Sun Chemical Corporation

Trademark Trial and Appeal Board

Mar 16, 2011

No. 77142982 (T.T.A.B. Mar. 16, 2011)

Mailed:
March 16, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sun Chemical Corporation
________

Serial No. 77142982
_______

William D. Jackson and Joseph T. Kucala, Jr. of Norvell IP
LLC for Sun Chemical Corporation.

Maureen Dall Lott, Trademark Examining Attorney, Law Office
117 (J. Brett Golden, Managing Attorney).
_______

Before Walters, Bergsman and Wellington,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sun Chemical Corporation (“applicant”) has appealed
from the final refusal of the Trademark Examining Attorney
to register SMARTCOLOUR, in standard character form, as a
trademark for goods ultimately identified as set forth
below.
Computer software for use in the field
of graphic arts for image processing,
document and color management, document
creating, database management, and
document, color and image processing;
computer programs for color measuring
and matching for use in the field of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77142982
2
graphic arts; all of the foregoing
excluding computer software comprised
of formulas and color information for
use in choosing or matching vehicle
paint, in Class 9.

The Trademark Examining Attorney refused to register
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 is likely to cause confusion with the registered mark
COLORSMART, in typed drawing form, for “computer software
for enhancing print quality,” in Class 9.1
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d

1 Registration No. 2057747, issued April 29, 1997; renewed.
Registrant also owns Registration No. 1625722 for the mark
COLORSMART, in typed drawing form, for “computer programs for use
in the printing and print reproduction industries,” in Class 9.
This registration was also cited as a bar to the registration or
applicant’s mark. Registration No. 1625722 issued on December 4,
1990. Its second renewal and Section 8 declaration of use, due
December 4, 2010, have not been filed. The six month grace
period for the renewal application and declaration of use expires
June 4, 2011. The Board’s practice is to suspend the appeal when
the due date for filing a Section 8 affidavit and/or application
for renewal falls on or before the date the case is assigned for
decision. However, since the goods in Registration No. 1625722
are broader than the goods set forth in Registration No. 2057747
and, as discussed below, the goods in Registration No. 2057747
encompass applicant’s goods, our decision regarding likelihood of
confusion for both of the cited registrations would be the same.
Ser No. 77142982
3
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 and/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”).
A. The similarity or dissimilarity and nature of the
goods described in the application and registration,
the established likely-to-continue channels of trade
and classes of consumers.

It is well settled that likelihood of confusion is
determined on the basis of the goods as they are identified
in the application and in the cited registration. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993); and In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006).
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 the
sales of goods are directed. (Emphasis
added).

Ser No. 77142982
4
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also In re Shoemaker’s Candies, Inc., 222 USPQ 326, 328
(TTAB 1984); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981),
citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139
(CCPA 1958). Where the goods in the application at issue
and/or in the cited registration are broadly identified as
to their nature and type, such that there is an absence of
any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is presumed
that the scope of the identification of goods encompasses
not only all the goods of the nature and type described
therein, but that the identified goods are offered in all
channels of trade which would be normal therefor, and that
they would be purchased by all potential buyers thereof.
In re Jump Designs, LLC, 80 USPQ2d at 1374; In re Elbaum,
211 USPQ at 640. Further, it is not necessary that the
respective goods be identical or competitive, or even that
they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods are related in some manner, and/or
that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
Ser No. 77142982
5
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. In re Jump Designs, LLC, 80 USPQ2d at 1374;
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
The registrant’s “computer software for enhancing
print quality,” is broad enough to encompass applicant’s
“computer software for use in the field of graphic arts for
image processing, document and color management, document
creating, database management, and document, color and
image processing; computer programs for color measuring and
matching for use in the field of graphic arts.” According
to registrant’s website, the COLORSMART program
“automatically adjusts and optimizes color settings.” It
is used for text, graphics and photographs.2 Thus,
registrant’s computer software for enhancing print quality
may be used in the field of graphic arts for image
processing, document and color management; that is, image
processing and document and color management may be
improved by enhanced print quality. Also, computer
software for enhanced print quality may include color
measuring and matching for use in the field of graphic arts
because registrant’s software adjusts color settings.

2 Hp.com attached to applicant’s April 17, 2008 Response.
Ser No. 77142982
6
Because the description of goods in the cited
registration is broad enough to encompass the description
of goods in the application, we find that the channels of
trade and classes of consumers are the same. Cf. 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 travel in the same channels of trade,
and be sold to the same class of purchasers”).
Applicant contends that applicant’s computer software
is distinguishable from the registrant’s computer software
because (i) they have a different purpose and focus and
(ii) they are used in different stages of production.3 The
problem with applicant’s argument is that it is based on
extrinsic evidence concerning the actual use of the marks,
not the description of the computer software in the
application and registration. We may not resort to

3 Applicant’s Brief, pp. 17-18.
Ser No. 77142982
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extrinsic evidence to restrict the scope of the goods in
the application and/or registration. In other words, the
facts regarding the different purpose, focus and stages of
production for the software products at issue are not
reflected in the description of goods.
B. Degree of consumer care.
Applicant, without any evidentiary support, argues
that its prospective customers exercise a high degree of
care prior to licensing applicant’s software.
Applicant’s goods and services are of
the type sold to commercial firms or
consumer packaged goods companies and
their supply chain, not individual
consumers, for use in connection with
sophisticated and expensive printing
applications. Applicant’s goods and
services are sold through their own
sales force, which reinforces the
deliberate purchasing process
undertaken by purchasers. Applicant’s
customers likely develop long-term
relationships with their salespersons
and are not likely to make a purchase
on a whim. … Moreover companies (not
individuals) are likely the only ones
that afford the software license in
excess of several thousand dollars per
year. Given the technical expertise
required and specialized focus on
Applicant’s products and services,
consumers will exercise a considerable
degree of care prior to making a
purchase.

Registrant’s software products are used
by individual computer users in
connection with printer applications.
Consumers will make careful, deliberate
Ser No. 77142982
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purchasing decisions to ensure that the
software is compatible with their
printers, and will not purchaser such
goods on impulse.4

Applicant’s argument is based on assertions by counsel
regarding prospective customers and channels of trade that
are not reflected by a restriction or limitation in the
description of goods. Accordingly, we must assume that
applicant’s goods may be offered for sale to all of the
usual consumers and found in the all of the normal channels
of trade for the identified goods. If the goods are of the
type that may vary from relatively low-priced items to
expensive items, we may assume the degree of care exercised
by potential customers for such goods will likewise vary.
See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986) (evidence that relevant goods are expensive wines
sold to discriminating purchasers must be disregarded given
the absence of any such restrictions in the application or
registration). Nevertheless, we recognize that the
purchase of software for enhancing print quality or
software for image processing in the field of graphic arts
is an infrequent acquisition for which the purchaser will
have a focused need and to which the purchaser will direct
his/her complete attention.

4 Applicant’s Brief, pp. 20-21.
Ser No. 77142982
9
D. The number and nature of similar marks in use on
similar goods.

Applicant argues that the cited registration exists in
a crowded field and is entitled to only a narrow scope of
protection. In support, applicant references 919
registrations for marks incorporating the word “Smart” for
products in connection with software in Class 9 and 196
registrations that include the word “Color” or “Colour” in
connection with software in Class 9. However, applicant
did not reference any registrations with both the words
“Smart” and “Color” or “Colour” for software in Class 9.
Furthermore, absent evidence of actual use, third-
party registrations have little probative value because
they are not evidence that the marks are in use on a
commercial scale or that the public has become familiar
with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476
F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing
public is not aware of registrations reposing in the U.S.
Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party
(sic) registration evidence proves
nothing about the impact of the third-
party marks on purchasers in terms of
Ser No. 77142982
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dilution of the mark in question or
conditioning of the purchasers as their
weakness in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.
While third-party registrations may be used in the
manner of a dictionary to show that a mark or a portion of a
mark is descriptive or suggestive of goods, registrations
comprising only one of the two terms comprising the
composite mark do not prove that registrant’s COLORSMART
mark is so weak and diluted that applicant’s application for
the term SMARTCOLOUR is sufficient to distinguish the marks
if they are used in connection with related products.
E. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
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.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks,
we are mindful that where, as here, registrant’s software
encompass applicant’s software, the degree of similarity
Ser No. 77142982
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between the marks does not have to be as great as where
there is a recognizable disparity between the products.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real
Estate One, Inc. v. Real Estate 100 Enterprises Corp., 212
USPQ 957, 959 (TTAB 1981); In re Tender Tootsies Limited,
185 USPQ 627, 628-629 (TTAB 1975).
Furthermore, 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 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).
Applicant’s mark is SMARTCOLOUR, while the mark in the
cited registration is COLORSMART. The marks are obviously
similar because they are composed of the same terms “Smart”
and “Color” or “Colour.” The difference in the spellings
of “color” and “colour” is inconsequential and is not a
distinguishing feature of the marks. See In re South Bend
Ser No. 77142982
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Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB
1983) (“Lil’ Lady Buggy” for toy carriages is similar to
“Little Lady” for dolls and doll clothing); In re
Strathmore Products, Inc., 171 USPQ 766, 768 (TTAB 1971)
(GLISTEN for liquid furniture polish is similar to GLISS’N
for household detergent); A. G. Spalding & Bros., Inc. v.
Roller Derby Skate Corp., 127 USPQ 62, 63 (TTAB 1960) (AIR
FLYTE for ice skates, and bowling, football and baseball
shoes is similar to AIR-FLITE for basketballs and golf
balls].
While there is obviously a difference between the
marks in view of the word elements being reversed (i.e.,
SMARTCOLOUR versus COLORSMART), we are not persuaded that
this is sufficient to distinguish the marks especially in
light of the similar description of goods. While applicant
has cited a number of cases in which a reversal of elements
in the marks has resulted in a finding of no likelihood of
confusion, the examining attorney has referenced similar
situations in which a likelihood of confusion has been
found. We will not burden this opinion by discussing all
of the cases cited by applicant and the examining attorney,
except to note that cases involving the transposition of
parts of the marks have reached different conclusions based
on the individual facts of the case.
Ser No. 77142982
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Applicant has pointed out that the Trademark Office
has registered the mark SMART COLOUR for, inter alia, “hair
care preparations … shampoo, conditioner” (Registration No.
3570827) over the mark COLOR SMART for, inter alia, “hair
care preparations … shampoos, conditioners” (Registration
NO. 3066370). In responding to a Section 2(d) refusal to
register, the SMART COLOUR applicant made the argument
below which applicant in this case has adopted.5
[T]he connotative differences between
SMART COLOUR and COLOR SMART are
striking. Applicant’s SMART COLOUR
connotes a color that is smart – in
more ways than one. The applicant’s
mark connotes a sense of intelligence,
i.e., that use of the applicant’s
product is an intelligent choice, in
much the same way that a “smart
investment” is a shrewd investment.
The applicant’s mark also connotes a
sense of stylishness or elegance in
dress or appearance – a sense of being
cool and hip. Registrant’s COLOR SMART
mark, in contrast, is a stark
imperative instructing, indeed,
commanding the prospective purchaser to
color smartly. There is a double
entendre present in applicant’s mark
that is wholly absent from the
registrant’s mark. (Emphasis in the
original).6

Consistent with this analysis, applicant contends that
its mark, SMARTCOLOUR, “creates a commercial impression of

5 Applicant’s Brief, pp. 13-15.
6 Applicant’s July 10, 2009 Response.
Ser No. 77142982
14
achieving the end color result, i.e., a wise color choice
that is generated by color matching products and services.”7
On the other hand, registrant’s mark, COLOR SMART, “creates
a commercial impression of computer software that is
‘smart’ about the actual printing of color on paper.”8 The
examining attorney disagrees arguing that “an average
purchaser [encountering either mark] would be left with the
general impression of being intelligent or ‘smart’
regarding color.”9
We note that the word “smart” has several meanings.
“Smart” may be defined as follows:
1. “Socially elegant; sophisticated or fashionable”;
2. “Of, or relating to, or being a highly automated
device, especially one that imitates human
intelligence”; and,

3. “Having or showing quick intelligence or ready
mental capability.”10

When applied to software in the field of graphic arts
for document and color management, applicant’s mark

7 Applicant’s Brief, pp. 9-10.
8 Applicant’s Brief, p. 9.
9 Examining Attorney’s Brief, pp. 4-5.
10 Random House Webster’s Unabridged Dictionary, p. 1803 (2nd ed.
2001). See also The American Heritage Dictionary of the English
Language (4th ed. 2000) (intelligent); and Dictionary of Computer
Words, p. 259 (1995) defining “smart” as “designating a program
that performs correctly in a wide variety of complicated
circumstances without having to be explicitly instructed by the
user. A program that is able to anticipate information that will
next be requested from a disk is said to be smart software.”
Ser No. 77142982
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SMARTCOLOUR denotes and connotes a fashionable or elegant
color. It may also engender the commercial impression of
automated color selection or management. When applied to
software for enhancing print quality, the registrant’s mark
COLORSMART denotes and connotes intelligent color and
management. It may also engender the commercial impression
of automated color management.
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
F. Balancing the factors.
In view of our findings that the description of goods
in the cited registration encompass the description of
goods in the application, the similarity of the channels of
trade and classes of consumers, and the similarity of the
marks, we find that applicant’s mark SMARTCOLOUR for
applicant’s software in the field of graphic arts for
document, color and image processing so resembles the mark
COLORSMART for software for enhancing print quality as to
be likely to cause confusion.
In reaching the conclusion that applicant’s mark is
likely to cause confusion with the previously registered
mark as discussed above, we recognize that the individual
words “Smart” and “Color” or “Colour” forming the composite
Ser No. 77142982
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marks are suggestive. We are also mindful that the
software at issue is not an impulse purchase. To the
extent that these factors raise doubts as to the likelihood
of confusion, any such doubt must be resolved in favor of
the registered mark. In re Hyper Shoppes, 837 F.2d 463, 6
USPQ2d 1025, 10025 (Fed. Cir. 1988); In re Martin’s Famous
Pastry Shoppe, Inc., 221 USPQ 364, 367 (TTAB 1984).
Decision: The refusal to register is affirmed.