Jindal Films Americas LLC

Trademark Trial and Appeal Board

Apr 27, 2018

No. 86700604 (T.T.A.B. Apr. 27, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 27, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Jindal Films Americas LLC
_____

Serial No. 86700604
_____

Erik J. Osterrieder of Rao DeBoer Osterrieder, PLLC,
for Jindal Films Americas LLC.
Robert Clark, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____

Before Bergsman, Masiello and Coggins,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Jindal Films Americas LLC (“Applicant”) seeks registration on the Principal
Register of the mark PLATINUM THERMAL (in standard characters) for the goods
listed below:
Plastic film for packaging that is imageable by application
of heat or pressure and an alternative to plastic films based
on direct thermal and thermal transfer ribbon; plastic film
for wrapping that is imageable by application of heat or
pressure and an alternative to plastic films based on direct
thermal and thermal transfer ribbon; plastic foils that are
imageable by application of heat or pressure and an
alternative to plastic foils based on direct thermal and
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thermal transfer ribbon; plastic tags that are imageable by
application of heat or pressure and an alternative to plastic
tags based on direct thermal and thermal transfer ribbon;
plastic tickets that are imageable by application of heat or
pressure and an alternative to plastic tickets based on
direct thermal and thermal transfer ribbon; plastic
vouchers that that are imageable by application of heat or
pressure and an alternative to plastic vouchers based on
direct thermal and thermal transfer ribbon; plastic barcode
labels that are imageable by application of heat or pressure
and an alternative to plastic barcode labels based on direct
thermal and thermal transfer ribbon, in Class 16; and
Adhesive, plastic films for use in commercial or industrial
manufacturing that are imageable by application of heat or
pressure and an alternative to adhesive, plastic films based
on direct thermal and thermal transfer ribbon; plastic film
for industrial or commercial packing use that is imageable
by application of heat or pressure and an alternative to
plastic film based on direct thermal and thermal transfer
ribbon; plastic sheets for use in the manufacture of labels
that are imageable by application of heat or pressure and
an alternative to plastic sheets based on direct thermal and
thermal transfer ribbon; polymer sheets for use in the
manufacture of labels that are imageable by application of
heat or pressure and an alternative to polymer sheets
based on direct thermal and thermal transfer ribbon, in
Class 17.1
Applicant disclaimed the exclusive right to use the word “Thermal.”
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 86700604 was filed on July 22, 2015, under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based upon Applicant’s allegation of a bona fide
intention to use the mark in commerce.

The application also included goods in Class 20 and services in Classes 35 and 40, but on
page 8 of its appeal brief Applicant “cancels its goods and services in Classes 20, 35, and 40.”
(7 TTABVUE 9). Accordingly, Applicant has expressly abandoned the application with
respect to the goods and services in those classes.
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Applicant’s mark so resembles the registered marks listed below, and owned by the
same entity, as to be likely to cause confusion:
• Registration No. 5020459 for the mark PLATINUM MAX HAND FILM
(standard characters);2 and

• Registration No. 5020458 for the mark PLATINUM MAX MACHINE FILM
(standard characters)3 both for

Plastic cling film, extensible, for palletization; Plastic film
for packaging; Plastic film for use as wrapping and
packaging material for GENERAL USE; Plastic film for
wrapping; Plastic film roll stock for packaging; Plastic
flexible packaging film sold in bulk to industrial and
commercial manufacturers, in Class 16.
Registrant disclaimed the exclusive right to use “Hand Film” and “Machine Film.”
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.
I. Evidentiary Issue
A. Applicant’s List of Third-Party Applications and Registrations.
In its November 9, 2015 Response, Applicant submitted three lists of
registrations and applications with the word “Platinum” in the mark field and
“plastic” in the description of goods and services field,4 “film” in the description of
goods and services field,5 and “packaging” in the description of goods and services

2 Registered August 16, 2016.
3 Registered August 16, 2016.
4 TSDR 8. Citations to the record in the TSDR database are to the downloadable .pdf format.
5 TSDR 9.
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field.6 Applicant resubmitted the lists in its August 22, 2017 Request for
Reconsideration.7
Third-party registrations may not be made of record by merely listing them in
response to an Office Action. “It is well-established that in order to make third-party
registrations properly of record, ‘applicant should submit copies of the registrations
themselves, or the electronic equivalent thereof’ from the USPTO’s electronic
databases …” In re City of Houston, 101 USPQ2d 1534, 1536 n.5 (TTAB 2012).
However, “[i]f the applicant, during the prosecution of the application, provided a
listing of third-party registrations, without also submitting actual copies of the
registrations, and the examining attorney did not object or otherwise advise the
applicant that a listing is insufficient to make such registrations of record at a point
when the applicant could cure the insufficiency, the examining attorney will be
deemed to have waived any objection to the admissibility of the list.” Trademark Trial
and Appeal Board Manual of Procedure (“TBMP”) § 1207.03 (June 2017); see also
TBMP § 1208.02.
In this case, the Examining Attorney did not object to the lists of registrations,
nor did the Examining Attorney instruct Applicant how to properly make the third-
party registrations of record. Accordingly, we consider the lists of registrations for
whatever probative value such evidence may have. City of Houston, 101 USPQ2d at
1536.

6 TSDR 10.
7 7 TTABVUE 58-60. Submitting the same evidence a second time is not necessary because
the evidence is already in the record.
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B. Examining Attorney’s List of Third-Party Registrations.
The Examining Attorney set forth in his brief the goods and services for the
registrations listed by Applicant without providing copies of those registrations as
required.8 Trademark Manual of Examining Procedure § 710.03 (October 2017).
Moreover, because the record is supposed to be complete prior to the filing of the
appeal, introducing new evidence in the form of the descriptions of goods and services
is untimely. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d).9 Accordingly, we have not
considered the descriptions of goods and services of the third-party registrations
submitted by the Examining Attorney in his brief.
C. Applicant’s Amendment in Its Brief.
On page 16 of its Appeal Brief, Applicant included an amendment limiting its
description of goods contingent upon the Examining Attorney or the Board finding
that it “lessened” likelihood of confusion.
If in the view of the Examiner and/or the Board a limiting
amendment as to Applicant’s goods being “obtained
directly or through licensed distributors,” is viewed as
lessening a perceived likelihood of confusion, then
Applicant is willing to accept a limiting amendment.10

8 9 TTABVUE 16-20.
9 Because Applicant submitted the list of registrations in its November 9, 2015 Response to
an Office Action, the Examining Attorney had the opportunity in his November 17, 2015,
December 27, 2016, February 22, 2017 Office Actions and September 13, 2017 Denial of the
Request for Reconsideration to both instruct Applicant as to how to properly make the third-
party registrations of record and to address the lack of probative value of registrations for
goods and services far removed from the goods and services in Registrant’s registrations and
Applicant’s application.
10 7 TTABVUE 17.
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Burying a proposed amendment to its description of goods in its brief is not the
proper way to file an amendment. After an appeal, the proper procedure for amending
an application is to file a request for remand, with a showing of good cause, and a
request to suspend proceedings in the appeal pending the Board’s decision on the
request for remand. See TBMP § 1205.01. No request for remand was filed and there
is no basis on which to address Applicant’s proposed amendment. See In re Thomas
White Int’l Ltd., 106 USPQ2d 1168, 1160 n.2 (TTAB 2013). Even if a request to
remand had been filed, at this late juncture, Applicant would not be able to show good
cause. Id.; see also TBMP § 1209.04 (in determining whether good cause has been
shown, the Board will consider both the reason given and the point in the appeal at
which the request for remand is made). In any event, even if the proposed amendment
were approved, it would not distinguish the channels of trade because Registrant’s
description of goods is not restricted or limited in any manner and its products
necessarily include plastic film for packaging and wrapping “obtained directly or
through licensed distributors.” See the discussion below.
II. Likelihood of Confusion
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) (“du Pont”) cited in B&B Hardware, Inc. v. Hargis
Indus., Inc., 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have
Serial No. 86700604
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considered each du Pont factor that is relevant or for which there is evidence of record.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242
(TTAB 2015) (“While we have considered each factor for which we have evidence, we
focus our analysis on those factors we find to be relevant.”). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods or services. See In re Chatam Int’l Inc.,
380 F.2d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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 differences in the marks.”); see also
In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The
likelihood of confusion analysis considers all DuPont factors for which there is record
evidence but ‘may focus … on dispositive factors, such as similarity of the marks and
relatedness of the goods’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d
1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. The similarity or dissimilarity and nature of the goods.
The goods identified in the cited registrations include, inter alia, the goods listed
below:
• “plastic film for packaging”;
• “plastic film for wrapping”; and
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• “plastic flexible packaging film sold in bulk to industrial and commercial
manufacturers.”
Applicant is seeking to register its mark for, inter alia, the goods listed below:
• “plastic film for packaging that is imageable by application of heat or
pressure and an alternative to plastic films based on direct thermal and
thermal transfer ribbon” (Class 16);
• “plastic film for wrapping that is imageable by application of heat or
pressure and an alternative to plastic films based on direct thermal and
thermal transfer ribbon” (Class 16); and
• “plastic film for industrial or commercial packing use that is imageable by
application of heat or pressure and an alternative to plastic films based on
direct thermal and thermal transfer ribbon” (Class 17).
We must consider the goods as they are described in the application and
registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,
1321, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys, Inc. v. Houston
Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set forth in the application
regardless of what the record may reveal as to the particular nature of an applicant's
goods, the particular channels of trade or the class of purchasers to which the sales
of goods are directed.”); see also Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the issue of
Serial No. 86700604
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likelihood of confusion must be decided on the basis of the respective descriptions of
goods”).
We also do not read limitations into the identification of goods. Squirtco v. Tomy
Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation and nothing in the inherent nature of Squirtco’s mark or goods that
restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board,
thus, improperly read limitations into the registration”); Thor Tech, 90 USPQ2d 1634,
1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations into
the registrant’s description of goods.”). Registrant’s broadly worded description of
goods encompasses some of Applicant’s more narrowly identified goods making them
identical for purposes of the likelihood of confusion analysis. See In re Hughes
Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly
worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly
identified ‘residential and commercial furniture.’”). Therefore we must give full sweep
to Registrant’s identified goods and can give little weight to Applicant’s argument
that its goods are imageable through application of heat or pressure whereas
Registrant’s goods provide no such imaging.11
We must presume that Registrant’s plastic film for packaging and plastic film for
wrapping include all types of plastic film for packaging and wrapping including
plastic film for packaging, packing, and wrapping that is imageable by application of
heat or pressure and an alternative to plastic films based on direct thermal and

11 Applicant’s Brief, p. 14 (7 TTABVUE 15).
Serial No. 86700604
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thermal transfer ribbon. Likewise, we must presume that Registrant’s “plastic
flexible packaging film sold in bulk to industrial and commercial manufacturers” and
“plastic film for packaging” include Applicant’s “plastic film for industrial or
commercial packing use that is imageable by application of heat or pressure and an
alternative to plastic films based on direct thermal and thermal transfer ribbon.”12
Under this du Pont factor, the Trademark 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. Gen. Mills Fun Grp., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5
(TTAB 2015) (“it is sufficient for finding a likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods within a
particular class in the application.”).
B. Established, likely-to-continue channels of trade.
Because the goods described in the application and Registrant’s registrations are
for our purposes in part identical, we must presume that the channels of trade and

12 “Packaging” is defined, inter alia, as “an act or instance of packing or forming packages.”
“Packing” is defined, inter alia, as “material used to cushion or protect goods packed in a
container.” Dictionary.com Unabridged based on the Random House Dictionary (2018). Thus,
Registrant’s “plastic film for packaging,” by definition, encompasses Applicant’s plastic film
for packing. The Board may take judicial notice of dictionary definitions, including online
dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4
(TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78
USPQ2d 1375, 1378 (TTAB 2006).
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classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same
channels of trade to same class of purchasers); 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); United
Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese
Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022,
1028 (TTAB 2011).
C. The strength of the marks in the cited registrations.
In determining the strength of a mark, we consider both its inherent strength
based on the nature of the mark itself and its commercial strength, based on the
marketplace recognition value of the mark. See In re Chippendales USA, Inc.,
622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); Top Tobacco, L.P. v. N. Atlantic Operating Co., Inc.,
101 USPQ2d 1163, 1171-72 (TTAB 2011) (the strength of a mark is determined by
assessing its inherent strength and its commercial strength); Tea Board of India v.
Republic of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). For purposes of our
likelihood of confusion analysis, a mark’s renown may “var[y] along a spectrum from
very strong to very weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC,
857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted).
The proper standard is the mark’s “renown within a specific product market,” id., and
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“is determined from the viewpoint of consumers of like products,” id. at 1735, and not
from the viewpoint of the general public.
The word “Platinum” is defined as “a precious grayish-white noncorroding ductile
malleable heavy metallic element that fuses with difficulty and is used especially in
chemical ware and apparatus, as a catalyst, and in dental and jewelry alloys.”13
The term “Max” is defined as a slang term for “maximum.”14
In view of the foregoing, Registrant’s marks PLATINUM MAX HAND FILM and
PLATINUM MAX MACHINE FILM are inherently distinctive terms used to identify
Registrant’s plastic films. Moreover, Registrant’s registrations are entitled to the
presumptions accorded by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b)
(validity of the registered marks, registrant’s ownership of the marks, and
registrant’s exclusive right to use the marks in connection with the goods specified in
the certificate of registration).
Applicant argues that the word “Platinum” has been registered many times in
connection with plastic and film products and, therefore, is entitled only to a narrow
scope of protection or exclusivity of use.15 To support this contention, Applicant
submitted two lists of third-party registrations identifying 12 registrations with the
word PLATINUM as part of the mark and with “plastic” in the description of goods

13 Merriam-Webster (merriam-webster.com) attached to the February 22, 2017 Office Action
(TSDR 6).
14 Dictionary.com based on the Random House Dictionary (2018).
15 Applicant’s Brief, pp. 18-19 (7 TTABVUE 19-20).
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and services,16 5 registrations with the word PLATINUM as part of the mark with
“film” in the description of goods and services,17 and 3 registrations with the word
PLATINUM as part of the mark with “packaging” in the goods and services field.”18
Third-party registrations can be used in the manner of a dictionary to illustrate
how a term is perceived. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334,
115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (“[a] real evidentiary value of third party
registrations per se is to show the sense in which … a mark is used in ordinary
parlance,” (quoting 2 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 11:90
(4th ed. 2015) (emphasis added).”); Institut Nat’l Des Appellations D’Origine v.
Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1196 (Fed. Cir. 1992) (“Such third
party registrations show the sense in which the word is used in ordinary parlance
and may show that a particular term has descriptive significance as applied to certain
goods or services.”); Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d
926, 198 USPQ 151, 153 (CCPA 1978) (“we find no error in the citation of nine third-
party registrations ‘primarily to show the meaning of * * * [‘zing’] in the same way
that dictionaries are used’”) (quoting Conde Nast Publn’s, Inc. v. Miss Quality, Inc.,
507 F.2d 1404, 184 USPQ 422, 425 (CCPA 1975)).
However, Applicant’s lists of registrations have little, if any, probative value
because Applicant did not include the actual goods and services in its lists. Without

16 November 9, 2015 Response (TSDR 8).
17 November 9, 2015 Response (TSDR 9).
18 November 9, 2015 Response (TSDR 10).
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the actual goods and services, we must speculate as to whether the descriptions of
goods and services identify products or services related to Registrant’s plastic film for
wrapping and packaging. See In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB
2010) (a list of third-party registrations without the description of goods and services
has no probative value); In re 1st USA Realty Prof’ls. Inc., 84 USPQ2d 1581, 1583
(TTAB 2007) (a list of third-party registrations without the goods and services for
which the marks are registered has no probative value). The evidence is insufficient
for us to find that consumers are so used to seeing marks containing the word
“Platinum” in connection with plastic film for wrapping, packing, and packaging that
when an additional word is added to “Platinum” consumers will look to the additional
term to distinguish the marks.
D. Similarity or dissimilarity of the marks.
We now turn 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. du Pont, 177 USPQ at 567. “Similarity in any one of
these elements may be sufficient to find the marks confusingly similar.” In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014). 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 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
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Enters. Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Prod. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
“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, 101 USPQ2d at
1721 (quoting Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d
1901, 1905 (TTAB 2007); see also San Fernando Elec. 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).
Applicant is seeking to register PLATINUM THERMAL, and the marks in the
cited registrations are PLATINUM MAX HAND FILM and PLATINUM MAX
MACHINE FILM. The dominant part of Applicant’s mark is the word “Platinum”
because the word “Thermal” is descriptive and Applicant has disclaimed the exclusive
right to use the word “Thermal.” Likewise, the dominant part of the registered marks
is the term “Platinum Max” because the terms “Hand Film” and “Machine Film” are
descriptive and have been disclaimed. It is well-settled that disclaimed, descriptive
matter may have less significance in likelihood of confusion determinations. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive
component of a mark may be given little weight in reaching a conclusion on the
Serial No. 86700604
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likelihood of confusion.’”) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (disclaimed matter is often “less significant in creating the mark’s commercial
impression”). There is nothing improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a mark, such as a common
dominant element, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data Corp., 224 USPQ at 751; see also In re
Viterra Inc., 101 USPQ2d at 1908.
Further reinforcing the significance of the terms “Platinum” and “Platinum Max”
as the dominant parts of the respective marks is their location as the first part of the
marks. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent
part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark
and the first word to appear on the label); Century 21 Real Estate Corp. v. Century
Life of Am., 23 USPQ2d at 1700 (upon encountering the marks, consumers will first
notice the identical lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513
(TTAB 2016) (noting that the dominance of BARR in the mark BARR GROUP is
reinforced by its location as the first word in the mark); Presto Prod. Inc. v. Nice-Pak
Prod., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
Serial No. 86700604
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The marks are similar in appearance, sound, connotation and commercial
impression because they share the word “Platinum.” The addition of the term “Max”
to Registrant’s marks and “Thermal” to Applicant’s mark does little to distinguish
the marks because consumers will perceive PLATINUM MAX HAND FILM,
PLATINUM MAX MACHINE FILM, and PLATINUM THERMAL as being
derivatives of the PLATINUM product line of plastic films for packaging, packing,
and wrapping. In other words, consumers familiar with Registrant’s PLATINUM
MAX HAND FILM and PLATINUM MAX MACHINE FILM are likely to believe,
upon seeing Applicant’s PLATINUM THERMAL for identical goods, that Registrant
has adopted a variation of its PLATINUM marks for such goods.
Overall the marks convey the same commercial impression and we find that the
du Pont factor of the similarity of the marks favors a finding of likelihood of confusion.
E. The conditions under which and buyers to whom sales are made.
Applicant argues, without any corroborating evidence, that its customers exercise
a heightened degree of care when making their purchasing decisions because its
plastic film is used to wrap its customers’ products.19 By virtue of the nature of
Applicant’s goods, purchasers of plastic film for wrapping, packing, and packaging
would exercise a heightened degree of care because Applicant’s products are unusual
in terms of complexity and use, and would be sold by knowledgeable sales persons to
customers with a very focused need for the plastic film.

19 Applicant’s Brief, pp. 16-17 (7 TTABVUE 17-18).
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Accordingly, we find that this du Pont factor weighs against finding that there is
a likelihood of confusion.
F. No reported instances of actual confusion.
Applicant asserts that it has been using its mark since at least as early as October
2015 and that there have been no reported instances of actual confusion.20 The
Federal Circuit has addressed the question of the weight to be given to an assertion
of no actual confusion by an applicant in an ex parte proceeding:
With regard to the seventh DuPont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little
evidentiary value. See In re Bissett-Berman Corp., 476 F.2d
640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of appellant’s corporate president’s
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The opposite
is not true, however. The lack of evidence of actual
confusion carries little weight, especially in an ex parte
context.
Majestic Distilling, 65 USPQ2d at 1205 (citation omitted).
Accordingly, while examples of actual confusion may point toward a finding of a
likelihood of confusion, an absence of such evidence is not compelling in support of a
finding of no likelihood of confusion, particularly in an ex parte proceeding in which
the cited registrant cannot appear. Thus, we cannot conclude from the alleged lack of
instances of actual confusion that confusion is not likely to occur.

20 Applicant’s Brief, p. 19 (7 TTABVUE 20).
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In any event, this record is devoid of any probative evidence relating to the extent
of use of Applicant’s and Registrant’s marks and, thus, whether there have been
meaningful opportunities for instances of actual confusion to have occurred in the
marketplace. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
G. Analyzing the du Pont factors.
While we have found that conditions under which sales are made weighs against
finding a likelihood of confusion, we are not persuaded that even consumers
exercising a heightened degree of purchasing care would not be confused when the
marks PLATINUM MAX HAND FILM, PLATINUM MAX MACHINE FILM and
PLATINUM THERMAL are used in connection with in part identical products. These
customers are likely to be aware that a single entity can be the source of Applicant’s
and Registrant’s products and mistakenly assume that the source of the products are
associated or related in some way. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin
Fondee En 1772, 73 USPQ2d at 1695 (“And even more sophisticated purchasers might
be aware that champagne houses offer both types of products under similar marks,
and could easily conclude that VEUVE ROYALE was Veuve Clicquot’s sparkling
wine”).
Because the marks are similar, the goods are in part identical and we must
presume that they are sold in the same channels of trade to the same classes of
consumers, we find that Applicant’s mark PLATINUM THERMAL for, inter alia,
“plastic film for packaging that is imageable by application of heat or pressure and
Serial No. 86700604
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an alternative to plastic films based on direct thermal and thermal transfer ribbon,”
“plastic film for wrapping that is imageable by application of heat or pressure and an
alternative to plastic films based on direct thermal and thermal transfer ribbon,” and
“plastic film for industrial or commercial packing use that is imageable by application
of heat or pressure and an alternative to plastic films based on direct thermal and
thermal transfer ribbon” is likely to cause confusion with the registered marks
PLATINUM MAX HAND FILM and PLATINUM MAX MACHINE FILM both for,
inter alia, “plastic film for packaging,” “plastic film for wrapping,” and “plastic flexible
packaging film sold in bulk to industrial and commercial manufacturers.”

Decision: The refusal to register Applicant’s mark PLATINUM THERMAL is
affirmed.