Hunter Associates Laboratory, Inc.

Trademark Trial and Appeal Board

Dec 6, 2000

No. 75467518 (T.T.A.B. Dec. 6, 2000)

Hearing: Paper No. 15
July 25, 2000 BAC
12/6/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Hunter Associates Laboratory, Inc.
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Serial No. 75/467,518
_______
Robert W. Adams of Nixon & Vanderhye P.C. for Hunter
Associates Laboratory, Inc.
Rodney Dickinson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Quinn, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Hunter Associates Laboratory, Inc. has filed an
application to register on the Principal Register the mark
for “spectrophotometers” in International
Class 9.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, when used on its identified

1 Application Serial No. 75/467,518, filed April 14, 1998, based
on a claimed first use date of September 9, 1997.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE T.T.A.B.
Ser. No. 75/467518
2
goods, so resembles the registered mark COLORTREND for
“color charts and instructions for mixing colorants” in
International Class 16,2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed, and
an oral hearing was held before this Board on July 25,
2000.
Upon consideration of the pertinent factors set forth
by the Court in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), for determining
whether a likelihood of confusion exists, we find that
confusion is not likely.
It is obvious that the marks are identical. However,
the mark COLORTREND is certainly highly suggestive in
relation to both registrant’s color charts and instructions
for mixing colorants and applicant’s spectrophotometers.
Thus, the scope of protection of such marks is not as
broad. See Sure-Fit Products Co. v. Saltzson Drapery Co.,
254 F.2d 158, 117 USPQ 295 (CCPA 1958). See also, 2 J.
Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, §11:73 (4th ed. 2000).

2 Registration No. 938,124, issued July 18, 1972, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed.
The claimed date of first use is September 28, 1956.
Ser. No. 75/467518
3
Turning to the involved goods, as argued by the
Examining Attorney, the Board must determine the issue of
likelihood of confusion on the basis of the goods as
identified in the application and the registration. See
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). In discussing applicant’s goods, first we take
judicial notice of The American Heritage Dictionary
definition of “spectrophotometer” as “n. Physics. An
instrument used to determine the distribution of energy in
a spectrum of luminous radiation.” Applicant’s specimens
of record clearly indicate that applicant’s goods are used
for making continuous electronic measurements of the color
of many types of items, such as food products (e.g.,
breads, rolls, fruit and vegetable products), or building
products (e.g., fiberboard, roofing granules, cement), or
industrial minerals (e.g., dry organic chemicals, paper
additives, fillers). The registrant’s goods are in
International Class 16 covering paper products and printed
matter. Therefore, registrant’s “color charts and
instructions for mixing colorants” are presumably simply
paper color charts and instructions.3 Even though neither

3 Applicant argues that the record shows registrant’s goods are
used only in the selection of the color of paint. In support
Ser. No. 75/467518
4
applicant’s nor registrant’s goods, as identified, are
limited in purpose or function, nonetheless, it is clear
that these goods are certainly disparate products, one
being a machine and one being a paper color chart and
instructions.
In support of his position as to the relatedness of
the respective goods, the Examining Attorney argues that
the respective goods, “though not the same” (brief, p. 3),
are closely associated by the purchasing public because
both products perform the same function of identifying
specific color values in paint and other color sensitive
items, and because they are commonly used together to
identify color values (i.e., spectrophotometers are used to
read and measure color charts).
The fact that the two products may have a tangentially
similar purpose (in this case involving color) is not
sufficient to establish the relatedness of these otherwise
disparate goods. Rather, it must be shown that a
commercial or technological relationship exists between

thereof, applicant refers to the specimens of record in the cited
registration and to an “attached” complete copy of the file
history of cited Registration No. 938,124. Applicant is advised
that the file history of the cited registration (including the
specimens) is not currently of record in this application. In
any event, registrant’s identification of goods is not limited to
use in connection with paint. In view of our decision herein, we
need not consider a copy of the file history of the cited
registration.
Ser. No. 75/467518
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goods such that the use of the trademark is likely to
produce opportunities for purchasers or users to be misled
about their source or sponsorship. See In re Cotter and
Company, 179 USPQ 828 (TTAB 1973). See also, General
Electric Company v. Graham Magnetics Incorporated, 197 USPQ
690 (TTAB 1977); and Harvey Hubbell Incorporated v. Tokyo
Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975).
We have carefully reviewed the entire record, and in
particular, the Nexis evidence submitted by the Examining
Attorney, but we are not convinced on this ex parte record
of the relatedness of these goods. Applicant has
coherently argued that these goods, as identified, relate
to specific and completely different types of products,
which are sold through differing channels of trade to
different purchasers, with applicant’s goods being
industrial in nature and sold to sophisticated purchasers
such as manufacturers of color chemical pigmented products
seeking a color profile of each production run, and
registrant’s goods being in the domestic field available to
the ordinary consumer. The Examining Attorney has not made
a prima facie showing establishing the relatedness of the
goods, or the similarity of trade channels and purchasers.
Ser. No. 75/467518
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Decision: The refusal to register under Section 2(d)
is reversed.
T. J. Quinn
B. A. Chapman
D. E. Bucher
Administrative Trademark Judges,
Trademark Trial and Appeal Board