Akzo Nobel Coatings International B.V.

Trademark Trial and Appeal Board

Sep 18, 2008

No. 79031781 (T.T.A.B. Sep. 18, 2008)

Mailed:
18 September 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Akzo Nobel Coatings International B.V.
________

Serial No. 79031781
_______

Louis A. Morris, Esq. for Akzo Nobel Coatings International
B.V.

Katherine Connolly, Trademark Examining Attorney, Law
Office 101 (Ronald R. Sussman, Managing Attorney).
_______

Before Drost, Taylor, and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 19, 2006, applicant, Akzo Nobel Coatings
International B.V., filed an application to register the
mark FLEXXPRESS in standard character form on the Principal
Register for goods ultimately identified as:
Industrial coatings, paints, primers and inks to be
used on plastic substrates in Class 2.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 79031781
2
Industrial machines for transfer printing; membranes,
in the nature of silicones, for industrial machines
for transfer printing in Class 7.1

The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a registration for the mark FLEXPRESS
(standard character drawing) for high speed flexographic
printing machines with variable repeat lengths for printing
photographic quality images on continuous webs used for
packaging of consumer goods in Class 7.2
When the refusal was made final, applicant filed a
request for reconsideration and this appeal.
In cases involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in

1 Serial No. 79031781. The application is an extension of
protection filed under the provision of Section 66(a) of the
Trademark Act. 15 U.S.C. § 1141f(a).
2 Registration No. 2893640 issued October 12, 2004.
Ser No. 79031781
3
the essential characteristics of the goods [or services]
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We begin by looking at the “first DuPont factor
[which] requires examination of ‘the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). In this
case, the marks are FLEXXPRESS and FLEXPRESS. They are
both displayed in standard character form so the only
difference in the marks is the extra “X” in applicant’s
mark. It is difficult to discern any difference in
pronunciation of the marks as a result of this difference.
Also, their meanings would likely be the same because the
marks would be viewed as the same combination of the terms
FLEX(X) and PRESS. In addition, the extra “X” in
applicant’s mark would create only a minor difference in
appearance and commercial impression. See, e.g., In re
Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985)
(“Moreover, although there are certain differences between
the [marks’ CAYNA and CANA] appearance, namely, the
Ser No. 79031781
4
inclusion of the letter ‘Y’ and the design feature in
applicant’s mark, there are also obvious similarities
between them. Considering the similarities between the
marks in sound and appearance, and taking into account the
normal fallibility of human memory over a period of time (a
factor that becomes important if a purchaser encounters one
of these products and some weeks, months, or even years
later comes across the other), we believe that the marks
create substantially similar commercial impressions”).
Next, we will consider the relationship between the
goods. In this case, registrant’s goods are high speed
flexographic printing machines with variable repeat lengths
for printing photographic quality images on continuous webs
used for packaging of consumer goods. Applicant’s goods
are industrial coatings, paints, primers and inks to be
used on plastic substrates in Class 2 and industrial
machines for transfer printing; membranes, in the nature of
silicones, for industrial machines for transfer printing in
Class 7. The examining attorney argues that: “Both
applicant and registrant have identified printing
machines.” Brief at 5. The examining attorney points to
numerous Internet printouts that “show that different types
of printing machines are offered for sale through the same
channels of trade and are produced and sold under the same
Ser No. 79031781
5
mark.” Brief at 6. Some of these printouts show that
there is a relationship between various types of printing
machines such as thermal transfer printing and flexographic
printing machines (emphasis added).
Rather than force flexographic systems out of the
market thermal-transfer printers may just end up
partnering with them. Use of the two systems may
allow companies to get the best of both worlds a low-
cost, easy-to-operate flexographic system for
producing high-quality standard information.
http://desktoppubabout.com

UniTherm is designed for pressure-sensitive thermal
transfer applications that require fast flexographic
pre-printing and matrix stripping. UniTherm Basic is
designed for pressure sensitive thermal transfer
applications that require no conventional pre-printing
and is a good choice for high-fidelity bar code
printing on blank labels.
PackagePrinting, April 2006

Brady operates state-of-the-art flexographic printing
equipment for projects requiring four color process or
up to six colors. We print on a variety of materials
including woven and non-woven backing, Tyvek, films,
foams and label stock. In addition, we offer inkjet
and thermal transfer printing for barcode and variable
information.
www.bradydiecut.com

VisionMark uses a wide variety of thermal transfer
printers with different capacities and functions. In
addition, VisionMark is able to [use] thermal transfer
printing … in conjunction with hot stamp printing and
flexographic printing for unique designs and
constructions.
www.visionmark.com

“We were focused on labor reduction and adding
capacity,” says Thoman, “so we started taking a
serious look at thermal-transfer printing.” There was
one negative aspect of thermal-transfer printing, says
Thoman. The cost of the thermal-transfer ribbon.
Ser No. 79031781
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However, the benefits of this printing method
outweighed the ribbon costs. After weighing the pros
and cons of flexographic and thermal-transfer printing
methods, Thoman chose Greydon’s S 107 thermal-transfer
printer.
www.healthcare-packaging.com

The evidence also shows that inks are used for
transfer and flexographic printing from the same source or
sold in the same channels of trade with various printing
machines. www.dfmg.com (“INTRATHERM® disperse dyes are
recommended for inks used in heat transfer printing of
polyester and other synthetic fibers and selected nonwoven
materials. Gravure, Lithographic and Flexographic
Printing: INTRATHERM® disperse dyes are noted for their
brightness, fastness properties and compatibility as
shading components and are also recommended for inks used
in gravure, lithographic and flexographic printing”);
www.decortechgroup.com (Screen printing & pad printing inks
and various printers); www.inkcups.com (Pad printing ink,
screen printing ink, pad printing machines, screen printing
supplies and equipment); and www.lawsonsp.com (screen
printing equipment and plastisol ink).
More generally, the examining attorney has submitted
evidence that shows printing machines of various types
originating from the same source or being sold in the same
channels of trade. See www.decortechgroup.com (pad
Ser No. 79031781
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printing equipment, screen printing solutions, direct to
garment digital press, heat transfer presses);
www.pannier.com (code printers, dot & stripe printers,
flexographic printers, ink jet printers, printers for pipe
& extruded products, differential tinplate printers);
www.packaging-technology.com (“Our product range includes
rotogravure and flexographic printing presses”);
www.allproducts.com/machine/gruger (“We also provide
relevant technical support to our customers, and solve
problems, for instance Pad Printing, Screen Printing, Heat
Transfer Printing, Aerial Dye Transfer Printing, Water
Covering Transfer Printing…”); www.atlasscreensupply.com
(cap printers, transfer presses, manual presses, automatic
presses, cylinder printers); and www.mascoprint.co.uk
(“Manufacturers of screen print presses and ancillary
equipment, and suppliers of pad printing machines, inks,
consumables… silk screen manufacture and stenciling
services”).
Applicant argues that there “is no reason to believe
that paints, primers and inks with which the instant mark
is used, could even be employed for use with the machines
with which FLEXPRESS is used.” However, the evidence
convinces us that prospective customers of applicant’s and
registrant’s printing machines and applicant’s inks are
Ser No. 79031781
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likely to assume that there is some relationship between
the goods in this case. We point out that:
In order to find that there is a likelihood of
confusion, it is not necessary that the goods or
services on or in connection with which the marks are
used be identical or even competitive. It is enough
if there is a relationship between them such that
persons encountering them under their respective marks
are likely to assume that they originate at the same
source or that there is some association between their
sources.

McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001).
Here, the evidence shows that flexographic printing
machines and transfer printing machines are used together
or as substitutes. Various sources sell different printing
machines and inks and the same customers could encounter
applicant’s and registrant’s goods identified by the marks
at issue here. Therefore, we conclude that these goods are
related.
However, applicant has one additional argument that
needs to be addressed:
To eliminate cause for doubt, with regard to
likelihood of confusion, applicant has suggested to
the examiner that the goods[’] descriptions in classes
002 and 007 be limited by adding the expression “not
for uses related to packaging of consumer goods.”
Since the goods[’] description for FLEXPRESS is
specifically limited to packaging of consumer goods,
the respective goods would clearly travel in different
channels of trade and be seen by different classes of
Ser No. 79031781
9
customers. The same consumers would not encounter the
two marks and there could be no mistaken belief that
the goods originate from the same source.

Brief at 5. See also Request for Reconsideration at 3-4.
The examining attorney rejected the proposed amendment
and argues that:
The limitation of a particular application of the
goods will not eliminate the confusion as to whether
the goods originate from a common source because, as
indicated above and demonstrated in the previously
attached evidence, different types of printing
machines and printing coatings, paints, primers and
inks are sold under the same mark as well as through
the same channels of trade.

Furthermore, the evidence of record illustrates that
plastic substrates, such as those with which
applicant’s coatings, paints, primers and inks are
used, may, in fact, be used in flexographic printing.
Thus, applicant’s coatings, paints, primers and inks
necessarily include those that are used with
flexographic printing machines such as registrant’s.

Brief at 6-7.

We agree with the examining attorney that the addition
of this limitation would not result in the goods being
unrelated. The evidence shows that these goods, even with
applicant’s proposed limitation, are sold in broad channels
of trade where the goods of applicant and registrant would
be sold together. Furthermore, prospective purchasers
would include printing operations that would offer multiple
printing services. These purchasers would need a variety
of printing machines to offer services that would include
Ser No. 79031781
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printing of packaging for consumer goods as well as other
types of printing for packaging.
We note that these goods may be expensive and that the
purchasers may be professionals. However, even
professionals are likely to be confused when they encounter
the marks FLEXXPRESS and FLEXPRESS on printing machines and
inks. In re Total Quality Group Inc., 51 USPQ2d 1474, 1477
(TTAB 1999) (“We recognize applicant's attorney's point
that its software is expensive and that purchasers of it
are likely to be sophisticated. Suffice it to say that no
evidence in support of these assertions was submitted. In
any event, even careful purchasers are not immune from
source confusion”). See also In re Hester Industries,
Inc., 231 USPQ 881, 883 (TTAB 1986) (“While we do not doubt
that these institutional purchasing agents are for the most
part sophisticated buyers, even sophisticated purchasers
are not immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”).
When we balance the du Pont factors in this case, we
conclude that confusion is likely. The marks are virtually
identical except for applicant’s additional “X,” which does
not significantly change the appearance, pronunciation,
meaning, or commercial impression of the marks.
Ser No. 79031781
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Furthermore, the goods, even if we consider the proposed
amendment, are related to the extent that purchasers
overlap and they are likely to assume that the sources of
the goods are related. We add that to the extent that we
have any doubt about the likelihood of confusion, we must
resolve it in favor of registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
Decision: The examining attorney’s refusal under
Section 2(d) of the Trademark Act to register applicant’s
mark FLEXXPRESS for the identified goods on the ground that
it is likely to cause confusion with the mark FLEXPRESS for
the goods indicated in the cited registration is affirmed.