The INX Group, Ltd.

Trademark Trial and Appeal Board

Feb 6, 2012

No. 77899445 (T.T.A.B. Feb. 6, 2012)

Mailed:
February 6, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The INX Group, Ltd.
________

Serial No. 77899445
_______

Jeffrey T. Baravetto of Drinker Biddle & Reath LLP for The
INX Group, Ltd.

Elizabeth A. Hughitt, Trademark Examining Attorney, Law
Office 111 (Robert L. Lorenzo, Managing Attorney).
_______

Before Quinn, Kuhlke and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

The INX Group, Ltd. (applicant) filed an intent-to-
use application for the mark EVOLVE ADVANCED DIGITAL
SOLUTIONS and design, shown below,

for the following goods:
Printing ink products, namely, inks,
coating and varnishes, in Class 2; and
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77899445
2
Printing machines for commercial or
industrial use, in Class 7.

Applicant disclaimed the exclusive right to use the term
“Advanced Digital.”
The examining attorney refused registration under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), on the ground that applicant’s mark, when used
in connection with ink products and printing machines, so
resembles the registered mark EVOLUTION, in typed drawing
form, for the goods and services set forth below, as to be
likely to cause confusion.1
Printing presses for offset printing,
and parts thereof, mechanical printing
units, inking units, and dampening
units, mechanical paper roll change-
over machines, drives belonging thereto
and parts thereof, mechanical printing
machines for the illustration and/or
erasure of printing forms, and parts
thereof, in Class 7;

Computerized image data transmission
apparatuses; control and monitoring
devices for machine or equipment
readable data carriers; software for
the printing technology and for
printing presses, in Class 9; and

Installation, maintenance and repair
services for printing presses,
mechanical printing units, inking
units, and dampening units, mechanical
paper roll change-over machines and
mechanical printing machines, and for

1 Registration No. 2824970 issued march 23, 2004; Sections 8 and
15 affidavits accepted and acknowledged.
Serial No. 77899445
3
computerized image data transmission
apparatus and their controls, Class 37.

Our determination of likelihood of confusion 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 likelihood of confusion. 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont factor focusing on the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression. In re E. I. du Pont De Nemours &
Co., 177 USPQ at 567. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
Serial No. 77899445
4
(TTAB 1987). In analyzing the similarity or dissimilarity
of the marks, we are mindful that 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 overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1835,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992).
While marks must be compared in their entireties, it
is not improper to accord more or less weight to a
particular feature of a mark. In re National Data Corp.,
753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). In the
case of applicant’s mark, the word “Evolve” is the dominant
part of the mark as illustrated by its large size and
stylized lettering. The term “Advanced Digital Solutions”
appearing below the word “Evolve” is informational in
nature advising consumers to “check out our advanced
product.”2 (Emphasis in the original).

2 Applicant’s September 1, 2010 response, p. 5.
Serial No. 77899445
5
As noted above, applicant disclaimed the exclusive
right to use the term “Advanced Digital” pursuant to the
requirement by the examining attorney on the ground that
the term “Advanced Digital” is merely descriptive. Under
such circumstances, disclaimed matter is typically less
significant or less dominant when comparing marks. See In
re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997); In re Nat’l Data Corp., 224 USPQ at
752. Hence, it is appropriate that we should give greater
weight to the leading, dominant word, EVOLVE in
determining whether there is a likelihood of confusion
herein. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 695 (CCPA 1976) (“The issue of whether
a portion of a mark is dominant turns on the facts of each
case”); and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987) (“applicant conceded the common, descriptive
nature of the word ‘originals’ as applied to apparel by
disclaiming it”).
“Evolution” is defined, inter alia, as “something
evolved” or “a process of change in a certain direction:
Unfolding.” Synonyms include elaboration and development.3
“Evolve” is defined, inter alia, as a verb meaning “to

3 Merriam-Webster online dictionary (merriam-webster.com)
attached to the September 28, 2010 Office Action.
Serial No. 77899445
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produce by natural evolutionary processes” or “to undergo
evolutionary change.” Synonyms include elaborate, develop,
and unfold.4 “Evolution” and “evolve” are derived from the
same root: “evolution” is the noun for development or
change and “evolve” is the verb to develop or change.
Thus, they have a similar meaning and engender a similar
commercial impression (i.e., something undergoing a
change). In this regard and as discussed above, the
informational term “Advanced Digital Solutions” highlights
and/or emphasizes the word “Evolve.” Also, the stylized
lettering for the word “Evolve” is not so prominent as to
affect or change the commercial impression created by the
word “Evolve” alone.
To the extent that a consumer familiar with
registrant’s “software for the printing technology and for
printing presses” would encounter applicant’s mark, the
term “Advanced Digital Solutions” creates an association
with registrant’s mark EVOLUTION and its software for the
printing technology and for printing presses. “Advanced
Digital Solutions” creates the commercial impression of a
highly developed electronic process (or as applicant argued
in a response to an Office Action, “our advanced product”).
Thus, rather than serve to distinguish EVOLUTION from

4 Id.
Serial No. 77899445
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EVOLVE, the term “Advanced Digital Solutions” proposed for
use by the applicant emphasizes the similarities of those
words.
With respect to the appearance of the marks,
registrant’s mark is registered in typed drawing form;
therefore, it is not limited to any special form or style
as displayed on or in connection with printing presses,
mechanical printing units and mechanical printing machines.
When a mark is presented in typed drawing form, the Board
must consider all manners in which a party could depict the
mark. In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043
(TTAB 2007), citing Phillips Petroleum Co. v. C.J. Webb,
Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) (“we must
not be misled by considering [applicant’s] mark only in its
printed or typewritten form, with all the characters being
of equal height.”). Thus, registrant’s mark could be
displayed in a stylized format similar to the stylized
format adopted by applicant.
Despite the fact that there are differences in the
marks, overall they convey the same commercial impression,
and the similarities in appearance, sound, meaning and
commercial impression shared by the words “Evolution”
and “Evolve” in both marks outweigh the differences between
the marks. In view of the foregoing, we find that
Serial No. 77899445
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applicant’s mark EVOLVE ADVANCED DIGITAL SOLUTIONS and
design is similar to the mark EVOLUTION in the cited
registration in terms of appearance, sound, meaning and
commercial impression.
B. The similarity or dissimilarity and nature of the
goods, channels of trade and classes of consumers.

The scope of the registration applicant seeks is
defined by the description of goods in the application (and
not by its actual or intended use). It is this description
[seems redundant]that we must look to in determining
applicant’s right to register:
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 sales of the goods are directed.

Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likewise,
in considering the scope of the cited registration, we look
to the registration itself, and not to extrinsic evidence
about the registrant’s actual goods, customers, or channels
of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958).
Serial No. 77899445
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Applicant has applied to register its mark for
“printing machines for commercial or industrial use,” in
Class 7, and the cited mark is registered for, inter alia,
“printing presses for offset printing,” “mechanical
printing units,” and “mechanical printing machines for the
illustration and/or erasure of printing forms,” also in
Class 7. Applicant’s broad description of goods, “printing
machines,” encompasses registrant’s “printing presses,”
“mechanical printing units” and “mechanical printing
machines.” In view thereof, applicant’s Class 7
description of goods and registrant’s Class 7 description
of goods are, in part, legally identical.
Because the Class 7 goods described in the application
and the cited registration are in part legally identical,
we must presume that the channels of trade and classes of
purchasers are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
Serial No. 77899445
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travel in the same channels of trade, and be sold to the
same class of purchasers”).
Furthermore, because there are no limitations as to
channels of trade or classes of purchasers in the
description of goods in the cited registration or
applicant’s application, it is presumed that registrant’s
printing machines and applicant’s printing presses,
mechanical printing units and mechanical printing machines
move in all channels of trade normal for those goods, and
that they are available to all classes of purchasers for
those goods. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). Accordingly, we cannot give any weight to
applicant’s argument that the goods move in different
channels of trade and are sold to different classes of
consumers.5 See 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”).
With respect to the refusal regarding applicant’s
“printing ink products, namely, inks, coating and

5 Applicant’s Brief, pp. 4-5.

Serial No. 77899445
11
varnishes,” in Class 2, the examining attorney submitted
numerous use-based, third-party registrations for printing
ink, and printing presses and mechanical printing units and
machines to show that these products are related. Third-
party registrations which individually cover a number of
different goods that are based on use in commerce may have
some probative value to the extent that they serve to
suggest that the listed goods are of a type which may
emanate from the same source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The
registrations listed below are representative.6
Mark Reg. No. Goods/Services
CITRONEX 3589667 Printing ink; ink jet printing
machines for commercial or
industrial use
NASSENGER 3782157 Ink and ink cartridges for printing
machines for textiles; printing
machines for textiles
RYONET 3653912 Silk screen printing inks; silk
screen printing machines
DURST 3763281 Printing inks; printing machines
for commercial or industrial use
TEXPRESS 3348595 Ink for printing machines; printing
machines

6 We have not included the entire description of goods for each
of the registrations. Only the goods of the type described in
both applicant’s application and registrant’s registration are
listed.

Serial No. 77899445
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Logic dictates that a consumer and user of printing
machines will also purchase and use ink and that,
therefore, those goods move in the same channels of trade
and are sold to the same classes of consumers.
C. Balancing the factors.
Because the marks are similar, the goods are legally
identical and otherwise closely related, and we must
presume that the goods move in the same channels of trade
and are sold to the same classes of consumers, we find that
applicant’s mark EVOLVE ADVANCED DITIGAL SOLUTIONS and
design, for “printing inks” and “printing machines,” so
resembles the mark EVOLUTION, for printing presses,
mechanical printing units, and mechanical printing
machines, as to be likely to cause confusion.
Decision: The refusal to register is affirmed.