The INX Group, Ltd.

Trademark Trial and Appeal BoardFeb 6, 2012

No. 77899445 (T.T.A.B. Feb. 6, 2012)

Mailed: February 6, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re The INX Group, Ltd. ________ Serial No. 77899445 _______ Jeffrey T. Baravetto of Drinker Biddle & Reath LLP for The INX Group, Ltd. Elizabeth A. Hughitt, Trademark Examining Attorney, Law Office 111 (Robert L. Lorenzo, Managing Attorney). _______ Before Quinn, Kuhlke and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: The INX Group, Ltd. (applicant) filed an intent-to- use application for the mark EVOLVE ADVANCED DIGITAL SOLUTIONS and design, shown below, for the following goods: Printing ink products, namely, inks, coating and varnishes, in Class 2; and THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77899445 2 Printing machines for commercial or industrial use, in Class 7. Applicant disclaimed the exclusive right to use the term “Advanced Digital.” The examining attorney refused registration under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that applicant’s mark, when used in connection with ink products and printing machines, so resembles the registered mark EVOLUTION, in typed drawing form, for the goods and services set forth below, as to be likely to cause confusion.1 Printing presses for offset printing, and parts thereof, mechanical printing units, inking units, and dampening units, mechanical paper roll change- over machines, drives belonging thereto and parts thereof, mechanical printing machines for the illustration and/or erasure of printing forms, and parts thereof, in Class 7; Computerized image data transmission apparatuses; control and monitoring devices for machine or equipment readable data carriers; software for the printing technology and for printing presses, in Class 9; and Installation, maintenance and repair services for printing presses, mechanical printing units, inking units, and dampening units, mechanical paper roll change-over machines and mechanical printing machines, and for 1 Registration No. 2824970 issued march 23, 2004; Sections 8 and 15 affidavits accepted and acknowledged. Serial No. 77899445 3 computerized image data transmission apparatus and their controls, Class 37. Our determination of likelihood of confusion 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. 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 the marks and the similarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). A. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We turn first to the du Pont 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., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 Serial No. 77899445 4 (TTAB 1987). In analyzing the similarity or dissimilarity of 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 overall commercial impression so that confusion as to the source of the goods 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 1835, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). While marks must be compared in their entireties, it is not improper to accord more or less weight to a particular feature of a mark. In re National Data Corp., 753 F.2d 1056, 24 USPQ2d 749, 751 (Fed. Cir. 1983). In the case of applicant’s mark, the word “Evolve” is the dominant part of the mark as illustrated by its large size and stylized lettering. The term “Advanced Digital Solutions” appearing below the word “Evolve” is informational in nature advising consumers to “check out our advanced product.”2 (Emphasis in the original). 2 Applicant’s September 1, 2010 response, p. 5. Serial No. 77899445 5 As noted above, applicant disclaimed the exclusive right to use the term “Advanced Digital” pursuant to the requirement by the examining attorney on the ground that the term “Advanced Digital” is merely descriptive. Under such circumstances, disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533- 34 (Fed. Cir. 1997); In re Nat’l Data Corp., 224 USPQ at 752. Hence, it is appropriate that we should give greater weight to the leading, dominant word, EVOLVE in determining whether there is a likelihood of confusion herein. Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 695 (CCPA 1976) (“The issue of whether a portion of a mark is dominant turns on the facts of each case”); and In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987) (“applicant conceded the common, descriptive nature of the word ‘originals’ as applied to apparel by disclaiming it”). “Evolution” is defined, inter alia, as “something evolved” or “a process of change in a certain direction: Unfolding.” Synonyms include elaboration and development.3 “Evolve” is defined, inter alia, as a verb meaning “to 3 Merriam-Webster online dictionary (merriam-webster.com) attached to the September 28, 2010 Office Action. Serial No. 77899445 6 produce by natural evolutionary processes” or “to undergo evolutionary change.” Synonyms include elaborate, develop, and unfold.4 “Evolution” and “evolve” are derived from the same root: “evolution” is the noun for development or change and “evolve” is the verb to develop or change. Thus, they have a similar meaning and engender a similar commercial impression (i.e., something undergoing a change). In this regard and as discussed above, the informational term “Advanced Digital Solutions” highlights and/or emphasizes the word “Evolve.” Also, the stylized lettering for the word “Evolve” is not so prominent as to affect or change the commercial impression created by the word “Evolve” alone. To the extent that a consumer familiar with registrant’s “software for the printing technology and for printing presses” would encounter applicant’s mark, the term “Advanced Digital Solutions” creates an association with registrant’s mark EVOLUTION and its software for the printing technology and for printing presses. “Advanced Digital Solutions” creates the commercial impression of a highly developed electronic process (or as applicant argued in a response to an Office Action, “our advanced product”). Thus, rather than serve to distinguish EVOLUTION from 4 Id. Serial No. 77899445 7 EVOLVE, the term “Advanced Digital Solutions” proposed for use by the applicant emphasizes the similarities of those words. With respect to the appearance of the marks, registrant’s mark is registered in typed drawing form; therefore, it is not limited to any special form or style as displayed on or in connection with printing presses, mechanical printing units and mechanical printing machines. When a mark is presented in typed drawing form, the Board must consider all manners in which a party could depict the mark. In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007), citing Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971) (“we must not be misled by considering [applicant’s] mark only in its printed or typewritten form, with all the characters being of equal height.”). Thus, registrant’s mark could be displayed in a stylized format similar to the stylized format adopted by applicant. Despite the fact that there are differences in the marks, overall they convey the same commercial impression, and the similarities in appearance, sound, meaning and commercial impression shared by the words “Evolution” and “Evolve” in both marks outweigh the differences between the marks. In view of the foregoing, we find that Serial No. 77899445 8 applicant’s mark EVOLVE ADVANCED DIGITAL SOLUTIONS and design is similar to the mark EVOLUTION in the cited registration in terms of appearance, sound, meaning and commercial impression. B. The similarity or dissimilarity and nature of the goods, channels of trade and classes of consumers. The scope of the registration applicant seeks is defined by the description of goods in the application (and not by its actual or intended use). It is this description [seems redundant]that we must look to in determining applicant’s right to register: 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 sales of the goods are directed. Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likewise, in considering the scope of the cited registration, we look to the registration itself, and not to extrinsic evidence about the registrant’s actual goods, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). Serial No. 77899445 9 Applicant has applied to register its mark for “printing machines for commercial or industrial use,” in Class 7, and the cited mark is registered for, inter alia, “printing presses for offset printing,” “mechanical printing units,” and “mechanical printing machines for the illustration and/or erasure of printing forms,” also in Class 7. Applicant’s broad description of goods, “printing machines,” encompasses registrant’s “printing presses,” “mechanical printing units” and “mechanical printing machines.” In view thereof, applicant’s Class 7 description of goods and registrant’s Class 7 description of goods are, in part, legally identical. Because the Class 7 goods described in the application and the cited registration are in part legally identical, we must presume that the channels of trade and classes of purchasers are the same. See 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 Serial No. 77899445 10 travel in the same channels of trade, and be sold to the same class of purchasers”). Furthermore, because there are no limitations as to channels of trade or classes of purchasers in the description of goods in the cited registration or applicant’s application, it is presumed that registrant’s printing machines and applicant’s printing presses, mechanical printing units and mechanical printing machines move in all channels of trade normal for those goods, and that they are available to all classes of purchasers for those goods. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Accordingly, we cannot give any weight to applicant’s argument that the goods move in different channels of trade and are sold to different classes of consumers.5 See Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”). With respect to the refusal regarding applicant’s “printing ink products, namely, inks, coating and 5 Applicant’s Brief, pp. 4-5. Serial No. 77899445 11 varnishes,” in Class 2, the examining attorney submitted numerous use-based, third-party registrations for printing ink, and printing presses and mechanical printing units and machines to show that these products are related. Third- party registrations which individually cover a number of different goods that are based on use in commerce may have some probative value to the extent that they serve to suggest that the listed goods are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations listed below are representative.6 Mark Reg. No. Goods/Services CITRONEX 3589667 Printing ink; ink jet printing machines for commercial or industrial use NASSENGER 3782157 Ink and ink cartridges for printing machines for textiles; printing machines for textiles RYONET 3653912 Silk screen printing inks; silk screen printing machines DURST 3763281 Printing inks; printing machines for commercial or industrial use TEXPRESS 3348595 Ink for printing machines; printing machines 6 We have not included the entire description of goods for each of the registrations. Only the goods of the type described in both applicant’s application and registrant’s registration are listed. Serial No. 77899445 12 Logic dictates that a consumer and user of printing machines will also purchase and use ink and that, therefore, those goods move in the same channels of trade and are sold to the same classes of consumers. C. Balancing the factors. Because the marks are similar, the goods are legally identical and otherwise closely related, and we must presume that the goods move in the same channels of trade and are sold to the same classes of consumers, we find that applicant’s mark EVOLVE ADVANCED DITIGAL SOLUTIONS and design, for “printing inks” and “printing machines,” so resembles the mark EVOLUTION, for printing presses, mechanical printing units, and mechanical printing machines, as to be likely to cause confusion. Decision: The refusal to register is affirmed.