Mind the Gap: When Identical Marks Fail to Bridge the Chasm of Unrelated Goods

This case reminds us that a likelihood of confusion refusal cannot be sustained solely on the basis that identical marks are used for disparate goods, even if those goods are sold by common large-scale distributors. Evidence must demonstrate that consumers would perceive the goods as emanating from a single source, rather than merely being available at the same retail outlet.

Background

The Applicant, Zhenhai Petrochemical Jianan Engineering Co., Ltd., filed an Application seeking an extension of protection for its stylized SPINFLOW mark (featuring a stylized wordmark under a circle with bands) under Section 66(a) of the Trademark Act. Through subsequent amendments, the identified goods were ultimately narrowed to "heat exchangers, other than parts of machines, for industrial use" in International Class 11.

The Examining Attorney issued a final refusal under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the registered mark SPINFLOW for "vacuum cleaners, robotic vacuum cleaners and parts thereof; robotic appliances for household purposes and maintenance and parts thereof."

During prosecution, the Applicant argued that industrial heat exchangers are entirely unrelated to household vacuum cleaners. They contended that their target customers are highly sophisticated industrial buyers who would exercise a high degree of care during the purchasing process. Despite these arguments—and the Applicant narrowing the description of goods to explicitly emphasize "industrial use"—the Examining Attorney maintained the refusal. To support the rejection, the Examiner relied on evidence from several third-party websites showing both heat exchangers and vacuum cleaners offered for sale by the same retailers.

During prosecution, the Applicant argued that industrial heat exchangers were entirely unrelated to household vacuum cleaners. They contended that their target customers were highly sophisticated industrial buyers who would exercise a high degree of care during the purchasing process. Despite these arguments, the Examining Attorney maintained the refusal.

The Applicant appealed to the TTAB.

How the Board Analyzed the DuPont Factors

DuPont Factor #1: Similarity of the Marks

The Examining Attorney maintained that the marks were identical because both the Applicant’s stylized version and the Registrant’s standard character mark consisted of the word "SPINFLOW." The Applicant did not contest the similarity of the literal wording.

The Board agreed with the Examining Attorney on this factor, finding that the literal wording of the marks was identical and that the Applicant’s design element was insufficient to distinguish them. The Board reasoned that purchasers would primarily use the literal wording to request or refer to the goods. Consequently, the Board determined that the marks were "very similar," concluding that this factor weighed heavily in favor of a likelihood of confusion.

DuPont Factor #2: Similarity of the Goods

The Applicant’s goods were industrial heat exchangers, defined as devices used to transfer heat from a fluid flowing on one side of a barrier to another fluid. The Registrant’s goods were vacuum cleaners and robotic appliances. The Examining Attorney argued that the goods were related because they were often sold by the same entities, providing evidence from seven third-party websites.

The Applicant argued that although these websites showed that the same entities sold both heat exchangers and vacuums, the goods were not sold under the same mark. Arguing that "mere retailer overlap does not establish relatedness," the Applicant contended that probative evidence would require examples of a single entity offering both goods under a single trademark.

The Board agreed with the Applicant, finding that the third-party website evidence submitted by the Examining Attorney failed to demonstrate similarity or relatedness. The Board observed that the evidence merely showed large retailers and distributors selling others' goods bearing different trademarks, rather than a single manufacturer selling both types of items under its own mark. As the Board explicitly noted: "Not one third-party use example shows heat exchangers and vacuums bearing the same trademark."

Furthermore, the Board emphasized that the mere fact that two items could be found in the same large store (whether brick-and-mortar or online) was an insufficient basis for finding that the goods were related. The Board concluded that the "gulf" between a 700-ton industrial heat exchanger and a household vacuum cleaner was "much too wide to be bridged," and thus the second DuPont factor weighed heavily against a likelihood of confusion.

DuPont #3: Similarity of Established Trade Channels

The Examining Attorney argued that the website evidence proved the goods were offered through the same channels of trade. The Applicant countered that its 700-metric-ton industrial heat exchangers were sold through specialized channels to engineers and procurement teams, whereas the vacuum cleaners of the cited registration were mass-market consumer goods.

The Board found that while these broad channels of trade did overlap, the goods themselves would likely not be displayed in proximity to one another because they served distinctly different purposes, i.e. cleaning versus heat transfer, and would thus be found in different aisles or online categories. Furthermore, the Board noted that while the Applicant’s actual products were massive industrial units, its identification of "heat exchangers... for industrial use" did not impose a specific size limitation that would strictly exclude them from these broad distributors.

Turning to the classes of customers, the Board acknowledged a potential for overlap because both products could conceivably be sold to the same industrial institutions, such as refineries or petrochemical plants. However, the Board emphasized that a likelihood of confusion must exist in the mind of an actual purchaser rather than merely within a purchasing institution. There was no evidence in the record to suggest that the specific individuals responsible for procuring technical industrial equipment like heat exchangers would be the same persons responsible for selecting and purchasing vacuum cleaners. Because of this disparity in the nature of the goods, the Board declined to presume that the classes of purchasers would be the same.

Ultimately, the Board found this factor to be neutral.

DuPont #4: Conditions of Sale and Buyer Sophistication

The Examining Attorney argued that even sophisticated purchasers were not immune to source confusion. However, the Applicant provided compelling evidence regarding the "inherent technical nature" of industrial heat exchangers, including a brochure depicting a massive unit on a flatbed truck.

The Board agreed with the Applicant, finding that the inherent technical nature of industrial heat exchangers necessitated a high degree of care. The Board described the procurement of such goods as an attenuated and lengthy process that allowed all involved parties to clearly understand the identity of the vendor. While some care would also be exercised when purchasing vacuum cleaners, the extensive evaluation required for industrial equipment significantly lessened the probability of source confusion. Ultimately, the Board determined that the fourth DuPont factor weighed against a likelihood of confusion.

Board’s Decision

The TTAB reversed the refusal to register the Applicant’s mark. In balancing the relevant DuPont factors, the Board acknowledged that while the marks were quite similar in wording, the extreme dissimilarity of the goods was the dispositive factor. The Board concluded that the difference in the nature and purpose of the goods, specifically the vast gap between industrial heat transfer equipment and household cleaning appliances, meant that consumers were unlikely to believe they emanated from the same source.

Ultimately, despite the identical literal wording of the "SPINFLOW" marks, the Board found that the potential for confusion was a mere possibility, not a probability, and thus reversed the Section 2(d) refusal.

What I really appreciated about this opinion is how the Board laid out a clear "mini-outline" for analyzing the similarity or relatedness of goods. Before even diving into the weeds of the evidence, the Board noted that "there are several ways of showing that consumers are likely to view goods as similar or related." They broke it down into three distinct paths:

1. The Identifications Themselves: In some cases, the identifications of goods in the application and the cited registration may inherently evidence their similarity.
2. Complementary Goods: Another way is to show that the goods are complementary. That, however, requires a showing that customers would seek out both types of goods for the same purpose.
3. Third-Party Trademark Use: A third way of showing that consumers perceive two types of goods to be related is to demonstrate that third-party companies provide both under the same mark. This evidence may take the form of use-based third-party registrations identifying both sorts of goods, or third-party websites showing the goods offered under the same mark.

Having this framework in mind is a fantastic way to structure an Office Action response or appeal brief when you are trying to demonstrate the gulf between two sets of goods.

Another sharp point was the Board's nuance regarding "purchasing institutions" versus "purchasing customers." Often, practitioners get stuck arguing about "the customer" in a general sense, but the Board pushed further here. Even though the Examining Attorney showed that industrial distributors carry both vacuum cleaners and heat exchangers, the Board reminded us that "the likelihood of confusion must be shown to exist not in a purchasing institution, but in 'a customer or purchaser.'"

It’s a subtle but vital distinction: just because a massive industrial plant buys both items does not mean the same individual is responsible for procuring both. As the Board noted, "there is no evidence that the same people at the… institutions [who] make the decision to purchase [heat exchangers] also choose to purchase [vacuum cleaners]." Given how specialized industrial heat exchangers are, the Board concluded that "we cannot presume that their classes of purchasers would be the same." It is a great reminder for us to look past the "institution" and focus heavily on the specific individual making the purchasing decision.