Quantum Devices, Inc.

Trademark Trial and Appeal Board

Jul 30, 2003

No. 76148864 (T.T.A.B. Jul. 30, 2003)

Mailed: July 30, 2003
Paper No. 14
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Quantum Devices, Inc.
________
Serial No. 76/148,864
________
Robert D. Buyan of Stout, Uxa, Buyan & Mullins, LLP for
Quantum Devices, Inc.
Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Quinn, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On October 18, 2000, Quantum Devices, Inc. (a
California corporation) filed an application to register on
the Principal Register the mark shown below (in enlarged
form)
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/148864
2
for goods ultimately amended to read “laser chips and laser
modules for opto-electronic voice and data transmission” in
International Class 9. The application is based on
applicant’s assertion of a bona fide intention to use the
mark in commerce.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark shown below
for “lasers for scientific and industrial use” in
International Class 9,1 as to be likely to cause confusion,
mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed.2 Applicant stated in its brief (p.
2) “[A]n oral hearing is not requested.”
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
1 Registration No. 2,380,179, issued August 29, 2000.
2 The Examining Attorney’s appeal brief was due on March 24,
2003. Although completed in a timely manner, the Trademark
Examining Operation did not mail a copy of the appeal brief to
applicant until May 23, 2003. The Examining Attorney’s May 27,
2003 request that her late brief be considered is granted.
Ser. No. 76/148864
3
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 any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Turning to a consideration of the respective goods,
the Examining Attorney contends that the goods are highly
related, involving lasers or significant components of
lasers, as shown by The American Heritage Dictionary (Third
Edition 1992) definitions of (i) “chip” as “... 4.a.
Electronics. A minute slice of a semiconducting material,
such as silicon or germanium, doped and otherwise processed
to have specified electrical characteristics, especially
before it is developed into an electronic component or
integrated circuit. Also called microchip. ...”; and (ii)
“module” as “... 4. Electronics. A self-contained assembly
of electronic components and circuitry, such as a stage in
Ser. No. 76/148864
4
a computer, that is installed as a unit.”3 The Examining
Attorney also argues that applicant’s identified goods fall
within the broad scope of the registrant’s goods, in that
registrant’s “lasers for scientific and industrial use”
could include lasers used for “opto-electronic voice and
data transmission.”
Applicant argues that the involved goods “differ
substantially” (applicant’s brief, p. 11). However,
applicant provides no specific information about either its
goods or the asserted significant and substantial
differences between the respective goods.
It is well settled that goods need not be identical or
even competitive to support a finding of likelihood of
confusion; it being sufficient that the goods are related
in some manner or that the circumstances surrounding their
marketing are or would be such that they would likely be
encountered by the same persons under circumstances that
could give rise to the mistaken belief that they originate
from or are associated with the same source or that there
is an association or connection between the producers of
3 The Board takes judicial notice of the dictionary definitions
submitted with the Examining Attorney’s brief. See The
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983). See also, TBMP Second Edition §704.12(a)
(June 2003).
Ser. No. 76/148864
5
the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001); and
In re Peebles Inc., 23 USPQ2d 1795 (TTAB 1992).
Further, the Board must determine the issue of
likelihood of confusion on the basis of the goods as
identified in the application and the registration, and in
the absence of any specific limitations in either, on the
basis that all normal and usual channels of trade and
methods of distribution will be utilized for such goods.
See Octocom Systems Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990);
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); and Squirtco v. Tomy Corp., 697 F.2d 1034, 216 USPQ
937 (Fed. Cir. 1983).
While applicant’s goods, as identified, are laser
chips and modules specifically for opto-electronic voice
and data transmission, registrant’s goods are broadly
identified, covering all lasers for all scientific and
industrial uses, including voice and data transmission.
Registrant’s goods (lasers) could utilize applicant’s goods
(laser chips and laser modules). Both registrant’s and
Ser. No. 76/148864
6
applicant’s products may be used by the same class of
consumers.
Based on this record, we find that applicant’s “laser
chips and laser modules for opto-electronic voice and data
transmission” and registrant’s “lasers for scientific and
industrial use” are closely related goods.
Applicant strongly contends that the du Pont factor of
“the sophistication of the purchasers and cost of the
items” weighs heavily in applicant’s favor, asserting that
“among all the factors, [this factor] is perhaps the most
determinative” (Response filed October 22, 2001, p. 3).
Applicant describes the purchasers as “highly sophisticated
and highly discriminating,” and references “the extreme
sophistication of purchasers of goods of this type.”
(Brief, pp. 9-11.)
However, as pointed out by the Examining Attorney,
applicant offered no evidence of the sophistication of the
purchasers. In fact, applicant has not suggested who the
purchasers of its goods may be. Also, applicant offers no
evidence of the cost of its goods (or those of registrant).
The conclusion that there are manufacturers or other
industrial users who would purchase both lasers and laser
chips and laser modules because they may need to change or
replace components in laser devices is as plausible as
Ser. No. 76/148864
7
applicant’s unsupported contention that purchasers of
lasers and laser components are separate and distinct.
The Board will assume, arguendo, that purchasers of
lasers for scientific and industrial use, as well as
purchasers of laser chips and laser modules are
sophisticated. Nonetheless, sophistication of purchasers
does not mean that such consumers are immune from confusion
as to the origin of the respective goods, especially when
sold under similar marks.4 See Wincharger Corporation v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289 (CCPA 1962); In re
Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999); and
In re Decombe, 9 USPQ2d 1812 (TTAB 1988). That is, even
sophisticated purchasers of these lasers and laser chips
and laser modules could believe that these goods come from
the same source or have some relation, if offered under
similar marks. See Weiss Associates Inc. v. HRL Associates
Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990); and
Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742,
footnote 17 (TTAB 1992). For example, those who service
4 Applicant’s reliance on the case of Hewlett-Packard Co. v.
Human Performance Measurement, Inc., 23 USPQ2d 1390 (TTAB 1991)
is unpersuasive. The facts of that case are readily
distinguished from the facts here. (For example, the cited case
involved an inter partes opposition proceeding, not an ex parte
appeal; it included evidence about both parties’ goods, channels
of trade, etc.; and the marks in that case each involved
significant design features in addition to the letters “HP” and
“HPM,” respectively).
Ser. No. 76/148864
8
industrial or scientific lasers may assume that applicant’s
laser chips and laser modules are suitable for use with
registrant’s lasers.
We turn next to consideration of the similarities or
dissimilarities of the marks. Clearly there are some
differences in the marks--the cited registrant’s mark
consists of the words LAMBDA STARLIGHT (in slightly
stylized lettering--essentially simply showing upper and
lower case letters), while applicant’s mark consists of the
Greek letter “lambda” and the word LIGHT.
Applicant contends that the marks are different in
sound, appearance, connotation and commercial impression.
Specifically, applicant points out that the marks consist
of different styles of lettering, the “lambda” symbol
appears only in applicant’s mark and the word “starlight”
appears only in registrant’s mark; that the word
“starlight” in registrant’s mark connotes some “celestial
relationship” whereas applicant’s mark has a scientific or
technical connotation; and that overall the marks create
differing commercial impressions. Applicant acknowledges
that the Greek letter in its mark would be spoken as
“lambda” by arguing that its mark is an alliteration of two
words beginning with the letter “L”; and applicant further
argues that “this alliterative quality renders applicant’s]
Ser. No. 76/148864
9
mark, as a whole, unique and memorable to consumers”
(brief, p. 3) (emphasis in original), while registrant’s
mark has no such alliteration.
Applicant also contends that “similar marks are
already used on or in connection with similar goods”
(brief, p. 4);5 that the term “LAMBDA” is very common in
trademarks as shown by a printout from the USPTO’s
Trademark Electronic Search System (TESS) showing 122
5 Applicant submitted Exhibits A-J with its brief on appeal.
Exhibits A and B are information from an encyclopedia and are, as
recognized by the Examining Attorney, proper material for
judicial notice, which is hereby taken. Exhibits C, D and E were
previously submitted by applicant with its response filed
September 25, 2002, and are therefore already of record.
However, Exhibits F-J are printouts from Internet web sites
offered to show five uses of various “LAMBDA” marks in commerce.
These were filed for the first time with the appeal brief. The
Examining Attorney has properly objected to the exhibits, and her
objection as to Exhibits F-J is sustained.
Applicant specifically requested in its brief (p. 12) that if
the Board would not consider evidence not previously of record
(its “Exhibits A-I” [sic – A-J]), then applicant requested that
the Board remand the application to the Examining Attorney for
consideration thereof. Applicant’s alternative request for
remand is denied. The record should be complete prior to the
filing of the appeal. See Trademark Rule 2.142(d). The proper
procedure for applicant to introduce evidence after filing an
appeal is to file a request for remand, supported by an
explanation of why the evidence was not previously submitted.
Applicant did not separately request a remand, nor offer any
explanation regarding why the information was not previously
submitted. See In re Compagnie Internationale Pour
L’Informatique-Cii Honeywell Bull, 223 USPQ 363, footnote 2 (TTAB
1984). (The case cited by applicant, In re Consolidated Cigar
Co., 35 USPQ2d 1290, footnote 4 (TTAB 1995), involves
significantly different facts.)
Applicant’s Exhibits A-E have been considered by the Board, but
we have not considered applicant’s Exhibits F-J. Even if the
Board had considered the latter exhibits, our decision would
remain the same.
Ser. No. 76/148864
10
listings, and a separate printout with 61 listings in
International Class 9, and applicant makes specific
reference to three registrations in International Class 9
which existed at the time the cited registration issued;
that “the word ‘light’ alone is of virtually no trademark
significance in connection with lasers and optoelectronic
apparatus”; and that “it is unfair” (brief, p. 7) for the
USPTO to refuse registration to applicant.
Applicant did not provide copies of any of the
referenced materials from its TESS search or of the three
specific registrations. Thus, the probative value of this
evidence is extremely limited. See Weyerhaeuser Co. v.
Katz, 24 USPQ2d 1230 (TTAB 1992); and In re Duofold Inc.,
184 USPQ 638 (TTAB 1974). Of course, applications have
virtually no probative value on the issue of
registrability, as they are evidence only of the fact that
the applications were filed. Third-party registrations are
not evidence of use, but they may show a term is commonly
used in a particular field. Here, the USPTO TESS records
submitted by applicant confirm the Examining Attorney’s
argument that the only registration including “LAMBDA” and
“LIGHT” is the cited registration.
Finally, we note applicant’s rather unusual argument
regarding the marks (brief, pp. 3-4):
Ser. No. 76/148864
11
The non-juxtaposed words “LAMBDA” and
“LIGHT” are commonly used as
descriptive terms in connection with
lasers and related optoelectronic
devices. Indeed, the Board will
recognize that lasers are devices which
emit amplified LIGHT. ... (dictionary
cite omitted) Thus, the term LIGHT is
highly descriptive of lasers and such
word alone has virtually no trademark
significance in connection with lasers.
Furthermore, and [sic] all LIGHT has a
wavelength which is indicated by the
Greek letter lambda. (dictionary cite
omitted) [The dictionary] explains that
the Greek letter LAMBDA is the
international recognized symbol for
“wavelength,” a physical property
common to all light, including laser
light. Thus, the term LAMBDA is also
highly descriptive when used in
connection with lasers, and is entitled
to very little, if any, trademark
significance.
The Examining Attorney, in turn, argues as follows
(brief, p. 3):
In the present case, both marks are
dominated by the Greek letter “lambda”
and the word “light.” The combination
of “lambda” with “light” creates a
strong and unique mark. In fact, the
registrant’s and applicant’s marks are
the only marks on the Principal
Register [sic-applicant has only
applied to register its mark on the
Principal Register] that use a version
of “lambda” combined with a version of
“light.”
Specifically, she contends that the dominant features of
both marks are the word or symbol “lambda” and the word
Ser. No. 76/148864
12
“light”; that in order to form its mark, applicant simply
deleted the word “star” from the registered mark; and that
the marks are very similar in sound, appearance, meaning
and commercial impression.
It is well settled that marks must be considered and
compared in their entireties, not dissected or split into
component parts so that parts are compared with other
parts. This is because it is the entire mark which is
perceived by the purchasing public, and therefore, it is
the entire mark that must be compared to any other mark.
It is the impression created by each of the involved marks,
each considered as a whole, that is important. See Kangol
Ltd. v. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945
(Fed. Cir. 1992); and Franklin Mint Corp. v. Master
Manufacturing Co., 667 F.2d 1005, 212 USPQ 233 (CCPA 1981).
See also, 3 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition, §23:41 (4th ed. 2001).
Moreover, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
comparisons. The proper test in determining likelihood of
confusion is not a side-by-side comparison of the marks,
but rather must be based on the similarity of the general
overall commercial impressions engendered by the involved
Ser. No. 76/148864
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marks. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corp., 206 USPQ 255 (TTAB 1980).
There are obvious differences between the registered
mark LAMBDA STARLIGHT, and applicant’s mark comprised of
the Greek letter “lambda” and LIGHT. The Greek letter
would be spoken as “lambda.” The connotation of the
registered mark may be slightly different in that the word
“starlight” does bring to mind the celestial night sky,
whereas applicant’s use of the general word “light” does
not. However, it is noted that registrant’s mark shows the
word with two capital letters as “StarLight” thus putting a
separate emphasis on the word “light.”
Applicant’s use of the Greek letter in place of the
word “LAMBDA” and deletion of the word “STAR” do not serve
to sufficiently distinguish applicant’s mark from that of
the registrant, so as to avoid a likelihood of confusion.
We find that these marks, when considered in their
entireties, although obviously not identical, are
nonetheless similar in sound, appearance, connotation and
commercial impression. See In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999). The
contemporaneous use of the marks, in connection with these
closely related goods, would be likely to cause confusion
as to the source or sponsorship of such goods. See
Ser. No. 76/148864
14
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and In re Dixie Restaurants Inc.,
supra.
Applicant argues regarding the du Pont factor of the
fame of the prior mark that it does not believe the cited
mark is famous or well known and the Examining Attorney has
provided no evidence thereon. This argument is misplaced
in the context of this ex parte appeal. Applicant’s belief
that the registered mark is not famous is not sufficient to
make this du Pont factor one which is to be considered
herein. The du Pont factor of fame of the prior mark is
irrelevant because there is no evidence thereon. See
Octocom v. Houston, supra, 16 USPQ2d at 1788.
Finally, applicant’s argument that “it is unfair”
(brief, p. 7) to maintain this refusal when there are other
pending applications and registrations for marks which
include the word “LAMBDA,” is unpersuasive. The USPTO
strives for consistency of examination, but as often noted
by the Board and Courts, each case must decided on its own
merits. We are not privy to the records of the third-party
registration files, and moreover, the determination of
registrability of those particular marks by Trademark
Examining Attorneys cannot control the merits in the case
Ser. No. 76/148864
15
now before us. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
To the extent we have any doubt on the question of
likelihood of confusion, it must be resolved against
applicant as the newcomer, because the newcomer has the
opportunity of avoiding confusion and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.