Unitek Miyachi Corp.

Trademark Trial and Appeal Board

Sep 28, 2000

No. 75215856 (T.T.A.B. Sep. 28, 2000)

Paper No. 18
PTH
9/28/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Unitek Miyachi Corporation
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Serial No. 75/215,856
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Richard J. Ward, Jr. of Christie, Parker & Hale, LLP for
Unitek Miyachi Corporation.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Hairston, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Unitek Miyachi Corporation has appealed from the
refusal of the Trademark Examining Attorney to register the
mark PHASEMASTER for “welding control equipment, namely,
programmable AC resistance welding controllers.”1
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground

1 Serial No. 75/251,856 filed December 19, 1996, alleging dates
of first use of October 1980.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/215,856
2
that applicant’s mark, when applied to its goods, so
resembles the registered mark PHASEMASTER for “rotating
transformers”,2 as to be likely to cause confusion or
mistake or deception.
Briefs have been filed. Because applicant withdrew
its request for an oral hearing, no oral hearing was held.
We affirm the refusal to register.
At the outset, we note that applicant’s mark and the
cited mark are identical. We focus our attention then, as
have applicant and the Examining Attorney, on the
respective goods.
It is essentially the Examining Attorney’s position
that applicant’s programmable AC resistance welding
controllers and registrant’s rotating transformers are
related goods. According to the Examining Attorney, such
goods could be used together inasmuch as transformers are
used to power welding equipment. In support of her
position that the goods are related, the Examining Attorney
made of record copies of two third-party registrations
wherein companies have registered a single mark for welding
controls, on the one hand, and welding transformers for
welding machines, on the other hand. In addition, the
Examining Attorney submitted three registrations owned by

2 Registration No. 965,031 issued July 31, 1973; renewed.
Ser No. 75/215,856
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applicant for marks which cover various welding equipment,
including weld transformers. Also, the Examining Attorney
maintains that the product brochures for applicant’s and
registrant’s goods, which were made of record by applicant,
show that the goods may be used together. In particular,
registrant’s brochure states that its rotating transformers
may be used “[I]n industry for welding ….” Applicant’s
brochure indicates that a welding transformer is one of the
required accessories for operating its programmable AC
resistance welding controllers.
Applicant, on the other hand, argues that the goods
are dissimilar and that there is no overlap between
customers and channels of trade. According to applicant,
its programmable AC resistance welding controllers are sold
primarily to manufacturers of precision electronic
circuits, whereas registrant’s rotating transformers are
used in heavy duty applications in such industries as
agriculture and construction. Applicant states, in this
regard, that:
In this case, Applicant’s customers are in
the business of manufacturing sensitive
electronic circuitry and have a “focused”
or specific need for a programmable welding
controller that will not burn-out the
electronic circuitry during the welding or
soldering process. Applicant’s customers
would never consider the purchase of a heavy
Ser No. 75/215,856
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duty rotatable transformer, used primarily
to convert single-phase electrical power
to three-phase electrical power, for use
with a programmable welding controller.
The products simply are not compatible and
are designed for different purposes that
do not interrelate.
Finally, applicant maintains that there is no
likelihood of confusion because there have been no
instances of actual confusion for nearly twenty years.
In considering the goods of applicant and registrant,
two propositions must be kept in mind. First, when the
marks of the parties are the same or almost so, it is only
necessary that there be a viable relationship between the
goods in order to support a likelihood of confusion. In re
Shell Oil, 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Second, it must be remembered in proceedings such as
this, the question of likelihood of confusion must be
determined based upon an analysis of the goods recited in
the applicant’s application vis-à-vis the goods recited in
the registrant’s registration, rather than on what the
evidence indicates such goods actually to be. See, e.g.,
Canadian Imperial Bank of Commerce N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
In particular, it is well settled that the issue of
likelihood of confusion must be determined in light of the
goods as respectively set forth in the involved application
Ser No. 75/215,856
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and cited registration and, in the absence of any specific
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution of such
goods. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579, 218
USPQ 198, 199 (Fed. Cir. 1993); and Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983).
Applicant’s goods, as they are identified in the
application, are programmable AC resistance welding
controllers. In the absence of any limitations as to the
areas of use of these goods, we must presume that they may
be used, not only in the manufacture of electronic
circuitry, but in all welding applications, including those
which utilize rotating transformers. Whether applicant’s
actual goods are used in connection with registrant’s
actual goods is not the relevant consideration. What is
relevant is that the goods as described in the application
are used in connection with the goods as described in the
registration. See Canadian Imperial Bank, supra. Under
the circumstances, we find that the Examining Attorney has
made a prima facie case that the goods are related and
applicant has not rebutted this showing. There is no
evidence that rotating transformers, per se, are not used
with programmable AC resistance welding controllers. In
point of fact, as we noted above, the product brochure of
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applicant indicates that a welding transformer is a
required accessory for its programmable AC resistance
welding controllers.
In view of the foregoing, we find that there is a
viable relationship between applicant’s and registrant’s
goods. In finding that the goods are related, we have
accorded little weight to the third-party registrations and
the registrations owned by applicant. Two third-party
registrations are insufficient in number to establish that
there is an overlap between applicant’s and registrant’s
goods. Also, because applicant’s registrations are for
marks which are different from the mark herein and do not
also cover welding controllers, they are not probative as
to the relatedness of applicant’s and registrant’s goods.
Further, applicant’s assertion that it is unaware of
any instances of actual confusion despite close to twenty
years of concurrent use of the marks by applicant and
registrant does not persuade us that no likelihood of
confusion exists in this case. We cannot determine on this
record that there has been any meaningful opportunity for
actual confusion to have occurred in the marketplace, and
accordingly we cannot conclude that the alleged absence of
actual confusion is entitled to significant weight in our
likelihood of confusion analysis in this case. See
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Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992).
Finally, to the extent that we have any doubt in this
case, it must be resolved against applicant as the
newcomer. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463,
6 USPQ2d 1025 (Fed. Cir. 1988).
In view of the foregoing, we conclude that customers
familiar with registrant’s rotating transformers sold under
the mark PHASEMASTER would be likely to believe, upon
encountering applicant’s identical mark PHASEMASTER for
programmable AC resistance welding controllers, that the
goods originated with or were somehow associated with the
same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.
P. T. Hairston
B. A. Chapman
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board
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