Domtar Paper Company, LLC

Trademark Trial and Appeal Board

Mar 14, 2017

No. 86297335 (T.T.A.B. Mar. 14, 2017)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 14, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Domtar Paper Company, LLC
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Serial No. 86297335
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Gregory T. Ourada of Hill Kertscher & Wharton LLP,
for Domtar Paper Company, LLC.
Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Mermelstein, Wolfson and Hightower,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
Domtar Paper Company, LLC (“Applicant”) seeks registration on the Principal
Register of the mark BOLD (in standard characters) for “paper, namely coated and
uncoated cut sheet paper.”1

1 Application Serial No. 86297335 was filed on June 2, 2014, based on Applicant’s allegation
of first use and first use in commerce of December 3, 2014.
Serial No. 86297335
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the mark IQ BOLD (in standard characters) for
Blank paper notebooks; Fitted fabric notebook covers;
Notebook covers; Notebook covers made of Polypropylene;
Notebook dividers; Notebook paper; Notebooks; Paper
notebooks; Reporters’ notebooks; School supply kits
containing various combinations of selected school
supplies, namely, writing instruments, pens, pencils,
mechanical pencils, erasers, markers, crayons, highlighter
pens, folders, notebooks, paper, protractors, paper clips,
pencil sharpeners, writing grips, glue and book marks;
Spiral-bound notebooks; Stenographers’ notebooks; Wire-
bound notebooks,
in International Class 16,2 that, if used in connection with Applicant’s goods, it is
likely to cause confusion.
After the Trademark Examining Attorney made the refusal final, Applicant filed
a request for reconsideration that was denied, and appealed to this Board. We affirm
the refusal to register.
I. Applicable Law
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the marks and the similarities

2 Reg. No. 4578832, issued August 5, 2014.
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between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in the essential characteristics of
the goods [and services] and differences in the marks.”).
II. Analysis
A. The similarity of the marks.
We turn first to the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(citation omitted); see also San Fernando Electric Mfg. Co. v. JFD Elec. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The
focus is on the recollection of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. Joel Gott Wines LLC v. Rehoboth
Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB 2013); L’Oreal S.A. v. Marcon, 102
USPQ2d 1434, 1438 (TTAB 2012).
Serial No. 86297335
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Applicant’s mark is the word BOLD. The cited mark is IQ BOLD. Because the
marks share the word “bold,” they are visually and aurally similar. Moreover,
Registrant’s mark incorporates Applicant’s mark in its entirety. Likelihood of
confusion has frequently been found where one mark incorporates the entirety of
another mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.
Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES); In
re Fiesta Palms LLC, 85 USPQ2d 1360, 1366 (TTAB 2007) (CLUB PALMS MVP for
casino services confusingly similar to MVP for casino services offered to preferred
customers identified by special identification cards); In re United States Shoe Corp.,
229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women’s clothing stores and
women’s clothing likely to cause confusion with CREST CAREER IMAGES for
uniforms including items of women’s clothing); In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984) (finding likelihood of confusion between GOLIATH for pencils and
LITTLE GOLIATH for a stapler).
Applicant argues that as the first term in the mark, IQ is its dominant term, and
as such, is more likely to be remembered and used by consumers in calling for or
referring to the goods. Applicant further argues that as the dominant term, “IQ” is
sufficiently prominent to distinguish the marks. We are not persuaded by Applicant’s
arguments. The term “IQ,” used as a noun, is defined as “a number used to express
the apparent relative intelligence of a person: such as [a]: the ratio of the mental age
(as reported on a standardized test) to the chronological age multiplied by 100, [b]: a
score determined by one’s performance on a standardized intelligence test relative to
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the average performance of others of the same age and [c]: proficiency in or knowledge
of a specified subject, [as in] ‘nobody questioned his hockey IQ.’”3 The word “bold” is
an adjective, defined as “standing out prominently”; also “fearless before danger;
intrepid; showing or requiring a fearless, daring spirit.”4 Viewed as a whole, the cited
mark IQ BOLD does not appear to be dominated by either of its elements, and as the
construction of the mark is unconventional in English (i.e., noun-adjective rather
than adjective-noun), it is just as likely that BOLD modifies IQ as the other way
around. Either way, the word “bold,” in connection with paper products, imparts in
both Applicant’s and the cited mark the meaning of “standing out prominently” as in
“bold electrifying colors,”5 “bold headlines,” or “bold lettering” rather than as
“fearless” or “daring.”6 Both marks convey this relevant meaning.
To the extent that “IQ” suggests an educational motif, as Applicant argues, the
cited mark could be seen as identifying the educational product in a “BOLD” line of
goods, comprising specialty and non-specialty paper. In view of the fact that the goods
are, as discussed infra, legally identical in part, Registrant’s mark IQ BOLD is likely

3 At https://www.merriam-webster.com/dictionary/iq, accessed March 6, 2017. The Board
may take judicial notice of dictionary definitions, including definitions or entries from
references that are the electronic equivalent of a print reference work. See University of Notre
Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703
F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Petroglyph Games, Inc., 91 USPQ2d 1332,
1334 n.1 (TTAB 2009); see also TBMP § 1208.04 (Jan. 2017).
4 At https://www.merriam-webster.com/dictionary/bold. January 28, 2015 Response to Office
Action, p. 2.
5 See, e.g., Office Action dated July 28, 2014 at p. 22, advertising for “BriteHue Multipurpose
Card Stock,” in “bold electrifying colors.”
6 These sample phrases appear in the Merriam Webster definition of “bold,” www.merriam-
webster.com.
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to create “the commercial impression of a subclass of goods of the type offered by the
source of similar goods under the mark [BOLD], but for a more particular type of
use.” In re Fat Boys Water Sports LLC, 118 USPQ2d 1511 (TTAB 2016) (given
overlapping goods, consumers are likely to think that one company has expanded its
offerings to include a specialized version of the other company’s “original product”).
The additional term “IQ” in Registrant’s mark does not obviate the similarity between
the marks owing to the common element BOLD. The presence of this shared term
causes the marks to be similar in sight, sound, connotation and overall commercial.
The first DuPont factor favors a finding of likelihood of confusion.
B. The similarity or dissimilarity and nature of the goods and services; trade
channels; classes of consumers.

It is well settled that the question of likelihood of confusion must be determined
based on an analysis of the goods or services recited in an applicant’s application vis-
à-vis the goods or services identified in the cited registration, because what is in the
application will determine the metes and bounds of any registration which issues
from it. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed.
Cir. 2000); see also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993) (“restrictions on how the mark is used will not be inferred”); Octocom
Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (the application controls “regardless of what the record may reveal
as to the particular nature of an applicant’s goods”); Canadian Imperial Bank of
Comm., N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
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Turning to a consideration of Applicant’s and Registrant’s goods, we find that the
goods are legally identical in part. Applicant is seeking to register its mark for “paper,
namely coated and uncoated cut sheet paper.” The identification of goods in the cited
registration includes “notebook paper” and “school supply kits containing various
combinations of selected school supplies, namely … paper.” Because Registrant’s
“paper” and “notebook paper” are unlimited as to type, they encompass Applicant’s
“coated and uncoated cut sheet paper.” Likewise, because Applicant’s coated and
uncoated cut sheet paper are not limited as to type or purpose, they may be of the
type that would be used in notebooks or for school purposes. Thus, these goods are
considered legally identical. Applicant also recognizes this overlap and “does not deny
that the goods are related.”7
If a likelihood of confusion is shown between Applicant’s use of its mark on cut
sheet paper and the notebook paper in Registrant’s identification, there is no need to
prove likelihood of confusion with the remaining goods in Registrant’s identification.
Under the second DuPont factor, the Examining Attorney need not prove, and we
need not find, similarity as to each and every product listed in the description of
goods. It is sufficient for a refusal based on likelihood of confusion that relatedness is
established for any item encompassed by the identification of goods in a particular
class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1745 (TTAB 2014); In re La Peregrina Ltd., 80 USPQ2d 1645, 1646

7 6 TTABVUE 6.
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(TTAB 2008) (“Likelihood of confusion may be found based on any item that comes
within the identification of goods in the involved application and registration.”).
Because the goods in the application and the cited registration are in part legally
identical, we must presume that the channels of trade and classes of purchasers are
the same for those goods. See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ
721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade
and classes of purchasers are considered to be the same); Am. Lebanese Syrian
Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.
Cir. 2012) (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). Further, because there are no limitations as to channels of
trade or classes of purchasers in the description of goods in either the cited
registration or the application, we must presume that the goods move in all channels
of trade normal for uncut sheet paper and notebook paper and school supply kits, and
that they are available to all potential classes of ordinary consumers of these goods.
See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Applicant argues that cut sheet paper, unlike notebook paper or school supplies,
are not purely consumer goods sold directly to consumers but are “sold both direct to
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business and to consumers.”8 Although this is a concession that Applicant’s goods are
sold, in part, directly to consumers, Applicant clarifies that although its goods are
sold to consumers through “office supply stores,” identical trade channels through
which “notebook paper” and “school supply kits” would likely be sold, the goods
themselves would be sold at a “competitive distance” from each other.9 There is no
support in the record for this assumption. The goods are closely related and in part
legally identical. Consumers of both Applicant’s cut sheet paper and Registrant’s
notebooks, notebook paper and school supplies including paper, are ordinary
consumers who would use paper for their personal and business use, or as part of a
school curriculum. There is no evidence in the record suggesting that the goods are
expensive or purchased exclusively by an entirely distinct class of consumer (e.g.,
parents of schoolchildren), and the application is not so limited. The second and third
DuPont factors favor a finding of likelihood of confusion; the fourth factor (conditions
of sale and buyers to whom sales are made) is neutral.
C. Balancing the factors.
In comparing the marks, we are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the goods. Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23

8 Id.
9 Id.
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USPQ2d 1698, 1700 (Fed. Cir. 1992). The marks are similar and the goods are in part
legally identical. There are no limitations to trade channels set forth in either
Applicant’s application or the cited registration, the normal channels of distribution
are overlapping, and both companies target the same ordinary customers.
We find that Applicant’s mark BOLD for “paper, namely coated and uncoated cut
sheet paper” is likely to cause confusion with the registered mark IQ BOLD for a
variety of stationery items including “notebook paper” and “school supply kits
containing various combinations of selected school supplies [including] … paper.”
Decision: The refusal to register Applicant’s mark BOLD under Section 2(d) of
the Trademark Act is affirmed.