Inktec Co., Ltd.

Trademark Trial and Appeal Board

May 14, 2002

No. 75531517 (T.T.A.B. May. 14, 2002)

5/14/02
Hearing: Paper No. 19
March 14, 2002 EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

Trademark Trial and Appeal Board
____________

In re INKTEC CO., LTD.
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Serial No. 75/531,517
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William H. Logsdon for INKTEC CO., LTD.

Martha Santomartino, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
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Before Hanak, Quinn and Walters, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

INKTEC CO., LTD. (applicant) seeks to register INKTEC
in the stylized form shown below for “ink cartridges for
computer printers” (Class 2) and “computer peripherals and
computer printers” (Class 9). The intent-to-use
application was filed on August 5, 1998.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

Ser. No. 75/531,517

Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with the mark INKOTECH,
previously registered in typed drawing form for “printing
inks” (Class 2) and “ultraviolet acrylic coating for use on
compact disks, printing paper and as insulation on fiber
optic cable” (Class 17). Registration No. 2,203,121
registered November 10, 1998.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs, and were present at a hearing held
on March 14, 2002.
In any likelihood of confusion analysis, two key,
although not exclusive considerations, are the similarities
of the marks and the similarities of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”)
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Ser. No. 75/531,517

Considering first the marks, we note that marks are
compared in terms of visual appearance, pronunciation and
connotation, if any. In terms of visual appearance, the
two marks are only somewhat similar in that the letters in
applicant’s mark are depicted with some portions in white
and other portions in black. We recognize that the
registered mark is in typed drawing form, and that
therefore we must consider all reasonable manners in which
the registered mark could be depicted. Phillips Petroleum
Co. v. C.J. Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971). Thus, we would have to visualize the registered
mark as being depicted in, for example, all capital
letters, all lower case letters or a mixture of capital and
lower case letters. However, it is not reasonable to
assume that the letters in the registered mark would be
depicted in different colors, as are the letters in
applicant’s mark.
In terms of pronunciation, we find that the letter “O”
in the middle of the registered mark would clearly be
pronounced, and thus would cause the registered mark
(INKOTECH) to be somewhat dissimilar from applicant’s mark
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Ser. No. 75/531,517

INKTEC.
Finally, in terms of connotation, we note that the
Examining Attorney has not contended that either mark has
any connotation. (Examining Attorney’s brief pages 4 and
5). However, both marks suggest “ink technology.”
Nevertheless, this similarity in connotation is outweighed
by the differences in visual appearance and pronunciation.
In sum, applicant’s mark and the registered mark are
by no means identical. There are obvious differences in
visual appearance and pronunciation that would enable even
ordinary consumers to distinguish the two marks.
Turning to a consideration of applicant’s goods and
registrant’s goods, we note that the Examining Attorney has
not even discussed registrant’s “ultraviolet acrylic
coating for use on compact disks, printing paper and as an
insulation on fiber optic cable.” (Examining Attorney’s
brief pages 7 and 8). Rather, the Examining Attorney
argues that there exists a likelihood of confusion
resulting from the contemporaneous use of registrant’s mark
INKOTECH on “printing inks” and applicant’s stylized mark
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Ser. No. 75/531,517

INKTEC on “ink cartridges for computer printers” and
“computer printers.” (Examining Attorney’s brief pages 7
and 8).
The problem with the argument set forth by the current
Examining Attorney is the fact that the prior Examining
Attorney failed to make of record any evidence showing that
even one company manufactures, on the one hand, printing
inks and, on the other hand, ink cartridges for computer
printers and computer printers. To be clear, the prior
Examining Attorney made of record advertisements showing
that large stores such as Staples and Office Depot sold
computer printers, cartridges and pens. Even if we assume
that the reference to “cartridges” is a reference to “ink
cartridges for computer printers,” and even if we assume
that any store that sold pens would sell ink for pens,
there are two problems with this evidence. First, merely
because very large stores carry both applicant’s goods and
registrant’s goods does not mean that the goods are
related. It is common knowledge that today’s very large
stores carry a wide array of goods which are totally
dissimilar. Second, the Examining Attorney has made of
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Ser. No. 75/531,517

record no evidence showing that even these large stores
sell to consumers “printing inks,” the only one of
registrant’s goods discussed by the Examining Attorney.
While “printing inks” might well be sold in bulk to
manufacturers of “ink cartridges for computer printers,”
the purchasers of the “printing inks” would be
sophisticated, professional buyers, namely, the
manufacturers of the “ink cartridges for computer
printers.” Thus, based upon this record, the prior
Examining Attorney has failed to make of record any
evidence showing that there are common purchasers of
“printing inks” and “ink cartridges for computer printers.”
Without such common purchasers, there is no chance for
likelihood of confusion to occur. Electronic Design &
Sales Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388, 1391-92 (Fed. Cir. 1992).
Decision: The refusal to register is reversed.

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