98422574•Teikoku USA Inc.
Testo completo
Mailed: December 31, 2025 UNITED STATES PATENT AND TRADEMARK OFFICE Trademark Trial and Appeal Board ———— In re Teikoku USA Inc. ———— Serial No. 98422574 ———— Kristen Ruisi and Sara Krastins of Venable LLP, for Teikoku USA Inc. Gabrielle Marotta, Trademark Examining Attorney, Law Office 103 Stacy Wahlberg, Managing Attorney. ———— Before Wellington, Heasley, and Bradley, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Teikoku USA Inc. (“Applicant”) seeks registration on the Principal Register of the standard character mark DYNAPUMP for the following goods: combined pumps for machines and liquid cooled electric motors for machines for pumping liquids; pumps for machines for pumping liquids; liquid cooled electric motors for machines for pumping liquids; pumps for machines that are jacketed for cooling and heating; liquid cooled electric motors for machines jacketed for cooling and heating; submersible pumps featuring liquid cooled electric motors for machines; non-cooled, high temperature insulated liquid cooled pumps for machines featuring electric motors for machines for pumping high temperature liquids; oil circulation pumps for machines; industry and underwriter complaint [sic] pumps for machines featuring liquid cooled electric motors for machines for pumping THIS OPINION IS NOT A PRECEDENT OF THE TTAB
Serial No. 98422574 2 liquids; self-priming volute pumps for machines featuring liquid cooled electric motors for machines, in International Class 7.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Trademark Act (“the Act”) Section 2(d), 15 U.S.C. § 1052(d), on the ground of likelihood of confusion based on the registered standard character mark DYNAPUMP for goods and services, including: artificial lift systems for pumping oil, gas, and water from wells; oil and gas well production and performance optimization equipment, in International Class 7.2 After the Examining Attorney made the refusal final, Applicant requested reconsideration and filed an appeal. The Examining Attorney denied the request for reconsideration and the appeal resumed. Both Applicant and the Examining Attorney filed briefs. For the reasons explained below, we affirm the refusal. I. Likelihood of Confusion Section 2(d) of the Act, in relevant part, prohibits registration of a mark that “so resembles a mark registered in the Patent and Trademark Office … as to be likely, when used on or in connection with the goods of the applicant, to cause confusion.” 15 U.S.C. § 1052(d). To determine whether confusion is likely, we analyze all probative 1 Application Serial No. 98422574, filed February 27, 2024, based on Applicant’s allegation of first use of the mark anywhere and in commerce on May 11, 1953, under Trademark Act Section 1(a), 15 U.S.C. § 1051(a). 2 Registration No. 5532576 issued August 7, 2018; Sections 8 and 15 declaration accepted. The registration also covers services in Classes 37, 40 and 42; however, the refusal to registration only pertains to the above-listed Class 7 goods in the registration.
Serial No. 98422574 3 evidence relevant to the factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). See In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). In every Section 2(d) case, two key DuPont factors are the similarity or dissimilarity of the marks and the relatedness of the respective goods or services, because the “fundamental inquiry mandated by § 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, 1103 (CCPA 1976). Here, we have considered each DuPont factor that is relevant and for which there is evidence and argument of record. See In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019). Varying weight may be assigned to each DuPont factor depending on the evidence presented. See Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 1206 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination.”). Ultimately, however, “[e]ach case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973). A. Comparison of the Marks We turn now to the first DuPont factor, which focuses on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. See Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1371 (Fed. Cir. 2005). (quoting DuPont, 476 F.2d at
Serial No. 98422574 4 1361). Similarity as to any one of these elements may be sufficient to support a finding that the marks are confusingly similar. See Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 732 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”); accord In re Inn at St. John’s, LLC, No. 87075988, 2018 TTAB LEXIS 170, at *13, aff’d mem., 777 F. App’x 516 (Fed. Cir. 2019). In this case, Applicant’s mark, DYNAPUMP, is identical to the cited mark, DYNAPUMP. Thus, the marks are clearly the same in appearance and sound. We also find the marks have the same connotation or commercial impression in connection with the respective goods that, as discussed later, involve powered pumps.3 In other words, the same suggestive meaning is being conveyed the marks. Accordingly, the first DuPont factor weighs strongly in favor of a conclusion that confusion is likely. B. The Goods and Their Channels of Trade We turn now to the second and third DuPont factors, which concern the relatedness of the goods and the channels of trade for the goods. DuPont, 476 F.2d at 1361. In this analysis, we must consider the goods as they are identified in Applicant’s application and the cited registration. See Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston 3 We take judicial notice that “dyna-” is defined as a combining form meaning “power.” WEBSTER’S NEW WORLD COLLEGE DICTIONARY, 5th Digital Edition. Copyright 2025 HarperCollins Publishers. See B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 728 (Fed. Cir. 1988) (“dictionaries and encyclopedias may be consulted”); In re Mr. Recipe, LLC, No. 86040643, 2016 TTAB LEXIS 80, at *8 n.3 (Board may take judicial notice of information from authoritative sources).
Serial No. 98422574 5 Comp. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990)). It is sufficient for a finding of likelihood of confusion as to a class of goods in the application if relatedness is established for any one of the recited goods within that class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336 (CCPA 1981). We also keep in mind that, “where identical marks are involved, as is the case here, the degree of similarity between the goods that is required to support a finding of likelihood of confusion declines.” In re i.am.symbolic, No. 85044494, 2015 TTAB LEXIS 369, at *16 (citing Shell Oil, 992 F.2d at 1207 (“[E]ven when goods . . . are not competitive or intrinsically related, the use of identical marks can lead to the assumption that there is a common source.”)). Here, the Examining Attorney argues that “the cited goods ‘oil and gas well production and performance optimization equipment’ are broad enough to compass the applicant’s various pump and motor goods”4 and that because “[t]he goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers [they] are ‘presumed to travel in the same channels of trade to the same class of purchasers,’”5 quoting In re Viterra Inc., 671 F.3d 1358, 1362 (Fed. Cir. 2012). In support, the Examining Attorney submitted Internet evidence—comprising screenshots from 10 third-party websites—that “demonstrates that the applicant's various pump and motor goods are merely a more narrow type of the cited goods, specifically the cited goods ‘oil and gas well production and performance optimization 4 8 TTABVUE 9. 5 8 TTABVUE 10.
Serial No. 98422574 6 equipment.’”6 The Examining Attorney also submitted screenshots from Applicant’s website showing Applicant’s “canned motor pumps” include a model described as compliant with “API 685, a strict safety standard in the oil & gas and petrochemical fields” and “[s]uitable for pumping high temperature, high pressure hydrocarbons mainly in petroleum refining processes.”7 Another “canned motor pump” is described as “providing safer, more economical operation through reduced long-term cost of ownership” and, on the same page, a “metering pump” that is “suitable for handing toxic or combustible hazardous liquids … slurry and high-viscosity liquids.”8 Applicant’s website also specifically touts that “Teikoku USA Inc … offer[s] a complete line of sealless, leakproof canned motor pumps fully conforming to [American Petroleum Institute standard] API 685 Sealless Centrifugal Pumps for Petroleum, Heavy Duty Chemical, and Gas Industry.”9 (Emphasis in bold added). Applicant, on the other hand, argues that “[t]he products offered by Applicant and the products offered under the Cited Registration are vastly different, as are the applications served.”10 Specifically, Applicant focuses on the “artificial lift systems for pumping oil, gas, and water from wells” listed in the registration and argues:11 6 8 TTABVUE 12. Third-party website screenshots were attached to Office Action issued November 27, 2024. 7 4 TTABVUE 9; Applicant’s website evidence attached to Office Action issued May 13, 2025. 8 4 TTABVUE 10. 9 4 TTABVUE 18. 10 6 TTABVUE 10. 11 6 TTABVUE 10-11.
Serial No. 98422574 7 Machine pumps are not surface mounted artificial lift systems. Machine pumps do not operate or provide the same function as surface mounted artificial lift systems. This is well-known by the purchasers of Applicant’s products and the purchasers of the products sold under the Cited Registration. ... Canned motor pumps and artificial lift systems serve separate and distinct industries, and accordingly do not travel through the same channels of trade. … The goods offered under Applicant’s Mark and those offered under the Cited Registration simply do not have the same functionality. Applicant’s goods are canned motor pumps. Canned motor pumps are a centrifugal pump which means they transport liquids by the conversion of rotational kinetic energy. Artificial lift systems function completely differently. Artificial lift systems are used to increase the pressure in oil wells to stimulate production of oil to the surface. In response to the Examining Attorney’s submission of evidence showing Applicant manufactures pumps used in the oil and gas industry, it asserts:12 None of the products sold under Applicant’s Mark meets these standards or is suitable for use in any of the markets referenced in the paragraph cited by the Examiner. The products sold under Applicant’s Mark are a small pump range for limited circulation and boost applications used in general industrial markets. The products sold under Applicant’s Mark have a maximum motor size of approximately 16 HP. Here, we agree with the Examining Attorney in that giving a full sweep to the identifications of goods in the application and cited registration, as we must, the Registrant’s “oil and gas well production and performance optimization equipment” is broad enough to encompass Applicant’s identified pumps, some of which are fairly broadly described in the application, including “pumps for machines for pumping liquids” and “oil circulation pumps for machines.” See S.W. Mgmt., Inc. v. Ocinomled, Ltd., No. 94002242, 2015 TTAB LEXIS 176, at *60-61 (where the goods or services in 12 6 TTABVUE 12.
Serial No. 98422574 8 an application or registration are broadly described, they are deemed to encompass all the goods or services of the nature and type described therein) (citation omitted); In re Hughes Furniture Indus., Inc., No. 85627379, 2015 TTAB LEXIS 65, at *10 (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’“). As the evidence demonstrates, the pumps described in the application constitute the type of “equipment”13 that may be used for “production and performance optimization” in the “oil and gas well industry.” Indeed, as evidenced by Applicant’s own website, some of its pumps are touted as “more economical” and “safe” and for specific use in the field of extracting or moving in the oil and gas industry. Although Applicant argues that it only uses the mark, DYNAPUMP, on limited range and size of pumps that are not for use in the oil and gas industry, such limitations are not contained in Applicant’s identification of goods. Thus, again giving a full sweep to Applicant’s identification of goods, as we must, we construe the identification to include pumps that are larger or more powerful and for use in the oil and gas industry, like those shown on Applicant’s website and that fall within the scope of Registrant’s goods. Given that Registrant’s goods partially encompass Applicant’s goods, we find they are in-part legally identical. Moreover, as to the channels of trade, we must presume that these legally identical goods will be offered in the same trade channels to the 13 The Examining Attorney submitted a dictionary definition of the word “pump” as “a piece of equipment that is used to cause liquid, air, or gas to move from one place to another.” Office Action issued November 27, 2024, at TSDR p. 31.
Serial No. 98422574 9 same classes of consumers. Viterra Inc., 671 F.3d 1362 (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion); see also Genesco Inc. v. Martz, No. 91121296, 2003 TTAB LEXIS 123, at *28 (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade.”). Even if we did not find Registrant’s goods to encompass Applicant’s goods, the Internet evidence submitted by the Examining Attorney demonstrates that the goods are closely related. For example, the Flintec website describes various types of pumps as being “the heart of the oil extraction industry,” and these include “rod lift pumps … electrical submersible pumps (ESPs) … hydraulic pumps.”14 Another company’s website, Oberdorfer, describes its pumps as “used to transfer liquids in for mixing applications in chemical-add trailers for [oil] fracking.”15 Another company, SLB, describes pumps like those described in the application, e.g., “pumps for machines for pumping liquids,” as being able to “increase efficiency, reduce costs … simplify maintenance … save time” in connection with “complex refinery services and crude oil transfer.”16 Thus, Applicant’s pumps may serve the same purpose as Registrant’s 14 Office Action issue November 27, 2024, at TSDR p. 40. 15 Office Action issue November 27, 2024, at TSDR p. 45. 16 Office Action issue November 27, 2024, at TSDR p. 50.
Serial No. 98422574 10 equipment for “oil and gas well production and performance optimization” or may be an integral part of systems like Registrant’s “artificial lift systems for pumping oil, gas, and water from wells.” In sum, we find Registrant’s goods partially encompass Applicant’s goods and they are thus in-part legally identical; these legally identical goods may be offered to the same classes of consumers in the same trade channels. Accordingly, the second and third DuPont factors also weigh strongly in favor of finding confusion likely. Also, even should the respective goods not be found legally identical, the evidence establishes a close relationship between them and, in that case, the second DuPont factor weighs in favor of a likelihood of confusion. C. Applicant’s Prior (Cancelled) Registration and Coexistence With Cited Registration ‘Without Consumer Confusion’ Under the seventh and eighth DuPont factors, we consider the nature and extent of actual confusion, if any, in light of the length of time and conditions under which there has been contemporaneous use of the subject marks. DuPont, 476 F.2d at 1361. Applicant argues:17 Applicant’s Mark and the Cited Registration coexisted on the Principal Register of the USPTO from August 7, 2018 to March 16, 2020—a period of nearly three years. The Cited Registration Registered on August 7, 2018. Applicant previously owned U.S. Registration No. 598464 for DYNAPUMP in Class 7. U.S. Registration no. 598464 registered on November 23, 1954 and was maintained on the Principal Register of the USPTO until March 16, 2020. Although this registration was subsequently cancelled, Applicant never ceased use of Applicant’s Mark. This means Applicant’s Mark and the Cited Registration have continued to coexist in U.S. commerce without consumer confusion since August 7, 2018— nearly seven years. 17 6 TTABVUE 8.
Serial No. 98422574 11 The Examining Attorney does not give proper credence to the fact that Applicant’s Mark and the Cited Registration previously coexisted on the Principal Register of the USPTO without consumer confusion for a period of nearly three years and continued to coexist in U.S. commerce for nearly seven years without any instances of consumer confusion. At the outset, we note that Applicant’s prior (cancelled) registration, for the standard character mark DYNAPUMP, was for “centrifugal sealless magnetic pumps adapted for use in domestic hot water heating systems.” These goods are explicitly limited in their field of use to “domestic hot water heating systems,” in contrast to the more broadly described pumps in the involved application, which can be construed to encompass pumps for use in the oil and gas well industry. Moreover, as the Examining Attorney points out, the putative period of coexistence of the cited registration and Applicant’s prior registration was actually approximately a few days over 1 year and 7 months, and not “nearly 3” years.18 In addition, although Applicant does not cite to the Board precedential decision In re Strategic Partners, Inc., No. 77903451, 2012 TTAB LEXIS 80, the Examining Attorney points out that any attempt to do so is unavailing.19 18 8 TTABVUE 17. 19 8 TTABVUE 17. The Strategic Partners decision is generally considered in the context of the thirteenth and final DuPont factor, pertaining to “any other established fact probative of the effect of use.” DuPont, 476 F.2d at 1361. In Strategic Partners, the Board reversed a Section 2(d) refusal on appeal based on the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). 2012 TTAB LEXIS 80, at *6-8. As the Examining Attorney correctly notes in the appeal brief, none of these circumstantial facts are present in this appeal (“applicant’s prior registration is cancelled, and had been cancelled for nearly four (4) years since the filing date of this instant application … applicant’s prior registration is not
Serial No. 98422574 12 Finally, we point out that Applicant’s “uncorroborated statements of no known instances of actual confusion are of little evidentiary value.” Majestic Distilling, 315 F.3d at 1317 (“lack of evidence of actual confusion carries little weight, especially in an ex parte context”) (citation omitted).20 Additionally, given the ex parte context, “there has been no opportunity to hear from Registrant about whether it is aware of any reported instances of confusion.” In re Guild Mortg. Co., No. 86709944, 2020 TTAB LEXIS 17, at *23. Accordingly, we find the seventh and eighth DuPont factors neutral. D. Alleged ‘Highly Sophisticated Consumers’ Under the fourth DuPont factor, we consider the conditions under which the goods are likely to be purchased, e.g., whether on impulse or after careful consideration, as well as the degree, if any, of sophistication of the consumers. DuPont, 476 F.2d at 1361. Applicant argues:21 Applicant’s customers and the customers of the owner of the Cited Registration are highly sophisticated consumers skilled and knowledgeable in their respectable fields. Paired with the fact that both parties’ products have high price points, it is highly unlikely that any consumers would be confused as to the source of the parties’ respective goods. for the same goods. Particularly, the prior registration owned by the applicant was for vastly different and limited goods.” 8 TTABVUE 18. 20 We note as well that this argument is simply attorney argument, unsupported by any declaration or other evidence in the record. See, e.g., Icon Health and Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”) (citation omitted); In re Simulations Publ’ns, Inc., 521 F.2d 797, 798 (CCPA 1975) (“Statements in a brief cannot take the place of evidence.”) (citation omitted). 21 6 TTABVUE 13.
Serial No. 98422574 13 Applicant, however, did not submit any evidence such as consumer declarations or affidavits to substantiate its contention that consumers of its and Registrant’s goods are “highly sophisticated skilled and knowledgeable.” Nor is there sufficient evidence to accurately identify the range of price points for the goods. Nevertheless, given the intrinsic nature of involved goods, particularly those goods we find to be legally identical or closely related, it stands to reason these will be purchased by discriminating professionals or equally sophisticated purchasing agents with specialized knowledge in the oil and gas well industry. These are consumers who understandably will exercise greater than ordinary care. See Edwards Lifesciences Corp. v. VigiLanz Corp., No. 91154210, 2010 TTAB LEXIS 84, at *51 (“Just based on the products involved in this proceeding, one would expect that all of the purchasers would exercise a high degree of care when making their purchasing decision.”). The fourth DuPont factor therefore weighs against a likelihood of confusion. II. Conclusion The first DuPont factor strongly favors a finding of a likelihood of confusion because Applicant’s mark and the cited mark are identical in sight, sound and connotation. In addition, the second and third DuPont factors also strongly support a finding that confusion is likely because certain goods listed in the application are encompassed by Registrant’s broadly described “Oil and gas well production and performance optimization equipment,” and these legally identical goods are
Serial No. 98422574 14 presumably found in the same trade channels. The evidence also shows that the goods of Applicant and Registrant are otherwise closely related. Though the respective consumers of the involved goods will likely exercise care in their purchasing decisions given the technical nature of the goods, and this tends to favor a finding that confusion is not likely, this factor is far outweighed by the other aforementioned factors. On balance, we thus conclude on this record that Applicant’s mark is likely to cause confusion with the registered mark. Decision: The refusal under Trademark Act Section 2(d) to register Applicant’s mark is affirmed.
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