The opinion
Paper No. 16
CMB
THIS DISPOSITION IS CITABLE AS
PRECEDENT OF THE TTAB AUG. 31, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Continental Graphics Corporation
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Serial No. 75/033,628
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Nanette M. Norton of Brinks Hofer Gilson & Lione for
Continental Graphics Corporation.1
Cynthia Tripi, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
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Before Seeherman, Walters and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
In application Serial No. 75/033,628, applicant seeks
registration of the mark CONTINENTAL GRAPHICS for services
recited as "document reproduction services" in Class 35 and
"media duplication of data and digital information
1
Tim C. Hale, of the firm of Russo & Hale LLP, prosecuted the
application on behalf of applicant and filed applicant’s appeal
brief and reply brief. Subsequent to the filing of the reply
brief, applicant filed a revocation of its previous power of
attorney and appointed Ms. Norton et al. of the firm of Brinks
Ser. No. 75/033,628
services" in Class 42. Applicant has disclaimed the
exclusive right to use the word GRAPHICS apart from the
mark as shown.
The Trademark Examining Attorney has refused
registration of applicant’s mark under Trademark Act
Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant's mark, as applied to applicant's services, so
resembles the mark depicted below,
for services recited in the registration as "printing
services," as to be likely to cause confusion, to cause
mistake, or to deceive.2 When the refusal was made final,
applicant appealed. Applicant and the Trademark Examining
Attorney have filed briefs, and applicant has filed a reply
Hofer Gilson & Lione as its attorneys of record for this
application.
2
Registration No. 1,355,921, issued August 20, 1985. Affidavits
under Section 8 and 15 accepted. The registration contains the
following disclaimer statement: "No claim is made to the
exclusive right to use the representation of the globe apart from
the mark as shown." The registration also contains the following
statement: "The mark consists, in part, of two fanciful
representations of the letter "C".
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brief. No oral hearing was requested. We affirm the
refusal.
Our determination 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 issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, two key considerations
are the similarities between the marks and the similarities
between the goods and/or services. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
We turn first to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance,
sound, connotation and commercial impression. 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 services 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.
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Ser. No. 75/033,628
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well-settled that one feature of a mark
may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
Clearly, the word CONTINENTAL is the dominant feature
in the commercial impressions created by each of the marks
at issue in this appeal. The word GRAPHICS in applicant’s
mark is a generic and disclaimed term which contributes
relatively little to the overall commercial impression
created by applicant’s mark. Likewise, it is the word
CONTINENTAL, rather than the disclaimed globe design or the
stylized letter "C", which dominates registrant’s mark,
inasmuch as it is the spoken portion of the mark, which
would be used by purchasers to call for the services. See
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987).
Indeed, the dominant role of the word CONTINENTAL in the
overall commercial impression created by the registered
mark is reinforced, rather than negated, by the inclusion
in the mark of the globe design depicting stylized
continents and the inclusion of the large letter "C", which
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is the first letter of the word CONTINENTAL. See In re
Elco Corp., 180 USPQ 155 (TTAB 1973).
In short, we find that applicant’s mark and the
registered mark, when viewed in their entireties, are
similar, and that this similarity supports a finding of
likelihood of confusion in this case.
We turn next to a determination of whether applicant’s
"document reproduction" and/or "media duplication of data
and digital information" services are sufficiently closely
related to the "printing services" recited in registrant’s
registration that confusion would be likely to result from
the use of the respective marks. In this regard, the
Trademark Examining Attorney has made of record copies of
over forty third-party registrations demonstrating that
"printing services," on the one hand, and "document
reproduction" and/or "media duplication" services, on the
other, are commonly offered by a single source under a
single mark. We find this evidence to be sufficient to
establish that applicant’s recited services and
registrant’s recited services are commercially related.
Applicant has not disputed or refuted the Trademark
Examining Attorney’s evidence. Instead, applicant has
presented and relied on extrinsic evidence purporting to
show that the registrant’s "printing services" actually are
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Ser. No. 75/033,628
limited to the printing of business cards, that
registrant’s customers are limited to other commercial
printers, rather than ultimate purchasers/users, and that
registrant renders its services only in a limited
geographic area. Citing In re Trackmobile Inc., 15 USPQ2d
1152 (TTAB 1990), applicant argues that the Trademark
Examining Attorney, in finding that applicant’s services
are related to the registrant’s services, improperly
ignored this extrinsic evidence regarding the nature of
registrant’s actual services, evidence which, according to
applicant, demonstrates that applicant’s services in fact
are distinguishable from and unrelated to registrant’s
services.
Applicant’s argument is without merit. Trackmobile
does not stand for the proposition that when the goods or
services identified in the cited registration are described
broadly, the Board may or should consider extrinsic
evidence as to the nature of the registrant’s actual goods
or services when making its likelihood of confusion
determination.3 Indeed, that proposition is directly
3
In Trackmobile, a Section 2(d) refusal had been issued based on
a registration in which the goods were identified as "light
railway motor tractors." The applicant, in attempting to
overcome the Section 2(d) refusal by demonstrating that its goods
were unrelated to the goods identified in the cited registration,
offered extrinsic evidence as to the nature of the registrant’s
goods, evidence which the Board considered.
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contrary to the rule, expressly reiterated by the Board in
Trackmobile, that the likelihood of confusion determination
must be made on the basis of the goods or services as
identified in the application and the registration, rather
than on the basis of what the evidence might show the
applicant’s or registrant’s actual goods or services to be.
See In re Trackmobile, supra, 15 USPQ2d at 1153. See also
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Thus, when the Board considered the applicant’s
extrinsic evidence regarding the registrant’s goods in
Trackmobile, it was not because the registrant’s goods were
identified broadly in the registration, but because the
Board was uncertain as to what the goods identified in the
registration were. That is, the Board did not consider the
extrinsic evidence in order to determine the nature of the
registrant’s particular "light railway motor tractors," but
rather to determine what "light railway motor tractors"
were, in general.
In the present case, by contrast, no extrinsic
evidence is necessary in order to educate the Board as to
what "printing services" are; the term, although broad, is
neither vague nor uncertain. Accordingly, applicant’s
reliance on Trackmobile is misplaced, and applicant’s
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Ser. No. 75/033,628
proffered extrinsic evidence regarding the nature and scope
of the services actually rendered by the registrant is
irrelevant and can be given no consideration.
Likewise, we reject applicant’s contentions that
applicant’s services move in different trade channels than
registrant’s services, and that applicant’s purchasers are
sophisticated. Because no trade channel limitations have
been included in either applicant’s recitation of services
nor in the registration’s recitation of services, we must
presume that applicant and registrant are entitled to offer
their services in all normal trade channels for such
services, and to all normal classes of customers for such
services. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
Furthermore, nothing in this record persuades us that
purchasers of the types of services recited in the
application and in the registration are necessarily
sophisticated purchasers who would be immune to source
confusion when faced with the similar marks and related
services involved in this case. See Refreshment Machinery
Incorporated v. Reed Industries, Inc., 196 USPQ 840 (TTAB
1977).
Finally, applicant’s assertion that it is unaware of
any instances of actual confusion despite over eighteen
years of concurrent use of the marks by applicant and
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registrant does not persuade us that no likelihood of
confusion exists in this case. We cannot determine on this
record that there has been any meaningful opportunity for
actual confusion to have occurred in the marketplace, and
accordingly we cannot conclude that the alleged absence of
actual confusion is entitled to significant weight in our
likelihood of confusion analysis in this case. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992).
For the reasons discussed above, we conclude that
confusion is likely in this case, and that the Trademark
Examining Attorney’s Section 2(d) refusal was proper.
Decision: The refusal to register is affirmed.
E. J. Seeherman
C. E. Walters
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board
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