York

Trademark Trial and Appeal Board

Feb 15, 2007

No. 76600403 (T.T.A.B. Feb. 15, 2007)

Mailed:
February 15, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re York
________

Serial No. 76600403
_______

Michael I. Kroll for Ronald V. York.

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

Before Bucher, Rogers and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:
Ronald V. York has appealed from the final refusal of
the trademark examining attorney to register SUPER-CYCLONE
(in standard character form) as a trademark for
“environmental control apparatus, namely, solar venting
fan”1 in International Class 11.

1 Application Serial No. 76600403, filed June 29, 2004, based on
an assertion of an intent to use the mark in commerce under
Trademark Act Section 1(b), 15 U.S.C. § 1051(b).
THIS OPINION
IS NOT A PRECEDENT
OF THE T.T.A.B.
Serial No. 76600403
2
The examining attorney has refused registration of
applicant's mark pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the previously registered mark CYCLONE (in
typed form) for “electric fans,”2 in International Class 11,
that, as used on applicant’s identified goods, applicant's
mark is likely to cause confusion or mistake or to deceive.
Applicant has appealed the final refusal of his
application. Both applicant and the examining attorney
have filed briefs.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key, although not exclusive, considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24

2 Registration No. 2750576, issued August 12, 2003.

Serial No. 76600403
3
(CCPA 1976). See also, In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We first consider the second and third du Pont factors
regarding the similarities between applicant's and
registrant’s goods and the similarities between
registrant's and applicant's trade channels and classes of
purchasers of those goods. Registrant has broadly
identified its goods as “electric fans,” without any
limitations. Applicant has identified his goods as
“environmental control apparatus, namely, solar venting
fan.” The examining attorney contends that applicant's
fans are electric, and applicant does not contest the
examining attorney’s contention regarding his fans.
Accordingly, we find that applicant's goods are encompassed
within registrant’s “electric fans,” applicant's fans being
electric fans with a particular application or use.
Applicant has argued that his fans are “a highly
specialized type of fan likely to have sophisticated
purchasers.” Brief at p. 6. We consider, however,
registrant’s identification of goods as encompassing all
electric fans, including electric fans that are highly
specialized and which have sophisticated purchasers. There
are no limitations to the type of “electric fans” in
registrant’s identification of goods. The question of
Serial No. 76600403
4
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods recited in
applicant’s application vis-à-vis the goods recited in
registrant’s registration. If there are no limitations in
an identification of goods, we must presume that the
“registration encompasses all goods of the nature and type
described, [and] that the identified goods move in all
channels of trade that would be normal for such goods.” In
re Elbaum, 211 USPQ 639, 640 (TTAB 1981). See also Octocom
Systems, Inc. v. Houston Computers Services 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 the
sales of goods are directed.”). The identification of
goods in the cited registration encompasses even highly
specialized electric fans, including solar electric venting
fans. Thus, applicant's argument is not persuasive.
As for trade channels, because the registration does
not include any trade channel limitations in the
identification of goods, as stated above, we assume that
Serial No. 76600403
5
registrant’s goods move in all channels of trade which may
be deemed reasonable or customary for such goods, and that
they are available to all potential customers. Elbaum, 211
USPQ at 240. Because applicant's goods are encompassed
within the cited registration, we find that the trade
channels for both applicant’s and registrant’s goods
overlap.
In view of the foregoing, we resolve the du Pont
factors regarding the similarities of the goods and the
similarities of likely-to-continue trade channels in favor
of finding a likelihood of confusion.
We turn next to the fourth du Pont factor, i.e., the
conditions under which and buyers to whom sales are made,
including whether sales are made on impulse or whether they
are made by careful, sophisticated purchasers. As noted
above, applicant maintains that the purchasers of his goods
are “sophisticated.” Applicant has not provided any
explanation or evidence in support of his contention and
there simply is no evidence in the record from which we can
make a determination of whether such purchasers are
“sophisticated.” We add too that even if applicant's
purchasers are “sophisticated,” sophisticated purchasers
are not necessarily knowledgeable in the field of
trademarks or immune from source confusion. See In re
Serial No. 76600403
6
Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB 1988).
Accordingly, we find that the fourth du Pont factor is
neutral on the question of likelihood of confusion.
We now turn to the first du Pont factor, i.e., the
similarities of the marks considered in their entireties.
Our focus is on whether the marks are similar in sound,
appearance, meaning, and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). We
do not consider whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Also,
we are guided by the well-established principle that
although the marks must be considered in their entireties,
there is nothing improper, under appropriate circumstances,
in giving more or less weight to a particular portion of a
mark. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Serial No. 76600403
7
The only difference between the marks is applicant's
addition of “SUPER-” to registrant’s CYCLONE mark. The
presence of the hyphen in applicant's mark does not
significantly affect the appearance or commercial
impression of the mark. See In re Champion International
Corp., 196 USPQ 48, 49 (TTAB 1977) (“[N]o distinction,
vague or otherwise, can be drawn between ‘CHECK MATE’ with
or without a hyphen between the words so that for purposes
herein they are identical”); In re General Electric Co.,
180 USPQ 542, 544 (TTAB 1973) (“Notwithstanding the hyphen
in applicant's mark, it is fair to assume that applicant's
insulating material would ordinarily be called for and
referred to by the designation ‘REX.’”). The hyphen does
not affect the sound of applicant's mark because the hyphen
would not be pronounced when calling for applicant's goods.
The examining attorney maintains that the addition of
SUPER “essentially creates the commercial impression of an
upgraded or higher feature version of the ‘CYCLONE’ brand.”
Brief at p. 2. We agree. “Super” is defined inter alia
as, “[a]n article or a product of superior size, quality,
or grade.” The American Heritage Dictionary of the English
Language (3d ed. 1992).3 Those consumers familiar with

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Serial No. 76600403
8
registrant’s CYCLONE brand electric fans will consider
applicant's SUPER-CYCLONE mark as referring to registrant’s
CYCLONE brand electric fans of superior quality.4
The meanings of applicant's and registrant’s marks are
also similar. CYCLONE is defined in The American Heritage
Dictionary of the English Language, supra, as inter alia a
“violent rotating windstorm.” In the context of fans,
CYCLONE suggests a strong wind created by the fan. SUPER-
CYCLONE simply suggests a superior grade or an even

Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372,
217 USPQ 505 (Fed. Cir. 1983).
4 Applicant takes issue with the examining attorney’s argument
that prospective purchasers are likely to assume that applicant's
goods are upgraded, better-quality or higher-feature versions of
registrant’s goods because applicant's mark includes the term
SUPER. At p. 2 of his reply brief, applicant states that “[i]t
is not, at all clear, whether it can be said that ‘solar venting
fans’ are inherently superior to ordinary ‘electric fans’ - or
just different – such that purchasers would necessarily assume
that Applicant's goods are a superior version of those of the
owner of the cited registration.” Consumers do not need to know
whether in fact “solar venting fans” are inherently superior to
“electric fans” to make the association that a SUPER-CYCLONE
brand fan is of a superior quality to a CYCLONE brand fan. The
argument is based on the meaning of SUPER and the shared term
CYCLONE, not on a comparison of the goods.
Additionally, applicant argues that the addition of SUPER to a
mark may “reasonably imply to purchasers a ‘new and improved’
version of the other entity’s goods” if the mark is “truly
fanciful or arbitrary,” but would not do so if the mark is
inherently weak, and “‘CYCLONE’ is, at best, a suggestive mark.”
Reply at p. 2. We are not aware of any per se rule regarding the
addition of SUPER to a term that is suggestive or “inherently
weak,” and do not accept the assumption that CYCLONE in the
context of applicant's and registrant’s goods is “inherently
weak” or suggestive. See discussion, infra.

Serial No. 76600403
9
stronger wind. The meanings of the marks hence are
similar.
Further, as far as sound and appearance of the marks,
while there are differences due to the addition of SUPER to
CYCLONE, the differences are outweighed by the similarities
created by the shared common term CYCLONE.
We conclude, therefore, that when we consider these
marks in their entireties, any differences in appearance,
pronunciation, meaning, and commercial impression are
eclipsed by the similarities of the marks. The du Pont
factor regarding the similarities of the marks thus weighs
in favor of finding a likelihood of confusion.
Applicant has submitted with his response to the first
Office action numerous third party registrations from the
TESS database for the term CYCLONE for a variety of goods
and services, and argues at p. 5 in his brief that
“‘CYCLONE’ is used as a single-word, or composite, mark by
many sellers in an almost endless line of business fields
and, accordingly, it is submitted that the word ‘CYCLONE,’
as a trademark, is entitled to only the most narrow scope
of protections, rather than being accorded the same scope
of protection as would a fanciful or arbitrary trademark
term.” In his reply brief at p. 3, applicant clarifies his
argument:
Serial No. 76600403
10
Applicant, however, has not introduced more
than two dozen subsisting registrations for
establishing “marketplace” usage, but, rather, to
show the weakness, through commonality, of the
term “CYCLONE” throughout industry.
In this regard, it cannot be said that the
Examining Attorney has acknowledged the weakness
of “CYCLONE,” established by both widespread
registration and meaning. Instead, the Examining
Attorney has sought to infer that “CYCLONE” is as
strong as any fanciful or arbitrary mark which
may be adopted for an entity’s goods, let alone
for electric fans. While it is agreed that even
a very weak mark is entitled to protection
against substantially the same mark for
substantially the same goods or services, that
situation is not presented to the Board on this
appeal.

To be clear, to the extent that applicant has argued
in his brief that applicant's mark is weak due to third-
party use of the mark, applicant's argument is not well
taken. Third-party registrations do not demonstrate use of
the marks which are the subjects thereof in the marketplace
or that the consuming public is familiar with the use of
those marks and has learned to distinguish between them
based on the differences therein. See Smith Brothers
Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d
1004, 177 USPQ 462 (CCPA 1973). To the extent that
applicant is arguing that CYCLONE is a weak term due to
widespread registration, applicant's argument is not well
taken. Third party registrations, by themselves, are thus
entitled to little weight on the issue of likelihood of
Serial No. 76600403
11
confusion. See In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); In re Hub Distributing, Inc., 218 USPQ 284 (TTAB
1983). Additionally, as the examining attorney noted, the
third party registrations cover goods and/or services which
are unrelated to the goods in the registration.5 Thus, even
if we were to consider that CYCLONE is used “in an almost
endless line of business fields,” none of the third-party
registrations recite goods and/or services similar to
registrant’s goods. Moreover, as our principal reviewing
court pointed out in In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001), “[e]ven if
some prior registrations had some characteristics similar
to [applicant's] application, the … allowance of such prior
registrations does not bind the Board or this court.”
When we consider the record and the relevant
likelihood of confusion factors, and all of applicant's
arguments relating thereto, we conclude that, when
potential purchasers of applicant's “environmental control
apparatus, namely, solar venting fan” and registrant’s
“electric fans” encounter the marks SUPER-CYCLONE and
CYCLONE for these goods, they are likely to believe that

5 The registrations cover goods such as laboratory instruments
(Registration No. 2113797); sausage and spices (Registration No.
2115362); whistles (Registration No. 2358508); and a chassis used
in fire fighting vehicles (Registration No. 2360240).

Serial No. 76600403
12
the sources of these goods are in some way related or
associated. As a result, there is a likelihood of
confusion.
DECISION: The refusal to register the mark under
Section 2(d) of the Trademark Act in view of Registration
No. 2750576 is affirmed.