Eagle OPG, Inc.

Trademark Trial and Appeal Board

Jul 31, 2003

No. 75535688 (T.T.A.B. Jul. 31, 2003)

Mailed: July 31, 2003
Paper No. 25
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
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In re Eagle OPG, Inc.1
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Serial No. 75/535,688
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Frank B. Janoski and Thad N. leach of Lewis, Rice & Fingersh
for Eagle OPG, Inc.
Richard S. Donnell, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
____________
Before Walters, Bucher and Bottorff, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
Eagle OPG, Inc has filed an application to register the
mark GENERATIONS on the Principal Register for “memory book
and scrap book materials, namely, memory albums, photograph
albums, scrapbook albums, binders, leaf binders, envelopes,

1 The application was originally filed by American Trading and
Production Corporation. During the pendency of the application, the
mark and application were assigned by the original applicant to Calvert
Holdings, LLC; and then by Calvert Holdings, LLC to Eagle OPG, Inc.
Both assignments are recorded in the USPTO assignment database.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75/535,688
2
filler paper for albums and binders, plastic pages for
holding sheets of paper, plastic pages for holding
photographs, archival storage pages, and paper expanding
files.”2
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark GENERATION, previously registered for
“organizers for stationery use; daily and yearly planners;
stationery type portfolios; business card holders; telephone
indexes; stationery desk sets; mini-stationery kits,
comprising, stapler, staples, rulers, scissors, composition
books; and writing instruments,”3 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination 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 issue. See In re E. I. du Pont de Nemours and

2 Serial No. 75/535,688, in International Class 16, filed August 12,
1998, based on an allegation of a bona fide intention to use the mark in
commerce.
3 Registration No. 2,146,310 issued March 24, 1998, to Generation
Marketing Group Inc., in International Class 16.
Serial No. 75/535,688
3
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
The Examining Attorney contends that the marks are
nearly identical and that the “S” at the end of applicant’s
mark does not distinguish its mark from the registered mark.
With respect to the goods, the Examining Attorney submitted
with his brief a dictionary definition of “stationery,”4 of
which we take judicial notice. He contends that applicant’s
and registrant’s goods all comprise “stationery” and are
“reasonably related.”
The Examining Attorney submitted 29 third-party
registrations, which he contends show the same marks
registered for “stationery-type goods such as those provided
by the registrant and the applicant.” The third-party
registrations show the same marks registered for a wide
variety of stationery items, including ring binders,

4 “stationery, noun, 1. Writing paper and envelopes. 2. Writing
materials and office supplies.” The American Heritage Dictionary of the
English Language, 3rd ed, 1992.
Serial No. 75/535,688
4
binders, portfolios, organizers, photograph albums, folders,
art supplies, and envelopes.
Additionally, the Examining Attorney contends that the
trade channels and class of purchasers of the goods
identified in the application and the cited registration are
the same, noting that the respective identifications of
goods are not limited as to channels of trade or classes of
purchasers and, thus, can be presumed to travel in all of
the normal trade channels for stationery and be bought by
the usual purchasers of stationery.
Applicant concedes that the differences between the
involved marks are “slight,” but contends that its goods are
quite different from those in the cited registration.
Applicant notes that “[registrant’s] ordinary stationery
products are [not] similar to the scrapbooking items and
other materials related to the long term preservation of
memorabilia (which are the goods now described by
applicant).” Applicant states that it “focuses on goods
assembled with acid-free paper and clear plastic, envelope-
style pages for holding keepsakes free of any destructive
attachment mechanism”; but that “[r]egistrant’s description
of goods is not particular to an industry but is of goods in
general office use”; that registrant’s staplers, staples and
adhesive tape “are clearly destructive of the items they
bind in a manner that is contrary to the function and
Serial No. 75/535,688
5
purpose of applicant’s goods”; that registrant’s other
goods, including “daily and yearly planners (useful only for
a day or several months), business card holders, … are also
clearly designed and used in a general or personal setting.”
Applicant argues that the class of purchasers for its
goods is different from that for registrant’s goods and that
any overlap is merely coincidental. Applicant states that
its purchasers “desire to preserve memorabilia [and] a
particular presentation for their keepsakes”; and, thus,
that purchasers of its goods are discriminating, careful
purchasers. Applicant also concludes that the trade
channels for the respective goods are different, stating
that registrant’s goods “are miscellaneous office supplies
to be used in connection with general business activities
[and that] [t]his type of goods is typically sold at office
supply stores and related outlets,” whereas applicant’s
goods “are sold in arts, crafts, and hobby stores.”
We turn, first, to a determination of whether
applicant’s mark and the registered mark, when viewed in
their entireties, are similar in terms of appearance, sound,
connotation and commercial impression. 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
impressions that confusion as to the source of the goods or
Serial No. 75/535,688
6
services offered under the respective marks is likely to
result. The focus is on the recollection of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore,
although the marks at issue must be considered in their
entireties, it is well settled that one feature of a mark
may be more significant than another, and it is not improper
to give more weight to this dominant feature in determining
the commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
We agree with the Examining Attorney that the marks are
substantially the same, with the “S” at the end of
applicant’s mark insufficient to distinguish the marks.
Applicant’s mark is merely the plural of registrant’s mark
and would not be pronounced significantly differently, nor
would it have a different connotation. The commercial
impressions of the two marks are substantially similar.
Turning to consider the goods involved in this case, we
note that the question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Serial No. 75/535,688
7
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
The broad definition of “stationery” in the record
would clearly encompass some, if not all, of both
applicant’s and registrant’s goods. The fact that these
goods could be considered under the general category of
“stationery” does not, by itself, lead us to conclude that
the goods are sufficiently related that confusion is likely.
However, in this case, the record shows numerous third-party
registrations for the same marks for stationery products
Serial No. 75/535,688
8
that include both applicant’s goods and registrant’s goods.
While this is not evidence of use of these marks on these
goods, third-party registrations are valid evidence of the
fact that parties have registered the same marks for these
goods and, as such, suggest that these goods could emanate
from a single source.
Further, applicant’s goods include broadly identified
stationery items, such as envelopes, binders, and paper
expanding files, which are likely to be available at
stationery and office supply stores; and registrant’s
organizers could encompass expanding files and various types
of albums to organize photos and memorabilia.
Finally, we find applicant’s arguments about its
limited channels of trade and class of purchasers to be
unpersuasive. There is no evidence that photograph albums
and scrap books are not items purchased by the general
public. The evidence supports our finding that applicant’s
and registrant’s goods are closely related items of
stationery.
Therefore, we conclude that in view of the substantial
similarity in the commercial impressions of applicant’s
mark, GENERATIONS, and registrant’s mark, GENERATION, their
contemporaneous use on the related goods involved in this
case is likely to cause confusion as to the source or
sponsorship of such goods.
Serial No. 75/535,688
9
Decision: The refusal under Section 2(d) of the Act is
affirmed.