Eric Jacobson

Trademark Trial and Appeal Board

Nov 13, 2002

No. 75702771 (T.T.A.B. Nov. 13, 2002)

Mailed: November 13, 2002
Hearing: Paper No. 15
October 15, 2002 ejs
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Eric Jacobson
________
Serial No. 75/702,771
________
Richard L. Morris, Jr., Esq. for Eric Jacobson.1
Thomas J. Gleason,2 Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
Before Seeherman, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
1 Jeffrey H. Greger of Mason, Mason & Albright filed many of the
papers in the application, and appeared at an oral hearing before
the Board, although he was never formally appointed applicant’s
counsel.
2 Thomas Gleason wrote the appeal brief. The application had
previously been examined by Kim Saito, and Nick Altree appeared
for the Office at the oral hearing.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/702,771
2
Eric Jacobson has appealed from the final refusal of
the Trademark Examining Attorney to register IMPACT
PHOTOGRAPHY, with the word PHOTOGRAPHY disclaimed, for
“professional photography services, namely, customized
individual photographic portrait and portfolio services
exclusively for athletes, namely fitness and physique
photography and athletic model photography.”3 Registration
has been refused pursuant to Section 2(d) of the Trademark
Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark
so resembles the mark IMPACT, previously registered for
“lithographic prints of photographs” that, as used in
connection with applicant’s identified services, it is
likely to cause confusion or mistake or to deceive.
The appeal has been fully briefed, and applicant and
the Examining Attorney appeared at an oral hearing before
the Board.
We affirm the refusal of registration.
Our determination of likelihood of confusion is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors set forth in In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
3 Application Serial No. 75/702,771, filed May 10, 1999, and
asserting first use and first use of the mark in commerce on
December 1, 1998.
Ser No. 75/702,771
3
1973). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Turning first to the goods and services, the
relationship between photographs and photography services
is obvious. Photographs are created as a result of the
rendering of photographic services, and the photographic
product is seemingly intrinsic to the service, since
without the photographs themselves the taking of
photographic portraits would have little value. The
Examining Attorney has shown this relationship through the
submission of third-party registrations which are for both
the goods and the services. See, for example, Registration
No. 2,272,374 for portrait photography services in the
field of youth sports and mounted and unmounted photographs
in the field of youth sports. Third-party registrations
which individually cover a number of different items and
which are based on use in commerce serve to suggest that
the listed goods and/or services are of a type which may
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Ser No. 75/702,771
4
Applicant, however, points out that the cited
registration is not for photographs per se, but is for
“lithographic prints of photographs.” Applicant argues
that lithography and photography are different, and that
lithographic prints of photographs refers to a mass
production process which would be used for posters and
postcards, and not for individual photographs. In support
of this argument, applicant has submitted specimens taken
from the file of the cited registration, which show a
photograph on a postcard and a photograph on what is
identified as a “mini picture.” Further, based on
applicant’s characterization of the registrant’s goods as
postcards, he argues that the pertinent consumers of the
goods are bulk buyers, and thus the goods and services
would be sold to different consumers through different
channels of trade.
It is not clear to us that the term “lithographic
prints of photographs” would refer only to postcards,
posters and the like. There is nothing in the
identification which would preclude the identification to
include, for example, prints of photographs which would be
considered fine art. However, even if we accept that there
is a mass production aspect to the registrant’s goods, we
find that these goods and applicant’s services are related.
Ser No. 75/702,771
5
There is no question that photographic services would be
required to create registrant’s lithographic prints of
photographs. Moreover, several of the third-party
registrations submitted by the Examining Attorney show that
a single mark has been registered for, inter alia,
reproductions of photographic prints, postcards, posters,
gift cards and portrait photography (Registration No.
2,243,000); postcards, posters, photographic prints and
photography of people and places for others (Registration
No. 2,342,733); photographic prints and notecards and
outdoor photography services (Registration No. 1,771,439);
personalized photograph cards, calendars and portrait
photography services for sports teams (Registration No.
1,931,167); and mounted and unmounted photographs and
yearbooks and portrait photographic services (Registration
No. 2,130,214). These registrations show that goods such
as the registrant’s lithographic prints of photographs and
applicant’s professional photography services may emanate
from a single source under a single mark.
Further, lithographic prints of photographs are not
necessarily purchased only by bulk buyers. Ordinary
consumers may also wish to have lithographic prints made of
their photographs, for example, for use as Christmas cards
or for the personal photo cards often referred to as
Ser No. 75/702,771
6
“trading cards.” It is common knowledge that individuals
and amateur sports teams can have their photographs printed
on such cards in order to make it appear that they are
professional athletes.
We note that applicant has limited his identification
to “customized individual photographic portrait and
portfolio services exclusively for athletes, namely fitness
and physique photography and athletic model photography.”
However, because the cited registration is not limited as
to subject matter, the lithographic prints of photographs
may be of athletes (amateur or professional) and athletic
models. Athletes or athletic models might well encounter
lithographic prints, whether artistic prints or posters or
even personal photograph “trading” cards. They may well
think, if photographic portrait and portfolio services were
to be offered under the same or a confusingly similar mark
as the lithographic prints of photographs, that the
photographic portrait and portfolio services and the
lithographic prints of photographs emanated from or were
sponsored by the same source.
This brings us to a consideration of the marks.
Applicant’s mark is IMPACT PHOTOGRAPHY; the cited mark is
IMPACT. The fact that applicant’s mark contains the
additional term PHOTOGRAPHY is insufficient to distinguish
Ser No. 75/702,771
7
the marks. PHOTOGRAPHY is a generic term for applicant’s
photographic services, and has no source-identifying
capacity. As has been said many times, 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 the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). Because PHOTOGRAPHY is generic for
applicant’s services, we treat IMPACT as the dominant part
of applicant’s mark, and find that the marks are virtually
identical in appearance, pronunciation and commercial
impression.
In saying this, we have considered applicant’s
argument that the marks have different connotations, and
that the cited mark connotes prints that are generated by a
“bold and clear reprint process”, while applicant’s mark
connotes “the services of a professional photographer, in
this case for individual athletic photo sessions.” Brief,
p. 4. However, we are not persuaded by this argument. In
both cases, we think that IMPACT and IMPACT PHOTOGRAPHY
will be viewed as suggesting that the photographs, whether
produced as lithographic prints or resulting from
applicant’s professional photography services, will be
Ser No. 75/702,771
8
noticeable and have an “impact” on the viewer. Thus, we
find that the marks have the same connotation.
Applicant also asserts that IMPACT is a weak mark and
is entitled to a limited scope of protection. In
connection with this argument, applicant stated at page 4
of his appeal brief that “there are over 1,461 IMPACT
formative marks maintained in [the] U.S. Patent and
Trademark database,” and submitted as an exhibit a page
from the USPTO TESS database showing that, for the search
term “*impact*[bi,ti]” 1461 records were found, and listing
the marks and serial numbers of 19 applications (2 of which
are “dead”) and of one registration (for THE BIVINGS GROUP
WIRED GLOBAL IMPACT). The Examining Attorney has objected
to this exhibit as untimely, and we agree. Applicant also
argues that the Board should take judicial notice of these
registrations because “this information is a public record
readily available to the examining core [sic] and the
Board.” Reply brief, p. 2. However, it is well-
established that the Board does not take judicial notice of
registrations that reside in the U.S. Patent and Trademark
Office, and that the submission of a list of registrations
Ser No. 75/702,771
9
is insufficient to make them of record. See In re Duofold
Inc., 184 USPQ 638 (TTAB 1974).4
Applicant also asserts that, even if the Board does
not consider the 1,461 IMPACT-formative marks indicated by
the TESS system, there is evidence in the record of 1,090
IMPACT-formative marks. Applicant refers to the search
initially conducted by the Examining Attorney to determine
whether there were any conflicting registrations. The
search result simply shows that for the search
“*impact*[bi,ti]” there were a total of 1090 marks. There
is no indication of what those marks are. As we indicated
above, a list of registrations is insufficient to make them
of record. Here, of course, the search statement does not
even provide a list of the marks. We would also point out
that the search statement could refer to applications as
well as registrations (and applications are not evidence of
anything other than the fact that they were filed), and to
marks for goods or services totally unrelated to the
registrant’s or to applicant’s.
Applicant also refers to his statement, in his
response to the first Office action, that “a search for the
4 We point out that in this case applicant did not even supply a
list of the 1,461 alleged IMPACT marks, just a summary statement
from the TESS system.
Ser No. 75/702,771
10
mark IMPACT revealed over three hundred registrations
comprising IMPACT formative marks.” That response also
indicated that “there are at least forty-four IMPACT
formative trademarks in Class 16,” which implies that over
250 registrations are not for similar goods or services.
Needless to say, the mere statement that this number of
registrations exists does not suffice to make them of
record.
What is of record, however, are ten registrations for
IMPACT formative marks which applicant submitted with his
response to the first Office action. Some of these
registrations are for goods and/or marks that are
sufficiently different from the registrant’s marks and
goods that they do not persuade us that registrant’s mark
IMPACT is entitled to a limited scope of protection. See,
for example, Registration No. 1,985,612 for IMPACT-LATCH
for picture frame hangers and screws sold as a unit
therewith; Registration No. 2,106,370 for VISUAL IMPACT for
computer programs and program user manuals sold as a unit
to banks and financial institutions for image processing of
documents, especially to develop, enhance and transmit
graphic images of checks and financial instruments;
Registration No. 1,782,454 for IMAGES WITH IMAPCT! for
computer software and instruction manuals sold together as
Ser No. 75/702,771
11
a unit for use in publishing and printing graphics; and
Registration No. 2,233,485 for IMPACTUSA for promoting the
goods and services of others through the distribution of
printed material.
While there are certain third-party registrations
which are closer to registrant’s mark and goods, most
particularly Registration No. 2,117,186 for IMPACT for
printed material, namely posters, comic magazines, milk cap
trading cards, trading cards and picture booklets, we do
not view this registration as demonstrating that the cited
mark IMPACT is so weak that its protection would not extend
to prevent the registration of IMPACT PHOTOGRAPHY for the
photographic services identified in applicant’s
application. Although the third-party registrations, as
well as the meaning of the word itself, show that IMPACT
has a suggestive significance, that suggestion, as we said
previously, is the same for both applicant’s and the
registrant’s marks.
Applicant also argues that the purchasers of the
registrant’s goods and applicant’s services are careful and
discriminating. Applicant bases this argument on the
assertion that the registrant’s goods are purchased in bulk
by companies which then resell the goods, such as
postcards, to the end users. However, as we stated above,
Ser No. 75/702,771
12
the purchase of lithographic prints is not limited to
commercial enterprises; individuals, including amateur
athletes and models, can purchase such items. Further,
although applicant’s customized individual photographic
portrait and portfolio services for athletes and athletic
models may cost “thousands of dollars for a single
reproduction,” the services, as identified, cannot be
deemed to be only for such expensive reproductions or photo
shoots. Thus, an amateur athlete or bodybuilder may wish
to have his or her photograph taken either to have for
himself or herself or to give to his/her friends, and may
obtain the services of a photographer who specializes in
such pictures. That consumer could even use the photograph
obtained in such manner for a greeting card or personal
“trading card.”
Finally, to the extent that there is any doubt on the
issue of likelihood of confusion, such doubt must be
resolved in favor of the registrant and prior user. In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F. 2d 918, 179 USPQ 729 (CCPA 1973). In this
case, we note that registrant’s registration was issued in
1978, and claims a date of first use of 1975; applicant did
not begin using his mark until December 1998.
Decision: The refusal of registration is affirmed.