Samsung Opto-Electronics America, Inc.

Trademark Trial and Appeal Board

Aug 11, 2000

No. 75159889 (T.T.A.B. Aug. 11, 2000)

Paper No. 12
DEB
8/11/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Samsung Opto-Electronics America, Inc.
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Serial No. 75/159,889
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Eugene M. Lee of Foley & Lardner for Samsung Opto-
Electronics America, Inc.
Mark Sparacino, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
_______
Before Wendel, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Samsung Opto-Electronics America, Inc. has filed an
application to register “IMPAX” as a trademark for goods
identified as “cameras, telescopes and binoculars,” in
International Class 9.1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d). The basis for the refusal is that the mark

1 Serial No. 75/159,889, filed August 29, 1996, based on
applicant's allegation of a bona fide intention to use the mark on
or in connection with the goods in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/159,889
2
“IMPAC” has already been registered for a variety of Class 9
goods including cameras2, so that when applicant’s mark is
used on or in connection with the identified goods, it would
be likely to cause confusion or mistake by consumers, or to
deceive consumers as to the source of applicant’s and
registrant’s respective goods.
Applicant appealed the refusal of registration and
timely filed an appeal brief. The Examining Attorney then
filed a brief within the time set by the Board; an oral
hearing was not requested.
We affirm the refusal to register.
Our determination under Section 2(d) is based on
analysis of all of the probative facts in evidence that are
relevant to factors bearing on the issue of likelihood of
confusion. See In re E.I. du Pont de Nemours and Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). In the analysis of
that issue in this case, key considerations are the
similarities of the marks and the relatedness of the goods.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976). We consider, first, the
marks.

2 Registration No. 1,532,724 issued April 4, 1989, for, inter
alia, “radios, cameras and audio recording tape.” §8 affidavit
accepted and §15 affidavit acknowledged. The registration sets
forth a date of first use of December 1986.
Serial No. 75/159,889
3
Applicant argues that registrant’s mark, “IMPAC,” has
the connotation of a “pack” inasmuch as registrant’s camera
is sold with a sunshade and case.3 On the other hand,
applicant argues that its arbitrary term has no suggestive
meaning, and that its terminal letter “X” is a rarity in the
English language, creating a very different impression.
In contrast, the Trademark Examining Attorney contends
the marks are almost identical in sound and appearance, and
create a similar commercial impression, i.e., IMPAC or
“impact,” versus IMPAX or “impacts.”
The test, when comparing the involved marks, is not
whether applicant's mark can be distinguished from
registrant's mark 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 is likely to result as to the source or
sponsorship of the goods offered under the respective marks.
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). Both marks appear to

3 In support of its arguments regarding the registrant's goods,
along with its request for reconsideration, applicant submitted
for the record a copy of registrant’s 1992 catalogue and price
list.
Serial No. 75/159,889
4
be variant spellings of the English-language formative
“impact(s).” The first four letters of these two five-
letter marks are identical and both end with a strong
consonant. Hence, when compared in their entireties, we
find the marks are similar in sound and appearance and are
likely to create substantially similar impacts on the minds
of prospective purchasers.4
We turn our analysis, then, to the relatedness of the
involved goods. Applicant has argued that the involved
cameras are quite different. Its cameras are sold in retail
chains for more than one hundred dollars, while registrant’s
cameras are available via catalogue to distributors for $7.75
per camera.5 In fact, with regard to registrant's goods,

4 While registrant’s 1992 catalogue does include a “case” in
the description of the IMPAC camera, we do not place much
significance in this showing. First, even if it was sold with a
case by registrant in 1992, we cannot be sure that was always the
case between 1986 and 1992, or since 1992, for that matter.
Second, we disagree with applicant on how customers of
registrant’s camera with a case in 1992 would perceive this mark
in relation to registrant’s goods. We do not believe that
consumers seeing the term “IMPAC” on cameras will construe the
second syllable of registrant’s mark (-pac) as being suggestive of
a camera case. Finally, this “evidence” cannot support our
construing the commercial impression of registrant’s mark
differently any more than it can be used artificially to restrict
the identification of goods as listed in the registration, as
discussed, infra.
5 According to registrant’s 1992 catalogue and price list.
Serial No. 75/159,889
5
applicant asserts that the entire listing of goods in the
cited registration6 points to “various inexpensive goods.”
It is clear, however, that with regard to the
relatedness of applicant’s and registrant’s goods, the issue
of likelihood of confusion between marks must be determined
on the basis of the goods as they are identified in the
respective application and registration. Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815
(Fed. Cir. 1987), and In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Neither identification is restricted in any way as to
the relative cost of the cameras, as to whether they are
sold with a camera case or without one, or as to the
channels of trade or classes of consumers. Applicant's
allegations to the contrary notwithstanding, the Board must
assume that registrant’s cameras could well vary in price,
may be sold without cases, and that the goods or applicant
and of registrant could be offered through all normal
channels of trade and to the usual classes of consumers for
such goods. Hence, we are compelled to agree with the
Trademark Examining Attorney's conclusion that these

6 In addition to the goods listed above in International Class
9, the cited registration also covers a variety of hand tools in
International Class 8.
Serial No. 75/159,889
6
respective cameras travel in the same channels of trade to
the same consumers.
In short, given the fact that quite similar marks would
be used on identical goods, we find a clear likelihood of
confusion among consumers.
Decision: The refusal of registration is affirmed.
H. R. Wendel
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board