The opinion
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Mailed: January 29, 2004
Paper No. 36
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
_______
Trademark Trial and Appeal Board
_______
GE Osmonics, Inc.1
v.
Osmosis Technology, Inc.
_______
Opposition No. 91117751
to Application No. 75721083
filed on June 3, 1999
_______
Steve Lucke and Paul J. Robbennolt of Dorsey & Whitney for
GE Osmonics, Inc.
Don B. Finkelstein, Esq. for Osmosis Technology, Inc..
_______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Osmonics, Inc. (opposer) filed its opposition to the
application of Osmosis Technology, Inc. (applicant) to
register the mark OSMOTECH for “reverse osmosis separation
1
Though the opposition was filed by Osmonics, Inc., the records of the
USPTO show that Osmonics, Inc. became Oasis Acquisition, Inc., through a
merger, and subsequently changed its name to GE Osmonics, Inc. Thus we
have changed the heading in this case to reflect the current opposer of
record.
Opposition No. 91117751
or ultra filtration systems for water purification for
residential and commercial and industrial use[,] consisting
of filter membranes, housings for filter membranes and
connection fittings for housings” in International Class
11.2 The application contains a claim of ownership of
Registration No. 2,220,601 for the mark OSMOTIK for ….3
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods, so
resembles opposer’s previously used and registered marks
OSMO and the mark shown below:
for “reverse osmosis solvent separation units”4 as to be
likely to cause confusion under Section 2(d) of the
2
Application Serial No. 75721083, filed June 3, 1999, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods.
3
Applicant’s statement contains an error. A review of the records of
the USPTO shows that applicant owns Registration No. 2,110,601 for the
mark OSMOTIK for “reverse osmosis separation or ultra filtration systems
for water purification for residential and commercial and industrial use
consisting of filter membranes, housings for filter membranes and
connection fittings for housings,” and the registration issued on
November 4, 1997. If applicant prevails herein, the error in the
claimed registration number must be corrected before the application
proceeds to issuance of a registration.
4
Opposer asserts ownership of two registrations; however, one of the
asserted registrations, Registration No. 932,228 for OSMO and design,
shown infra, has expired. Thus, the opposer’s claim of likelihood of
confusion is moot with respect to this registration. The remaining
asserted registration is Registration No. 978,588, issued February 12,
1974, in International Class 11. [Sections 8 and 15 affidavits accepted
and acknowledged, respectively, and renewed for a period of ten years
from February 12, 1994.] We decide this case based on Registration No.
978,588, to the extent that title and status is established, and
2
Opposition No. 91117751
Trademark Act. Additionally, opposer asserts that, pursuant
to an exchange of correspondence between opposer and
applicant’s predecessor, applicant’s predecessor deleted
“Osmotech” from its corporate name and agreed not to use
“Osmotech” in connection with reverse osmosis separation
equipment.
Applicant, in its answer, denied the salient
allegations of the claim and asserted as affirmative
defenses that opposer’s claim is barred by estoppel, laches
and acquiescence; that opposer, in its own application to
register OSMO, argued that its mark was sufficiently
different from applicant’s previously registered mark
OSMOTIK to warrant registration; that the same arguments
apply to the differences between OSMO and OSMOTECH and,
thus, opposer cannot now argue otherwise; that “OSMOTIK and
OSMOTECH are substantially similar in appearance and the
goods listed in the registration of OSMOTIK are the same as
the goods listed in applicant’s application for the mark
OSMOTECH [and thus] opposer is barred by the Morehouse
doctrine (Morehouse Mfg. Corp. v. J. Strickland & Co., 407
F.2d 881, 160 USPQ 715 (CCPA 1969).” (Answer, pg. 5.)
evidence of alleged use of the marks OSMO and OSMO and design, shown
infra.
3
Opposition No. 91117751
Procedural Matters
We begin by addressing several questions regarding the
nature of the issues and record in this case.
First, on November 9, 2001, opposer filed a motion to
make of record in this proceeding selected portions of the
trial testimony of Mike O. Joulakian, applicant’s president,
from Cancellation No. 24,275. On July 30, 2002, the Board
granted opposer’s motion ONLY to the extent that opposer was
permitted to submit, in its entirety, Mr. Joulakian’s July
13, 2001 trial testimony from Cancellation No. 24,275.
Opposer was given thirty days to submit a complete copy of
that testimonial deposition. Opposer did not submit the
entire deposition in accordance with the Board’s order and,
thus, the portions submitted with its motion have not been
considered.
Second, on January 6, 2003, applicant filed a motion to
strike the notice of opposition. On March 17, 2003, the
Board denied applicant’s motion, stating that applicant had
provided no legal or factual basis for its “Trading with the
Enemy Act arguments”5; that such arguments were in the
nature of a compulsory counterclaim which was not pleaded;
and that applicant had fifteen days to submit a compulsory
counterclaim on a legally cognizable ground or thirty days
5
Applicant alleged, inter alia, that opposer sold certain products to
Iran in violation of the Trading with the Enemies Act; and that opposer
was soon to be sanctioned by the federal government in this regard.
4
Opposition No. 91117751
to submit its brief in the case. Applicant submitted its
brief within the required thirty-day period and therein
argued that it had insufficient information to submit a
counterclaim; asked that the Board, through the Secretary of
Commerce, obtain the information its seeks; and reiterated
its “Trading with the Enemy Act arguments.” The Board,
through the Secretary of Commerce or otherwise, will not
undertake to assist a party in obtaining evidence in a
proceeding. As previously stated by the Board, applicant’s
“Trading with the Enemy Act arguments” are in the nature of
an attack on the validity of opposer’s registration and,
thus, are necessarily raised only in a counterclaim to
cancel that registration. Because no counterclaim was
filed, and the issues were not tried, these arguments have
been given no consideration.
Third, applicant objects to opposer’s argument, stated
for the first time in its brief, that applicant does not
have a bona fide intention to use its mark in commerce. We
agree with applicant that this issue was neither pleaded nor
tried and, thus, we have not considered this argument by
opposer. To the extent that opposer’s argument pertains to
applicant’s predecessor’s purported agreement not to use the
mark OSMOTECH, we find this issue has been pleaded and
discussed in the context of opposer’s claim of likelihood of
confusion.
5
Opposition No. 91117751
Fourth, applicant contends that the notice of
opposition limits opposer’s likelihood of confusion claim to
opposer’s one subsisting registration and that opposer has
not also pleaded use of its marks. This allegation is not
born out by the language of the notice of opposition, which
includes an allegation of common law use of each of the
marks on the relevant goods for more than thirty years.
Thus, opposer’s evidence of common law use of its marks has
been considered herein.
Fifth, applicant objects to consideration of the
photocopies of opposer’s Registration No. 978,588, submitted
by notice of reliance, because such documents do not
establish the status or ownership of the registration. A
review of the documents shows that they are, in fact,
photocopies of the originally-issued Registration No.
978,588 and the renewal certificate. As such, these are not
status and title copies required by Trademark Rule 2.122(d),
37 C.F.R. 2.122(d). Thus, these documents are insufficient
to establish opposer’s ownership, or the status, of the
pleaded registration. However, we have considered opposer’s
testimony to determine whether ownership and status of the
claimed Registration No. 978,588 has been established.
Finally, applicant objects to specified testimonial
exhibits, comprising opposer’s alleged annual reports, on
the ground that neither Mr. Spatz nor Mr. Paulson are
6
Opposition No. 91117751
qualified to establish a proper foundation for these
reports, and that the reports constitute hearsay. We
disagree and find that both Mr. Spatz, opposer’s chairman
and CEO, and Mr. Paulson, opposer’s director of corporate
technical services, adequately testified to their personal
knowledge of these regularly-kept business records. Thus,
we have considered these exhibits. However, the contents of
the reports are hearsay as to the truth of the facts
contained therein, and so have not been considered for that
purpose. To the extent that the reports evidence use of the
mark on items ancillary to the claimed products, i.e., the
annual reports, as well as on products pictured therein,
they have been considered.
The Record
The record consists of the pleadings; the file of the
involved application; the testimony depositions by opposer
of Donald D. Spatz, opposer’s founder, chairman and CEO, and
David J. Paulson, opposer’s director corporate technical
services, both with accompanying exhibits; the rebuttal
testimony deposition by opposer of Jason Booth, opposer’s
counsel’s litigation graphics specialist, with accompanying
exhibits; and the testimony deposition by applicant of Mike.
O. Joulakian, applicant’s president, with accompanying
exhibits. Both parties filed briefs on the case, but a
hearing was not requested.
7
Opposition No. 91117751
Factual Findings
Mr. Paulson stated that opposer’s business is, and has
always been, in the general field of fluid separation using
cross-flow membrane technology. This includes, in order of
particle size filtered from smallest to largest, reverse
osmosis, nanofiltration, ultrafiltration and
microfiltration. Opposer manufactures, markets and applies
membranes in each of these categories. Opposer began in
1970 utilizing its reverse osmosis methodology, which has
concentrated on spiral membrane technology, and its first
applications were medical, e.g., producing purified water
for artificial kidneys. Opposer added ultrafiltration
products in the early 1970’s, nanofiltration products in the
late 1970’s to early 1980’s, and microfiltration products in
the early 1980’s.
Describing reverse osmosis as opposer’s core
technology, Mr. Paulson explained the technology as follows:
Natural osmosis occurs from an imbalance in energy
of fluids on opposite sides of a semipermeable
membrane. The energy is higher in the more pure
water, and nature tends to move the water from the
more pure state trying to dilute the water in the
less pure state until they reach the same energy
level.
…
Reverse osmosis is to take the process of osmosis
and reverse it by applying hydraulic pressure to
the water that is less pure, the side, the fluid
that has … less energy and more solids in it.
Force that water against the surface of the
membrane, of a semipermeable membrane. Such a
membrane has to have very small pores, as they’re
called, and allow only water to go through or very
8
Opposition No. 91117751
little of the contaminated material. So you’re
reversing the natural osmosis procedure. … The aim
is to allow pure water to go through [the pores]
while retaining and not allowing the transfer of
other solutes and suspended material to go
through.
…
Reverse osmosis allows the purification of water
by excluding dissolved material, solutes,
including down to the ionic range, which is a very
small solute. Salt ions don’t pass though
[reverse osmosis] membranes well.
[David J. Paulson trial deposition, November 3, 2001, pgs.
18-19, 23, “Paulson dep.”]
Mr. Paulson divided fluid separation product
applications into three broad categories: waste treatment,
process separation and water purification; and noted that
opposer is involved in all three applications. Referring to
opposer’s 1988 annual report (Opposer’s Exhibit 23, p. 7),
Mr. Paulson stated that opposer has identified sixteen
distinct markets for its products across all three
applications, e.g., the pulp and paper market, the beverage
manufacturing market, the dairy processing market, the
medical market and the potable water market. These markets
include commercial and industrial categories and, more
recently, the residential market.
Mr. Spatz recounted opposer’s history, the nature of
its business, and its products, markets and customers.
Opposer was founded in August 1969 with the goal of applying
reverse osmosis technology, invented in 1959 at UCLA, to the
marketplace. Opposer sold its first reverse osmosis systems
9
Opposition No. 91117751
in 1970 under the trademark OSMONICS. Starting in mid to
late 1970, opposer used, and has continued to use, the
trademark OSMO to identify its reverse osmosis machines,
whereas it used, and uses, the mark OSMONICS more broadly to
identify its whole reverse osmosis system as well as its
fluid filtration and purification systems. Both OSMO marks,
along with the OSMONICS mark, have been used on various
units and components, which are also sold separately from
systems, from approximately 1970 to the present. OSMONICS
is used on opposer’s larger machines, whereas the two OSMO
marks are used on opposer’s medium-sized to small machines.
The marks are affixed to equipment with decals or labels.
Some of the components to which opposer affixes, or at
least initially affixed, its OSMO marks include cartridge
filters, polymeric membranes and sepralators, plastic and
stainless steel housings, small pure water reverse
osmosis/ultrafiltration deionization equipment, and membrane
test equipment.
Opposer initially promoted its products with press
releases, which resulted in articles in several trade
magazines, and product brochures. Its advertising
expenditures expanded from 1% of sales, mostly magazine
exposure and brochures, to approximately 3-4% of sales in
the 1980’s. Mr. Spatz noted that opposer’s sales totaled
approximately $300,000 in 1970; that sales grew to $36
10
Opposition No. 91117751
million by 1989; and that sales were $200 million in 2000.
Of total sales, products with the two OSMO marks on them
represented approximately 70% of sales through 1983, 60% of
sales after 1983, and 40% of sales in 2000.
Opposer used manufacturer’s representatives to market
its products until approximately 1986/1987, when it had
developed its own in-house distributor organization.
Opposer sells its components and systems to systems
manufacturers, original equipment manufacturers, and
commercial and industrial end-users.6
Applicant has been in business since February 1985.
The products it markets and sells under its OSMOTIK mark are
“reverse osmosis membrane elements, nanofiltration membrane
elements, ultrafiltration membrane elements, housings for
all of the above, including residential membrane elements
and commercial membrane elements with appropriate pressure
vessels. And reverse osmosis systems for commercial usage.”
[Joulakian deposition, May 15, 2002, pg.7.] Applicant’s
application to register OSMOTECH for the identified goods
herein is based on an allegation of a bona fide intention to
use the mark in commerce. The record contains no indication
that such use has commenced.
In the mid-1980’s opposer learned of applicant and, in
a letter dated August 24, 1984, opposer’s counsel notified
11
Opposition No. 91117751
applicant that opposer owned the registered mark OSMO “as
applied to Reverse Osmosis Solvent Separation Units”
(Opposer’s Exhibit 116); that the adoption and use of
OSMOTECH by applicant was likely to cause confusion; and
advised applicant to stop using the name and mark OSMOTECH.
An exchange of correspondence ensued between opposer’s and
applicant’s attorneys. Opposer’s attorney’s letter of May
29, 1985, (Opposer’s Exhibit 120) includes the following
statements:
Your letter of March 21, 1985 stated that your
client had “decided to cease the use of the name
‘Osmotech’ in all identification of its products
and in its advertisements.” It then goes on to
state that “Osmotech International, Inc. will
immediately seek a new trademark so as to continue
business” and that “furthermore, Osmotech
International, Inc. shall continue to manufacture
products utilizing the reverse osmosis process.”
…
… Specifically, it is our understanding that your
client is in the process of seeking another
corporate name which is satisfactory to the
Secretary of State of California and that you will
also be adopting a new trademark for your products
and terminating use of the trademark “OSMOTECH.”
Applicant has submitted no evidence indicating that the
conclusion in this letter is in any way incorrect or that
these proposed events did not occur.
Analysis
Mr. Spatz testified to the status of the registration
for the mark OSMO and to opposer’s ownership of the
6
It is not clear from the record to what extent the OSMO marks may be
used on products for the residential market.
12
Opposition No. 91117751
registration. Thus, we consider Registration No. 978,588
for the mark OSMO to be of record. Accordingly, there is no
issue with respect to opposer’s priority. King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974). We add, however, that priority is also
clearly established by the evidence showing opposer’s use
since 1970 of the registered mark OSMO and the OSMO and
design mark shown infra for, at least, the various fluid
filtration products identified in the OSMO registration.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also, In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein.
13
Opposition No. 91117751
Opposer contends that it has established its priority;
and that a likelihood of confusion exists between its mark
OSMO and applicant’s mark OSMOTECH for the respectively
recited goods because the marks are similar; that
applicant’s mark incorporates opposer’s mark in its entirety
and adds to it the descriptive suffix “tech”; that the goods
are nearly identical; that the trade channels are the same;
that opposer’s mark is famous; and that applicant’s
predecessor’s earlier agreement not to use OSMOTECH is an
acknowledgement that OSMOTECH is confusingly similar to
OSMO.
Regarding the respective goods of the parties,
applicant contends that opposer has not established that the
goods are in any way related or similar, or that the
customers or trade channels are the same or similar.
Regarding the marks, applicant contends that both parties’
marks are plays on the descriptive word “osmosis”; that the
addition of “tech” to applicant’s mark is descriptive and
distinguishes it from opposer’s mark; and that the marks
have entirely different commercial impressions.
Additionally, applicant contends that any prior agreement
with opposer regarding use of OSMOTECH was limited to
applicant’s use of OSMOTECH as part of its corporate name,
and there is no evidence suggesting applicant’s predecessor
ever agreed that OSMOTECH and OSMO are confusingly similar.
14
Opposition No. 91117751
Applicant contends that there is no evidence that opposer’s
mark is famous and, thus, opposer’s argument in this regard
should be disregarded.7
With respect to the goods and services of the parties,
we observe that there is a substantial overlap in the goods
and services identified in the application and in the
pleaded registration. Applicant’s identified goods are
“reverse osmosis separation or ultrafiltration systems for
water purification for residential and commercial and
industrial use consisting of filter membranes, housings for
filter membranes and connection fittings for housings.”
Opposer has registered the mark OSMO for “reverse osmosis
solvent separation units.” The record in this case shows,
further, that opposer has used the marks OSMO and OSMO and
the design shown infra with reverse osmosis systems and
ultrafiltration systems, as well as components for these
systems, including cross-flow filter membranes and housings;
that opposer’s systems and products are sold for use in,
inter alia, water purification; and that opposer’s
manufactures systems and products for commercial,
residential and industrial use. Thus, we conclude that the
goods of the parties are either identical or closely
related. Further, in view of the identity and close
7
Applicant argues that opposer has failed to protect its mark,
referring to a third-party application. Not only is this application
not of record herein, but there is no evidence regarding third-party
marks and, thus, the relative strength or weakness of the marks herein.
15
Opposition No. 91117751
similarities among the parties’ goods, it is likely that
such goods travel in the same channels of trade to the same
classes of purchasers.
Turning to the marks, we note that while we must base
our determination on a comparison of the marks in their
entireties, we are guided equally by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue 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 consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). We note,
initially, that opposer did not plead or prove that its
marks are famous and, thus, we have not considered this
factor.
While the record does not indicate that OSMO has any
meaning, when considered in connection with reverse osmosis
and other filtration products and systems, it is likely, as
applicant acknowledges (Brief, pg. 15), to suggest the word
“osmosis.” However, even suggestive marks are entitled to
protection.
With respect to the OSMO mark with a design element, if
both words and a design comprise the mark, then the words
are normally accorded greater weight because the words are
16
Opposition No. 91117751
likely to make an impression upon purchasers that would be
remembered by them and would be used by them to request the
goods and/or services. In re Appetito Provisions Co., 3
USPQ2d 1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). See
also: Giant Food, Inc. v. Nation’s Food Service, Inc., 710
F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). We find that OSMO
is the dominant portion of opposer’s design mark because the
design is approximately the same size as the letters and it
is a simple pair of triangles set off to the left of the
word OSMO.
Turning to applicant’s mark, we take judicial notice of
the definition, in the American Heritage Dictionary of the
English Language, 4th ed. 2000, of “tech” as “N. 1.
Informal. A technician. 2. Technology. 3. Technical work.
Adj. Technical.” In the context of the goods involved in
this case, “tech” is likely to be perceived as suggestive of
the technology involved in reverse osmosis; and the mark
OSMOTECH, is likely to be perceived as a compound term
combining the two suggestive terms “osmo” and “tech.”
However, contrary to applicant’s contention, we do not find
that the suffix TECH sufficiently distinguishes applicant’s
mark from opposer’s OSMO marks.
We find applicant’s mark OSMOTECH to be sufficiently
similar to both of opposer’s OSMO marks that, if used on the
17
Opposition No. 91117751
identical and closely related goods involved in this case,
confusion as to source is likely. Because applicant’s mark
begins with OSMO, which is identical to opposer’s word mark,
prospective purchasers are likely to see the similarities in
the marks and, in view of the identity and related nature of
the goods, believe that both parties’ products come from the
same or related sources.
We are not convinced otherwise by applicant’s arguments
to the contrary. In particular, we find applicant’s
characterization of opposer’s letters regarding applicant’s
use of the mark OSMOTECH in 1985 to be incorrect and
disingenuous. The letter of May 29, 1985 clearly states
opposer’s understanding of the parties’ agreement, which is
that applicant will not use OSMOTECH either as a mark or a
trade name. Applicant has submitted no evidence questioning
the accuracy of the statements in the letter as reflecting
the understanding between applicant and opposer, or
specifically stating why this agreement should not be viewed
as implying applicant’s concession that confusion is likely.
Decision: The opposition is sustained.
18