Com-Pac Int’l., Inc.

Trademark Trial and Appeal Board

Mar 25, 2003

No. 76181701 (T.T.A.B. Mar. 25, 2003)

Paper No. 14
TJQ
Mailed: March 25, 2003
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Com-Pac International, Inc.
________
Serial No. 76/181,701
_______
Michael S. Beiser of Vedder, Price, Kaufman & Kammholz for
applicant.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Quinn, Walters and Rogers, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Com-Pac
International, Inc. to register the mark INTEGRA for
“packaging machinery used for making reclosable packages.”1
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
1 Application Serial No. 76/181701, filed December 15, 2000,
alleging first use anywhere and first use in commerce on November
8, 2000.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76/181701
2
goods, so resembles the previously registered mark INTEGRA
TEAR for “plastic flexible packaging film and packages made
therefrom”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.3 An oral
hearing was not requested.
Applicant argues that the marks INTEGRA and INTEGRA
TEAR are different, that the goods are different and are
sold in different trade channels to distinctly different
purchasers, and that the purchasers are sophisticated. In
addition, applicant points to certain statements made by
registrant during the prosecution of its then-application
(now the cited registration), when it argued that there was
no likelihood of confusion between its mark INTEGRA TEAR
and a third-party’s registered mark INTEGRA. The argument
2 Registration No. 2,140,142, issued on March 3, 1998.
3 Applicant’s brief is accompanied by Exhibits A, B and C. The
Examining Attorney, in his brief, objected to the evidence as
untimely, asserting that “with the exception of the full text
printout of the two third-party registrations referenced in
previous argument by the applicant (Exhibits A and B), neither
the evidence material, nor any arguments based specifically
thereon, have been considered in any way.” (brief, p. 3).
Applicant, in its reply brief, contends that Exhibit C, which the
Examining Attorney has declined to consider, was in fact
submitted during the prosecution of the application.
Our review of the file reveals that applicant is correct.
Exhibit C was earlier submitted with applicant’s response and
request for reconsideration filed June 11, 2002. Accordingly,
all of the evidence accompanying the appeal brief is considered
to be of record, and this evidence has been considered in
reaching our decision.
Ser No. 76/181701
3
apparently was persuasive, insofar as registrant was
ultimately successful in obtaining registration of its
mark, and applicant relies on this argument in support of
its proposition that registrant does not believe the marks
INTEGRA and INTEGRA TEAR are similar. In support of its
position, applicant submitted part of the prosecution file
of the cited registration; copies of the cited registration
and an expired third-party registration retrieved from the
Trademark Electronic Search System (TESS); and an excerpt
from registrant’s website retrieved from the Internet.
The Examining Attorney maintains that the marks are
similar in overall commercial impression, that the goods
are closely related, and that the goods travel in the same
channels of trade. Purchasers will assume, the Examining
Attorney argues, that registrant’s packaging film is a type
of material intended for use with applicant’s packaging
machines. The Examining Attorney also dismisses
applicant’s arguments based on the sophistication of
purchasers, and registrant’s prior statements regarding
dissimilarities between the marks INTEGRA and INTEGRA TEAR.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
Ser No. 76/181701
4
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. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, we recognize that they
share the common element “INTEGRA.” However, we must
compare the marks in their entireties, including the
presence of the term “TEAR” in registrant’s mark. In
attempting to distinguish the mark INTEGRA from INTEGRA
TEAR, applicant makes the same arguments that registrant
successfully made when it was prosecuting its then-
application. Registrant, when confronted with a Section
2(d) refusal based on a prior third-party registration (now
cancelled) of the mark INTEGRA for plastic films, argued as
follows:
“Integra” connotes “a whole complete
unit” based on the Latin term integer.
For example, from the attached pages of
the American Heritage Dictionary,
“integer” means “whole numbers” or a
“complete unit or entity.” The meaning
of “integral” includes “essential or
necessary for completeness.” The
definition of “integrity” includes the
“quality or condition of being whole or
undivided; completeness.” The term
“integrate” means to make into a whole
by bringing all parts together, i.e.,
to unify. The word “integra” also
Ser No. 76/181701
5
translates from Spanish to mean “whole”
or “complete.”
The term “tear” raises the opposite
connotation, i.e., that something is
being divided or separated or becomes
not complete. Applicant has utilized
two words, in juxtaposition, that have
directly opposite connotations. The
meanings of the terms INTEGRA and TEAR
connote respectively, to unify and to
separate. The contradictory terms used
in INTEGRA and TEAR give it a
completely different commercial
impression than INTEGRA.
Applicant’s addition of the word TEAR
to the word INTEGRA is not just a mere
addition of a term. It significantly
changes the connotation and commercial
impression as discussed above. Under
overall impression analysis, there is
no rule that confusion is presumed if
the junior user has a mark that
contains, in part, the whole or
another’s mark. [citations omitted]
Also, the addition of “tear” obviously
changes the appearance and sound of the
mark by adding a term.
Consideration of the marks in their
entireties shows that the contradiction
in the terms “INTEGRA” and “TEAR” makes
them equal in the minds of a consumer,
but makes the mark, as a whole,
distinct from its parts.
We find these arguments to be persuasive in the
present case.4 Although the term “TEAR” in registrant’s
4 Applicant would have us use registrant’s earlier statements in
its underlying application as binding admissions against
registrant’s interest. Specifically, applicant points to
registrant’s argument that “TEAR” in its mark is the dominant
portion, and that the term “INTEGRA” is commonly used, concluding
Ser No. 76/181701
6
mark may be somewhat suggestive as applied to packaging
film, it nonetheless is contradictory to the term
“INTEGRA”, and we agree with applicant that the marks
INTEGRA and INTEGRA TEAR are different in connotation and
overall commercial impression. These differences, in our
view, outweigh any similarities in sound and appearance.
In addition to differences between the marks, of
significant import in this case are differences between the
goods and the customers therefor. Both applicant’s
machines and registrant’s film are products in the
packaging field and, therefore, at least superficially,
appear to be related. Upon closer scrutiny, however, it is
apparent that the products are specifically different in
nature, and the products neither overlap nor move in common
trade channels.
First, the goods are quite different. According to
applicant, applicant’s machines are sophisticated and quite
expensive, facts which are supported by photographs of the
machines. Notwithstanding our focus on the goods as
identified, rather than what extrinsic evidence may reveal
that registrant is on record as expressing the opinion that the
marks INTEGRA and INTEGRA TEAR are not confusingly similar. See:
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). Suffice it to say that we have compared the marks
ourselves, and have independently reached the conclusion that the
marks are not confusingly similar.
Ser No. 76/181701
7
about the goods, we have no basis upon which we could
conclude that there are any types of packaging machines
that are not complex and relatively expensive items. As
for registrant’s goods, the excerpts from registrant’s
website show that its packaging film is used in the food
industry, indicating that cheese producers are primary
customers for the film. Although we recognize, as stated
above, that packaging machinery and packaging materials are
related in the sense that they are used in the packaging
field, these manufacturing goods are relatively specialized
in nature and necessarily the subjects of deliberate
purchases.
Given the specific differences between the nature of
the goods, it is not surprising that they would be
purchased by different classes of purchasers. Applicant
sells its packaging machinery to industrial equipment
managers of engineering and machinery departments at
packaging manufacturing facilities. These customers make
their own reclosable packaging in house. By contrast,
registrant’s packaging film, as shown by registrant’s
website, would be sold to raw materials managers, as for
example, in the food and beverage industries, who then
package their own company’s products. The Board in the
past has found no likelihood of confusion even with respect
Ser No. 76/181701
8
to identical marks applied to goods and/or services used in
a common industry where such goods and/or services are
clearly different from each other and there is insufficient
evidence to establish a reasonable basis for assuming that
the respective goods, as identified by their marks, would
be encountered by the same purchasers. See: Borg-Warner
Chemicals, Inc. v. Helena Chemical Company, 225 USPQ 222,
224 (TTAB 1983) and cases cited thereat.
Further, given the nature of the goods, purchasers at
these manufacturers are sophisticated. Thus, even in the
unlikely event that there would ever be an overlap in
manufacturer customers, such manufacturers are
sophisticated and purchases would be made with a good deal
of care. In essence, the manufacturers have sufficient
expertise to distinguish between the sources of applicant’s
and registrant’s goods. See: Electronic Designs and
Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713,
21 USPQ2d 1388 (Fed. Cir. 1992); and Dynamics Research
Corp. v. Langenau Manufacturing Co., 704 F.2d 1575, 217
USPQ 649 (Fed. Cir. 1983).
Lastly, the record is devoid of any evidence (e.g.,
third-party registrations) to even suggest that applicant’s
and registrant’s goods are the types of goods that would
emanate from a single source under the same mark. Simply
Ser No. 76/181701
9
put, there is no evidence that sophisticated purchasers
would have a reason to believe that packaging machinery and
packaging film share a common source.
In sum, in view of the cumulative differences between
the mark and the goods sold thereunder, and the different
sophisticated purchasers for the respective goods, we find
that confusion is unlikely.
Decision: The refusal to register is reversed.