Don’t discuss family in ex parte cases, says the TTAB

United States of America

In In re Hitachi High-Technologies Corp (Serial No 79110412, February 21 2014), the Trademark Trial and Appeal Board (TTAB) has affirmed the refusal to register applicant Hitachi High-Technologies Corporation’s application for the mark OPTICROSS, based on a likelihood of confusion with registered OPTI marks owned by Optimize Technologies Inc. Although the TTAB considered several of the likelihood of confusion factors outlined In re EI du Pont de Nemours & Co (76 F2d 1357, 177 USPQ 563, 567 (CCPA 1973)), it focused primarily on two main factors: the similarity of the marks and the relatedness of the goods. Once the TTAB determined that the marks were similar and the goods were related, the other du Pont factors analysed by the TTAB easily supported its decision. One additional du Pont factor - the variety of goods on which a prior mark is used - was discussed, but it did not appear to be a key deciding factor in the case.

Hitachi filed an application to register the mark OPTICROSS for “liquid chromatography apparatus and parts thereof”. The examining attorney refused registration of the mark under Section 2(d) of the Lanham Act, on the grounds that the mark was likely to be confused with seven registered OPTI- formative marks owned by Optimize. The seven OPTI registrations were OPTI, OPTI-MAX, OPTI-SEAL, OPTI-GUARD, OPTI-SOLV, OPTI-PAK and another for OPTI-SOLV for various components of chemical analysis and instruments all used for liquid chromatography. The examining attorney also refused registration based on a likelihood of confusion with a registration for OPTICHROM owned by Siemens Industry Inc for “chromatographic analysers and controls for same”.

In the initial office action dated May 22 2012, the examining attorney described Optimize’s seven registrations as a “family” of marks, stating that “consumers will likely perceive applicant’s mark, and applicant’s goods, as belonging to registrant Optimize’s existing family of ‘Opti-’ marks used with liquid chromatography parts”. Hitachi objected to the examining attorney’s reference to a family of marks, citing decisions holding that consideration of the family of marks doctrine is inappropriate in ex parte proceedings. In subsequent office actions, the examining attorney made no further references to any family of marks and specifically retracted references to this doctrine in the denial of request for reconsideration. Hitachi appealed the examining attorney’s refusal of registration and both sides filed briefs in support of their respective positions.

In reaching its decision affirming the examining attorney’s finding of a likelihood of confusion, the TTAB agreed that references to a family of marks do not belong in an ex parte proceeding. As such, the TTAB stated, each of Optimize’s registrations must stand on its own for a determination of a likelihood of confusion. Next, the TTAB applied the du Pont factors, focusing primarily on the similarity of the marks and the relatedness of the goods. Once the TTAB determined that the marks were similar and the goods were related, the TTAB found no need to analyse any of the other cited registrations.

The TTAB found that the goods identified in Hitachi’s application and the goods identified in the cited registration were legally identical as both relate to liquid chromatography. Specifically, “parts thereof” in Hitachi’s OPTICROSS application for “liquid chromatography apparatus and parts thereof” encompassed or overlapped with “liquid transfer components of chemical analysis equipment, namely High-Performance Liquid Chromatography - pistons and plunger seals for pumps; solvent reservoir filters; in-line filters; tubing; check valves; prime and purge valves; pump heads, precolumn filters; and fittings for tubing” identified in the cited OPTI registration. Because the TTAB found the goods to be legally identical, it also reasoned that it must find the channels of trade and classes of purchasers to be the same, citing the legal presumption found in cases such as In re Viterra Inc (671 F3d 1358, 101 USPQ2d 1905 (Fed Cir 2012)).

Next, the TTAB analysed the marks for similarity in terms of overall commercial impression. Hitachi argued that its mark would be viewed and pronounced by consumers as 'optic cross' and not 'opti cross', and that the 'opti' or 'optic' prefix is weakened by third-party registrations containing the term 'opti' in them for chromatography apparatuses and instruments. However, the TTAB determined that the OPTICROSS mark fully incorporated the registrant’s OPTI mark. Again citing other cases, the TTAB explained that there is no correct way to pronounce a mark. With respect to the third-party registrations, the TTAB found nothing that would render the OPTI mark unduly weak. Further, the TTAB stated, the number of registrations, especially absent evidence of use is not enough for a determination that consumers would be conditioned to distinguish among OPTI marks based on some subtle differences. Thus the TTAB found the marks to be similar. Although Hitachi also urged the TTAB to consider the degree of care consumers will exercise in purchasing the goods, also a du Pont factor, the TTAB deemed this factor to be neutral.

Even though the TTAB discussed at length the inappropriateness of the “family of marks” doctrine in an ex parte proceeding, it nonetheless explained that “consumers who may be familiar with various products in the [registrant’s] product line, when confronted with [Hitachi’s] mark, would be likely to view the goods marked therewith as additional products from [the] registrant". The TTAB went on to explain that, although the family of marks doctrine is usually used to assess the variety of goods used under the same mark, it was appropriate in this case to note the variety of chromatography-related goods offered under the registrant’s various OPTI-formative marks. A family by any other name is still a family it seems.

Linda T Makings, Arent Fox LLP, Washington DC

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