Trelleborg Coated Systems Italy S.p.A.

This Opinion is not a
Precedent of the TTAB
Mailed: September 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Trelleborg Coated Systems Italy S.p.A.
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Serial No. 87199438
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Zachary A. Aria and Bradford C. Craig of Blank Rome LLP,
for Trelleborg Coated Systems Italy S.p.A.

Aaron Rosenthal, Trademark Examining Attorney, Law Office 120,
(David Miller, Managing Attorney).

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Before Kuhlke, Wolfson and Pologeorgis,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Applicant, Trelleborg Coated Systems Italy S.p.A., seeks registration on the

Principal Register of the mark depicted below:

identifying the following goods in International Class 7:
Serial No. 87199438

Components of printing machines, namely printing blankets component
for transfer of ink in offset printing machines, coating plate component
for transfer of UV and varnishing ink in offset printing machines, flexo
mounting sleeve component for flexographic printing machines.1

The Trademark Examining Attorney has refused registration of Applicant’s mark

under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of

likelihood of confusion with the mark:

issued on the Principal Register for “printing inks, toner, filled ink cartridges, filled

toner cartridges” in International Class 2.2

After the Trademark Examining Attorney made the refusal final, Applicant

appealed and requested reconsideration. The appeal resumed after the Examining

Attorney denied the request for reconsideration. Applicant and the Examining

Attorney filed briefs. We affirm the refusal to register.

1 Application Serial No. 87199438 was filed on October 11, 2016, based upon Applicant’s
assertion of a bona fide intent to use of the mark in commerce under Section 1(b) of the
Trademark Act. 15 U.S.C. § 1051(b). The application includes the following color statement
and description of the mark: “The color(s) black, pink, yellow and blue is/are claimed as a
feature of the mark. The mark consists of the stylized word PRINTEC above an ellipse which
includes a pink semicircle to the left of a yellow quadrilateral to the left of a blue triangle.”

2 Reg. No. 4777393 issued on July 21, 2015. The application includes the following color
statement and description of the mark: “The color(s) blue, pink, black and yellow is/are
claimed as a feature of the mark. The mark consists of the word ‘PRINTEC’ in blue lower
case letters with the dot on the letter ‘I’ consisting of four dots, two horizontally adjacent
dots in the colors pink and yellow, respectively, and two vertically adjacent dots in the
colors blue and black, respectively, with the blue and black dots partially overlying the pink
and yellow dots so that the blue and black dots are fully visible while the pink and yellow
dots are partially visible.”

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Serial No. 87199438

I. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section

2(d) on an analysis of all of the probative facts in evidence that are relevant to the

factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ

563, 567 (CCPA 1973) (“DuPont”). We have considered each DuPont factor that is

relevant, and have treated other factors as neutral. See Cai v. Diamond Hong, Inc.,

901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed. Cir. 2018) (quoting In re Mighty Leaf

Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010) (“Not all of the DuPont

factors are relevant to every case, and only factors of significance to the particular

mark need be considered.”)); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d

1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have

evidence, we focus our analysis on those factors we find to be relevant.”).

Varying weights may be assigned to each DuPont factor depending on the evidence

presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98

USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d

1687, 1688 (Fed. Cir. 1993) (“the various evidentiary factors may play more or less

weighty roles in any particular determination”). Two key considerations are the

similarities between the marks and the relatedness of the goods. 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.”); In re

FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).

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Serial No. 87199438

A. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of

Applicant’s and Registrant’s marks in their entireties, taking into account their

appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at

567; Stone Lion Capital v. Lion Capital, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed.

Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,

396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “The proper test is not a side-

by-side comparison of the marks, but instead whether the marks are sufficiently

similar in terms of their commercial impression such that persons who encounter the

marks would be likely to assume a connection between the parties.” Coach Servs. Inc.

v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)

(internal quotation marks omitted); see also Mini Melts, Inc. v. Reckitt Benckiser LLC,

118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089

(TTAB 2016). Consumers may not necessarily encounter the marks in proximity to

one another and must rely upon their “imperfect recollections” over time. In re 1st

USA Realty Professionals, Inc., 84 USPQ2d 1581, 1587 (TTAB 2007).

Both Applicant’s applied-for mark and Registrant’s cited mark comprise the

identical term PRINTEC. Applicant does not contend that the term is weak or merely

descriptive. We find the term to be suggestive and thus inherently distinctive,

recognizing that it suggests a combination of the words “print” and “technology.” In

both Applicant’s and Registrant’s mark, this connotation is present. The marks also

look and sound alike due to the presence of their shared term, PRINTEC.

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Serial No. 87199438

Applicant argues that the additional design features of the mark suffice to

distinguish them and avoid a likelihood of confusion. Although we must consider the

marks in their entireties, there is nothing improper in stating that, for rational

reasons, more or less weight has been given to a particular feature of a mark, provided

the ultimate conclusion rests on a consideration of the marks in their entireties. In

re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Here, we

accord greater weight to the identical literal term in the marks, rather than their

differing design elements, because consumers are more likely to remember the term

PRINTEC than the particular font style, colors, or design elements, and to use the

term PRINTEC to request the goods identified thereby. See In re Viterra Inc., 671

F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the verbal portion of a word

and design mark likely will be the dominant portion”); In re Appetito Provisions Co.,

3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both

a word and a design, then the word is normally accorded greater weight because it

would be used by purchasers to request the goods or services” and “because

applicant’s mark shares with registrant’s mark that element responsible for creating

its overall commercial impression, the marks are confusingly similar”). Additionally,

the color scheme in both marks is essentially the same, i.e., the primary colors used

in color printing: cyan, magenta, yellow, and black. And the designs themselves do

not stand out. The “ellipse which includes a pink semicircle to the left of a yellow

quadrilateral to the left of a blue triangle” in Applicant’s mark serves merely as a

carrier for the term PRINTEC, and the four-dot combination in Registrant’s mark

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Serial No. 87199438

simply replaces the “dot” of the letter “I” in the mark. The fact that Registrant’s mark

displays PRINTEC in blue and Applicant displays it in black is a minor difference

that it unlikely to be retained by a consumer and used to distinguish the marks. “[I]f

the dominant portion of both marks is the same, then confusion may be likely

notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB

1985).

Based upon the above analysis, we find that is more similar

than dissimilar to in appearance, sound, connotation and overall

commercial impression. In view thereof, the DuPont factor of the similarity of the

marks weighs strongly in favor of a finding of likelihood of confusion.

B. The Goods

The second DuPont factor concerns the “similarity or dissimilarity and nature of

the goods or services as described in an application or registration,” Stone Lion

Capital Partners, LP v. Lion Capital LLP, 110 USPQ2d at 1159; Hewlett-Packard Co.

v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys.,

Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.

1990). “This factor considers whether ‘the consuming public may perceive [the

respective goods or services of the parties] as related enough to cause confusion about

the source or origin of the goods and services.’” In re St. Helena Hosp., 774 F.3d 747,

113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting Hewlett-Packard, 62 USPQ2d at

1004).

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Serial No. 87199438

To support a finding of likelihood of confusion, it is not necessary that the goods

be identical or even competitive. It is sufficient that the goods are related in some

manner, or that the circumstances surrounding their marketing are such that they

would be encountered by the same persons in situations that would give rise, because

of the marks, to a mistaken belief that they originate from the same source or that

there is an association or connection between the sources of the goods. In re Thor Tech

Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). The more similar the marks at issue, the

less similar the goods need to be for the Board to find a likelihood of confusion. In re

Shell Oil Co., 26 USPQ2d at 1689; In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB

2001).

In support of the refusal of registration, the Examining Attorney introduced with

the January 27, 2017 first Office Action and September 15, 2017 final Office Action

printouts from third-party websites offering, under the same mark, printing blankets

for offset printing machines and printing inks.3 These include Fujifilm Holdings

America Corp., Atlas Graphic Supply Inc., and Universal Graphic Solutions, as shown

below:

3 Page references to the application record are to the USPTO’s Trademark Status &
Document Retrieval (TSDR) system. References to the briefs, request for reconsideration and
request for reconsideration denial are to the Board’s TTABVUE docket system.

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Serial No. 87199438

• Fujifilm Holdings offers blankets for “coating, web, commercial offset” and
“a complete line of flexo and rotary screen ink ranges specifically for narrow
to medium web printers”:4

4 At www.fujifilmusa.com, attached to September 15, 2017 Final Office Action, TSDR 7-12.

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Serial No. 87199438

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Serial No. 87199438

• Atlas Graphic Supply Inc. offers “printing and coating blankets” and
“environmentally friendly ink from a global supply”:5

5At www.atlasgraphicsupply.com, attached to September 15, 2017 Final Office Action,
TSDR 2-3.

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Serial No. 87199438

• Universal Graphic Solutions offers printing blankets and printing inks:6

6At http://www.universalgraphicsolutions.com/, attached to January 27, 2017 Office Action
at TSDR 25-28.

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Serial No. 87199438

The Examining Attorney argues that this evidence “shows that the goods

identified in the Registered mark, namely, printing inks, and the goods identified as

being offered under Applicant’s mark, namely, printing blankets and printing plates,

are of a kind that emanate from a single source under a single mark.”7 The Examining

Attorney is correct that this evidence demonstrates that third parties offer both

printing blankets and printing ink, but Applicant’s goods are not simply “printing

blankets.”

A reading of both Applicant’s and the Examining Attorney’s briefs, as well as the

evidence submitted in this case, suggests that both Applicant and the Examining

Attorney consider Applicant’s goods to be printing blankets “for” printing machines,

and not printing blankets sold as components “of” printing machines. However, as

recited in the identification of goods, Applicant’s printing blankets are components of

offset printing machines. As such, Applicant’s mark will not serve as the source of

printing blankets per se, but only as part of the finished product, i.e., an offset

printing machine. To this end, the goods have been classified in International Class

7, the class appropriate to printing machines, and not Class 16 (which is for “printers’

blankets, not of textile”) or Class 24 (which is for “printers’ blankets of textile”). TMEP

§ 1402.05(a) (“Components or ingredients sold as part of a finished product are

classified in the class of the finished product, since the components or ingredients

have been incorporated into other finished goods.”). Put another way, according to

7 26 TTABVUE 12.

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Serial No. 87199438

the identification of goods as written, Applicant intends to sell offset printing

machines which display the mark PRINTEC to identify a “blankets component,”

which will be sold as part of the finished product. In such case, Applicant’s specimen

of use (when submitted) must show the mark PRINTEC used on or in connection with

a blanket sold as a component of an offset printing machine, and the mark must

identify the embedded blanket, and not the finished product. Id.; see also In re Sones,

590 F.3d 1282, 93 USPQ2d 1118, 1123 (Fed. Cir. 2009) (specimen “must in some way

evince that the mark is ‘associated’ with the goods and serves as an indicator of

source”); In re Safariland Hunting Corp., 24 USPQ2d 1380, 1381 (TTAB 1992)

(specimen must show “direct association” with identified goods).

Applicant asserts that “[t]he confusion here appears to lie in part in the fact that

the goods ‘printing inks’ are entirely different depending on the context in which such

term is used.”8 In support of this assertion, Applicant submitted pages from its

website and from Registrant’s website,9 purporting to show that Registrant’s inks

“are not used in (and are not compatible with) industrial/commercial printing

equipment, nor are they used in offset printing (or any other type of

industrial/commercial printing) but rather are for use with nonindustrial/non-

commercial printers for office or personal use, such as Hewlett-Packard, Canon, and

Epson desktop printers.”10 In the registration context, however, likelihood of

8 23 TTABVUE 11.
9Submitted with its July 27, 2017 Response to the Examining Attorney’s first Office Action
at TSDR 2-31.
10 March 15, 2018 Request for Reconsideration, 23 TTABVUE 10.

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Serial No. 87199438

confusion is determined by the marks, the goods (or services), and the usages (if any)

disclosed in the application and the cited registration. An applicant may not restrict

the scope of the goods covered in its application or in the cited registration by

argument or extrinsic evidence. Stone Lion Capital Partners, LP v. Lion Capital

LLP, 110 USPQ2d at1162 (citing Octocom Sys., Inc. 16 USPQ2d at 1787 (“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.”). We may not consider Registrant’s goods, identified as “printing

ink” without limitation, to be restricted to inks sold only for use with non-commercial

printers for office or personal use.11

This is an unusual case. Because neither Applicant nor the Examining Attorney

takes the position that Applicant’s goods are offset printing machines with printing

blanket components, the majority of the website evidence is of lesser significance.

However, the evidence does show the complementary nature of the goods, with

printing inks being sold for the purpose of being used with offset printers containing

blankets. For example:

11Applicant argues that because Registrant’s goods are separated in the identification by
commas and not semi-colons, that we must consider them as “items within a particular
category” rather than as “distinct categories.” 23 TTABVUE 15. The deficiency in this
argument is that even placing all the items in the same category does not make them
“products for desktop printers used in homes and offices” only, as Applicant suggests.

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Serial No. 87199438

•
AGFA Graphics offers “offset ink” at https://www.agfagraphics.com:12

12 Attached to January 27, 2017 Office Action at TSDR 10.

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Serial No. 87199438

• Gans Inc. offers inks “geared to the needs of the sheet-fed and web offset
printer”:13

13At www.gansink.com/products/, attached to September 15, 2017 Final Office Action, TSDR
13.

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Serial No. 87199438

• Monarch Color Corp. offers inks designed for “offset printing”:14

If “printing ink” for use in offset printing machines displayed the same or similar

mark as an offset printer containing a printing blanket, relevant purchasers would

likely become confused as to their origin, sponsorship or affiliation. See, e.g., In re

Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);

In re Davia, 110 USPQ2d 1810, 1815 (TTAB 2014); In re Sela Prods., LLC, 107

USPQ2d 1580, 1587 (TTAB 2013) (purchasers likely to encounter both surge

14At www.monarchcolor.com, attached to September 15, 2017 Final Office Action at TSDR
20.

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Serial No. 87199438

protectors, and wall mounts and brackets, during course of purchasing a television,

audio or home theater system). Accordingly, we find on balance that the DuPont

factor of the relatedness of the goods favors a finding of likelihood of confusion.

C. Channels of Trade and Classes of Consumers

The evidence is silent on whether or not the trade channels for these goods and

classes of consumers overlap. On the other hand, we are aided by the presumption

that because the identifications of goods in the cited registration and Applicant’s

application do not recite any limitations as to the channels of trade in which the goods

are offered, these goods are presumed offered in all customary trade channels. See

Citigroup v. Capital City Bank Grp., 98 USPQ2d at 1261; In re Jump Designs LLC,

80 USPQ2d 1370, 1374 (TTAB 2006). The evidence supports a finding that printing

ink is sold for use in offset printers and would be purchased by the same classes of

consumers. We therefore find the DuPont factors of the relatedness of the channels

of trade and classes of consumers slightly favors a finding of likelihood of confusion.

D. Conditions of Purchase

Under the fourth DuPont factor, we consider “[t]he conditions under which and

buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”

DuPont, 177 USPQ at 567. Applicant argues that its customers are members of the

commercial printing industry and as such are highly educated, sophisticated, and

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Serial No. 87199438

knowledgeable in matters pertaining to the printing business.15 Applicant further

argues that its goods are expensive.16

Applicant submitted copies of pages from its website that show Applicant sells

printing blankets17 to “specialists in the graphics industry,”18 but the record does not

provide price points for any of the blankets, or suggest that special expertise is

required for their installation. Thus, the evidence does not support a finding that

consumers of printing blankets exercise a higher degree of care than that of an

ordinary purchaser; none of the evidence even addresses the level of sophistication

required for the purchase of printing blanket components of printing machines.

Considering that the goods identified in the application are “components of printing

machines, namely printing blankets component for transfer of ink in offset printing

machines,” we may presume a certain level of sophistication, since arguably offset

printing machines are expensive items. Nonetheless, there are no limitations to

Registrant’s “printing inks” that would exclude their use in commercial (and thus

expensive) offset printing machines. Moreover, the “memories even of discriminating

purchasers are not infallible.” In re Research and Trading Corp., 793 F.2d 1276, 230

15 23 TTABVUE 17.
16 23 TTABVUE 21.
17 The website pages of record show that Applicant sells printing blankets, but not that
Applicant sells components of printing machines. However, even considering that Applicant’s
goods are offset printing machines with printing blanket components, because there are no
limitations to Registrant’s “printing inks” that would exclude their use in commercial offset
printing machines, the difference is unavailing.
18 July 27, 2017 Response to Office Action at TSDR 4.

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Serial No. 87199438

USPQ 49, 50 (Fed. Cir. 1986), quoting Carlisle Chemical Works, Inc. v. Hardman &

Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).

The fourth DuPont factor is neutral.

E. Conclusion

When we consider the record and the relevant likelihood of confusion factors, and

all of Applicant’s arguments relating thereto, we conclude that consumers familiar

with Registrant’s printing inks offered under its mark would be likely to believe, upon

encountering Applicant’s mark used for its printing blanket components, that the

goods emanated from the same, single source of origin.

Decision: The refusal to register Applicant’s mark is affirmed under Section 2(d)

of the Trademark Act.

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