Manufacturing Resources International, Inc.

Trademark Trial and Appeal Board

Dec 19, 2013

No. 85535771 (T.T.A.B. Dec. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
December 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Manufacturing Resources International, Inc.
_____

Serial No. 85535771
_____

Jeffrey S. Standley and Beverly A. Marsh of Standley Law Group, LLP for
Manufacturing Resources International, Inc.

Bridgett G. Smith, Trademark Examining Attorney, Law Office 115 (John Lincoski,
Managing Attorney).
_____

Before Kuhlke, Ritchie and Lykos, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Applicant, Manufacturing Resources International, Inc., filed an application
to register on the Principal Register INFINITETOUCH in standard characters for
goods identified as “LCD panels,” in International Class 9.1
Registration has been refused under Section 2(d) of the Trademark Act, 15
U.S.C. § 1052(d), on the ground that applicant’s mark, when used with its identified

1 Application Serial No. 85535771, filed on February 7, 2012, based on an allegation of a
bona fide intention to use the mark in commerce, under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).

Serial No. 85535771

2

goods, is likely to cause confusion, mistake or deception with the registered mark
shown below:

The word “DIGITAL” is disclaimed. In addition, the registration includes the
following description of the mark and color claim:
The mark consists of the words “INFINTE DIGITAL EXPERIENCES”
in blue with orange and yellow small circles forming a band above the
words and turquoise small circles forming a band below the words.

The color(s) orange, yellow, blue and turquoise is/are claimed as a
feature of the mark.2

The mark is registered for the following goods:
washing machines for household purposes; electric vacuum cleaners;
electric mixers for household purposes; dishwashers; vacuum cleaner
bags; cleaning robots for household purposes; lawnmowers; garbage
disposals; DC generators; electric motors for use in washing machines;
electric food blenders, in International Class 7;

semiconductors; universal serial bus (USB) hardware; computer
network hubs, switches and routers; modems; smart phones; mobile
phones; wireless headsets; battery chargers; computer servers; digital
set-top boxes; hard disc drives; optical disc drives; notebook computers;

2 Registration No. 3836622, issued on August 24, 2010. Hereinafter, registrant’s mark is
referred to as “INFINITE DIGITAL EXPERIENCES and design.”

Serial No. 85535771

3

computers; printers for computers; computer monitors; personal digital
assistants (PDA); television sets; facsimile machines; cash registers;
dry cells; fiber optic cables; electric irons; amusement apparatus
adapted for use with television receivers only; video phones;
telephones; video tape recorders; DVD players; MP3 players; portable
multimedia players; audio speakers for use with computers; compact
disk players; blank optical discs for audio and video; cathode-ray tubes;
carbon nano tubes; camcorders; video cameras; video projectors; digital
cameras; downloadable graphics and music via a global computer
network and wireless devices; game software; computer mouse;
mousepads; satellite receivers; satellite navigational system, namely, a
global positioning system (GPS); batteries; electronic pocket
translators; laptop computers; photo-copying machines; facsimile-
transmitting and receiving apparatus; plotters; thin film transistor
liquid crystal display (TFT-LCD) panels; plasma display panels
(PDP); LCD monitors; cases for mobile phones, in International Class 9
(emphasis added); and

dental ovens; water purifiers for household purposes; gas ranges;
bidets; gas stoves; air conditioners; ventilating fans; gas lamps; organic
light emitting diode (OLED) lighting apparatus; light emitting
diode(LED) lighting fixtures; ornamental fountains; heaters for ships;
air conditioners for vehicles; air purifying apparatus; disinfecting
lamps; fluorescent lamps; infrared lamps; electric fans; electric
refrigerators; humidifiers; hair dryers for household purposes; electric
ranges; electric laundry dryers; electric toasters; electrically heated
carpets; microwave ovens; electromagnetic induction cookers for
household purposes; bread baking machines; refrigerating showcases;
freezers; evaporative air coolers; cooling evaporators; warming pans for
beds; ice chests for household purposes; ice-cooling refrigerators for
household purposes; electric radiators; dish disinfectant apparatus for
household purposes, in International Class 11.

The refusal was made final, applicant appealed and briefs have been filed.
When the question is likelihood of confusion, we analyze the facts as they
relate to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
Serial No. 85535771

4

and the similarities between the goods or services. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With regard to the goods, we base our evaluation on the goods as they are
identified in the registration and application. In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); and Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). The examining attorney focuses her comparison of
applicant’s “LCD panels” with “thin film transistor liquid crystal display (TFT-LCD)
panels” listed in the registration. Applicant’s broad identification of “LCD panels”
encompasses all variations of LCD panels including registrant’s “thin film
transistor liquid crystal display (TFT-LCD) panels.” Thus, applicant’s goods are, in
part, legally identical and applicant does not dispute this fact.
Further, in view of the identical nature of the goods and because there are no
limitations as to channels of trade or classes of purchasers in the descriptions of
goods in the application and cited registration, it is presumed that applicant’s and
registrant’s goods move in the same channels of trade normal for those goods, and
that they are offered to the same classes of purchasers for those goods. See In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (the Board may
rely on this legal presumption in determining likelihood of confusion). See also
Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76
(CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA
Serial No. 85535771

5

1958); American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they
must be presumed to travel in the same channels of trade, and be sold to the same
class of purchasers.”).
In view thereof, the du Pont factors relating to the similarity of the goods,
channels of trade and classes of customers weigh heavily in favor of likely confusion.
Turning to the factor of the similarity or dissimilarity of the marks, in
making our determination, we compare the marks “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) quoting du Pont, 177 USPQ at 567. We also
note that where, as here, the goods are legally 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. Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007).
Applicant argues that the differences in the marks in appearance, sound,
connotation and commercial impression due to the additional wording in both
marks and the design element in registrant’s mark, are sufficient to distinguish
them. The examining attorney focuses on the shared literal element INFINITE.
Serial No. 85535771

6

The examining attorney points to the fact that INFINITE is the first word in both
marks and also the most distinctive element, making it the dominant source-
identifying element in both marks.
While we view the marks 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… .” In re National Data Corp., 753 F.2d 1056, 224 USPQ 749,
751 (Fed. Cir. 1985). In general, the word portion of a mark dominates over the
design portion inasmuch as the word portion “is the one most likely to indicate the
origin of the goods to which it is affixed.” CBS Inc. v. Morrow, 708 F2d2d 1579, 218
USPQ 198, 200 (Fed. Cir. 1983). “It is the word portion of the marks which is most
likely to be impressed upon a customer’s memory as it is used by prospective
purchasers when asking for applicant’s and registrant’s goods.” In re Dakin’s
Miniatures Inc., 59 USPQ2d 1593, 1596 (TTAB 2001), citing In re Appetito
Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). We find that to be the case
here, where the design portion of registrant’s mark is not a particularly distinctive
logo but rather serves to visually emphasize the wording.
Moreover, although color has been claimed as a feature of the mark in the
registration, because the mark in the application is in standard characters we must
consider all depictions “regardless of font style, size, or color.” Citigroup Inc. v.
Capital City Bank Group Inc., 637 USPQ2d 1344, 98 USPQ2d 1253, 1258-59 (Fed.
Cir. 2011). The rights associated with a mark in standard characters reside in the
wording and not in any particular display. Squirtco v. Tomy Corp., 697 F.2d 1038,
Serial No. 85535771

7

216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445,
1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB
1988).
Further, when a mark consists of multiple words, consumers are more likely
to perceive an arbitrary term rather than a descriptive or generic term, as the
source-indicating feature of the mark. Dixie Rests., 41 USPQ2d at 1533-34
(affirming the Board’s finding that “DELTA,” not the disclaimed generic term
“CAFE,” is the dominant portion of the mark THE DELTA CAFE). Applicant
argues that the design portion of the mark puts the emphasis on the disclaimed
word DIGITAL and that the word EXPERIENCES has not been disclaimed in the
registration. Despite the centered position of the word DIGITAL in the mark, we
find that INFINITE will be more likely to be perceived as the source-identifying
element in applicant’s mark in view of the highly descriptive nature of the word
DIGITAL in relation to these goods. In addition, as noted by the examining
attorney, consumers are generally more inclined to focus on the first portion of
mark. Palm Bay, 73 USPQ2d at 1692 and Presto Prods., Inc. v. Nice-Pak Prods.,
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). Thus, the word EXPERIENCES, coming
at the end of the phrase, is less memorable than the first word INFINITE. The
identical word, INFINITE, is also the first word in applicant’s mark, followed by the
word TOUCH which is, at a minimum, a suggestive term given the nature of the
goods, LCD panels.
Serial No. 85535771

8

Applicant argues that the different meanings engendered by the additional
wording in the marks, create very different connotations. Specifically, applicant
argues:
The use of the word “touch” in Applicant’s mark INFINTETOUCH,
which is not used at all in the Cited Mark, is suggestive of a good that
invites handling and “touching” by the consumer. That is, a good that
invites physical interaction from the user. The Cited Mark has no such
meaning. While “INFINITE DIGITAL EXPERIENCES” may connote
the idea of a good that can perform many different tasks, there is no
connotation that the goods sold under this mark invite physical
interaction, or “touching,” by the consumer.3

As applicant recognizes, the additional wording in the marks is suggestive of
aspects of the goods, inviting physical interaction or the performance of many
different tasks. While the marks may point to different features of the goods, the
more source-identifying element, INFINITE, remains the same. Thus, the
difference in meaning may only point the consumer to a different product in a line of
INFINITE goods. In this regard, we note the cited mark is registered for a wide
variety of products.
Further, applicant argues that the marks “have significantly different
commercial impressions” due to the difference in wording and registrant’s design
element. However, because the dominant element in registrant’s mark is identical
to the more prominent portion of applicant’s mark, this similarity outweighs the
dissimilarities of the marks, creating a similar overall commercial impression.
We find that applicant’s mark INFINITETOUCH, is similar to registrant’s

3 App. Br. pp. 9-10.
Serial No. 85535771

9

mark INFINITE DIGITAL EXPERIENCES and design, and this factor also weighs
in favor of finding a likelihood of confusion.
In conclusion, because the marks are similar, the goods are legally identical,
and the channels of trade and consumers are the same, confusion is likely between
applicant’s mark INFINITETOUCH and the mark INFINITE DIGITAL
EXPERIENCES and design in the cited registration. Finally, to the extent that any
of the points argued by applicant cast doubt on our ultimate conclusion on the issue
of likelihood of confusion, we resolve that doubt, as we must, in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988).
Decision: The refusal to register based on a likelihood of confusion under
Section 2(d) of the Trademark Act is affirmed.