GraphicControls LLC

Trademark Trial and Appeal Board

Jul 19, 2006

No. 78289575 (T.T.A.B. Jul. 19, 2006)

Mailed:
19 July 2006
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Graphic Controls LLC
________

Serial No. 78289575
_______

Susan M. Freedman of Nixon Peabody LLP for Graphic Controls
LLC.

Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).1
_______

Before Drost, Zervas, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 20, 2003, applicant Graphic Controls LLC
applied to register the mark SURE CODE (in typed or
standard character form) on the Principal Register for
“printers, namely high resolution printers” in Class 9.2
Applicant has also disclaimed the term “Code.”

1 The electronic copy of the examining attorney’s brief did not
identify the examining attorney or the managing attorney, but
this information is consistent with the previous information in
the file.
2 Serial No. 78289575. The application was based on applicant’s
assertion of a bona fide intention to use the mark in commerce.
Subsequently, applicant submitted an amendment to allege use and
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 78289575
2
The examining attorney refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) on the ground that applicant's mark, when
applied to its goods, so resembles the previously
registered mark SUREPRINT (in typed or standard character
form) for “computer programs to control printers” in Class
9 as to be likely to cause confusion.3
After the examining attorney made the refusal final,
this appeal followed.
The examining attorney (Brief at 4) argues that:
Consumers are likely to view CODE as a highly
descriptive term of applicant’s printer, informing
them of a characteristic or feature of the goods. As
such it is not likely to be perceived as a source
indicator. Although, the wording SURE CODE would be
encountered by consumers on the goods in the
marketplace, it is likely that they would remember and
use SURE when referring to the goods. Consumers
familiar with the cited mark, SUREPRINT, are likely to
assume upon encountering applicant’s mark, SURE CODE,
for related goods that the owner of both marks is the
same.

The examining attorney also submitted evidence to suggest
that printers and computer programs for printers are
related products.
Applicant maintains (Brief at 11) that “in light of
the fact that the common term ‘SURE’ is weak and entitled

asserted a date of first use and a date of first use in commerce
of November 14, 2003.
3 Registration No. 1,728,544, issued October 27, 1992, renewed.
Ser No. 78289575
3
to a narrow scope of protection, and that ‘CODE’ does not
look or sound like ‘PRINT,’ the marks differ sufficiently
in appearance such that consumer confusion is unlikely.”
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973); 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 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).
The first factor we will consider is the relatedness
of the goods. In this case, applicant’s goods are high
resolution printers and registrant’s goods are computer
programs to control printers. Computer programs to control
printers can be used to control applicant’s high resolution
printers. Indeed, applicant’s brochure describes the
“Software features of OBJInkDraw” on its “Sure Code™ 1000
Ser No. 78289575
4
Image Maker Printing System” so that software is an
integral part of applicant’s printers.
Furthermore, the examining attorney also included
copies of registrations to show that the same entities have
adopted a common mark for printers and software for
printers. See, e.g., Registration No. 2,455,604 (printers
and computer software for use in printing hardcopy output);
No. 2,381,056 (label printer and computer software for
creating slide labels); No. 2,718,634 (printers and
computer software for control of operation of computer
driven industrial printers); No. 2,809,185 (printers and
computer software for print management); and No. 2,783,424
(printers and computer software for printer management and
computer software for network management). These
registrations suggest that the same source may provide both
printers and computer software for printers. See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
(Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
Ser No. 78289575
5
Therefore, we conclude that printers and computer
programs to control printers are closely related. In
addition, printers and computer programs for printers would
likely be sold in the same channels of trade to the same
purchasers who would be interested in software that
controls printers.
The next factor we consider is the similarities and
dissimilarities of the marks SURE CODE and SUREPRINT. We
must consider whether the marks are similar in sound,
appearance, meaning, and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Both marks are shown in typed or standard character form so
that there are no differences in the appearance or
stylization of the words in the marks. The marks are
similar because both marks begin with the same term SURE
and the marks are different because applicant adds the term
CODE while registrant’s mark adds the term PRINT.
Applicant has disclaimed the term CODE and the examining
attorney has included evidence that supports the conclusion
that the term “Code” is merely descriptive for printers.
See, e.g., Client Server News, November 6, 2000 (“[T]here’s
a HP-VA printer initiative afoot to develop a ‘scalable
printing infrastructure for Linux’ and promises more specs
Ser No. 78289575
6
and open source printer code in the future”) and InfoWorld,
August 10, 1998 (“An OS programmer had to write printer
code”).
In addition, the registrant’s term “Print” for
computer programs to control printers is at least very
descriptive for printer computer programs. Descriptive
terms, such as “Code” and “Print,” are often not relied
upon by purchasers to distinguish the sources of goods and
services. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed.
Cir. 1985) (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be
given little weight in reaching a conclusion on the
likelihood of confusion’”) and In re Code Consultants Inc.,
60 USPQ2d 1699, 1702 (TTAB 2001) (Disclaimed matter is
often “less significant in creating the mark’s commercial
impression”). We also note that the marks begin with the
same non-descriptive term “Sure.” Palm Bay Imports, 73
USPQ2d at 1692 (“VEUVE nevertheless remains a ‘prominent
feature’ as the first word in the mark and the first word
to appear on the label”).
In another likelihood of confusion case, the Federal
Circuit determined that the marks JOSE GASPAR GOLD and
Ser No. 78289575
7
GASPAR’S ALE were similar despite the fact that only the
term “Gaspar” was common to both marks. In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946
(Fed. Cir. 2004) (“With respect to JOSE, the Board
correctly observed that the term simply reinforces the
impression that GASPAR is an individual’s name. Thus, in
accord with considerable case law, the JOSE term does not
alter the commercial impression of the mark”).
In this case, both marks begin with the term SURE.
The fact that the next term is a different descriptive term
in both marks does not lead us to conclude that the marks
are not similar. Instead, we hold that the term “Sure”
would dominate the marks. While the marks have obvious
differences in their appearance and pronunciation, these
differences would not be as significant as the similarities
created by the identical common term. Furthermore, the
meanings and commercial impressions of the marks are not
dissimilar. While applicant argues that “SURE CODE
connotes a product that is sure to code correctly while
SUREPRINT connotes a product that is sure to print,” it is
also true that the term SURE CODE used on printers would
likewise suggest that the printer code results in a printer
that is sure to print. Therefore, the differences in the
Ser No. 78289575
8
meanings and commercial impressions of the marks are not
very significant.
We also have considered applicant’s citation to the
case of In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818 (Fed. Cir. 1986).4 However, unlike this cited
case, the term that the marks have in common here, “Sure,”
is not a descriptive term. Another case applicant relies
on is In re Swenson Spreader Company, 222 USPQ 647 (TTAB
1984) in which the board found that the applicant’s mark
FIELD COMMANDER was not confusingly similar to the cited
mark TURF COMMANDER. However, in that case, while the
board did briefly discuss the differences in the marks, the
board held that “[a]pplicant’s goods [farming equipment]
differ sufficiently from those of registrant [tractors and
lawn mowers for industrial use].” 222 USPQ at 648. The
facts of that case are not similar to the present case
where we have found the goods to be closely related.
We conclude that, when we consider these marks in
their entireties, the differences in appearance,
pronunciation, meaning, and commercial impression are
eclipsed by the similarities of the marks.

4 We have not considered the non-precedential board decisions
that applicant has cited. TBMP 101.03 (2d ed. rev. 2004).
Ser No. 78289575
9
Applicant also maintains that concerning the cited
registration, the “common term SURE is relatively weak and
entitled to only a narrow scope of protection.” Brief at
9. In support of its argument, it has provided copies of
four registrations. The first is a registration (No.
2,835,419) that applicant owns for the mark SURE MARK for
“high resolution printing ink.” Another (No. 2,779,201) is
for the mark SURELOAD for point-of-sale printers as well as
software for operating point-of-sale printers. A third
(No. 2,229,199) is for the mark SURE SECURE for printer
ribbons and the fourth (Serial No. 78372875) is for the
mark SURE-PAK for printers for printing labels for food
products. The examining attorney’s brief (p. 7) points out
that Registration No. 2,229,199 was recently cancelled5 and
that Serial No. 78372875 has now issued as Registration No.
3,021,913. To the extent that applicant is using these
registrations to prove that the cited mark is weak, we must
reject this argument. “As to strength of a mark, however,
registration evidence may not be given any weight.” Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542, 1545 (Fed. Cir. 1992) (emphasis in original). See

5 “[A] canceled registration does not provide constructive notice
of anything.” Action Temporary Services Inc. v. Labor Force
Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989).
Ser No. 78289575
10
also AMF Inc. v. American Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) ("The existence
of [third party] registrations is not evidence of what
happens in the market place or that customers are familiar
with them"). These registrations by themselves are not
evidence that the term “Sure” is weak and only entitled to
a narrow scope of protection. Also, the presence of these
other registrations does not justify the registration of a
mark that is otherwise confusingly similar to the cited
registration. In re J.M. Originals Inc., 6 USPQ2d 1393,
1394 (TTAB 1987).6
In addition, applicant cites the case of Proctor &
Gamble Company v. Johnson & Johnson Inc., 485 F.2d 1185,
205 USPQ 697 (S.D.N.Y. 1979), aff’d without opinion, 636
F.2d 1203 (2d Cir. 1980). In that case, the court found,
inter alia, that there was no likelihood of confusion
between plaintiff’s SURE mark for deodorant and defendant’s
SURE & NATURAL mark for a menstrual protection shield.
However, in that case, the court referred to the evidence
that showed that the term “Sure,” in that field, was weak:
The extent to which sure is used in advertising
deodorant and other products is further evidence of
the inherent weakness of the mark. P&G itself uses

6 We also add that applicant’s ownership of a registration for
SURE MARK for ink does not indicate that there is no confusion
when applicant seeks registration for a different mark, SURE
CODE, for different goods (printers).
Ser No. 78289575
11
the word sure throughout its advertising. Indeed, in
order to establish its right to the Sure trademark,
P&G had to defeat Carter Wallace's claim that its
slogan "Use Arrid to be sure" entitled Carter Wallace
to exclusive rights. Underlying the Ninth Circuit's
decision in P&G's favor was its finding that sure is a
common word frequently utilized in advertising by
manufacturers of deodorants and kindred products.

205 USPQ at 707. Such evidence is not present in this
case. Therefore, we cannot conclude that the term
SUREPRINT is such a weak term that it is entitled to only a
narrow scope of protection for computer programs to control
printers.
When we consider the record and the relevant
likelihood of confusion factors, we conclude that, when
potential purchasers of printers and computer programs for
printers encounter the marks SURE CODE and SUREPRINT for
these goods, they are likely to believe that the sources of
these products are in some way related or associated. As a
result, there is a likelihood of confusion. We add that to
the extent that we have had doubts, which we did, about the
question of likelihood of confusion, we have resolved them
in favor of the registrant and against the newcomer. In re
Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025,
1026 (Fed. Cir. 1988) and In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729, 729-30 (CCPA 1973).
Ser No. 78289575
12
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.