Engelhard Corp.

Trademark Trial and Appeal Board

Sep 17, 2002

No. 75615079 (T.T.A.B. Sep. 17, 2002)

Paper No. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Engelhard Corporation
________
Serial No. 75/615,079
_______
Richard R. Muccino and Raymond F. Keller for applicant.
Andrew J. Benzmiller, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Quinn and Holtzman, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Engelhard Corporation
to register the mark PORTFOLIO for “printed merchandising
aides used in connection with the display/advertising of
architectural coatings, namely, color strips, color cards,
color fan decks, formulation guides, and designer/architect
kits, namely binders, color sheets, and color strips.”1
1 Application Serial No. 75/615,079, filed January 4, 1999,
asserting first use anywhere and first use in commerce on June
23, 1998.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/615,079
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Act on the ground
that applicant’s mark, if applied to applicant’s goods,
would so resemble the previously registered mark PORTFOLIO
COLLECTION for “interior and exterior paints, stains, and
varnishes”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant, although acknowledging that both marks
incorporate the word “PORTFOLIO,” goes on to assert that
the word is suggestive as applied to the goods and that,
therefore, the cited mark is entitled to a narrow scope of
protection. Applicant also contends that the goods do not
travel in the same channels of trade.
The Examining Attorney maintains that the marks are
similar, and that the goods are closely related and
complementary. The Examining Attorney has submitted third-
party registrations to show that single entities have
registered the same mark for goods of the type identified
in the involved application and registration.
2 Registration No. 2,290,382, issued November 2, 1999. The word
“Collection” is disclaimed apart from the mark.
Ser No. 75/615,079
3
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, the test is not whether
the marks PORTFOLIO and PORTFOLIO COLLECTION can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of trademarks
encountered in the marketplace. See: Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided [that] the ultimate
Ser No. 75/615,079
4
conclusion rests on a consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For example, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark...”
Id. at 751.
We find that PORTFOLIO is the dominant feature in the
commercial impression created by registrant’s mark. It is
the first word in registrant’s mark, and it therefore is
more likely to be perceived and recalled by purchasers.
Further, PORTFOLIO is distinctive as applied to applicant’s
and registrant’s goods.3 To the extent that the term
PORTFOLIO has a meaning relative to the respective goods,
the meaning is only somewhat suggestive and, in any event,
the same suggestion is conveyed by both marks. Although we
have not disregarded the descriptive and disclaimed word
COLLECTION in registrant’s mark, we find that it has
relatively little source-indicating significance and that
3 Pursuant to the Examining Attorney’s request, we take judicial
notice of the dictionary definition of the term “portfolio”:
“the materials collected in a case, especially when
representative of a person’s work: a photographer’s portfolio;
an artist’s portfolio of drawings.” The American Heritage
Dictionary of the English Language (3rd ed. 1992).
Ser No. 75/615,079
5
it contributes relatively little to the mark’s overall
commercial impression.4
PORTFOLIO, the dominant feature of registrant’s mark,
is identical to applicant’s mark PORTFOLIO in terms of
appearance, sound, and connotation. In comparing the
marks’ overall commercial impressions, we find that any
dissimilarity that may result from the presence in
registrant’s mark of the descriptive and disclaimed word
COLLECTION is greatly outweighed by the basic similarity
between the marks which results from the presence in both
marks of the word PORTFOLIO.
With respect to the goods, they need not be identical
or competitive in nature in order to support a finding of
likelihood of confusion, it being sufficient for the
purpose that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under circumstances that could give rise, because
of the similarities between the marks used thereon, to the
mistaken belief that they originate from or are in some way
associated with the same source. See: Hilson Research
4 In this connection, we also note that applicant’s informational
literature shows use of the wording “color collection”
immediately after its mark PORTFOLIO.
Ser No. 75/615,079
6
Inc. v. Society for Human Resource Management, 27 USPQ2d
1423 (TTAB 1993); and Chemical New York Corp. v. Conmar
Form Systems, Inc., 1 USPQ2d 1139 (TTAB 1986).
Applicant’s goods are closely related and
complementary to registrant’s goods. Applicant’s goods, as
shown by the informational literature of record,
essentially are paint chips in a wide range of colors and
shades. These cards are used to select colors of
“architectural coatings”, which would include the goods
listed in the cited registration, namely paints, stains and
varnishes. Applicant’s goods would travel in the same
trade channels (e.g., paint stores and home improvement
stores) and would be purchased and used by the same classes
of customers (e.g., painters, interior decorators and
ordinary consumers).
In reaching our decision, we have taken into account
the third-party use-based registrations submitted by the
Examining Attorney. The registrations show the same marks
registered by the same entity for both types of goods
listed in the involved application and registration.
Although these registrations are not evidence that the
marks shown therein are in use or that the public is
familiar with them, they nevertheless have probative value
to the extent that they serve to suggest that the goods
Ser No. 75/615,079
7
identified therein are of a kind that may emanate from a
single source. See: Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1470 at n. 6 (TTAB 1988).
We conclude that consumers would be likely to
mistakenly believe that registrant’s interior and exterior
paints, stains and varnishes sold under the mark PORTFOLIO
COLLECTION and applicant’s color strips, color cards, color
fan decks, formulation guides and designer/architect kits
sold under the mark PORTFOLIO originated with or are
somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.