Ishihara Sangyo Kaisha, Ltd.

Trademark Trial and Appeal Board

Jan 16, 1998

EX (T.T.A.B. Jan. 16, 1998)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN 16, 98
Hearing: Paper No.
April 1, 1997 RLS/CJ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ishihara Sangyo Kaisha, Ltd.
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Serial No. 74/567,999 & 74/568,000
_______
Gerald H. Kiel of McAulay Fisher Nissen Goldberg & Kiel for
Ishihara Sangyo Kaisha, Ltd.
Karen Kuhlke, Trademark Examining Attorney, Law Office 105
(Tom Howell, Managing Attorney)
_______
Before Simms, Cissel and Seeherman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Ishihara Sangyo Kaisha, Ltd. (applicant), a Japanese
corporation, has appealed from the final refusals of the
Trademark Examining Attorney in the above-identified
applications to register the marks TITANPLATE and
TITANMASTER for electrophotographic printing plates for
offset press printing.1 The Examining Attorney has refused

1 Application Serial Nos. 74/567,999 and 74/568,000, both filed
August 31, 1994. In each application, applicant has asserted a
bona fide intention to use the mark in commerce.
Seer No. 74/567,999 & 74/568,000
2
registration under Section 2(d) of the Act, 15 USC 1052(d),
on the basis of Registration No. 1,160,772, issued July 14,
1981, Sections 8 and 15 affidavit filed, for the mark TITAN
for processing machines used to expose and develop
photosensitive printing plates. Applicant and the Examining
Attorney have submitted briefs and an oral hearing was held.
We affirm.
Essentially, it is applicant’s position that the
respective marks differ visually and in connotation,
applicant’s mark having the meaning of “master of the
titan,” in one of applicant’s applications. Applicant’s
counsel also states that applicant’s goods,
electrophotographic printing plates, cannot be processed by
registrant’s processing machines. Counsel also indicates
that there has been no evidence of actual confusion.
Finally, in order to show the “commonness” or the
“widespread use” of the term TITAN, applicant in its brief
has listed various third-party registrations. However, the
Examining Attorney has objected to this listing as untimely,
an objection which we find well taken.2

2 Not only has applicant presented this mere listing of third-
party registrations in its brief for the first time, but also
copies of these registrations have not been submitted. See
Trademark Rule 2.142(d), In re Norfolk Wallpaper, Inc., 216 USPQ
903, 904 (TTAB 1983) and In re Duofold, Inc., 184 USPQ 638 ((TTAB
1974). Moreover, applicant’s inappropriate request for remand,
presented in footnote 1 of its appeal brief, is denied. In any
event, these registrations cover different goods in different
fields (electric motors, pumps for spraying paint, cranes, food
mixers, etc.).
Seer No. 74/567,999 & 74/568,000
3
The Examining Attorney, on the other hand, argues that
all marks are dominated by the word TITAN and that, with
respect to both of applicant’s marks, the second word is
descriptive of applicant’s goods (“PLATE” on the one hand
and “MASTER” on the other, the original identification being
“printware, particularly electrostatic masters.”) With
respect to the goods, it is the Examining Attorney’s
position that we must assume that registrant’s processing
machines can be used for processing printing plates of the
type identified by applicant’s mark. In this regard, the
Examining Attorney notes that registrant’s processing
machines are used to expose and develop photosensitive
printing plates and that such printing plates could include
applicant’s electrophotographic printing plates. However,
even if applicant’s printing plates could not be processed
by registrant’s machines, the Examining Attorney argues that
applicant’s printing plates are related to registrant’s
processing machines for exposing and developing printing
plates, and that purchasers may believe that these goods all
come from the same source. In support of his position, the
Examining Attorney has made of record computerized versions
of third-party registrations and applications purporting to
show that third parties have adopted the same mark for
printing plates and for printing presses or machines which
process printing plates. Finally, the Examining Attorney
Seer No. 74/567,999 & 74/568,000
4
argues that it is not clear from this record that the
printing plates identified in applicant’s application could
not be processed by the processing machines identified in
the registration.
Upon careful consideration of this record and the
arguments of the attorneys, we agree with the Examining
Attorney that confusion is likely if applicant’s marks
TITANPLATE and TITANMASTER are used in connection with
applicant’s electrophotographic printing plates. While
there are obvious differences in the respective marks of
applicant and registrant, they differ only to the extent
that applicant’s marks include either highly suggestive or
descriptive matter. While marks, of course, must be
considered in their entireties, it is not improper, in
considering the overall similarities of competing marks, to
afford less weight or significance to those portions which
may be descriptive. See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The Examining
Attorney’s argument that a purchaser or a potential
purchaser may view applicant’s mark as suggesting a plate or
a master (plate) that may be processed by the TITAN
processing machine is not unreasonable.
While applicant’s attorney argues that applicant’s
goods cannot be processed by registrant’s processing
machines, there is nothing in the record to support this
Seer No. 74/567,999 & 74/568,000
5
contention. Indeed, applicant’s attorney has explained that
applicant’s goods include a photosensitive layer coated on
the plate. See applicant’s Amendment, filed August 10,
1995, p.2. Accordingly, applicant’s electrophotographic
printing plates appear to be photosensitive printing plates,
plates which are specifically identified as being capable of
being processed by registrant’s processing machines.
Finally, it should be kept in mind that the goods of the
parties need not be identical or directly competitive in
order to support a finding of likelihood of confusion. They
need only be related in some manner, or the conditions
surrounding their marketing be such, that they could be
encountered by the same purchasers or potential purchasers
under circumstances that could give rise to the mistaken
belief that the goods emanate from the same source. See In
re Corning Glass Works, 229 USPQ 65 (TTAB 1985). The third-
party registration made of record by the Examining Attorney
tends to support the proposition that a manufacturer may
sell both printing presses and printing plates as well as
other types of printing equipment under the same mark.3 In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).

3 We have disregarded the intent-to-use applications and the
third-party registrations issued pursuant to Section 44 of the
Act. There is no indication that the goods listed in those
applications and registrations have ever been sold or offered for
sale in this country.
Seer No. 74/567,999 & 74/568,000
6
Finally, while applicant’s attorney argues that there
is no evidence in the record of actual confusion, this
application is an intent-to-use application and there is
nothing in the record to support the statement that
applicant’s marks have been used in this country.
Decision: The refusals of registration are affirmed in
both cases.
R. L. Simms
R. F. Cissel
E. J. Seeherman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board