GCC Manage-ment Limited

Trademark Trial and Appeal Board

Jul 25, 2006

No. 76449120 (T.T.A.B. Jul. 25, 2006)

Mailed:
July 25, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GCC Management Limited
________

Serial No. 76449120
_______

Kurt L. Grossman of Wood, Herron & Evans, L.L.P. for GCC
Management Limited.

Kelley L. Wells, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark QIMAGING (in standard character form) for goods
identified in the application, as amended, as “ink for
printers and copiers; toner for printers and copiers; ink
and toner cartridges and canisters for copiers and
printers,” in Class 2, and “photocopiers, printers; laser
printers; inkjet printers; bubble jet printers; parts and
fittings for all the aforesaid goods; drum units for
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76449120
2
copiers and printers; rollers for copiers and printers;
blades for copiers and printers,” in Class 9.1
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to applicant’s goods,
so resembles the identical mark QIMAGING, previously
registered (in standard character form) for “high
performance digital cameras,” as to be likely to cause
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d), 15 U.S.C. §1052(d).
Applicant and the Trademark Examining Attorney have
filed main appeal briefs. No reply brief was filed, and no
oral hearing was requested. We affirm the refusal to
register.
Our likelihood of confusion 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 (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d

1 Serial No. 76449120, filed September 13, 2002. The application
is based on Trademark Act Section 44(d), and applicant claims a
Section 44(d) priority date of August 8, 2002 based on Hong Kong
Registration Nos. B14805 and B14806.

Ser. No. 76449120
3
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Under the first du Pont factor, we find that
applicant’s mark, QIMAGING, is identical to the cited
registered mark in terms of appearance, sound, connotation
and overall commercial impression. Contrary to applicant’s
arguments, it is not relevant in this appeal, even assuming
it is true, that registrant uses its QIMAGING mark
“interchangeably” as “shorthand” for its trade name
Quantitative Imaging Corporation, or that applicant regards
its QIMAGING mark as one of a family of “Q-formative”
registered marks (i.e., QPRINT, QCOPY, QFAX and QJET).2 The
mark at issue here is QIMAGING, which we find to be a
highly distinctive and unusual-looking mark. The identical
nature of applicant’s and registrant’s marks weighs heavily
in favor of a finding of likelihood of confusion, under the
first du Pont factor.
The sixth du Pont factor requires us to consider
evidence of third-party “use of similar marks on similar

2 Regarding applicant’s “family of marks” argument, see In re Lar
Mor International, Inc., 221 USPQ 180 (TTAB 1983); In re U.S.
Plywood-Champion Papers, Inc., 175 USPQ 445 (TTAB 1972); cf.
Baroid Drilling Fluids, Inc. v. Sun Drilling Products, 24 USPQ2d
1048 (TTAB 1992).
Ser. No. 76449120
4
goods.” For the first time with its appeal brief,
applicant submitted numerous third-party registrations of
“Q-formative” marks which include “cameras” in their
identifications of goods. The Trademark Examining Attorney
has not objected to this evidence on the ground of
untimeliness, see Trademark Rule 2.142(d), 37 C.F.R.
§2.142(d), but instead has treated the registrations as if
they were properly of record. Accordingly, we also shall
consider the registrations. We find, however, that they do
not suffice to establish that the mark at issue in this
case, i.e., QIMAGING, is at all weak or anything other than
unique and distinctive. Third-party registrations are not
entitled to any probative weight under the sixth du Pont
factor. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). We find that
the sixth du Pont factor is neutral in this case.
We turn next to a consideration of the second, third
and fourth du Pont factors, i.e., the similarity or
dissimilarity of the goods, the similarity or dissimilarity
of the trade channels, and the conditions of purchase. It
is settled that it is not necessary that the respective
goods be identical or even competitive in order to support
a finding of likelihood of confusion. That is, the issue
is not whether consumers would confuse the goods
Ser. No. 76449120
5
themselves, but rather whether they would be confused as to
the source of the goods. It is sufficient that the goods
be related in some manner, or that the circumstances
surrounding their use be 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 sources of the
respective goods. See In re Martin’s Famous Pastry 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 Corp., 197 USPQ 910
(TTAB 1978).
Moreover, the greater the degree of similarity between
the applicant's mark and the cited registered mark, the
lesser the degree of similarity between the applicant's
goods or services and the registrant's goods or services
that is required to support a finding of likelihood of
confusion. Where the applicant's mark is identical to the
registrant's mark, as it is in this case, there need be
only a viable relationship between the respective goods or
services in order to find that a likelihood of confusion
exists. See In re Opus One Inc., 60 USPQ2d 1812 (TTAB
Ser. No. 76449120
6
2001); In re Wilson, 57 USPQ2d 1863 (TTAB 2001); In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
Applicant argues that the “high performance” digital
cameras identified in the cited registration constitute a
specific category or specialized type of digital camera,
used only for highly specialized scientific applications.
Applicant has made of record the website of the owner of
the cited registration, from which it appears that the
registrant’s goods, in actuality, are highly specialized
digital cameras used in highly specialized scientific
applications. Applicant also has made of record the
website of a retailer of registrant’s goods, which shows
that the goods are quite expensive, retailing from between
$4,000 and $40,000.
However, it is settled that our likelihood of
confusion determination must be made on the basis of the
goods as identified in the cited registration, regardless
of what the extrinsic evidence of record might show to be
the nature of the registrant’s actual goods. See, e.g., In
re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986). The
evidence of record, including registrant’s website, does
not persuade us that “high performance” digital cameras
constitute a specific class of digital cameras. Rather, we
Ser. No. 76449120
7
agree with the Trademark Examining Attorney’s contention
that the words “high performance” in registrant’s
identification of goods must be construed to have their
ordinary descriptive or laudatory meaning, i.e., they
indicate that the registrant’s goods are digital cameras
which perform exceptionally well or are of very high
quality. This interpretation is supported by registrant’s
website itself, which uses the words “high performance” not
as the name of a product category, but in their ordinary
sense to describe the quality of registrant’s goods, i.e.,
“Since 1999, QImaging has designed its cameras for high
performance and ease of use.”3
Thus, we find that registrant’s goods, for purposes of
our likelihood of confusion analysis, are simply “digital
cameras,” albeit of assertedly high quality. Applicant’s
extrinsic evidence showing the specialized nature and high

3 In appropriate cases, where the nature of the goods is not
apparent from the identification of goods, the Board may look to
extrinsic evidence to determine what the goods are in an effort
to aid its likelihood of confusion determination. See In re
Trackmobile, 15 USPQ2d 1152, 1153-54 (TTAB 1990). However, we
find that this is not such a case. Unlike the unusual and
indeterminate goods at issue in Trackmobile (“mobile railcar
movers” and “light railway motor tractors”), we have no trouble
in this case determining what “digital cameras” are. Moreover,
as noted above, even if we look in this case to the extrinsic
evidence from registrant’s website, that evidence does not
establish that “high performance” is the name of a category or
type of digital cameras; the words are used in their ordinary
sense to describe the quality of registrant’s goods, not their
type.
Ser. No. 76449120
8
price of registrant’s actual goods cannot be used in this
case to limit the scope of the goods as identified in the
cited registration. Registrant’s goods as identified in
the registration are not limited as to trade channels or
classes of purchasers, and we therefore presume that they
are marketed in all normal trade channels for such goods
and to all normal classes of purchasers for such goods. In
re Elbaum, 211 USPQ 639 (TTAB 1981).
The Trademark Examining Attorney has made of record
four third-party registrations which include in their
identifications of goods both digital cameras and printers
and/or copiers. Although such registrations are not
evidence that the marks shown therein are in use or that
the public is familiar with them, they nonetheless have
probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may
emanate from a single source under a single mark. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB
1988).4 The Trademark Examining Attorney also has submitted
evidence from three third-party websites (Ritz Camera,

4 Three more registrations submitted by the Trademark Examining
Attorney appear to be of marks used as house marks on a wide
variety of goods; they are of little or no probative value under
Trostel and Mucky Duck.

Ser. No. 76449120
9
Amazon.com, and Hewlett-Packard), which show that digital
cameras are offered for sale together with photo printers.
We agree with the Trademark Examining Attorney’s contention
that digital cameras, on the one hand, and printers and
copiers, on the other hand, are complementary products
which could be purchased and used together by the same
classes of purchasers.
As noted above, where the marks are identical, the
degree of similarity between the respective goods which is
required to support a finding of likelihood of confusion
necessarily declines. We find that the evidence of record
in this case establishes that applicant’s goods are
sufficiently related to registrant’s goods that confusion
is likely to result from both parties’ use of the identical
(and highly distinctive) QIMAGING mark.
Considering all of the evidence of record as it
pertains to the du Pont evidentiary factors, we conclude
that a likelihood of confusion exists. To the extent that
any doubts might exist as to the correctness of this
conclusion, we resolve such doubts against applicant. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Ser. No. 76449120
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Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.