IP Law Daily, TRADEMARK—TTAB: Identical MAXPRO mark likely to cause confusion; refusal affirmed, (Dec 18, 2024)

By Jonathan Anderson

Registrant’s and Applicant’s goods are different, but both are used for industrial purposes, which weighed in favor of a likelihood of confusion.

The Trademark Trial and Appeal Board has affirmed the Examining Attorney’s refusal to register the mark MAXPRO for enzymes, finding that it is likely to cause confusion with an identical mark for inorganic salts. The Board concluded that given the identical nature of the marks and the relatedness of the goods, even a sophisticated purchaser with specialized expertise would be unlikely to understand that the goods emanate from different sources (In re Novozymes A/S, No. 79338481 (T.T.A.B. Dec. 3, 2024)).

Background. Applicant, Novozymes A/S, sought registration on the principal register of the standard character mark MAXPRO for “Enzymes, yeasts and microorganisms for improvement of protein and fiber for use in feed formulations, being enzymes and yeast nutrients for industrial purposes and cultures of microorganisms other than for medical or veterinary use” in International Class 1. The Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the standard character mark MAXPRO on the principal register for “Inorganic salts for industrial purposes” in International Class 1 that it is likely to cause confusion or mistake or to deceive. Applicant appealed.

The Board analyzed all the probative evidence of record bearing on a likelihood of confusion and considered each DuPont factor for which there was evidence and argument. The Board found that given the identical nature of the marks and the relatedness of the goods, even a sophisticated purchaser with specialized expertise is unlikely to understand that the goods emanate from different sources.

The marks. First, the Board said that the identical nature of the marks weighed heavily in favor of finding a likelihood of confusion. It was undisputed that the marks are identical in appearance and sound. The Board said this is not a situation where the same marks are used to identify goods so dissimilar as to engender different connotations or commercial impressions.

The goods. Second, the Board said the evidence shows that the goods are at least in-part related insofar as they may be manufactured by the same company, which weighed in favor of a likelihood of confusion. The Examining Attorney submitted evidence from third-party websites showing that it is not uncommon for the same entities to manufacture goods such as Applicant’s enzymes and Registrant’s inorganic salts. Although Registrant’s goods are clearly different products than Applicant’s, the Board found it relevant that both are used for industrial purposes.

Applicant argued that the third-party manufacturers of Applicant’s and Registrant’s goods were like supermarkets or big box retailers. However, the Board said that the website evidence was from manufacturers specializing in the production of industrial products, which carried more probative weight.

Applicant further argued that there was a lack of relevant third-party registration evidence showing relatedness. However, the Board observed that the Examining Attorney was not limited to that particular type of evidence and could rely on evidence from third-party websites to demonstrate relatedness of the goods.

In addition, Applicant discounted the Examining Attorney’s evidence on the basis that use of a house mark, such as one from Cargill, was “not probative of relatedness of goods here.” The Board said such third-party websites showed origination of Applicant’s enzymes and Registrant’s inorganic salts from a common source. Evidence that the same company manufactures the involved goods is sufficient to show relatedness, the Board said.

Purchasing conditions. The Board found that this factor weighed against a likelihood of confusion. Applicant’s and Registrant’s goods are restricted to industrial purposes, which by their intrinsic nature are not impulse items purchased by ordinary retail consumers. Such goods are purchased by more discriminating professionals or equally sophisticated purchasing agents with specialized knowledge who exercise greater than ordinary care.

“We conclude that the critical first and second DuPont factors outweigh the fourth factor, and that confusion is likely between Applicant’s applied-for mark and the mark in the cited registration for the identified goods,” the Board said.

The Case is Serial No. 79338481.

Judge: Lykos, A.

Attorneys: Blake R. Hartz (Reeves & Wagner LLP) for Novozymes A/S. Patrick Carr for the USPTO.

Cases: Trademark USPTO