Wist Supply and Equipment Co.

Trademark Trial and Appeal Board

Apr 24, 2013

No. 85256246 (T.T.A.B. Apr. 24, 2013)

Mailed:
April 24, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wist Supply and Equipment Co.
________

Serial No. 85256246
_______

Michelle L. Gross of Booth Udall PLC, for Wist Supply and
Equipment Company.

Josette M. Beverly, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
_______

Before Zervas, Ritchie, and Lykos, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

Wist Supply and Equipment Company (“applicant”) filed an
application to register the mark TRU IMAGE in standard character
format,1 for goods identified as “Dye toners; Filled ink
cartridges; Ink cartridges for printers; Ink jet cartridges;
Inks, toners and dyes for use with or on textiles and fabrics;
Photocopier toner; Photocopier toner in cartridges; Printing
toner; Toner; Toner cartridges; Toner for copiers; Toners;

1 Serial No. 85256246, filed March 2, 2011, pursuant to Section 1(a) of
the Trademark Act, 15 U.S.C. §1051(a), alleging dates of first use and
first in commerce on September 27, 2010.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 85256246
2
Xerographic toners,” in International Class 2. The Trademark
Examining Attorney refused registration of applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles the
registered mark TRU GRAFIX and design,2 and shown below, for
“Inks for ink jet cartridges, copying inks contained in roller
cassettes; copying inks contained in cartridges; filled ink
cartridges for ink-jet printer; filled toner cartridges for
laser printers; cartridges of toner for use with computers;
cartridges filled with toner; ink jet printer ink for use in
refilling inkjet printer cartridges,” also in International
Class 2, that when used on or in connection with applicant’s
identified goods, it is likely to cause confusion or mistake or
to deceive:

The examining attorney also made final a requirement to
disclaim the term “IMAGE” under Section 6(a) of the Trademark
Act, 15 U.S.C. §1056.
Upon final refusal of registration and requirement of
disclaimer, applicant filed a timely appeal. Both applicant and
the examining attorney filed briefs. For the reasons discussed

2 Registration No. 3573258, issued February 10, 2009.
Serial No. 85256246
3
herein, the Board affirms the refusal to register as well as the
requirement of disclaimer.
Disclaimer Requirement
We first discuss the requirement to disclaim the term
“IMAGE.” A term must be disclaimed apart from the mark as shown
if it is deemed to be merely descriptive of the subject goods or
services. See In re Grass GmbH, 79 USPQ2d 1600, 1603 (TTAB
2006); Trademark Manual of Examination Procedure § 1213.08(b)
(8th ed. Oct. 2011) (TMEP). A term is deemed to be merely
descriptive within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. See, e.g., In re Chamber of Commerce of the U.S.,
675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). A term need not immediately convey an idea of each
and every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough that
the term describes one significant attribute, function or
property of the goods or services. See In re H.U.D.D.L.E., 216
USPQ 358 (TTAB 1982); In re MBAssociates, 180 USPQ 338 (TTAB
1973).
Serial No. 85256246
4
Whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for which
registration is sought, the context in which it is being used on
or in connection with those goods or services, and the possible
significance that the term would have to the average purchaser
of the goods or services because of the manner of its use. That
a term may have other meanings in different contexts is not
controlling. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Moreover, it is settled that “[t]he question is not
whether someone presented with only the mark could guess what
the goods or services are. Rather, the question is whether
someone who knows what the goods or services are will understand
the mark to convey information about them.” In re Tower Tech
Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002). See also In re
Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In
re Home Builders Association of Greenville, 18 USPQ2d 1313 (TTAB
1990); and In re American Greetings Corporation, 226 USPQ 365
(TTAB 1985). On the other hand, if a mark requires imagination,
thought, and perception to arrive at the qualities or
characteristics of the goods or services, then the mark is
suggestive. In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003).
The examining attorney submitted a dictionary definition of
the term “image” as meaning “a visual representation of
Serial No. 85256246
5
something” or “a vivid or graphic representation or
description.” Merriam-webster.com (2011). Accordingly, the
examining attorney asserts that the “inks” and “toner” that
applicant seeks to register would easily be perceived by
consumers as being used for the purpose of creating an image.
To this end, the examining attorney also submitted some web
evidence showing toner being advertised for that purpose, as
follows (emphasis added):
These ink toners are utilized within the toner
cartridges and later on produce [sic] the images.
Once we use a laser printer the substance beneath
printer ink toner usually melts down and binds to the
attached paper to create images or copies of a
document. Inktoner.net. Attached to the June 9, 2011
Office Action, p.9.

Printing with a resolution in color of up to 9600x2400
dpi and black up to 600x600 dpi, the Canon MX860 ink
cartridges create images with sharp colors and tones.
inktechnologies.com/canon. Attached to the June 9,
2011 Office Action, p.12.

Whether printing in black and white or color, all inks
and toners are not created equal. Count on genuine HP
ink and toner cartridges for high-quality, long-
lasting results every time you print. Enjoy
exceptional image quality and vivid colors that last
with HP’s Vivera ink. hp.com. Attached to the June 9,
2011 Office Action,, p.13.

We find this evidence to be probative that the term “image”
is indeed descriptive of the goods in the application.
Specifically, it lets consumers know that the “inks” and “toner”
may be used for the purpose of creating images. Applicant
Serial No. 85256246
6
argues that there have been numerous instances in third-party
registrations where a disclaimer was not required for the term
“image.” To support this point, applicant submitted the
following evidence:
TruImage, Registration No. 3,351,291, for “print metal
substrate . . .”

TrueImage, Registration No. 3,351,294, for “print
metal substrate . . . “

DELIVERING IMAGE , Registration No. 3,639,345; for
“brand concept and brand development services . . .;”
[“image” is disclaimed]

IMAGE LIFT Registration No. 3,691,914; for “cosmetic
and plastic surgery. . . ” disclaiming “lift.”

IMAGE MAKER Registration No. 3,848,815 for “optical
filters . . .”

IMAGE Registration No. 3,071,841 for “composite resins
for use as dental restorative materials . . .”

IDEAL IMAGE, Registration No. 3,065,163 for “cosmetic
body care services . . .”

MIRROR IMAGE Registration No. 3024790 for “television
sets, computer monitors, video monitors . . .”

20/20 IMAGE Registration No. 3,192,094 for “eye care
services . . . ”

EASY IMAGE Registration No. 3,280,758 for “iron on
transfers . . .”

SELF IMAGES Registration No. 3,297,689 for “beauty
salon . . .”

AMERICAN IMAGE Registration No. 4,050,504 for “jewelry
. . .;” disclaiming “American”;

IDEAL IMAGE Registration No. 3,985,005 for “laser hair
removal services . . . ”
Serial No. 85256246
7

IMAGECREW Registration No. No. 4,038,228 for
“advertising services . . .”

We note that the goods that appear to be similar to those
in the application (those in Registrations No. 3,351,291 and
3,351,293) are for marks TruImage and TrueImage, unitary marks,
for which, as the examining attorney noted, a disclaimer would
not have been appropriate. Accordingly, those registrations are
not relevant. The other registrations are not for similar goods
or services, nor are the marks particularly similar to
applicant’s. Accordingly, we do not find these third-party
registrations to be probative in our reasoning either. Rather,
as discussed above, we have no doubt that consumers would find
that term “image” to convey information about the goods in the
application. The requirement to disclaim the term “IMAGE” is
affirmed.
Likelihood of Confusion
We base our determination under Section 2(d) on an analysis
of all of the probative evidence of record bearing on a
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
Serial No. 85256246
8
the marks and the similarities between the goods or services.
See 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”). We discuss each of the du Pont factors as to which
applicant or the examining attorney submitted argument or
evidence.
The Goods
The application identifies “Dye toners; Filled ink
cartridges; Ink cartridges for printers; Ink jet cartridges;
Inks, toners and dyes for use with or on textiles and fabrics;
Photocopier toner; Photocopier toner in cartridges; Printing
toner; Toner; Toner cartridges; Toner for copiers; Toners;
Xerographic toners,” while the cited registration identifies
“Inks for ink jet cartridges, copying inks contained in roller
cassettes; copying inks contained in cartridges; filled ink
cartridges for ink-jet printer; filled toner cartridges for
laser printers; cartridges of toner for use with computers;
cartridges filled with toner; ink jet printer ink for use in
refilling inkjet printer cartridges,” in the same International
Class. Items of overlap include applicant’s “filled ink
cartridges,” which necessarily include the more narrowly defined
“filled ink cartridges for ink-jet printer” in the cited
registration, as well as applicant’s “toner cartridges” which
Serial No. 85256246
9
also necessarily include the more narrowly defined “cartridges
of toner for use with computers” in the cited registration.
Accordingly, the goods overlap, and are legally identically.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) (likelihood of confusion may
be found based on any item that comes within the identification
of goods or services in that class). We find that this du Pont
factor strongly favors finding a likelihood of confusion.
The Channels of Trade and Classes of Purchasers
Under the third du Pont factor, we consider evidence
pertaining to the similarity or dissimilarity of the trade
channels in which and the purchasers to whom applicant’s
services and services in the cited registration are or would be
marketed. Because there are no limitations or restrictions as
to trade channels or classes of purchasers in the respective
identifications of goods, we presume that the goods are marketed
in all normal trade channels and to all normal classes of
purchasers for such goods, regardless of what the evidence might
show to be the actual trade channels and purchasers for their
services. Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d
1352, 56 USPQ2d 1351 (Fed. Cir. 2000); Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783
(Fed. Cir. 1990).
Moreover, because registrant’s goods and applicant’s goods
as identified in the application and the cited registration are
legally identical, we presume that with repect to those legally
identical goods, they are or will be sold in the same trade
Serial No. 85256246
10
channels and to the same classes of purchasers. Brown Shoe Co.
v. Robbins, 90 USPQ2d 1752 (TTAB 2009); Genesco Inc. v. Martz,
66 USPQ2d 1260 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d
1531 (TTAB 1994). Accordingly, we find that this du Pont factor
also weighs in favor of finding a likelihood of confusion.
The Marks
Preliminarily, we note that the more similar the goods at
issue, the less similar the marks need to be for the Board to
find a likelihood of confusion. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992). We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
In comparing 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 their overall commercial
impression so that confusion as to the source of the goods
and/or services 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 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June 5,
1992). The proper focus is on the recollection of the average
customer, who retains a general rather than specific impression
Serial No. 85256246
11
of the marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The mark in the cited registration is a slight stylization
of “TRU GRAFIX.” We find that the second term in the mark would
be understood, particularly in relation to the goods at issue,
as a phonetic variation of the term “graphics,” for which the
examining attorney has submitted the following definition, in
relevant part: “a product of graphic art”; “a pictorial image
displayed on a computer screen” Merriam-Webster.com (2011).
The mark in the application is “TRU IMAGE,” which bears the
same first term as the mark in the cited registration. While we
must not improperly dissect a mark, certain features may be
considered dominant. In re National Data Corp., 224 USPQ 749,
751 (Fed. Cir. 1985) (“[T]here is nothing improper in stating
that, for rational reasons, more or less weight has been given
to a particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.”). In particular, descriptive or disclaimed matter
is generally considered a less dominant portion of a mark. Id.
We have already determined that the term “image” is descriptive
of applicant’s identified goods. Accordingly, where as here,
the first term is the same, and applicant has merely added a
descriptive word in its mark, likelihood of confusion may
increase. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004) (GASPAR’S ALE and JOSE GASPAR GOLD); Cola-
Cola Bottling Co. v. Joseph E. Seagrams & Sons, Inc., 526 F.2d
Serial No. 85256246
12
556 188 USPQ 105 (CCPA 1975) (BENGAL and BENGAL LANCER); Lilly
Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406
(CCPA 1967) (THE LILLY and LILLI ANN); In re U.S. Shoe Corp.,
229 USPQ 707(TTAB 1985) (“CAREER IMAGE” AND “CREST CAREER
IMAGES”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and
“RICHARD PETTY’S ACCU TUNE”).
Applicant argued on appeal that the shared term “TRU” is
weak, based on evidence of third-party registrations that
applicant submitted for the first time on appeal. However, the
evidence was properly objected to by the examining attorney.
See Trademark Rule 2.142 (d) (The record closes with the filing
of a notice of appeal and the “Board will ordinarily not
consider additional evidence filed with the Board by the
applicant or by the examiner after the appeal is filed.”)
Accordingly, the objection from the examining attorney is
sustained, and we have given this untimely evidence no
consideration.
Based on the definitions of the respective phonetic terms,
we find the commercial impressions of the marks, when viewed in
relation to the goods, to be the same. Although the second
terms in each are different, we find the dissimilarities in
sight and sound are overridden by the similarities in commercial
impression, especially when considering that the goods are
legally identical. We also note that applicant’s mark is a
standard character mark which may be presented in various
formats, including ones similar to the manner displayed by the
mark in the cited registration. See Citigroup Inc. v. Capital
Serial No. 85256246
13
City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed.
Cir. 2011) (“If the registrant ... obtains a standard character
mark without claim to ‘any particular font style, size or
color,’ the registrant is entitled to depictions of the standard
character mark regardless of font, style, size, or color.”).
Accordingly, we find that this du Pont factor, too, weighs in
favor of finding a likelihood of confusion.

Conclusion
In summary we have carefully considered all of the evidence
and arguments of record relevant to the du Pont likelihood of
confusion factors. We conclude that with legally identical
goods moving in the same channels of trade to the same
purchasers, and similar marks, there is a likelihood of
confusion between applicant’s TRU IMAGE mark for “Dye toners;
Filled ink cartridges; Ink cartridges for printers; Ink jet
cartridges; Inks, toners and dyes for use with or on textiles
and fabrics; Photocopier toner; Photocopier toner in cartridges;
Printing toner; Toner; Toner cartridges; Toner for copiers;
Toners; Xerographic toners,” and the registered mark TRU GRAFIX,
and design for “Inks for ink jet cartridges, copying inks
contained in roller cassettes; copying inks contained in
cartridges; filled ink cartridges for ink-jet printer; filled
toner cartridges for laser printers; cartridges of toner for use
Serial No. 85256246
14
with computers; cartridges filled with toner; ink jet printer
ink for use in refilling inkjet printer cartridges.”
Decision: The refusal to register under Section 2(d) is
affirmed as is the requirement to disclaim the term “IMAGE.”