Pisces-Print Imaging Sciences Inc.

Trademark Trial and Appeal Board

Aug 5, 2003

No. 76068892 (T.T.A.B. Aug. 5, 2003)

Mailed:
Aug. 5, 2003
Paper No. 14
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Pisces-Print Imaging Sciences Inc.
________
Serial No. 76/068,892
_______
Norman P. Soloway of Hayes Soloway P.C. for Pisces-Print
Imaging Sciences Inc.
Rebecca A. Smith, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______
Before Hanak, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark JETPLATE for goods identified in the
application, as amended, as “desktop ink jet equipment for
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/068,892
2
imaging printing plates, namely plate processors, and
production raster image processor software therefor.”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 the goods
identified in the application, so resembles the mark
PLATEJET, previously registered for “graphic arts film
recorders and platesetter for use in the printing
industry,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
The appeal has been fully briefed,3 but no oral hearing
was requested. We affirm the refusal to register.
Initially, we note that we have given no consideration
to the third-party registration evidence submitted (for the
first time) with applicant’s reply brief. Such evidence is
untimely. Trademark Rule 2.142(d).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
1 Serial No. 76/068,892, filed June 12, 2000. The application is
based on applicant’s asserted bona fide intention to use the
mark. Trademark Act Section 1(b), 15 U.S.C. §1051(b).
2 Registration No. 2,106,991, issued October 21, 1997.
3 The Trademark Examining Attorney’s late-filed brief is
accepted, good cause having been shown and no objection thereto
having been raised by applicant.
Ser. No. 76/068,892
3
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We first determine whether applicant’s mark and the
cited registered mark, when compared in their entireties in
terms of appearance, sound and connotation, are similar or
dissimilar in their overall commercial impressions. The
test is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether
the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the
source of the goods offered under the respective marks is
likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Moreover, where, as in the present case, the marks would
Ser. No. 76/068,892
4
appear on virtually identical goods, the degree of
similarity between the marks which is necessary to support
a finding of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
We find that applicant’s mark JETPLATE is similar to
the cited registered mark PLATEJET. Both marks are
comprised of the words JET and PLATE, compressed into a
single compound word. The mere transposition of these
words in the respective marks does not suffice to
distinguish the respective connotations or overall
commercial impressions of the marks. See In re Wine
Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re
Nationwide Industries Inc., 6 USPQ2d 1882 (TTAB 1988); In
re General Tire & Rubber Co., 213 USPQ 870 (TTAB 1982).
Although, in certain cases, the transposition of the terms
in a mark can change the overall commercial impression of
the mark sufficiently to avoid a finding of confusing
similarity, we cannot conclude that this is such a case.
As applied to the goods at issue, the connotation and
overall commercial impression of the marks is similar,
regardless of whether the word JET or the word PLATE
appears first. Applicant has not identified any change in
meaning which results from the transposition of the words,
Ser. No. 76/068,892
5
and we see none. Viewing the marks in their entireties,
and keeping in mind the imperfect recollection of
purchasers, we find that the basic similarity between the
marks which results from the presence in both marks of the
identical words JET and PLATE outweighs the slight
dissimilarity between the marks which results from the mere
transposition of the two words. Therefore, we find that
the marks are similar rather than dissimilar under the
first du Pont factor, and that confusion is likely to
result if the marks are used on similar or related goods.
We have considered applicant’s arguments to the contrary,
but are not persuaded.
Turning now to a comparison of the goods, it is not
necessary that the respective goods be identical or even
competitive in order to support a finding of likelihood of
confusion. Rather, it is sufficient that the goods are
related in some manner, or that the circumstances
surrounding their marketing are 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,
Ser. No. 76/068,892
6
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978).
The goods identified in the cited registration include
“platesetter for use in the printing industry.” Although
the word “platesetter” does not appear in applicant’s
identification of goods, we note that the product brochure
submitted by applicant identifies applicant’s product as “a
desktop color platesetter.” It thus appears that
applicant’s and registrant’s goods are essentially
identical, competitive and/or complementary products, to
that extent. Both products are used to produce printing
plates.
Additionally, the Trademark Examining Attorney has
made of record several third-party registrations which
include in their identifications of goods both the
“platesetters” and/or “film recorders” identified in the
cited registration and “raster image processors,” which, we
presume, would be closely related to the “production raster
image processor software” identified in applicant’s
application. We note that one of these third-party
registrations (Reg. No. 2,150,116) is a house mark
registration owned by the owner of the cited §2(d)
Ser. No. 76/068,892
7
registration in this case. Although these registrations
are not evidence that the marks shown therein are in
commercial use, or that the public is familiar with them,
they nevertheless are probative evidence to the extent that
they suggest that the goods or services identified therein
are of a type which may emanate from a single source under
a single mark. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Applicant argues that registrant’s goods expressly are
limited to those used in the printing industry, while
applicant’s goods instead are “desktop publishing”
equipment used by “businesses that choose to perform their
own printing in-house rather than using a commercial
printer.” (Brief at 7.) We are not persuaded, inasmuch as
this argument appears to be premised on a
mischaracterization or misapprehension of the nature of
applicant’s goods.
Specifically, applicant’s identification of goods
contains no restriction or limitation to in-house “desktop
publishing” applications. Indeed, it does not appear that
applicant’s goods are “desktop publishing” equipment at
all. According to the dictionary evidence submitted by
applicant, “desktop publishing” is defined as “[t]he
Ser. No. 76/068,892
8
creation of printed pieces, including words and pictures
(such as ads, newsletters, magazines, brochures, and
books), almost entirely on a computer. Desktop publishing
programs convert normal text into professional-quality
documents that can be printed on laser printers or
imagesetters.” Webster’s New World Dictionary of Computer
Terms (5th ed.), at 167. It appears from applicant’s
brochure, however, that applicant’s goods are not used to
create “documents that can be printed on laser printers,”
but rather are used to produce aluminum printing plates
that are used on offset printing presses. Thus, the word
“desktop” in applicant’s identification of goods would
appear to signify only that the unit sits on a desktop; it
does not mean that applicant’s goods are used in or for
“desktop publishing.”4 There is no evidence that “desktop
publishing” involves or requires the production of aluminum
printing plates used on offset printing presses, which is
4 We note as well that applicant’s assertions regarding the “in-
house” nature of applicant’s goods appear to be not well-taken.
The only reference to “in-house” in applicant’s brochure relates
not to a business doing its own printing “in-house” (as opposed
to having the printing done by a commercial printer), as
applicant contends in its brief, but rather to the commercial
printer’s ability, using applicant’s product, to do all of his
offset printing pre-press work in-house, instead of having to
outsource such pre-press tasks as “film separations,” “layout &
strip,” and “contact & develop.”
Ser. No. 76/068,892
9
what applicant’s goods do, according to applicant’s
brochure.
Even if applicant’s goods are assumed to be marketed
to and used by businesses which do their printing in-house
via desktop publishing, it is apparent from applicant’s
brochure that applicant also markets its goods to the
printing industry, i.e., to commercial printers who use the
goods to produce the aluminum printing plates which are
used on offset printing presses. Applicant concedes as
much in its brief: “Applicant’s desktop system works with
a Pentium PC or Macintosh G4 computer and may be used by
anyone, not just those in the printing industry.” (Brief
at 4; emphasis added.) This overlap in the trade channels
and potential purchasers of the respective goods supports a
finding of likelihood of confusion.
Applicant argues that the goods at issue are expensive
goods which are purchased by careful, sophisticated
purchasers. There is no evidence in the record to support
that contention. The cost of the goods is not apparent
from the record, but we note that in its brochure,
applicant refers to its goods as “inexpensive,” “low-cost”
and “affordable.” Likewise, even if we assume that the
“small printers” identified in applicant’s brochure as the
potential purchasers of applicant’s goods are knowledgeable
Ser. No. 76/068,892
10
about printing equipment and processes, there is no
evidentiary basis for finding that they are knowledgeable
or sophisticated with respect to trademarks, or that their
knowledge of printing equipment and processes would protect
them from source confusion when they encounter these
related goods sold under confusingly similar marks. See In
re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin
Milnor Corp., 221 USPQ 558 (TTAB 1983). For these reasons,
we are not persuaded by applicant’s contention that the
fourth du Pont factor weighs in its favor in our likelihood
of confusion analysis; instead, we find that factor to be
neutral, at best.
In summary, after careful consideration of the
evidence of record pertaining to the relevant du Pont
likelihood of confusion evidentiary factors, we conclude
that a likelihood of confusion exists. Applicant’s mark is
confusingly similar to the cited registered mark, being a
mere transposition thereof which does not create a new or
different commercial impression. Applicant’s goods are
related to registrant’s goods (if not also identical
thereto insofar as both are “platesetters”), and they are
marketed in the same trade channels to the same classes of
purchasers. These facts warrant a finding that confusion
is likely. Any doubts as to the correctness of such
Ser. No. 76/068,892
11
conclusion (and we have none) must be resolved against
applicant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).
Decision: The refusal to register is affirmed.