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THIS OPINION IS NOT A
`PRECEDENT OF THE TTAB
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`Mailed:
`October 1, 2012
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________
`
`Trademark Trial and Appeal Board
`________
`
`In re Evonik Goldschmidt GmbH
`________
`
`Serial No. 85014843
`_______
`
`William F. Lawrence and Marilyn Matthes Brogan of Frommer
`Lawrence & Haug LLP for Evonik Goldschmidt GmbH.
`
`Maureen Dall Lott, Trademark Examining Attorney, Law Office
`117 (J. Brett Golden, Managing Attorney).
`_______
`
`Before Seeherman, Holtzman and Lykos, Administrative
`Trademark Judges.
`
`Opinion by Seeherman, Administrative Trademark Judge:
`
`Evonik Goldschmidt GmbH has appealed from the final
`
`
`
`refusal of the trademark examining attorney to register
`
`SK-INFLUX, in standard characters, as a trademark for
`
`“chemical products for use in industry, namely, additives
`
`and auxiliary agents for the production of cosmetic and
`
`pharmaceutical products.”1 Applicant has stated that “SK”
`
`
`1 Application Serial No. 85014843, filed April 15, 2010. The
`application is based on Section 1(a) (use in commerce) and
`
`

`
`Ser No. 85014843
`
`and “INFLUX” appearing in the mark has no significance in
`
`the relevant trade or industry or as applied to the
`
`goods/services listed in the application, or any
`
`geographical significance.
`
`Registration has been refused pursuant to Section 2(d)
`
`of the Trademark Act, 15 U.S.C. § 1052(d), on the ground
`
`that applicant’s mark, as used for its goods, is likely to
`
`cause confusion with the following marks, all owned by the
`
`same entity, SK Holdings Co., Ltd.:
`
`
`for, inter alia, chemical additives for use in
`the manufacture of pharmaceuticals, cosmetics and
`plastic molding compositions; chemical additives
`for use in the manufacture of adhesives,
`pharmaceuticals, textile, plastics and paints;
`synthetic resins for use in the manufacture of
`adhesive, paint, cosmetics and binder.2
`
`asserts first use and first use in commerce as early as March 31,
`2000. Applicant also asserts a priority filing date of March 2,
`2010, under Section 44(d) of the Trademark Act, based on a German
`application. Applicant subsequently submitted the German
`registration, thus perfecting the Section 44(e) basis for the
`application.
`2 Registration No. 2759298, issued September 2, 2003. The
`registration as originally issued was for goods in eight classes.
`The registration for six of the classes was cancelled as a result
`of the registrant’s failure to file a Section 8 affidavit of
`continuing use for the goods in those classes. The goods that
`
`2
`
`

`
`Ser No. 85014843
`
`
`
`
`
`
`
`
`for, inter alia, acetone and citric acid for
`industrial purposes;3
`
`and for, inter alia, medicines for sensory
`organs, namely, central nervous system
`stimulants; oral contrceptive pillls, gummed
`medical taffeta plasters; mouthwashes for medical
`purposes; breath refreshers for medical purposes;
`vermifuges; Goulard water for use as an
`astringent or anti-inflammatory lotion;
`bronchodilating preparations; antiparasitic
`preparations; eye-wash; tobacco-free cigarettes
`for medical purposes; cod liver oil; agents
`affecting metabolism; liniments; chilblain
`preparations, digitalin; synthetic narcotics,
`anesthetics; agents affecting perpheral nervous
`system; agents for immunity adjustment; agents
`for treating physically caused lesions; and
`oriental medicines for women’s diseases, namely,
`hormonal imbalances or fertility treatments;4
`
`
`
`remain, and for which a Section 8 affidavit has been accepted,
`are in Classes 1 and 4, and we have listed those goods in Class 1
`that are most similar to the goods in applicant’s application.
`3 Registration No. 3422863, issued May 6, 2008. This
`registration lists hundreds of items in Class 1. The examining
`attorney has discussed and submitted evidence to show the
`relatedness of applicant’s goods to the citric acid and acetone
`listed in the identification, and we therefore will not burden
`this opinion with a multi-page listing of the entire
`identification.
`4 Registration No. 3411705, issued April 15, 2008. The
`registration is for a very large number of goods in Class 5, and
`we have listed a small number of the items that are in the nature
`of pharmaceutical products. The examining attorney has stated
`that the refusal with respect to this registration is limited to
`applicant’s “chemical products for use in industry, namely,
`additives and auxiliary agents for the production of
`pharmaceutical products,” i.e., not the additives and auxiliary
`agents for the production of cosmetics.
`
`3
`
`

`
`Ser No. 85014843
`
`
`Registration No. 3422863 includes the description
`
`statement, “The mark consists of the color red appearing in
`
`the inside of the butterfly and in the letters SK. The
`
`color white appears separating the color red from the color
`
`orange which appears on the outside of the butterfly’s
`
`wings.” (The description of the mark in Registration No.
`
`3411705 is essentially the same, but instead of the
`
`language “the inside of the butterfly,” it says
`
`“the inside of the butterfly’s wings.”)
`
`
`
`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).
`
`
`
`We consider the issue of likelihood of confusion with
`
`respect to each registration in turn.
`
`Registration No. 2759298
`
`
`
`Applicant’s identified additives for the production of
`
`cosmetic and pharmaceutical products must be considered
`
`legally identical to the chemical additives for the
`
`manufacture of pharmaceuticals and cosmetics identified in
`
`4
`
`

`
`Ser No. 85014843
`
`this registration and, because the goods are legally
`
`identical, they must be presumed to travel in the same
`
`channels of trade and be sold to the same classes of
`
`customers. See In re Viterra Inc., 671 F.3d 1358, 101
`
`USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in
`
`the application and registration, goods and services are
`
`presumed to travel in the same channels of trade to the
`
`same class of purchasers). These two du Pont factors
`
`obviously favor a finding of likelihood of confusion.
`
`However, there are two other relevant du Pont factors that
`
`do not, and in this case they outweigh the other factors.
`
`The mark in Registration No. 2759298 consists of
`
`letters in a design format in which the letters partially
`
`appear on the reverse tonality background, and part of each
`
`letter appears or is created by part of the other letter.
`
`As a result, it is not clear that the letters are, in fact,
`
`“SK”; for example, the mark may be perceived as the letter
`
`“S” next to an abstract line design. Even if we accept
`
`that consumers would view the letters in the mark as “SK,”
`
`because the letters are depicted in a noticeable design
`
`format, we cannot treat the mark as though it were merely
`
`the letters SK, or that it would be pronounced as SK. “The
`
`nature of stylized letter marks is that they partake of
`
`both visual and oral indicia, and both must be weighed in
`
`5
`
`

`
`Ser No. 85014843
`
`the context in which they occur.” In re Electrolyte
`
`Laboratories, Inc., 929 F.2d 645, 16 USPQ2d 1239, 1240
`
`(Fed. Cir. 1990). As the predecessor to our primary
`
`reviewing court stated in Georgia-Pacific Corp. v. Great
`
`Plains Bag Co., 614 F.2d 757, 204 USPQ 697, 699 (CCPA
`
`1980), a mark that consists of highly stylized letters is
`
`“in the gray region between pure design marks which cannot
`
`be vocalized and word marks which are clearly intended to
`
`be.”
`
`Accordingly, we do not regard the letters “SK” in
`
`applicant’s mark SK-INFLUX to convey the same impression as
`
`“SK” in the cited mark, and cannot base a finding of
`
`similarity on the mere fact that both marks can be said to
`
`contain these letters. Because of the significant visual
`
`differences between the marks, and the fact that a design
`
`mark is viewed, not spoken, and therefore the cited
`
`stylized letter mark cannot be treated simply as a word
`
`mark, we find that the marks are different in appearance,
`
`pronunciation, connotation and commercial impression. See
`
`In re Electrolyte Laboratories, 16 USPQ2d at 1240.
`
`Further, based on the identification of the goods,
`
`which are chemical additives for the manufacture of
`
`pharmaceuticals and cosmetics, the purchasers must be
`
`deemed to be manufacturers of pharmaceuticals and
`
`6
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`

`
`Ser No. 85014843
`
`cosmetics. As such, they are considered to be
`
`sophisticated purchasers, who would purchase these products
`
`with care. Such purchasers are not likely to believe that
`
`these goods emanate from a single source merely because the
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`letters in a design mark may be construed as “SK,” and “SK”
`
`is the first element of applicant’s mark.
`
`In view of the foregoing, the examining attorney’s
`
`refusal of registration based on Registration No. 2759298
`
`is reversed.
`
`
`
`
`
`Registration No. 3422863
`
`The mark in this registration, as well as in
`
`Registration No. 3411705, is
`
`
`
`and, unlike the mark in Registration No. 2759298, the mark
`
`is not merely a design mark, but a mark in which it is
`
`clear that the letters are “SK.” Further, these letters
`
`comprise the only literal element of the mark, and are
`
`larger and clearly separate from the design element which,
`
`although it is described as a butterfly, is an abstract
`
`design rather than a true image of a butterfly, such that
`
`it does not clearly convey that it is a depiction of any
`
`particular object. As a result, consumers are likely to
`
`7
`
`

`
`Ser No. 85014843
`
`refer to or call for the registrant’s goods by the only
`
`literal element in the mark, “SK.” See In re Appetito
`
`Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (if a mark
`
`comprises both a word and a design, then the word is
`
`normally accorded greater weight because it would be used
`
`by purchasers to request the goods or services).
`
`Accordingly, we treat “SK” as the dominant part of the
`
`registered mark.
`
`As for applicant’s mark, because a hyphen separates
`
`the “SK” portion from the “INFLUX” portion, “SK” will be
`
`seen as a separate element. Further, although applicant
`
`has stated that “influx” has no significance in the
`
`industry, we take judicial notice that the word “influx”
`
`means “the act of flowing in; inflow,”5 and therefore, as
`
`applied to additives, has a slight suggestive connotation.
`
`Moreover, based on the record herein, “SK” must be
`
`considered arbitrary. Although applicant has submitted
`
`four third-party registrations which include the letters
`
`“SK,” third-party registrations are not evidence of use of
`
`the marks. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
`
`1257, 1259 (Fed. Cir. 2010). Third-party registrations may
`
`
`5 Collins English Dictionary, unabridged, 10th ed. (2009). The
`Board may take judicial notice of dictionary definitions.
`University of Notre Dame du Lac v. J. C. Gourmet Food Imports
`Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
`USPQ 505 (Fed. Cir. 1983).
`
`8
`
`

`
`Ser No. 85014843
`
`be considered in the manner of dictionary definitions, to
`
`show that a term has a particular significance in an
`
`industry, id., but the four third-party registrations
`
`submitted by applicant are for very different goods from
`
`those at issue herein, such that they do not show that “SK”
`
`has a significance for the registrant’s goods.6 Because SK
`
`is the first part of applicant’s mark, and INFLUX has a
`
`slight suggestive significance, we view SK as the dominant
`
`part of applicant’s mark. See Palm Bay Imports v. Veuve
`
`Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
`
`USPQ2d 1689 (Fed. Cir. 2005).
`
`It is a well-established principle that, in
`
`articulating reasons for reaching a conclusion on the issue
`
`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 of a mark, provided the
`
`ultimate conclusion rests on a consideration of the marks
`
`in their entireties. In re National Data Corp., 753 F.2d
`
`
`6 Registration No. 3438660 for SK-Electronics and design is for,
`inter alia photomasks for use in manufacture of electronic visual
`display panels and other electronic devices; Registration No.
`3425869 for SK-2000 is for adhesive for use with cellulose
`insulation; Registration No. 3580685 for SKion is for, inter
`alia, chemicals used in industry, science and photography, as
`well as in agriculture, horticulture and forestry, fire
`extinguishing compositions, and chemical substances for
`preserving food stuffs; Registration No. 3583617 for SKK and
`design is for custom manufacture of compression moulded
`pharmaceutical preparations for others.
`
`9
`
`

`
`Ser No. 85014843
`
`1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Therefore, in
`
`comparing the marks, we give greater weight to the letters
`
`“SK” in the registrant’s mark, and to the “SK” portion of
`
`applicant’s mark, although we hasten to add that we are not
`
`comparing only these elements, but are considering the
`
`marks as a whole. Because of the manner in which “SK”
`
`appears in applicant’s mark, it gives the impression of a
`
`house mark, with “INFLUX” indicating a product line. As a
`
`result, those who are familiar with the registrant’s SK and
`
`design mark are likely to believe, if the mark is used on
`
`goods that are the same or similar to the registrant’s,
`
`that the goods emanate from the same source.
`
`In concluding that the marks are similar, we have
`
`considered applicant’s various arguments, but are not
`
`persuaded thereby. The cases relied on by applicant, in
`
`which no confusion was found despite a common element, are
`
`inapposite. In those cases, the common element was
`
`descriptive or highly suggestive, and therefore was not a
`
`sufficient basis on which to predicate a finding of
`
`likelihood of confusion. In this case, there is no
`
`evidence that “SK” is not an arbitrary mark. Applicant has
`
`also argued that its mark would be pronounced SKIN FLUX,
`
`and therefore it differs in pronunciation and connotation
`
`from the cited mark. Although it is possible that some
`
`10
`
`

`
`Ser No. 85014843
`
`consumers might run the mark together in order to create a
`
`shorter, two-syllable term, it is more probable that
`
`consumers would treat the hyphen in the mark, SK-INFLUX, as
`
`indicating that these are separate elements, and would view
`
`the mark as consisting of the letters S and K and the word
`
`Influx and therefore pronounce the mark as the four
`
`syllable S-K-Influx,. Certainly in light of the role that
`
`hyphens play in the English language to separate elements
`
`of a term, we cannot accept applicant’s unsubstantiated
`
`assertion that consumers would view and pronounce the mark
`
`as applicant suggests. Because of the common element SK in
`
`both marks, and because INFLUX in applicant’s mark gives
`
`the impression of a subsidiary product line mark, we find
`
`that the element INFLUX in applicant’s mark is not
`
`sufficient to distinguish the marks, and that overall the
`
`marks are similar in appearance, pronunciation, meaning and
`
`commercial impression.7
`
`We turn next to the question of the similarity of the
`
`goods. The examining has pointed out that this cited
`
`
`7 Applicant makes the argument that “a simple side by side
`viewing” of the cited mark in contrast to its mark demonstrates
`the significant differences in the marks. Reply brief, p. 3.
`However, side-by-side comparisons are not the appropriate test.
`See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
`1976)(“it is well established that the test to be applied in
`determining likelihood of confusion is not whether marks are
`distinguishable on the basis of a side-by-side comparison”).
`
`
`11
`
`

`
`Ser No. 85014843
`
`registration includes citric acid and acetone, and has
`
`submitted evidence showing that these items are used as
`
`ingredients in cosmetics and pharmaceuticals. We note that
`
`the identification for citric acid in the identification is
`
`for “citric acid for industrial use,” and therefore we
`
`cannot treat this item as being for cosmetic and
`
`pharmaceutical use, which is the field in which applicant’s
`
`identified additives and auxiliary agents for the
`
`production of cosmetic and pharmaceutical products are
`
`used. However, the “acetone” identified in the cited
`
`registration is not limited to any particular field, and
`
`the evidence submitted by the examining attorney shows that
`
`this product is used in cosmetic products. For example,
`
`the website for Spectrum Chemicals and Laboratory Products
`
`states that it is “a major manufacturer and distributor of
`
`cosmetic ingredients and cosmetic chemicals used in the
`
`production of personal care, cosmeceutical, toiletry and
`
`fragrance products,” and lists, under the “Cosmetic
`
`Chemicals & Cosmetic Ingredients” that it supplies,
`
`“acetone NF” and “acetone reagent ACS.”8 An article in
`
`
`8 www.spectrumchemical.com, attached to July 21, 2011 Office
`action, pages 24 and 29.
`
`12
`
`

`
`Ser No. 85014843
`
`DERMAdoctor, which discusses cosmetic ingredients, lists
`
`“acetone” under “Common Ingredients.”9
`
`Because the registrant’s identification is not
`
`restricted as to the use of the various chemicals, and
`
`because the evidence shows that acetone may be used in
`
`cosmetics, the registrant’s identified goods must be deemed
`
`to be, in part, additives for the production of cosmetic
`
`products, and therefore applicant’s and the registrant’s
`
`goods must be considered to be in part identical.
`
`Applicant argues that there is no evidence that the
`
`purchasing decisions for the applicant’s and the
`
`registrant’s goods would be made by the same people.
`
`However, to the extent that the goods are legally
`
`identical, they must be presumed to travel in the same
`
`channels of trade and be sold to the same classes of
`
`purchasers. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532
`
`(TTAB 1994).
`
`The du Pont factors of the similarity of the goods and
`
`the channels of trade favor a finding of likelihood of
`
`confusion.
`
`The next factor we consider is the sophistication of
`
`the purchasers. As we have previously discussed, the
`
`
`9 www.dermadoctor.com, attached to January 3, 2011 Office
`action, p. 158.
`
`13
`
`

`
`Ser No. 85014843
`
`purchasers must be considered sophisticated and careful.
`
`However, even careful consumers can be confused if similar
`
`marks are used on identical goods since, even though they
`
`would be aware of the differences in the marks, they would
`
`believe those differences represented variant brands
`
`emanating from a single source. As for applicant’s
`
`argument that consumers would be “well aware that the
`
`product is coming from the Applicant company,” brief, p. 7,
`
`this apparently refers to applicant’s earlier comment that
`
`“consumers would recognize Applicant’s goods as coming from
`
`the Applicant source based in Germany, in contrast to the
`
`goods from the Korea-based owner of the cited
`
`registrations.” Brief, p. 7. In other words, applicant is
`
`relying on the extrinsic fact of the geographic locations
`
`of the applicant and registrant to show that confusion is
`
`not likely. However, we must determine whether applicant’s
`
`mark is likely to cause confusion with the registrant’s
`
`mark, not whether consumers might be able to obtain other
`
`information as to the source of the goods. For example,
`
`the cases are legion that information on labels that states
`
`the company name or house mark of the manufacturer will not
`
`permit the manufacturer to register a mark that is
`
`confusingly similar to another party’s mark. See, for
`
`example, In re 1st USA Realty Professionals Inc., 84 USPQ2d
`
`14
`
`

`
`Ser No. 85014843
`
`1581, 1587 (TTAB 2007). We also point out that the
`
`registrant is not restricted to manufacturing its products
`
`in Korea, and certainly in today’s global economy with its
`
`multinational corporations, consumers are likely to believe
`
`that a company could have branches or subsidiaries in more
`
`than one country. In this connection, we note that the
`
`website for Siegfried states that it has pharmaceutical
`
`production facilities located in Switzerland, Germany,
`
`Malta and the U.S.A., and subsidiaries in China and
`
`Taiwan.10
`
`We affirm the refusal of registration based on this
`
`registration.
`
`Registration No. 3411705
`
`
`
`The mark in this registration is the same as that in
`
`Registration No. 3422863. The goods, however, are not as
`
`close to applicant’s goods as those in Registration No.
`
`3422863. Accordingly, we need not engage in an extended
`
`analysis of whether applicant’s use of its mark is likely
`
`to cause confusion with this registration. If confusion is
`
`likely with Registration No. 3422863, applicant’s mark must
`
`be refused registration on that basis, and there is no need
`
`to also consider whether the refusal of registration on the
`
`
`10 www.siegfried.ch, attached to May 25, 2010 Office action at
`page 82.
`
`15
`
`

`
`Ser No. 85014843
`
`basis of Registration No. 3411705 must also be affirmed.
`
`On the other hand, if applicant’s mark were not likely to
`
`cause confusion with Registration No. 3422863, then,
`
`because the goods in Registration No. 3411705 are not as
`
`close to applicant’s goods as are the goods in Registration
`
`No. 3422863, a fortiori there can be no likelihood of
`
`confusion with respect to Registration No. 3411705. See In
`
`re Hartz Hotel Services Inc., 102 USPQ2d 1150, 1151 (TTAB
`
`2012) (if confusion is likely between applicant’s mark and
`
`a registration for same services, there is no need to
`
`consider the issue of likelihood of confusion with a
`
`registration for other goods and services, while if there
`
`is no likelihood of confusion with respect to mark for
`
`identical services, there would be no likelihood of
`
`confusion with respect to a registration for goods and
`
`services that are not identical).
`
`
`
`Decision: The refusal of registration is affirmed on
`
`the basis of likelihood of confusion with Registration No.
`
`3422863.
`
`16

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