United States Filter Corp.

Trademark Trial and Appeal Board

Jul 20, 2001

No. 75664412 (T.T.A.B. Jul. 20, 2001)

7/20/01

Paper No. 15
JQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re United States Filter Corporation
________

Serial No. 75/664,412
_______

Peter C. Lando and Carole A. Boelitz of Wolf, Greenfield &
Sacks for applicant.

David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______

Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by United States Filter
Corporation to register the mark XCELL for “traveling
bridge filter for industrial water and wastewater
applications.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 75/664,412, filed March 19, 1999, based
on an allegation of a bona fide intention to use the mark in
commerce. Applicant subsequently filed an amendment to allege
use that sets forth first use dates of May 5, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/664,412
2
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark shown below

for “filter units for removing particulate matter and other
contamination from fluids, filter vessels, cartridges, and
dessicant dryers”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
The Examining Attorney maintains that the dominant
portion of the cited mark is “EXCEL,” and that the use of
the “EDEN” house mark in the cited mark does not
sufficiently distinguish the marks. The Examining Attorney
contends that the goods in the cited registration are
broadly worded and that, therefore, the goods must be
considered to be legally identical. Also, the Examining
Attorney points to the absence of any limitations in the
identifications of goods in the application and
registration, deeming that the goods travel in the same

2 Registration No. 1,380,276, issued January 28, 1986; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/664,412
3
channels of trade to the same purchasers. The Examining
Attorney submitted a dictionary definition of the term
“unit,” and excerpts retrieved from the NEXIS database
that, according to him, show that “traveling bridge
filters” are “sold as units for removing particulate matter
and other contamination from industrial water and
wastewater.” (Office action, March 31, 2000) The
Examining Attorney is not persuaded by applicant’s remarks
relating to the sophistication of purchasers and the
absence of actual confusion.
Applicant contends that the marks are dissimilar,
arguing that its mark has a unique spelling and
registrant’s mark includes the term “EDEN.” Applicant
contends that the registered mark is dominated by “EDEN”
because it is a house mark, and is the first word in the
mark and is displayed on top of the term “EXCEL.”
Applicant argues that the cited mark is suggestive and,
thus, entitled to a narrow scope of protection. In this
connection, applicant submitted third-party registrations
for what it asserts are similar marks for filtering
systems. As to the goods, applicant states that its
traveling bridge filters are large, built-to-specification
filtering systems that may take up to a year to design, and
two or three weeks to install. As such, applicant’s goods
Ser No. 75/664,412
4
are quite expensive, costing from $50,000 to several
millions of dollars.3 Purchasers of applicant’s goods are
almost exclusively industrial plants and sanitary boards of
municipalities. According to applicant, these purchasers
are sophisticated since the filters require explicit
specifications due to their custom manufacture. Applicant
has submitted product booklets covering its filters. In
urging that the refusal be reversed, applicant points to
the lack of actual confusion since applicant began using
its mark in May 1997.
Before turning to the merits of the likelihood of
confusion refusal, we direct our attention to an
evidentiary matter raised by applicant’s submission of new
evidence with its appeal brief. At the outset, we note
that the submission of Exhibit B, consisting of applicant’s
product brochure, is not a problem because this material
was properly made of record during the prosecution of the
application.
Firstly, while applicant makes reference to a
declaration of Dwight Smith (brief, p. 16), there is no
such declaration accompanying the brief. Even if it were

3 This dollar figure appears in applicant’s brief. In its
request for reconsideration, applicant stated that the cost
ranged form $75,000 to $125,000 per unit. Whichever figure is
used, it can be said that applicant’s goods are expensive.
Ser No. 75/664,412
5
in the file, the submission would be untimely.
Exhibit A consists of several third-party
registrations retrieved from the Office’s electronic search
system (TESS). During the prosecution of the application,
applicant introduced six third-party registrations. It has
supplemented this submission with additional registrations
that were not previously introduced. Also accompanying
applicant’s brief are invoices for applicant’s goods to
establish that they are expensive.
Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of
an appeal, and that the Board will ordinarily not consider
additional evidence filed with the Board after the appeal
is filed. Evidence submitted after appeal may be
considered, however, by the Board, despite its
untimeliness, if the nonoffering party (1) does not object
to the new evidence, and (2) discusses the new evidence or
otherwise affirmatively treats it as being of record. TBMP
§1207.03 [emphasis in original]. See, e.g., In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991).
In the present case, the Examining Attorney’s brief is
completely silent as to any of the third-party
registrations and the invoices. Accordingly, we have not
considered the invoices; and the six previously submitted
Ser No. 75/664,412
6
third-party registrations that were properly made of record
are the only ones we have considered in reaching our
decision.
Exhibit C, retrieved off the Internet, consists of
excerpts from registrant’s Web page. Applicant relies on
this extrinsic evidence in an apparent attempt to limit the
goods covered by the cited registration. The Examining
Attorney specifically objected to the late introduction of
this evidence. (brief, p. 4) In view of the untimely
submission and the objection thereto, this evidence does
not form part of the record on appeal and, accordingly, has
not been considered in reaching our decision.
We now turn to the merits of the appeal. Our
determination under Section 2(d) is based on an analysis of
all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In
re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24 (CCPA 1976).
With respect to the marks XCELL and EDEN EXCEL
(stylized), we find that the similarities in sound and
Ser No. 75/664,412
7
appearance outweigh the specific differences. The marks
are similar in that XCELL is a phonetic equivalent of
EXCEL. Although registrant’s name EDEN appears in the
registered mark, it appears in much smaller type as part of
the letter “E” in the more prominently displayed “EXCEL”
portion of the stylized mark. Given the subordinate manner
in which registrant’s name EDEN is displayed in the mark,
the name is not likely to sufficiently distinguish the
marks in the minds of purchasers.
In finding that the marks are similar, we have
considered, of course, the suggestiveness of the term
“excel” and its phonetic equivalents. In this connection,
we take judicial notice of the dictionary definition of the
term as “to surpass or outshine; be distinguishable by
superiority.” Webster’s Third New International Dictionary
(unabridged ed. 1993). While the marks are suggestive,
however, they convey the same thought, namely, that the
respective products are superior in quality.
In sum, when the marks are considered in their
entireties, they engender similar overall commercial
impressions.
Insofar as the goods are concerned, it is not
necessary that the goods be identical or even competitive
in nature in order to support a finding of likelihood of
Ser No. 75/664,412
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confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods originate from or are in some way associated with
the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Further, the
identifications of goods in the application and the cited
registration control the comparison of the goods. See:
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813, 1815 (Fed. Cir. 1987)[“[T]he question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-à-vis the
goods and/or services recited in [the] registration, rather
than what the evidence shows the goods and/or services to
be.”]; and In re Elbaum, 211 USPQ 639 (TTAB 1981).
When the goods are compared in light of the legal
constraints cited above, we find that applicant’s
“traveling bridge filter for industrial water and
wastewater applications” is related to registrant’s broadly
identified “filter units for removing particulate matter
and other contamination from fluids, filter vessels,
Ser No. 75/664,412
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cartridges, and dessicant dryers.” As pointed out by the
Examining Attorney, for purposes of the legal analysis of
likelihood of confusion herein, it is presumed that
registrant’s registration encompasses all goods of the
nature and type identified, that the identified goods move
in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers. In re Elbaum, supra at 640. In this
connection, the Examining Attorney relies upon a dictionary
definition of “unit” showing that the term means “an entire
apparatus or the equipment that performs a specific
function.” The American Heritage Dictionary of the English
Language (3rd ed. 1992). Although their products may be
specifically different, both applicant’s and registrant’s
goods, as identified, are used to filter particulate matter
and contamination from fluids.4 Further, as identified, it
is presumed that the goods travel in the same or similar
trade channels and are bought by the same classes of
purchasers.
We recognize that applicant’s goods can be quite
expensive and, therefore, may be the subject of deliberate

4 Applicant’s product brochure indicates that the traveling
bridge filter can be used for phosphorous removal, water
reclamation and algae removal.
Ser No. 75/664,412
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purchasing decisions by sophisticated purchasers. Although
this factor favors applicant, it is outweighed by the
similarities between the marks and the goods. See: In re
Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983).
Another du Pont factor is the number and nature of
similar marks in use on similar goods. In an attempt to
narrow the scope of protection afforded the registered
mark, applicant has introduced six third-party
registrations of the marks EXCEL, XL, EXCEL, XL, XCEL and
EXCELON for a variety of filter products. Although we have
considered this evidence, as often stated, third-party
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, and
the existence on the register of confusingly similar marks
cannot aid an applicant in its effort to register another
mark which so resembles a registered mark as to be likely
to cause confusion. AMF Inc. v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268 (CCPA 1973), and Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ
406 (CCPA 1967).
Applicant points to the absence of any actual
confusion between the involved marks in the time since
applicant began using its mark. As a du Pont factor, the
Ser No. 75/664,412
11
absence of actual confusion weighs, of course, in
applicant’s favor. The probative weight is very limited
here, however, by the fact that there are no specifics
regarding the extent of use by applicant or registrant.
Thus, there is no way to assess whether there has been a
meaningful opportunity for confusion to occur in the
marketplace. In any event, the test under Section 2(d) of
the Trademark Act is the likelihood of confusion. Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840, 1842-43 (Fed. Cir. 1990), aff'g, 12 USPQ2d
1819 (TTAB 1989); and Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d 1768, 1774 (TTAB 1992).
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.
Ser No. 75/664,412
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