993 and issued March 25,
2003, to Omni Flow Computers, Inc.

3 Registration No. 1833697, filed on November 13, 1992 and issued May 3,
1994, to Omni Flow Computers, Inc. (Renewed for a period of ten years.)

Serial No. 78377288

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dominant in both cited marks, arguing that the word portion
of the stylized mark is likely to be used when asking for
the goods and that the “com” portion of the standard
character mark, OMNICOM, will be seen as an abbreviation for
“communication,” which is “merely descriptive in relation to
software used for communicating with devices in controlling
chemical flows” (brief, p. 3).
Regarding the goods, the examining attorney contends
that applicant’s metering pumps and registrant’s hardware
and software controls for the use specified are “very
closely related ‘metering devices’ all for use in
controlling presumably the same chemical flows” (brief, p.
4).
The examining attorney submitted excerpts of articles
retrieved from the Lexis/Nexis database to support the
contention that some metering systems integrate pumps and
electronic controllers in a single unit for chemical
control. The examining attorney searched the Nexis database
for uses of “software” within 50 words of “metering pump”
and found six references, of which five were submitted,
although two of the references are essentially the same and
consist merely of a headline in a publication entitled
Hydrocarbon Processing. The remaining excerpts are also so
short as to preclude us from drawing any conclusions about
the goods involved herein.
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The examining attorney submitted copies of four third-
party registrations and excerpts from two third-party
Internet websites to support the contention that metering
pumps and electronic controllers emanate from the same
source. One of the registrations includes “metering pumps”
and “electronic controllers,” but the electronic controllers
appear to be limited to a use unrelated to the metering
pumps; and three registrations, two owned by the same
company, include both electronic controllers and metering
pumps for liquid chemical processes. One of the Internet
websites, referring to a company named Liquid Metronics
Incorporated (LMI), describes its metering pumps,
controllers and accessories used in monitoring water
quality. It refers to its controllers that contain software
developed and apparently owned by another company, emWare,
for communication with other devices in the system. Another
excerpt from a website referring to a company named Omega
Engineering, Inc., describes a single product, the PHP-190
Series, further described as “chemical metering systems
combin[ing] controller and pump in one unit.” The price of
the units shown ranges from $1385 to $2152.
Regarding the marks, applicant contends that the marks
are not identical; that the logo design of one of the cited
registrations adequately distinguishes the marks; and that
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the suffix “com” in the other cited registration, OMNICOM,
cannot be ignored and, in fact, distinguishes the marks.
Regarding the goods, applicant, in its brief, provides
a detailed description and explanation of the nature of its
goods and contends that “the goods are not the same, and are
not competitive, nor are they interchangeable, substitutable
or useable for the same purpose” (brief, p. 14). Applicant
argues, essentially, that the examining attorney has placed
too great a reliance on this one du Pont factor and that the
examining attorney’s conclusions about the relationship
between the respective goods is incorrect and primarily
conjecture. Applicant describes chemical metering pumps as
being used to “inject chemicals in precise amounts into a
process or system” (brief p. 17) such as various industrial
processes and water treatment. Applicant states the
following (brief, pp. 14-15):
Chemical metering pumps are … used in many
different environments and for many different
purposes, and while it is possible that in some
environments one of the parameters to be taken
into consideration in determining the extent of
operation of the metering pump, either its
duration of operation, frequency or stroke length,
may include information either related to the flow
from the pump or to the flow of fluid in some
portion of installation in which the pump is used,
this does not make either computer software,
program user manuals or flow measurement and
control computers products related to the metering
pump. In point of fact, such devices would not be
used. The standard use for flow measurement in
metering pump situations is to use a flow meter
which outputs a series of pulses reflecting flow
past the meter sensor. Those pulses would be used
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as the input to the metering pump controller and
no separate stand-alone dedicated computer,
software or user manual would be involved.

… The registrants products, as clearly set forth
in the ‘971 mark, relate to liquid hydrocarbon and
gas flows. This is the type of equipment that
would be used in pipelines, and the pumps
associated with such pipelines are not diaphragm
metering pumps.

While it is certainly known that chemical metering
pumps, including the applicant’s chemical metering
pumps, can be equipped with controllers, and that
those controllers, especially in this day, may
include computational capabilities, that
particular fact is not unique to the applicant’s
products, or to chemical metering pumps, but
extends across substantially all areas of modern
life where computational capability is a standard
feature of most controllable devices.
. . .
… [f]luidic systems not only may employ pumps,
they employ a vast variety of devices. This does
not mean that each of those devices is
sufficiently related to each of the others or to
the pumps as to create a likelihood of confusion
because of the use of a common word as a
trademark.

Applicant contends that the record does not establish any
connection or relationship between the measurement of liquid
hydrocarbon and gas flows and the use of chemical metering
pumps; or that the products would ever be used in the same
system, in the same environment, by the same personnel, or
purchased together or by the same buyers. Applicant notes
that the purchasers of the respective highly specialized
products are very sophisticated, highly trained technical
people. Applicant’s evidence consists of its specimen, a
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copy of an instruction manual for its pump, which contains
no information about software or electronic controls.4
Our determination under Section 2(d) is based on an
analysis of all of the probative 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 considering the evidence of
record on these factors, we keep in mind that “[t]he
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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976); In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); and In
re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The factors deemed
pertinent in this proceeding are discussed below.
We turn, first, to a determination of whether
applicant’s mark and the registered marks, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. The test under this

4 While applicant argues that OMNI is a common trademark and the subject
of many third-party registrations, there is no evidence of this
allegation in the record and, thus, this argument is not persuasive.
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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 impressions that confusion as to the
source of the goods or services offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
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).
Applicant’s mark is OMNI in standard character form.
The stylized mark in registration no. 2698971, contains a
minimal design feature consisting only of a thin rectangular
line around the word “omni,” intersecting the capital “O”
and the star-shaped dot on the “I.” The font used for the
word “omni” is unremarkable; the rectangular line serves
merely as an outline that focuses the eye on the word
“omni”; and the star-shaped dot over the “I” is of a normal
proportion to the “I” and does not stand out considering the
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mark as a whole. Therefore, we find that the design feature
in the registered mark is of less significance to the mark’s
commercial impression than is the word “omni,” which is
identical to applicant’s mark in its entirety, and the
design feature in the cited registered mark does not suffice
to distinguish the marks. See In re Chatham International
Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re
El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988); and
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Likewise, regarding cited registration no. 1833697 for
the mark OMNICOM, in terms of appearance, sound, connotation
and overall commercial impression, we find that the
similarity between the marks which results from the presence
of the word “omni” in both marks outweighs the minor point
of dissimilarity between the marks, i.e., the addition of
the suffix “com” to the registered mark. We are not
persuaded by the examining attorney’s dictionary definition
of “com” as an abbreviation of numerous diverse words,
including, as number 11, “communication,” either that the
“com” portion of the registered mark would be perceived as
an abbreviation of “communication” or, if so, that such a
connotation would render the word “com” descriptive of the
identified goods. However, given that the “omni” portion of
the registered mark appears first as the root word and the
“com” portion is a suffix, and viewing the marks in their
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entireties, we find that applicant’s mark OMNI and the
registered mark OMNICOM are sufficiently similar because of
the common term OMNI in both marks that a prospective
purchaser would be likely to believe that similar goods
identified by these respective marks emanate from the same
or related source(s).
We turn next to the second and third du Pont factors,
i.e., the similarity or dissimilarity of the respective
services, and the similarity or dissimilarity of the trade
channels and classes of purchasers for the respective
purchasers. We note that the question of likelihood of
confusion must be determined based on an analysis of the
goods or services recited in applicant’s application vis-à-
vis the goods or services recited in the registration,
rather than what the evidence shows the goods or services
actually are. Canadian Imperial Bank v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See
also, Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The
Chicago Corp. v. North American Chicago Corp., 20 USPQ2d
1715 (TTAB 1991). Further, it is a general rule that goods
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that some circumstances surrounding their
Serial No. 78377288

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marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used therewith, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods or services. See Shen
Manufacturing Co., Inc. v. The Ritz Hotel Limited, 393 F.3d
1238, 73 USPQ2d 1350 (Fed. Cir. 2004); and In re Melville
Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited therein.
Even if the marks are identical, if these conditions do not
exist, confusion is not likely to occur. See, e.g., In re
Unilever Limited, 222 USPQ 981 (TTAB 1984); and In re Fesco,
Inc., 219 USPQ 437 (TTAB 1983).
We agree with applicant that the mere fact that
applicant’s mechanical diaphragm metering pumps used in
chemical metering may include electronic components that
may, in turn, rely on software for operation, does not
automatically make applicant’s metering pumps similar or
related to registrant’s hardware, software and manuals for
the measurement of liquid hydrocarbon and gas flows.
Further, the examining attorney’s contention that “chemical
metering,” for which applicant’s pumps are used, encompasses
the measurement of hydrocarbon liquid and gas flows is not
persuasive in view of applicant’s detailed explanation, not
contradicted by the examining attorney’s evidence, of the
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distinct nature of the respective fields. Additionally,
applicant’s position regarding the lack of connection
between its pumps and any particular software is supported
by the fact that the previously described website excerpt
from LMI specifically identifies the third-party software
that it uses in connection with its chemical metering pumps.
It would appear from the identifications of goods and the
explanation provided by applicant, that the respective
products are used for different uses in entirely different
fields. We find the evidence made of record by the
examining attorney to be insufficient to establish the
contrary.
It is also quite clear from the record that these
products are not inexpensive items purchased by ordinary
consumers. By their very nature, the respective products
are purchased for specific purposes by technical experts in
the respective fields. Further, based on the prices noted
in the record for applicant’s goods, these are not
inexpensive, impulse purchases.
Thus, we find that the record does not establish that
the respective goods are related such that, if identified by
confusingly similar marks, prospective purchasers would
mistakenly believe the goods emanate from the same or
related source(s). The cost of, at least, applicant’s goods
and the fact that the respective goods are purchased by
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knowledgeable purchasers would further obviate any
likelihood of confusion.
In summary, we conclude that despite the substantial
similarity in the commercial impressions of applicant’s mark
and registrant’s marks, the examining attorney has not
established that their contemporaneous use on the goods
involved in this case, sold to the sophisticated purchasers
involved herein, is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The refusal under Section 2(d) of the Act is
reversed.