Paper No. 15
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THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 6, 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 Spicers Paper, Inc.
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Serial No. 75/088,444
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Steven J. Nataupsky of Knobbe, Martens, Olson & Bear, LLP
for Spicers Paper, Inc.
David C. Reihner, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney)
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Before Simms, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Spicers Paper, Inc. has applied to register the mark
SPICERS NORTHWEST PAPER for "commercial printing paper and
envelopes."1
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(d), 15 U.S.C.
1 Application Serial No. 75/088,444, filed April 15, 1998.
Applicant alleges August 11, 1993 as the date of first use of the
mark anywhere and first use in commerce. Applicant has
Ser. No. 75/088,444
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§1052(d), on the ground that applicant's mark, when used on
applicant's goods, so resembles the registered mark
NORTHWEST for "coated and uncoated printing, writing, and
converting paper"2 as to be likely to cause confusion,
mistake, or to deceive.
When the refusal was made final, applicant appealed.
Applicant and the Trademark Examining Attorney have filed
main briefs, and the applicant has filed a reply brief.
Applicant requested an oral hearing, but subsequently
waived that hearing.
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. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). We also consider the other du Pont factors, to the
extent that the record contains relevant evidence
disclaimed the exclusive right to use PAPER apart from the mark
as shown.
2 Registration No. 1,819,925, issued February 8, 1994.
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pertaining thereto. See In re National Novice Hockey
League, Inc., 222 USPQ 638 (TTAB 1984).
Turning first to the question of the similarity or
dissimilarity of the respective goods, we find that
registrant’s "printing" paper encompasses applicant’s
"commercial printing paper" and, to that extent,
applicant’s goods are legally identical to registrant’s
goods. See In re Diet Center Inc., 4 USPQ2d 1975 (TTAB
1987); see also Shunk Manufacturing Company v. Tarrant
Manufacturing Company, 137 USPQ 881 (CCPA 1963).
Furthermore, because the identification of goods in the
cited registration contains no trade channel limitations,
we must presume that the identified goods move in all
normal trade channels for such goods. In re Elbaum, 211
USPQ 639 (TTAB 1981). To the extent that the goods
identified in the registration are legally identical to
applicant’s "commercial printing paper," we must presume
that registrant’s goods move in the same trade channels as
those in which applicant markets its goods, and also that
they are marketed to and purchased by the same classes of
purchasers, including the class of "commercial printers"
asserted by applicant to be the purchasers of applicant’s
goods.
Ser. No. 75/088,444
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We also find, on this record, that applicant’s mark
SPICERS NORTHWEST PAPER is confusingly similar to the
registered mark NORTHWEST. Applicant’s mark incorporates
the registered mark in its entirety, and the additional
elements which are present in applicant’s mark, i.e., its
house mark SPICERS and the generic term PAPER, do not
suffice to distinguish the marks. We are not persuaded by
applicant’s argument that the Trademark Examining Attorney
has improperly dissected applicant’s mark by placing
inordinate emphasis on the shared element NORTHWEST and
insufficient emphasis on applicant’s house mark SPICERS.
The evidence of record in this case simply does not
support applicant’s merely conclusory assertions and
argument that NORTHWEST, as applied to paper products, is a
"weak, geographic designation" which would be viewed as
descriptive of the northwestern United States or of paper
products originating from the northwestern United States.
Applicant, during prosecution of its application, offered
no evidence from dictionaries, gazetteers or other
reference works to support its arguments regarding the
geographic significance of the term NORTHWEST, nor has
applicant submitted with its brief any such evidence of
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which we might take judicial notice.3 There is no evidence
in the record demonstrating any use by third parties of the
term NORTHWEST in connection with paper products.
Additionally, we note that the cited mark NORTHWEST was
registered on the Principal Register without resort to a
showing of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. §1052(f).4 On this record,
NORTHWEST might be deemed, at most, to be a suggestive term
as applied to paper products, and we cannot agree with
applicant's contention that the term should be assigned a
subordinate or inconsequential role in our comparison of
the commercial impressions created by the respective marks.
Nor are we persuaded by applicant's argument that the
3 Our own brief review of two readily-available reference sources
reveals that Webster’s Ninth New Collegiate Dictionary (1990), at
807, defines ’northwest’ as follows:
northwest adv: to, toward, or in the northwest
northwest n: 1 a: the general direction between north and
west b: the point midway between the north and west
compass points 2 cap : regions or countries lying to the
northwest of a specified or implied point of orientation
northwest adj 1: coming from the northwest
2:
situated toward or at the northwest
and that Webster’s New Geographical Dictionary (1984) at pp. 866-
67, does not contain any entry specifically identifying or
referring to the northwestern United States as ’Northwest’.
4 Of course, to the extent that applicant’s arguments and
assertions regarding the geographic significance of NORTHWEST are
offered as an attack on the validity of the cited registration,
we cannot entertain them in this ex parte proceeding. See TMEP
§1207.01(c)(v) and cases cited therein.
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inclusion in applicant’s mark of the house mark SPICERS is
sufficient to distinguish the respective marks in this
case. The legal principles governing our analysis in cases
involving house marks were discussed in In re Christian
Dior, S.A., 225 USPQ 533, 534 (TTAB 1985):
In cases involving the addition of a house-
mark to one of two otherwise confusingly
similar marks, it has been held that such
does not serve to avoid likelihood of
confusion. Rather, such addition may
actually be an aggravation of the likelihood
of confusion as opposed to an aid in
distinguishing the marks so as to avoid
source confusion. See: In re Cosvetic
Laboratories, Inc., 202 USPQ 842 (TTAB 1979);
Key West Fragrance & Cosmetic Factory, Inc.
v. The Mennen Co., 216 USPQ 168 (TTAB 1982)
and cases cited therein. On the other hand,
where there are some recognizable differences
in the asserted conflicting product marks or
the product marks in question are highly
suggestive or merely descriptive or play upon
commonly used or registered terms, the
addition of a housemark and/or other material
to the assertedly conflicting product mark
has been determined sufficient to render the
marks as a whole sufficiently
distinguishable. See: In re Cosvetic
Laboratories, Inc., supra; In re Hill-Behan
Lumber Company, 201 USPQ 246 (TTAB 1978); In
re Champion International Corporation, 196
USPQ 48 (TTAB 1977) and cases cited therein.
Applying these principles to the marks involved in the
present case, and in view of our finding, discussed above,
that NORTHWEST has not been shown to be highly suggestive
or merely descriptive or a play on commonly used or
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registered terms, we find that the addition of applicant’s
house mark SPICERS does not distinguish applicant’s mark
from the registered mark, and that it may well aggravate
the likelihood of confusion.
For the foregoing reasons, we conclude that
applicant’s mark and the cited registered mark are similar
rather than dissimilar when viewed in their entireties, a
fact which weighs in favor of a finding of likelihood of
confusion in this case.
Applicant also asserts that during the four-and-one-
half years in which it has been using its mark, it has not
encountered any instances of actual confusion between its
mark and the registered mark on the part of commercial
printers. However, applicant has not submitted any
evidence as to the extent of its use of its mark in terms
of sales figures, advertising expenditures and geographic
areas, nor do we have any such information regarding the
extent of registrant’s use of registrant’s mark. In these
circumstances, we cannot determine that there has been a
meaningful opportunity for actual confusion to occur in the
marketplace, and accordingly we cannot conclude that the
absence of actual confusion is entitled to any significant
weight in this case. See Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
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Applicant also argues that commercial printers, as
experts in the field of printing paper, are sophisticated
purchasers who are unlikely to be confused. As proof in
support of this contention, applicant relies on the fact
that applicant is unaware of any instances in which its
commercial printer customers have been actually confused as
a result of applicant’s and registrant’s concurrent use of
their marks.5 However, even if commercial printers might be
more sophisticated and knowledgeable in the field of
printing paper than ordinary consumers would be, we are not
persuaded that their sophistication and knowledge extends
to the field of trademarks, or that they necessarily would
be immune to source confusion when faced with the
concurrent use, on identical goods, of the confusingly
similar marks involved in this case. See Refreshment
Machinery Incorporated v. Reed Industries, Inc., 196 USPQ
840, 843 (TTAB 1977).
In short, we conclude from the evidence of record with
respect to the relevant du Pont factors that a likelihood
of confusion exists in this case. Purchasers familiar with
5 Applicant has cited no authority for the proposition that an
absence of actual confusion is probative evidence of the
sophistication of purchasers. Regardless, as discussed above,
the absence of actual confusion is of little consequence in this
case because it has not been shown that there has been any
meaningful opportunity for actual confusion to have occurred in
the marketplace.
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NORTHWEST paper, upon encountering paper sold under the
mark SPICERS NORTHWEST PAPER, would be likely to assume
that a source connection or other affiliation exists.
Decision: The refusal to register is affirmed.
R. L. Simms
B. A. Chapman
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board
