Watermakers, Inc.

Trademark Trial and Appeal Board

Aug 23, 2016

No. 86416577 (T.T.A.B. Aug. 23, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: August 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Watermakers, Inc.
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Serial No. 86416577
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Barry L. Haley and Kristina M. DiMaggio of Malin Haley DiMaggio & Bowen, P.A.,
for Watermakers, Inc.
Jason Paul Blair, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Quinn, Mermelstein, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Watermakers, Inc. (“Applicant”) seeks registration on the Principal Register of

with “Inc.” and “reverse osmosis desalination” disclaimed, for the following goods and
services:
• “Water desalination units; reverse osmosis desalination equipment,” in
International Class 11;
Serial No. 86416577
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• “Installation, maintenance and repair service of reverse osmosis
desalination equipment,” in International Class 37;
• “Custom manufacture of reverse osmosis desalination equipment,” in
International Class 40; and
• “Design of reverse osmosis desalination equipment,” in International Class
42.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood
of confusion with the mark WATERMAKER, registered on the Principal Register for
“water purification units” in International Class 11.2
When the refusal was made final, Applicant appealed to this Board. We affirm the
refusal to register.
I. Evidentiary Issue
The Examining Attorney objects to admission of the evidence in Applicant’s
Exhibit B, submitted by Applicant for the first time with its appeal brief.3

1 Application Serial No. 86416577 was filed on October 7, 2014, under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), based on Applicant’s claim of first use anywhere and in commerce
since 1982 for the identified goods and since January 1984 for the identified services. The
description of the mark states: “The mark consists of the term ‘Water’ with a double lined
capital W and a water ripple line underneath connecting to a water drop design. The term
‘Makers’ is directly underneath the term ‘Water’ with a double lined capital M and italicized
‘s’ followed by small capital letters for the term INC. Directly underneath are the terms
REVERSE OSMOSIS DESALINATION all in capital letters.” Color is not claimed as a
feature of the mark.
2 Registration No. 2172488, issued July 14, 1998; renewed September 19, 2007. The mark is
in typeset form. Before November 2, 2003, standard character drawings were known as typed
drawings. A typed mark is the legal equivalent of a standard character mark. Trademark
Manual of Examining Procedure (TMEP) § 807.03(i) (April 2016).
3 4 TTABVUE 18-23. Exhibit A to the appeal brief consists of two dictionary definitions,
submitted for the first time on appeal and without a request for judicial notice, but the
Examining Attorney cited them in his brief and did not object to their admission. 4 TTABVUE
14-17; see also 7 TTABVUE 4. We deem the definitions in Exhibit A to be of record.
Serial No. 86416577
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The evidentiary record in an application should be complete before an appeal is
filed. The Board ordinarily will not consider additional evidence filed by the appellant
or the examining attorney after appeal. Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d); see also Trademark Trial and Appeal Board Manual of Procedure (TBMP)
§ 1207.01 (2016); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593,
1596 (TTAB 2014); In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165
n.3 (TTAB 2013). Therefore, the Examining Attorney’s objection is granted. We have
given the untimely evidence in Exhibit B no consideration.
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key
considerations are the similarities between the marks and the similarities between
the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes
to the cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
We first consider the second du Pont factor, the similarity of the goods and
services. It is not necessary that the goods and services be identical or competitive,
or even that they move in the same channels of trade, to support a finding of
likelihood of confusion. Rather, it is sufficient that the goods and services are related
Serial No. 86416577
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in some manner, or that the circumstances surrounding their marketing are such
that they could be encountered by the same persons in situations that would give rise,
because of the similarity of the marks, to a mistaken belief that they originate from
the same source or that there is an association or connection between the sources of
the goods and services. Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Thor Tech Inc., 90 USPQ2d 1634, 1635
(TTAB 2009). In other words, the test is not whether consumers would be likely to
confuse the goods and services, but rather whether they would be likely to be confused
as to their source. In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012).
Here, the goods in the cited registration are “water purification units.” The goods
identified in the application are “water desalination units; reverse osmosis
desalination equipment,” and the services are the design, custom manufacture,
installation, maintenance, and repair of reverse osmosis desalination equipment.
“Desalination” is defined in record evidence as “the process of removing salt, esp[.]
from sea water so that it can be used for drinking or irrigation.”4 The Examining
Attorney submitted evidence establishing that water desalination, including by
reverse osmosis, is an aspect of water purification. This evidence includes a definition
of “reverse osmosis” as: “A process by which a solvent such as water is purified of
solutes by being forced through a semipermeable membrane through which the
solvent, but not the solutes, can pass.”5 Also of record is the page below, which

4 February 11, 2015 Office Action at 3 (from thefreedictionary.com).
5 Id. at 7 (from thefreedictionary.com).
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appears to be from the website of the owner of the cited registration, stating that
Registrant’s “reverse osmosis membrane removes salts and other impurities”:6

Based on the record evidence, we find that the “water desalination units” and
“reverse osmosis desalination equipment” identified in the application are
encompassed by, and thus legally identical to, the “water purification units” identified
in the cited registration. Registrant’s goods also are the subject of Applicant’s recited
services – “design, custom manufacture, installation, maintenance, and repair of
reverse osmosis desalination equipment.” We therefore find Applicant’s goods and
services related to the goods identified in the cited registration.

6 July 24, 2015 Final Office Action at 2 (from nimbuswater.com/products/residential/
watermakerfive.html). Although the issue at hand is the similarity of the goods and services
identified in the application and cited registration, evidence of Registrant’s actual use of the
mark is relevant to the extent it sheds light on the meaning of “water purification units” in
the trade or industry. Nonetheless, our consideration of the goods on which the registrant
uses its mark neither expands nor limit the goods as they are identified in the registration.
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Because there are no limitations as to channels of trade or classes of purchasers
in the descriptions, we must presume that the identified goods and services
encompass all goods and services of the nature and type described therein, that they
move in all channels of trade normal for such goods and services, and that they are
available to all potential classes of ordinary consumers. See Coach Servs., 101
USPQ2d at 1722; In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Moreover, because
the goods described in the application and the cited registration are legally identical,
we must presume that the channels of trade and classes of purchasers for the goods
are the same, considerations under the third and fourth du Pont factors, respectively.
See American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst.,
101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
Throughout its appeal brief, Applicant argues that its goods and services are
dissimilar from Registrant’s; that they are marketed through different channels of
trade to different target consumers, and priced disparately; and that purchasers of
the goods and services are sophisticated and will not be confused. Each of these
arguments is rooted in facts outside the record and circumstances beyond the
identifications in the application and cited registration, none of which is restricted as
to price, trade channel, or type of consumer.
We are constrained to consider the goods and services as identified in the involved
application and cited registration, not any extrinsic evidence of actual use. Stone Lion
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Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162
(Fed. Cir. 2014) (explaining that relying on current practices “would be improper
because the services recited in the application determine the scope of the post-grant
benefit of registration”); see also Octocom Sys. Inc. v. Houston Computers Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must be decided on the basis of
the identification of goods set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s goods, the particular channels
of trade or the class of purchasers to which sales of the goods are directed.”). Thus,
Applicant’s arguments are inapposite.
Even assuming that consumers of Applicant’s goods are sophisticated, moreover,
it is settled that careful or sophisticated purchasers “are not immune from source
confusion when similar marks are used in connection with related [goods and]
services.” Stone Lion, 110 USPQ2d at 1163-64 (quotation omitted); see also In re
Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“‘Human
memories even of discriminating purchasers . . . are not infallible.”’) (quoting Carlisle
Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112
(CCPA 1970)). This is particularly so when identical or closely related goods and
services are sold under very similar marks, as is the case here.
In our likelihood of confusion analysis, our findings under the second, third, and
fourth du Pont factors strongly support a finding that confusion is likely.
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Turning to the first du Pont likelihood of confusion factor, we must assess “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). We begin by noting that “[t]he proper test
is not a side-by-side comparison of the marks, but instead whether the marks are
sufficiently similar in terms of their commercial impression such that persons who
encounter the marks would be likely to assume a connection between the parties.”
Coach Servs., 101 USPQ2d at 1721 (citation omitted). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of marks. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134
(Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016).
On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration
of the marks in their entireties. Indeed, this type of
analysis appears to be unavoidable.
In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Serial No. 86416577
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We find the dominant portion of Applicant’s mark to be the
stylized words WATER MAKERS, for several reasons. First, these two words are by
far the largest, as well as the first, elements of the mark. See, e.g., Palm Bay, 73
USPQ2d at 1692 (stating that “veuve” is a prominent part of the mark VEUVE
CLICQUOT because it is the first word in the mark); Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating
that consumers will first notice the identical lead word on encountering the marks);
Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (stating
that “it is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”).
Second, the remaining words in Applicant’s mark are the disclaimed terms “Inc.,”
which serves no source-identifying function, and “reverse osmosis desalination,”
which is generic in association with Applicant’s goods and services. Although the
additional wording distinguishes Applicant’s mark somewhat from the cited mark
WATERMAKER in appearance and sound, we find that this generic matter has less
significance in creating the mark’s commercial impression and therefore is entitled
to less weight in our likelihood of confusion determination. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark may
be given little weight in reaching a conclusion on likelihood of confusion.’”) (quoting
In re Nat’l Data, 224 USPQ at 752).
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Finally, although we consider each mark on a case-by-case basis, the wording in
composite word and design marks normally is accorded greater weight in the
likelihood of confusion analysis because the verbal portion is most likely to indicate
the origin of the goods and be used by purchasers to request or refer to the goods. In
re Viterra, 101 USPQ2d at 1908. We give less weight to the design elements in
Applicant’s mark: the water drop, ripples, and stylized font. The doctrine of legal
equivalents also recognizes that a pictorial representation and its literal equivalent
are likely to impress the same mental image on purchasers. Squirrel Brand Co. v.
Green Gables Inv. Co., 223 USPQ 154, 155 (TTAB 1984); Clover Farm Stores Corp. v.
James G. Gill Co., 142 USPQ 233, 234 (TTAB 1964). Here, the water drop and ripples
reinforce the meaning of WATER, which the marks share, increasing their similarity.
The absence of a space between WATER and MAKER in the registered mark does
not significantly affect its commercial impression because consumers will still
recognize the individual components. See, e.g., In re ING Direct Bancorp, 100 USPQ2d
1681, 1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion
of spaces); Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009)
(DESIGNED TO SELL creates same commercial impression as DESIGNED2SELL).
In addition, it is well-established that singular and plural forms of the same term are
essentially the same mark. Weider Publ’ns, LLC v. D&D Beauty Care Co., 109
USPQ2d 1347, 1355 (TTAB 2014). Thus, the dominant portion of Applicant’s mark
WATER MAKERS (in stylized form) is nearly identical to the entire cited mark
WATERMAKER.
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Likelihood of confusion has been found where, as here, the entirety of one mark is
incorporated within another. See, e.g., China Healthways Inst. Inc. v. Wang, 491 F.3d
1337, 83 USPQ2d 1123 (Fed. Cir. 2007) (finding common word in CHI and CHI PLUS
likely to cause confusion despite differences in designs); Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) (CALIFORNIA CONCEPT
and surfer design likely to cause confusion with CONCEPT); In re West Point-
Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972) (WEST POINT
PEPPERELL and griffin design likely to cause confusion with WEST POINT). In
addition, because the cited mark is in standard characters, it may be presented in
any style, regardless of font, size, or color. In re Viterra, 101 USPQ2d at 1909. Thus,
the cited mark could be displayed in lettering resembling that of Applicant’s mark.
For these reasons, the similarity of the marks WATERMAKER and
weighs in favor of a likelihood of confusion.
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, as they pertain to the relevant du Pont likelihood of
confusion factors. The first, second, third, and fourth du Pont factors support a finding
of likelihood of confusion, while no factor weighs against. We find that Applicant’s
mark is likely to cause confusion with the mark in cited Registration No. 2172488
when used in association with the goods and services identified in the application.
Decision: The refusal to register Applicant’s mark pursuant to Trademark Act
Section 2(d) is affirmed.