Tuesday, February 10, 2009

TTAB Finds "FERROLABS" and "FERRO TEC" for Ferrofluidic Fluids Not Confusingly Similar

Despite an overlap of goods, channels of trade, and classes of customers, the Board dismissed an opposition to registration of the mark FERROLABS & Design for ferrofluids and related goods, finding it so dissimilar from the registered marks FERRO TEC & Design , FERROSOUND, FERRODRIVE, and FERROFLUIDIC for ferrofluids, that confusion is not likely. Ferrotec (USA) Corporation and Ferrotec Corporation v. Ferro Labs, Inc., Opposition No. 91174110 (January 29, 2009) [not precedential].

The Board first rejected Opposers' claim to ownership of a family of FERRO marks, for two reasons: (1) the supposed "family feature," FERRO, is descriptive of ferrofluids and related products and thus cannot support a "family," and (2) Opposers failed to prove that the four registered FERRO-formative marks have been widely used and promoted together so as to create "public recognition coupled with an association of common origin predicated on the term FERRO."

The Board next nixed Opposers' claim of fame for the marks FERRO TEC and FERROFLUIDIC. Ferrotec submitted sales and advertising figures (in confidence), but provided no context for the numbers. Secondly, the figures were not divided out for each mark. In short, Opposers failed "to demonstrate that the successful marketing of opposers' FERRO TEC and FERROFLUIDIC products translates into widespread recognition of each of these marks among the relevant purchasers."

However, the Board found the goods of the parties to be partly identical and therefore presumed that they travel to the same classes of customers through the same normal channels of trade. But it also found that the goods "are not the types of products that are purchased by ordinary consumers," a factor favoring Applicant.

But the deciding issue for the Board was the dissimilarity of the marks. The Board first noted once again that when the goods are identical, a lesser degree of similarity is necessary between the marks to support a finding of likely confusion. Because FERRO is a descriptive term as to certain of the involved goods, the Board found that FERRO is not the dominant feature of any of the parties' marks, and its mere presence in Applicant's mark and in Opposers' marks, without more, does not warrant a finding of likely confusion.

Comparing the marks in their entireties as to appearance, sound and meaning, the Board ruled "that their dissimilarities outweigh their similarities, and that the marks likewise are dissimilar rather than similar in terms of their overall commercial impressions."

And so the Board dismissed the opposition.

Text Copyright John L. Welch 2009.


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