Valley Research, Inc.

Trademark Trial and Appeal Board

Sep 10, 2003

No. 76241557 (T.T.A.B. Sep. 10, 2003)

Mailed: September 10, 2003
Paper No. 11
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Valley Research, Inc.
________
Serial No. 76/241,557
_______
Randee Sibul-Gelbert of Baker & Daniels for Valley
Research, Inc.
Tina L. Snapp, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Walters, Chapman, and Bucher, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On April 16, 2001, Valley Research, Inc. (an Indiana
corporation) filed an application to register the mark
TAKA-DIASTASE on the Principal Register for goods
identified, as amended, as “enzymes for the food industry,
namely, an enzyme preparation for digesting starch” in
International Class 1. The application is based on
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/241557
2
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 used on its identified goods, so
resembles the mark TAKA-SWEET, which is registered for
“glucose isomerase enzyme for use by the food industry” in
International Class 1,1 as to be likely to cause confusion,
or to cause mistake, or to deceive.
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
briefed the issue before us, but applicant did not request
an oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
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).
The Examining Attorney essentially contends that the
marks are highly similar, consisting of the dominant
beginning syllable “TAKA,” followed by a hyphen, followed
1 Registration No. 1,537,095, issued May 2, 1989, Section 8
affidavit accepted, Section 15 affidavit acknowledged.
Ser. No. 76/241557
3
by a descriptive term (“sweet” or “diastase,”
respectively); that the respective goods are closely
related, both being enzymes for use in the food industry;
that inasmuch as both applicant’s and registrant’s goods
are specifically identified as for use in “the food
industry,” the channels of trade and purchasers are the
same or overlapping; that even if the purchasers are
sophisticated, it does not mean they are knowledgeable
regarding trademarks or that they are immune from source
confusion; that a lack of actual confusion is unconvincing
where applicant has not commenced use; that applicant’s
evidence of registrations of “TAKA-prefix” marks at the
USPTO does not support allowing applicant’s mark; and that
doubt is to be resolved in favor of the registrant.
Applicant argues essentially that the marks convey
different commercial impressions because they end in
distinctly different words;2 that the goods as identified
2 Applicant disagrees with the Examining Attorney’s conclusion
that the term “diastase” is descriptive of the goods.
(Applicant’s brief, pp. 3-4.) We take judicial notice of the
following dictionary definitions (see TBMP §704.12(a) (2d ed.
June 2003):
(1) diastase A mixture of enzymes
from malt. It converts at least
fifty times its weight of potato
starch into sugars in thirty
minutes. Used to convert starch
into sugar. In 1992 diastase
and diastase malt aluminum
Ser. No. 76/241557
4
are sufficiently distinct to obviate any confusion; that
the “purchasers are scientific and technical professionals
who know the difference between a starch-digesting enzyme
and a glucose isomerase enzyme and will select the product
they need with care” (brief, pp. 6-7); that there have been
a number of “TAKA” prefix marks registered concurrently
between 1957-2002 to different owners for a long period of
hydroxide were shown not to be
safe and effective as claimed in
OTC digestive-aid products and
the FDA banned the compounds for
that purpose. The FDA data
bank, PAFA (see page 10), has
fully up-to-date toxicology
information available and
diastase is still permitted as a
food-processing agent. A
Consumer’s Dictionary of Food
Additives (4th ed. 1994); and
(2) diastase See amylase.
amylase Enzymes that hydrolyse
starch. Ι-Amylase (dextrinogenic
amylase or diastase, EC 3.2.1.1)
acts randomly on Ι-1,4-
glusocoside bonds in the
molecule and produces small
Dextrin fragments. …. Bender’s
Dictionary of Nutrition and Food
Technology (7th ed. 1999).
Based on the evidence of record as well as these dictionary
definitions, we agree with the Examining Attorney that the term
“diastase” is descriptive in relation to the respective goods.
We hasten to add that this finding is in the context of the
question of likelihood of confusion, and in particular, the
underlying factor of the similarities of the marks. To be
clear, the Examining Attorney has not refused registration on
the basis that the entire mark is merely descriptive under
Section 2(e)(1), 15 U.S.C. §2(e)(1), and we make no finding
thereon.
Ser. No. 76/241557
5
time, the majority of which were owned by two entities
(Parke-Davis and Miles Laboratories) and their respective
predecessors and successors-in-interest; that Parke-Davis
and Miles Laboratories competed for over 40 years without
any apparent confusion as to the source of their respective
goods; that, in addition, there were two additional
entities (Takasago Koryo Kogyo Kabushiki Corp. and Takara
Shuzo Co., Ltd.) who obtained “TAKA” prefix marks
commencing during the 1970s; and that the specific marks
TAKA-DIASTASE (Reg. No. 251,949 issued January 22, 1929,
last renewed in 1969, and listed in the USPTO records as
expired on November 3, 1992, assigned to Parke-Davis) and
TAKA-SWEET (Reg. No. 1,178,724 issued November 24, 1981 to
Miles Laboratories, cancelled under Section 8 on June 24,
1988 and re-registered by Miles Laboratories in the current
cited Reg. No. 1,537,095 which issued on May 2, 1989)
co-existed on the Principal Register from November 1981 to
November 1992.
Applicant’s counsel explains the early history of the
“TAKA marks” as follows (applicant’s brief, pp. 7-8,
references to exhibits omitted):
The first TAKA- enzyme, TAKA-DIASTASE,
was discovered by a Japanese chemical
engineer, Jokichi Takamine, toward the
end of the 19th century. Mr. Takamine
came to the United States in 1890 to
Ser. No. 76/241557
6
work on production of this enzyme for
the distilling industry. He formed his
own company, Takamine Ferment Co., but
subsequently, allowed production of
TAKA-DIASTASE for medicinal use to be
undertaken by Parke-Davis Co. Mr.
Takamine, though, remained associated
with Parke-Davis for the remainder of
his career. He was also associated
with, and the first president of,
Sankyo Co., Ltd., a Japanese company,
the current owner of the rights to
TAKA-DIASTASE in Japan. Sankyo has
given Applicant permission to market
the TAKA-DIASTASE product in the U.S.
Mr. Takamine died in 1922.
Applicant’s attorney then sets forth some background
on the three registered TAKA marks owned by Parke-Davis
(TAKA, TAKA-DIASTASE and TAKA-COMBEX, all for either, inter
alia, “diastase” or a combination of vitamin B and a
diastatic enzyme, and all three registrations are expired);
the successors to Parke-Davis; the purchase of Takamine
Laboratory, Inc. by Miles Laboratories, Inc. in 1956; Miles
Laboratories’ ownership of several registered TAKA marks
for various enzymes (e.g., TAKA-SWEET, TAKA-THERM,
TAKAMINE, TAKALITE, all except one TAKA-SWEET registration
expired or cancelled); and the successors to Miles
Laboratories.
We turn first to consideration of the similarities or
dissimilarities of the marks. There is the obvious
difference between the registered mark and applicant’s
Ser. No. 76/241557
7
mark, specifically, that applicant’s mark ends with the
descriptive word “diastase” and registrant’s mark ends in
the suggestive or descriptive word “sweet.”
It is well settled that marks must be considered in
their entireties as to the similarities and dissimilarities
thereof. However, our primary reviewing court has held
that in articulating reasons for reaching a conclusion on
the question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir.
2000); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985).
In this case, both applicant’s mark and registrant’s
mark share the beginning syllable TAKA, followed by a
hyphen. This is the first and dominant part of both
applicant’s and registrant’s marks. The first part of a
mark is often the part impressed upon the mind of the
purchaser, and the most likely to be remembered. See
Ser. No. 76/241557
8
Presto Products, Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895 (TTAB 1981).
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 marks.
See Puma-Sportschuhfabriken Rudolf Dassler KG v. Roller
Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
The differences in the marks (TAKA-DIASTASE and TAKA-SWEET)
do not serve to distinguish the marks here in issue. See
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
Applicant argues that there are instances where
similar or even identical marks have been registered for
similar goods and services, citing, inter alia, the case of
In re Hearst Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir.
1992). However, in the application now before the Board,
applicant’s mark does not consist of multiple words (as in
the Hearst case where applicant’s mark consisted of the
words VARGA and GIRL); rather, here applicant’s mark
consists of a syllable TAKA, a hyphen and the descriptive
word DIASTASE. Moreover, the Court explained in the Hearst
Ser. No. 76/241557
9
case at 25 USPQ2d 1239 that “the weight given to the
respective words is not entirely free of subjectivity... .”
In any event, we disagree that the Hearst case requires a
different result herein as we have given each element of
applicant’s mark appropriate weight and, of course, we have
ultimately considered the similarities/dissimilarities of
the marks in their entireties.
Regarding the connotations of the involved marks, as
set forth previously, applicant explained (and submitted
evidence showing) the early history of the first TAKA-
enzyme, TAKA-DIASTASE, being discovered by a Japanese
chemical engineer, Jokichi Takamine. In addition,
applicant submitted numerous third-party “TAKA”
registrations of Parke-Davis and Miles Laboratories. This
record shows that the origin of the syllable “Taka” is well
known in the enzyme industry. Thus, the prefix “TAKA”
connotes to prospective purchasers the same idea in
relation to enzymes used in the food industry for both
applicant and registrant.
We turn to a consideration of the goods. The
respective goods, as identified, are both enzymes and are
both for use in the food industry. Even though each may be
a separate type of enzyme, we find these goods are closely
related within the meaning of the Trademark Act. The issue
Ser. No. 76/241557
10
is not whether purchasers would confuse the goods, but
rather whether there is a likelihood of confusion as to the
source of the goods. See In re Rexel Inc., 223 USPQ 830
(TTAB 1984).
Inasmuch as the identified goods of both applicant and
registrant are limited to enzymes used in the food
industry, we find that the channels of trade are the same
or are at least overlapping, and that the purchasers would
be the same.
While we agree with applicant that the purchase of the
involved enzymes for use in the food industry would be made
after some level of careful consideration, nonetheless, we
find that this factor does not negate a finding of
likelihood of confusion. Even assuming the purchasers of
these goods are sophisticated (scientific, technical
professionals), this does not mean that such consumers are
immune from confusion as to the origin of the respective
goods, especially when sold under very similar marks. 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 relatively sophisticated
purchasers of these food additive enzymes could believe
that these goods come from the same source, if offered
Ser. No. 76/241557
11
under the involved substantially 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).
Purchasers familiar with registrant’s enzyme product
sold under the registered mark TAKA-SWEET may, upon seeing
applicant’s mark TAKA-DIASTASE on an enzyme product, assume
that registrant is offering another enzyme product, and
that both originate from the same entity. See Dan Robbins
& Associates, Inc. v. Questor Corporation, 599 F.2d 1009,
202 USPQ 100 (CCPA 1979).
Applicant strongly urges reversal based on the long
history of the “TAKA” marks registered to two different
lines of owners (the Parke-Davis line and the Miles
Laboratories line). While we acknowledge that the record
shows these two lines co-existed at one time, we are
nonetheless not persuaded by this argument. First, all of
the “TAKA” registrations owned by either the Parke-Davis
line or the Miles Laboratories line have been cancelled or
expired except for the cited registration (owned by a
successor to Miles Laboratories). Second, both the Parke-
Davis line and the Miles Laboratories line trace their
presumably valid rights in the various “TAKA” marks back to
a single source, Mr. Jokichi Takamine and/or his companies.
Ser. No. 76/241557
12
(See applicant’s brief, pp. 7-9.) Thus, there are two
strong chains of “TAKA” marks, and there is nothing in the
record to show that applicant, Valley Research, Inc., is a
successor to either of those two chains. As explained
earlier herein, applicant stated in its brief that Sankyo
Co., Ltd. (a company also dating back to Mr. Takamine, who
was Sankyo’s first president) owns the mark TAKA-DIASTASE
in Japan, and that Sankyo “has given Applicant permission
to market the TAKA-DIASTASE product in the U.S.” (Brief,
p. 8.) However, aside from applicant’s attorney’s
statements that Sankyo is the owner of the mark in Japan
and that applicant is entitled to market the product in the
U.S., the record is devoid of any evidence to that end.
Furthermore, the record lacks even a statement by counsel
that applicant has obtained the right to register the mark
TAKA-DIASTASE in the United States.
The fact that the mark TAKA-DIASTASE and the first
TAKA-SWEET registration were on the register at the same
time for several years (1981 to 1988) does not require a
different result herein.
None of the third-party registrations made of record
by applicant compel a different result in the present
case. The registrations are not evidence that the marks
shown therein are in use or that the public is familiar
Ser. No. 76/241557
13
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. See
AMF Inc. v. American Leisure Products, Inc., 474 F.2d
1403, 177 USPQ 268 (CCPA 1973); and In re Total Quality
Group Inc., 51 USPQ2d 1474 (TTAB 1999). Applicant has
made of record numerous third-party registrations
containing the term “TAKA,” all but three of which were
owned by the Parke-Davis or the Miles Laboratories lines
explained above, and only three of which remain in valid,
existing status.3
With regard to the few “TAKA” registrations which
issued to entities other than the Parke–Davis line or the
Miles Laboratories line, they convey different commercial
impressions (e.g., one is the Japanese word for
“treasure,” one is the name of a Japanese city). The
syllable “TAKA” is not truly a “prefix” in those marks.
3 The three remaining valid registrations are (1) the cited
registration for the mark TAKA-SWEET; (2) Reg. No. 1,017,722 for
the mark TAKARA for Japanese food seasoning wine, namely, mirin
in International Class 33 (the registration includes a statement
that “TAKARA” is translated as meaning “treasure” in Japanese);
and (3) Reg. No. 1,765,422 for the mark TAKASAGO for, inter alia,
enzyme preparations for use in the manufacture of food stuffs in
International Class 1. (The Examining Attorney submitted with
her brief a printout of one page from The Columbia Encyclopedia
showing “TAKASAGO” is the name of an industrial city in Japan.
We take judicial notice thereof.)
Ser. No. 76/241557
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Neither the Board nor any Court is bound by prior
decisions of Trademark Examining Attorneys, and each case
must be decided on its own merits, on the basis of the
record therein. See In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001). See also, In re
Kent-Gamebore Corp., 59 USPQ2d 1373 (TTAB 2001); and In re
Wilson, 57 USPQ2d 1863 (TTAB 2001).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.