Universal Scientific Industrial (Shanghai) Co., Ltd.

Trademark Trial and Appeal Board

Jul 12, 2013

No. 85076805 (T.T.A.B. Jul. 12, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: June 25, 2013 Mailed: July 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Universal Scientific Industrial (Shanghai) Co., Ltd.
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Serial Nos. 85076805 and 85111035
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Jordan LaVine of Flaster Greenberg P.C. for Universal Scientific Industrial
(Shanghai) Co., Ltd.

Khanh M. Le, Trademark Examining Attorney, Law Office 113 (Odette Bonnet,
Managing Attorney).
_____

Before Cataldo, Ritchie and Kuczma, Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Universal Scientific Industrial (Shanghai) Co., Ltd. (“applicant”) appeals
from the final refusals to register the following two marks:
1 2

1 Application Serial No. 85076805 was filed designating a standard character mark on July
2, 2010, based on a bona fide intention to use the mark in commerce under Section 1(b) of
the Trademark Act, 15 U.S.C. § 1051(b).
2 Application Serial No. 85111035 was filed designating a stylized mark on August 19,
2010, based on a bona fide intention to use the mark in commerce under Section 1(b) of the
Serial Nos. 85076805 and 85111035

2

For (as amended):
Cellular phones; smart phones; mobile computers; mobile
television receivers; mobile TV sets; netbooks; computers;
PC tablet; telematics apparatus, namely, wireless
internet devices which provide telematic services and
have a cellular phone function; portable telephones;
portable televisions; wireless adapter modules for
computers; wireless connectivity computer hardware
modules; GPS modules; audio amplifier modules; video
modules composed of computer monitors; electric sensors;
portable navigation devices, namely, computers; GPS
navigation devices; voltage regulators in Class 9.
The examining attorney issued final refusals to register the marks for the
goods in Class 93 pursuant to § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d),
citing as a bar to registration:
Registration No. 33821144

Mark: HSIPA (standard character claim)

For: optical, electrotechnical and electronic apparatus and devices,
and electrical devices for recording, emission, transmission, switching,
reception and reproduction and processing of sounds, signals,
characters and images, namely, communication servers, routers,
switches, and gateways for use in wireless communications systems;
devices namely routers, switches, and gateways for the integration of
voice, image, text, data, multimedia, full-motion video communications
in computer and telecommunication networks; communications
computers; software, namely, computer software for management and
integration of telecommunications networks, computer software for use
in the operation and maintenance of telecommunications equipment,
computer telephony software, computer software for the integration of
voice and data, computer software for use in the operation and
maintenance of computer networks; optical, electrotechnical and

Trademark Act, 15 U.S.C. § 1(b). The application describes the mark as consisting of “the
letters ‘HSiP’ with a design above the ‘i.’ The letters ‘HSIP’ appearing in blue and black.”
3 The applications were originally filed designating goods in Classes 9 and 11. Requests to
Divide the goods in Class 11 into separate applications were granted in both applications.
4 Registration No. 3382114 issued February 12, 2008.
Serial Nos. 85076805 and 85111035

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electronic equipment for voice, image, text, data, multimedia and full-
motion video namely communication servers, routers, switches and
gateways; automatic telephone dialers; telephones, video-phones, and
voice boxes; domestic telephone systems comprising private automatic
branch exchanges; photocopiers; telecommunication networks
consisting of exchange and transmission equipment, individual
modules and components of such equipment, namely, power supply
units, transmission media in the nature of telecommunication cables
and optical fibers and connection elements in the nature of cable and
electrical connectors; wireless transmission media, namely, infrared
receivers and transmitters and radio telephones for wireless
communication; replacement parts for the aforementioned apparatus
and devices in Class 9; and

Operation of telecommunication systems and telecommunication
networks, namely, telecommunication gateway services, technical
consultation in the field of telecommunications; technical consultation
in the field of setting up of telecommunication systems and
telecommunication networks; rental of telecommunication equipment
and networks in Class 38.

After the examining attorney made the refusals final, applicant filed requests
for reconsideration which were denied. In an order dated April 10, 2013, the Board
consolidated the appeals for application Serial Nos. 85076805 and 85111035.
Applicant and examining attorney have filed briefs, and presented arguments at an
oral hearing before this panel. For the reasons set forth below, the refusals to
register are affirmed.
Likelihood of Confusion
Applicant contends that in view of the differences between the marks, the
goods covered in its applications versus the cited registration, and the channels of
trade and the sophistication of purchasers, there is no likelihood of confusion
between its marks and the mark in the cited registration.
Our determination under § 2(d) is based on an analysis of all probative
Serial Nos. 85076805 and 85111035

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facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). We carefully considered all of the evidence of record as
it pertains to the relevant du Pont factors, as well as applicant’s arguments
(including any evidence and arguments not specifically discussed in this opinion).
To the extent that any other du Pont factors for which no evidence or argument
were presented may nonetheless be applicable, we treat them as neutral.
A. Similarity of the Goods, Channels of Trade and Purchasers
We first consider the second and third du Pont factors, namely, the similarity
of the goods, channels of trade and purchasers. It is well-settled that the issue of
likelihood of confusion between applied-for and registered marks must be
determined on the basis of the goods as they are identified in the involved
application and registration. Paula Payne Products Co. v. Johnson Publishing Co.,
Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
The term “telephones” in the cited registration encompasses the more
narrowly defined “cellular phones,” “smart phones” and “portable phones” recited in
the subject application. Similarly, the term “computers” in applicant’s application
is broad enough to encompass the “communications computers” set forth in the cited
registration. Applicant attempts to sidestep this obvious overlap in the goods by
Serial Nos. 85076805 and 85111035

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characterizing its goods as “consumer-oriented electronics” and registrant’s goods as
“sophisticated communications equipment” while also urging that all of the goods in
the cited registration be read in the context of the entire description of goods.5
Applicant offers no support for its argument that the plain language used in the
identification of goods in the cited registration should be ignored and we are
unaware of any such support.
To the contrary, when items such as telephones and computers involved in
this case are not limited in scope to any particular field, we must read the
identification of goods as covering all types of telephones and computers. See In re
TIE/Communications Inc., 5 USPQ2d 1457, 1458 (TTAB 1987) (“computer
programs recorded on magnetic media” not limited in scope to any particular field
must be read to cover all computer programs recorded on magnetic media). In view
of the foregoing, applicant’s goods and registrant’s goods are identical in part.6
As to applicant’s remaining goods, evidence made of record by the examining
attorney shows that several of the items are related and marketed to the same
customers in the same channels of trade as goods in the cited registration:
● Motorola website offers inter alia, smart phones
(applicant’s goods) as well as, phone software, two-

5 Applicant’s Appeal Briefs p. 6.
6 The examining attorney also submitted copies of five third-party use-based registrations
that recite both telephones and computers evidencing the relatedness of these two items.
Although these registrations are not evidence that the marks shown therein are in use or
that the public is familiar with them, they nonetheless have probative value to the extent
they are based on use in commerce and serve to suggest that the goods identified therein
are of a kind which may emanate from a single source under a single mark. See In re Davey
Products Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); and In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Serial Nos. 85076805 and 85111035

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way radios, modems and gateways (registrant’s
goods). http://motorola.comConsumers/US-
EN/Home and
http://www.motorola.com/Consumers/US-
EN/Consumer-Product-and-Services/.7
● Gateway website offers laptop computers and
monitors (applicant’s goods) and servers
(registrant’s goods).
http://support.gateway.com/us/en/support/defaul
t.aspx.8
● Toshiba website offers laptop computers
(applicant’s goods) as well as routers and ethernet
switches (registrant’s goods).
http://www.toshibadirect.com.td.b2c/accessories.js
p?N=25+216+ etc.9
● Dell websites offer inter alia, mobile phones and
laptop and notebook computers (applicant’s goods)
as well as, servers for business, and markets “small
and medium business solutions” (registrant’s
goods).
http://accessories.us.dell.com/sna/category.aspx?c
=us&category_id=4327&cs=04&J=en&s=bsd and
http://www.dell.com/us/business/p/laptops.10
● Hewlett Packard website offers computer monitors,
laptop and desktop computers for business and
home and smart phones (applicant’s goods) as well
as, servers for business (registrant’s goods).
http://welcome.hp.com/country/us/en/prodserv.ht
ml#tab_3 and

7 See attachment Nos. 18-20 to November 22, 2011 Office Action for 85076805 and to
December 14, 2011 Office Action for 85111035.
8 See attachment No. 37 to November 22, 2011 Office Action for 85076805 and to December
14, 2011 Office Action for 85111035.
9 See attachment Nos. 38-45 to November 22, 2011 Office Action for 85076805 and to
December 14, 2011 Office Action for 85111035.
10 See attachment Nos. 46-58 to November 22, 2011 Office Action for 85076805 and to
December 14, 2011 Office Action for 85111035.
Serial Nos. 85076805 and 85111035

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http://www.shopping.hp.com/webapp/shopping/s
tore_access.do?template_type=series etc.11
The foregoing websites not only establish that several of applicant’s products
are related to those in the cited registration, but they will be sold in the same trade
channels to the same customers. The fact that these entities concentrate their
businesses on the sale of such products and are not mass retailers selling all types
of products, enhances the probative value of this evidence.
Thus, consumers encountering applicant’s goods and the cited registrant’s
goods sold under similar marks are likely to believe the goods emanate from the
same source. See Octocom Systems Inc. v. Houston Computers Services Inc., 918
F.2d 937, 16 USPQ2d 1783, 1788 (Fed. Cir. 1990) (purchasers would likely be
confused when goods as closely related as modems and computer programs are sold
under the virtually identical marks; applicant’s elimination of “computer programs”
from its application leaving only modems was pointless maneuvering).
Because the goods are in part identical and otherwise closely related, and
because neither applicant’s identification of goods nor the identification of goods
contained in the cited registration contain a limitation of any kind with respect to
consumers or channels of trade, we must presume that the goods move in the same
channels of trade and are sold to the same classes of consumers. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002); American Lebanese Syrian Associated Charities Inc. v. Child Health Research

11 See attachment Nos. 59-67 to November 22, 2011 Office Action and to December 14, 2011
Office Action for 85111035.
Serial Nos. 85076805 and 85111035

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Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion).
Applicant argues that the purchasers for its products and those in the cited
registration are entirely different, i.e., the general consuming public versus
professionals in the telecommunications industry which are likely to be very
sophisticated.12 While the inherent nature of the services in the cited registration
are most likely offered to sophisticated customers, several of the products listed in
the cited registration, for example, telephones, video-phones, photocopiers, and
domestic telephone systems, are the types of products that are purchased by
consumers. The evidence discussed above shows that applicant’s goods and the
goods in the cited registration are related and move in the same channels of trade,
and are sold under conditions that would create a potential for confusion such as
being offered for sale on the same websites. To the extent applicant’s and
registrant’s respective products are not restricted to particular trade channels and
are therefore offered to the general consuming public, the classes of purchasers
overlap and this overlap also weighs in favor of a finding of likelihood of confusion
under du Pont. In re Wilson, 57 USPQ2d 1863, 1866 (TTAB 2001). Even assuming
purchasers of registrant’s products are sophisticated, this does not necessarily mean

12 Applicant’s Appeal Briefs p. 12.
Serial Nos. 85076805 and 85111035

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that they are immune to source confusion because sophisticated purchasers can be
confused by very similar marks. See In re Shell Oil Co., 26 USPQ2d 1687, 1690
(Fed. Cir. 1993); In re Cynosure Inc., 90 USPQ2d 1644, 1647 (TTAB 2009), citing
Wm. K. Stamets Co. v. The Metal Products Co., 176 USPQ 92, 93 (TTAB 1972) (even
technically trained purchasers who are extremely familiar with expensive
machinery may be confused when similar marks are used with respect to the same
goods); see also In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986).
In view of the foregoing, we find that the goods are closely related, travel in
the same channels of trade, and are sold to the same classes of purchasers,
supporting a likelihood of confusion under the second and third du Pont factors.
B. Similarity of the Marks
We next consider the first du Pont factor focusing on ‘‘the similarity or
dissimilarity of the marks in their entireties as to appearance, sound, connotation,
and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)
(quoting du Pont, 177 USPQ at 567). In comparing the marks, we are mindful that
the test 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 impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San Fernando Elec. Mfg. Co.
v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Serial Nos. 85076805 and 85111035

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Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d, No. 92-1086 (Fed. Cir. June 5, 1992).
In light of the fact that applicant’s marks and the cited mark include the
letters “HSIP” in the same order, the marks are similar in appearance and sound.
Applicant itself concedes that the marks are “somewhat similar in appearance.”13
The additional letter “A” in the cited mark is located at the end of the mark such
that it is less noticeable in appearance and sound.
The fact that application Serial No. 85111035 is a stylized mark does not
alter the similarity in appearance. Registrant is entitled to all depictions of its
standard character mark regardless of the font style, size, or color, including the
identical font style and size in which the mark in application Serial No. 85111035 is
shown. Viterra 101 USPQ2d at 1909; Citigroup Inc. v. Capital City Bank Group
Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011) and In re Strategic
Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012).
The record is silent as to the meaning(s) of HSIPA in the cited mark and
applicant’s HSIP marks, and applicant admits that its HSIP marks have no
particular meaning.14 Accordingly, given the nature and relatedness of the goods,
whatever meanings and/or commercial impressions the marks have are necessarily
similar.

13 Applicant’s Appeal Briefs p. 4.
14 At oral argument, counsel for applicant confirmed that HSIP has no particular meaning
with respect to applicant’s goods.
Serial Nos. 85076805 and 85111035

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It is well settled that in determining the question of likelihood of confusion
where the mark of one party includes the entire mark of another, consideration
must be given to the nature of that portion of the mark which is incorporated in the
other’s mark. For example, is it a coined or arbitrary term, or is it descriptive or
suggestive of the properties of the goods with which it is used, and how frequently it
has been registered or used by others as a trademark for the same goods. Warnaco
Inc. v. Holiday Golf Products, 204 USPQ 69, 73 (TTAB 1979).
Because there is no evidence that either of applicant’s HSIP marks, or the
cited HSIPA mark, have any particular meaning, the terms HSIP and HSIPA are
arbitrary. Given these arbitrary letter marks, the omission of the letter “A” in
applicant’s marks, which are otherwise identical to the cited mark, is insufficient to
distinguish the marks.
The cases on which applicant heavily relies for its position that the one letter
difference between its mark and the cited mark weighs against a finding of
likelihood of confusion are readily distinguishable and do not call for a different
result.15 In NEC Electronics Inc. v. New England Circuit Sales Inc., 722 F.Supp.
861, 13 USPQ2d 1058 (D. Mass. 1989), a decision in a trademark infringement case
that is not binding on this Board, no likelihood of confusion was found between the
marks NEC and NECS where the plaintiff NEC was a manufacturer of electronic
components, including computer chips, and defendant NECS was an independent
broker of computer chips. The evidence in that case, unlike the present case,

15 Applicant’s Appeal Briefs p. 5.
Serial Nos. 85076805 and 85111035

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showed plaintiff NEC sold to original equipment manufacturers, while defendant
NECS primarily sold to independent chip distributors. Therefore, the parties’ goods
were largely sold in different trade channels to knowledgeable or sophisticated
customers. Additionally, NECS stood for the name of the defendant, New England
Circuit Sales, Inc., which was used in connection with the NECS acronym. Thus,
notwithstanding the similarity of the letters used by the parties, the court found
that the total effect of the marks did not militate in favor of finding that purchasers
were likely to mistake them. 13 USPQ2d at 1061.
In In re Electrolyte Laboratories Inc., 929 F.2d 645, 16 USPQ2d 1239 (Fed.
Cir. 1990), the Federal Circuit reversed the Board, ruling that applicant’s stylized
K+ mark for a dietary potassium supplement was not likely to cause confusion with
the mark K+EFF also for dietary potassium supplements. A key fact in that case
was that the letter K is the chemical symbol for potassium, with K+ symbolizing a
potassium ion, and EFF was said to be an abbreviation for “effervescent.”
Additionally, both marks possessed design components. In the present case,
applicant admits that HSIP has no particular meaning and therefore lacks the
descriptive component present in the Electrolyte case. In view of the foregoing,
neither of these cases stands for applicant’s broad proposition that the one letter
difference weighs against a finding of likelihood of confusion between its marks and
the cited mark.
In determining likelihood of confusion, the focus is on the recollection of the
average purchaser who normally retains a general rather than specific impression
Serial Nos. 85076805 and 85111035

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of trademarks. See L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012);
and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Based on
the overall similarity of the HSIP and HSIPA marks in appearance, sound, meaning
and commercial impressions, it is likely that the average purchaser would retain
the same recollection for each mark.
C. Number and Nature of Similar Marks in Use on Similar Goods
Relying on a single registration for the mark HS-IPS for various electronic
goods in Class 9, some of which are identical to goods in applicant’s application,
applicant argues that the cited mark is only entitled to a narrow scope of protection.
Applicant contends the coexistence of the cited registration and the foregoing HS-
IPS registration strongly supports the conclusion that the cited registration should
not preclude the registration of its marks.16 The existence of the HS-IPS
registration does not constitute proof of use of that mark, and therefore, has no
impact on the weakness of the cited mark. Moreover, the HS-IPS mark differs in
important respects from applicant’s marks and the cited mark. The hyphen
separating the letters in the mark HS-IPS would necessarily lead to a different
pronunciation, and therefore a different appearance, sound and commercial
impression of that mark from applicant’s marks as well as the cited mark. Further,
the letters HS in the HS-IPS mark correlate to the name of the owner of the
registration, namely, HannStar Display Corporation.

16 Applicant’s Appeal Briefs pp. 10-11.
Serial Nos. 85076805 and 85111035

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Additionally, arbitrary arrangements of letters have generally been given a
wider scope of protection. See J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS &
UNFAIR COMPETITION § 7:10 (4th ed. June 2013). As explained by the predecessor to
our primary reviewing court, “. . . it is more difficult to remember a series of
arbitrarily arranged letters than it is to remember figures, syllables, words, or
phrases. The difficulty of remembering such lettered marks makes confusion
between such marks, when similar, more likely.” Crystal Corp. v. Manhattan
Chemical Mfg. Co., 75 F.2d 506, 25 USPQ 5, 6 (CCPA 1935) (Z.B.T. held confusingly
similar to T.Z.L.B.) and B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ 2d 1500,
1509 (TTAB 2007) (“Several cases state that marks involving letter combinations
are likely to be inherently difficult to remember and, therefore, consumers are more
susceptible to confusion or mistake than with word marks.”).
Lastly, as applicant readily acknowledges, prior decisions concerning the
registrability of third-party marks are not binding on the Board.17 “Even if all of
the third-party registrations should have been refused registration...such errors do
not bind the USPTO to improperly register Applicant’s marks.” In re Shinnecock
Smoke Shop, 571 F.3d 1171, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009), citing In re
Boulevard Entertainment, Inc., 334 F.3d 1336, 67 USPQ2d 1475, 1480 (Fed. Cir.
2003). See also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001) (“Even if some prior registrations had some characteristics similar to

17 Applicant’s Appeal Briefs p. 11.
Serial Nos. 85076805 and 85111035

15

[applicant’s] application, the PTO’s allowance of such prior registrations does not
bind the Board or this court.”)
In view of the foregoing, the single registration cited by applicant does not
impact the meaning of applicant’s mark or the cited mark, nor does it support a
finding that the cited mark is weak or otherwise entitled to a narrow scope of
protection.
D. Conclusion
Because the goods are, in part identical and otherwise closely related, the
channels of trade and classes of purchasers are the same. There is a strong
similarity of the marks in sound, sight, meaning and commercial impression.
Therefore, considering the relevant du Pont factors, we find that the Office has met
its burden in showing a likelihood of confusion between applicant’s HSIP marks and
the cited HSIPA mark for the identified goods.

Decision: The refusals to register the marks in application Serial Nos.
85076805 and 85111035 under Section 2(d) of the Trademark Act are affirmed.