Overview

This case is a TTAB precedent.

The Trademark Trial and Appeal Board affirmed a refusal to register the standard-character mark UPC for various electronic display panels and screens intended as components of finished electronic products. The refusal was based on a likelihood of confusion with a previously registered and identical standard-character mark, UPC, which covered goods including cable connectors, charging cables, and power connectors. This decision serves as a reminder that confusion is determined based on consumer perception, not on technical differences.

Background

The Applicant, Samsung Display Co., Ltd., filed an application seeking to register the mark UPC for various electronic display panels and screens in International Class 9, which are intended as components for finished electronic products.

However, the Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, citing a likelihood of confusion with a prior registration for the exact same mark, UPC. The cited registration also fell under International Class 9 but covered goods like cable connectors and cable connector assemblies.

During prosecution, the Applicant amended its identification of goods several times to emphasize that its items were strictly internal components of finished consumer products, rather than standalone consumer goods. Despite these narrow amendments, the Examining Attorney maintained the refusal. The Applicant appealed the decision to the Trademark Trial and Appeal Board (TTAB).

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

The first factor required the Board to compare the marks in their entireties regarding appearance, sound, connotation, and commercial impression. In this instance, the Board found the comparison to be straightforward: the Applicant sought to register the mark UPC in standard characters, and the cited registration consisted of the identical mark, UPC, also in standard characters.

Because the marks were identical in every aspect, the Board concluded that this factor weighed heavily in favor of a likelihood of confusion.

DuPont #2: Similarity or Dissimilarity and Nature of the Goods

The second factor addresses whether the consuming public would perceive the respective goods as related enough to cause confusion about their source or origin. The Board emphasized that goods do not need to be identical or competitive to be related; they only need to be marketed in such a way that they could give rise to the mistaken belief that they emanate from the same source. Furthermore, when the marks themselves are identical, the degree of similarity required between the goods to support a finding of likelihood of confusion significantly declines.

The Examining Attorney argued that the goods were related because they are frequently used and sold together as part of the same finished product. To support this, the Examining Attorney provided extensive evidence from third-party websites demonstrating that finished electronic products, such as monitors and laptops, are marketed by highlighting both their display components and their connectivity options, including power cables and connectors.

The Board found that this evidence established a clear relationship between the goods. Specifically, the Board stated:

As demonstrated by the evidence, the goods are related because they are each incorporated and used in the same finished electronic products.

The Board relied on prior rulings, such as GAF Corp. v. Polychrome Corp., (synthetic resins and ultraviolet light absorbers related as “both are purchased by the same customers who incorporate them into a finished product”), and In re Globe-Union Inc.,(“Applicant’s resistor-capacitors and registrant’s ceramic condensers are closely related electronic components that obviously would be sold . . . for incorporation in the same piece of electronic equipment or apparatus.”), to support the principle that components purchased by the same customers for incorporation into a finished product are related. The Board also cited In re Davey Prods. Pty Ltd., (finding that goods identified as “electric motors for machines” were related to goods identified as “air compressors and parts therefor” because “the record show[ed] that an electric motor is or can be an essential component and/or replacement part of an air compressor”) and Teledyne Techs., Inc. v. W. Skyways, Inc.,(finding that ignition harnesses for piston aircraft engines and aircraft engines were “commercially related” because harnesses were a component part of aircraft engines), to illustrate that the sale of both a finished product and its component parts under similar marks can lead to confusion.

In response, the Applicant argued that the Examining Attorney was required to present "something more" to show relatedness, citing In re Coors Brewing Co. and In re St. Helena Hosp. The Applicant contended that the mere fact that a manufacturer sells both monitors and power cables does not imply consumers will automatically assume a common source.

However, the Board rejected this argument as "misplaced." It clarified that the "something more" requirement is strictly limited to cases comparing goods against services, particularly where the goods are used in rendering those services. In cases involving an exclusive comparison of goods, such as this one, the "something more" principle simply does not apply.

Consequently, the Board found that the second DuPont factor favored a finding of likelihood of confusion.

DuPont #3: Trade Channels and Classes of Consumers

Under the third factor, the Board examined the trade channels and the types of buyers involved. The Applicant argued that its amended identification of goods, which specified that the items were "components of" finished products, acted as a meaningful limitation on trade channels. Specifically, the Applicant asserted that its goods were sold "exclusively to manufacturers of electronic consumer products" through "business-to-business" channels, whereas the cited registrant's goods were "generally retail products" meant for everyday consumer use.

The Board, however, disagreed with this interpretation. It noted that the application itself contained no explicit restrictions regarding classes of consumers or channels of trade. Instead, the Board found that the phrase "as a component of" could easily encompass both goods sold to original equipment manufacturers (OEMs) and goods sold separately to hobbyists or end users for repair and customization.

Furthermore, because the cited registration was also unrestricted, the Board was legally required to presume that the registrant’s cable connectors and charging cables travel through all ordinary distribution channels to all usual classes of consumers. The Board noted that the Registrant’s goods could also be sold directly to OEMs for incorporation into finished products. Consequently, the Board observed that the relevant classes of purchasers for both parties overlap, including "the ultimate end users, that is, the users of the completed electronic items."

The Board emphasized that even if initial B2B purchasers are highly sophisticated, consideration must still be given to the ultimate users of the products. Third-party evidence from major retailers demonstrated that finished electronic products featuring these specific components are heavily marketed and sold to the general public. Thus, the Board concluded that this factor weighs in favor of a likelihood of confusion.

DuPont #4: Conditions of Sale and Sophistication of Purchasers

Regarding the fourth factor, the Applicant argued that because its goods were sold through business-to-business channels, the buyers were "highly sophisticated" professionals who made purchasing decisions only after "long-term negotiations." However, the Board found that the Applicant provided no evidence to support these claims, and dismissed this attorney argument.

The Board further explained that when a class of purchasers includes both corporate professionals and the general public, the legal standard of care defaults to that of the "least sophisticated potential purchaser." In this case, the potential consumer base included ordinary buyers, hobbyists, and gamers who might not exercise more than an ordinary degree of care.

Because the record lacked any evidence showing that these everyday consumers would exercise a heightened level of caution, the Board treated the fourth DuPont factor as neutral.

Board’s Decision

In its concluding remarks, the Board summarized that because the marks were identical, the first factor weighed heavily in the analysis. Furthermore, the Board found the goods to be related because they are both incorporated into and sold with the same finished electronic products, moving through overlapping channels of trade to reach the same classes of consumers.

The Board also emphasized that the Applicant failed to provide concrete evidence of purchaser sophistication, and that the lack of explicit trade channel restrictions in the identification of goods required a broad legal interpretation of the potential market. Consequently, the Board held that a likelihood of confusion was highly probable and the refusal was proper.

In its closing footnote, the Board noted that even if it were to consider an elevated degree of care among professional electronics manufacturers, the other factors would still outweigh any such sophistication.

I think limiting the scope of the identification of goods is an underutilized tool when trying to overcome a Section 2(d) refusal. In this case, the Applicant could have gone much further to explicitly limit its trade channels (e.g., specifying business-to-business or OEM channels) and expressly exclude the "general public" or "retail consumers"—especially since they intended to rely on a purchaser sophistication argument.

Nevertheless, the Board's footnote specifically addressing the alternative of an elevated degree of care indicates that even with such an amendment, the outcome likely would have been the same. When the marks are completely identical and the goods are inherently intertwined, a narrow trade channel can only do so much heavy lifting.