Day Inter-national, Inc.

Trademark Trial and Appeal Board

May 9, 2005

No. 76365499 (T.T.A.B. May. 9, 2005)

Mailed: May 9, 2005
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Day International, Inc.
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Serial No. 76365499
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B. Joseph Schaeff of Dinsmore & Sholhl LLP for Day
International, Inc.

Mark V. Sparacino, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Hohein, Hairston and Chapman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Day International, Inc. has filed an application to
register the mark ADVANTAGE for “printing blankets.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when applied to the
identified goods, so resembles the mark ADVANTAGE, which is

1 Serial No. 76365499, filed on January 31, 2002, which is based
on an allegation of a bona fide intent to use the mark in
commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76365499
2
registered for “printing ink,”2 as to be likely to cause
confusion, or mistake or to deceive.
Applicant has appealed. Briefs have been filed, but
no oral hearing was requested. We affirm the refusal to
register.
As a preliminary matter, we note that the examining
attorney attached to his brief a copy of the Board’s
decision in In re BASF Drucksysteme GmbH (TTAB February 5,
2003). The Board disregards citation to any non-
precedential decision (unless, of course, it is asserted
for res judicata, law of the case, or other such issues not
involved herein). See General Mills Inc. v. Health Valley
Foods, 24 USPQ2d 1270, at n. 9 (TTAB 1992).
We turn then to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant
to the factors bearing on the issue of whether there is a
likelihood of confusion. In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA 1973).
However, as indicated in Federated Foods, Inc. v. Fort

2 Registration No. 1,697,277, issued June 30 1992; renewed.
Registration also was refused in view of Registration No.
2,151,333 owned by a different entity for the mark ADVANTAGE for
“printing presses.” The examining attorney, in his appeal brief,
withdrew the refusal based on this registration because it was
cancelled on December 28, 2004 under the provisions of Section 8
of the Trademark Act.
Ser No. 76365499
3
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976), in any likelihood of confusion analysis, two key
considerations are the similarity of the goods and the
similarity of the marks.
Turning first to a consideration of the marks, we find
that applicant’s mark and the cited mark are identical in
terms of appearance, sound, connotation and overall
commercial impression. This fact weighs in favor of a
finding of likelihood of confusion.
We turn next to a consideration of applicant’s and
registrant’s goods. It is not necessary that the
respective goods be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that the goods are related in some manner
or that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the
same persons in situations that would give rise, because of
the marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the source of the respective goods. In re Martin’s
Famous Pasty Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); and In re International Telephone & Telegraph
Ser No. 76365499
4
Corp., 197 USPQ 910 (TTAB 1978). Moreover, where the
applicant’s mark is identical to the cited mark, as it is
in this case, there need only be a viable relationship
between the respective goods in order to find that a
likelihood of confusion exists. In re Concordia
International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
Applying these principles to this case, we find that
applicant’s printing blankets and registrant’s printing
inks are clearly related. Applicant acknowledges at page 6
of its request for reconsideration that although printing
blankets and printing inks are not competitive or similar
in nature, they “are related and even complementary goods.”
Also, at page 9 of its brief, applicant states that
“[p]rinting presses use printing blankets to apply printing
ink to printing paper.” Further, with respect to the
channels of trade and purchasers, applicant acknowledges at
page 9 of its brief that applicant’s and registrant’s goods
“ … are all marketed through similar channels of trade to
the same type of consumers.” In other words, printing
companies would be purchasers of both printing blankets and
printing inks.
Ser No. 76365499
5
Applicant argues that marks consisting of the word
“advantage” are weak marks and therefore entitled to a
limited scope of protection. In support of this argument,
applicant submitted copies of ten third-party registrations
of ADVANTAGE marks. The probative value of this evidence
is very limited in our determination of the specific issue
of likelihood of confusion in this case. There is no
evidence that the marks are in use or that purchasers are
familiar with them. Many of the registrations are for
goods far removed from the printing field. The third-party
registrations show, at most, that the word “advantage” has
some suggestive significance.3 Nonetheless, the cited mark
is still entitled to protection against an identical mark
for closely related goods.
Further, the coexistence for six years of the cited
registration for ADVANTAGE for printing inks and
Registration No. 1,697,277 for ADVANTAGE for printing
presses does not compel us to reach a different result.
While, under some circumstances, marks have been registered

3 In this regard, we judicially notice that The American Heritage
Dictionary of the English Language (New College Edition 1976)
defines “advantage” as: “a factor favorable or conducive to
success.”
Ser No. 76365499
6
which may appear to be likely to cause confusion with each
other, such third-party registrations do not justify
registration of yet another mark which is likely to cause
confusion. AMF Inc. v. American Leisure Products, Inc.,
474 F.2d 1403, 177 USPQ 268 (CCPA 1973).
Also, applicant argues that it is the owner of
Registration No. 1,442,091 for the mark DAVID M ADVANTAGE
for offset lithographic blankets and Application Serial No.
76365498 for the mark DAVID M ADVANTAGE for printer’s
blankets, not of textile. Applicant contends that the
Office determined that there was no likelihood of confusion
between the DAVID M ADVANTAGE marks and the cited mark and
that there is likewise no likelihood of confusion between
applicant’s ADVANTAGE mark and the cited mark. However,
applicant cannot register a mark which is likely to cause
confusion with a previously registered mark merely because
it owns a registration for a different mark which includes
a common element or because it has filed an application for
another mark.
Further, applicant argues that purchasers of printing
equipment are sophisticated consumers. While there is no
evidence on this point, even assuming such is the case,
when the identical mark is used on closely related goods,
the relevant purchasers are likely to be confused, despite
Ser No. 76365499
7
the care taken. Also, in the absence of any limitations in
applicant’s application and the cited registration, we must
assume that the respective goods will be sold to all
potential purchasers, including sophisticated and not so
sophisticated owners and entities in the printing business.
Finally, to the extent that any of applicant’s
contentions raise a doubt on the issue of likelihood of
confusion, such doubt must be resolved in favor of the
cited registrant. In re Martin’s Famous Pastry Shoppe,
Inc., supra.
We conclude, therefore, that purchasers and
prospective consumers familiar with registrant’s mark
ADVANTAGE for printing ink would be likely to believe, upon
encountering applicant’s identical ADVANTAGE mark for
printing blankets, that the respective products emanate
from or are associated or sponsored by the same source.
Decision: The refusal to register under Section 2(d)
is affirmed.