Impact Imaging, Inc.

Trademark Trial and Appeal Board

Jul 26, 2001

No. 75749666 (T.T.A.B. Jul. 26, 2001)

7/26/01 Paper No. 14
BAC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Impact Imaging, Inc.
________

Serial No. 75/749,666
_______

Marilynn K. Burningham of Nielsen & Senior, P.C. for Impact
Imaging, Inc.

Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Simms, Walters and Chapman, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On July 13, 1999, Impact Imaging, Inc. filed an
application to register on the Principal Register the mark
shown below

for services identified, as amended, as “digital printing
services; namely, wide format short run reproductions of
customer graphics as, for example, billboards, banners,
wall displays, truck sides and backlits” in International
Class 42. The application was initially based on
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/749666
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applicant’s assertion of a bona fide intention to use the
mark in commerce. Subsequently, applicant filed an
amendment to allege use which was accepted by the Office.
Applicant’s claimed date of first use and first use in
commerce is August 28, 1999.
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
services, so resembles the registered mark IMPACT GRAPHICS
for “graphic design and offset printing services for
modelling agencies, models, entertainment industry, public
relations firms and advertising agencies” in International
Class 42,1 as to be likely to cause confusion, mistake or
deception.
Applicant has appealed, and briefs have been filed.
Applicant did not request an oral hearing.
Our determination of likelihood of confusion 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 &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

1 Registration No. 2,254,859, issued June 22, 1999. The claimed
date of first use is July 1993. The term “graphics” is
disclaimed.
Ser. No. 75/749666
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We turn first to a consideration of the marks in terms
of sound, appearance and connotation. When analyzing
applicant’s mark and the registered mark, it is not
improper to give more weight to a dominant feature of a
mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. See In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997); In re National Data Corporation, 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985); and In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). The word
IMPACT is the dominant portion of both marks. The marks
are quite similar in visual appearance, as applicant’s mark
is the word “impact” in small letters, utilizing an
interesting inverted letter “i”; while registrant’s typed
form mark is two words, IMPACT GRAPHICS.
Further, as the common word IMPACT is identical in
both marks, the marks are very similar in sound. We note
James G. Clegg’s (applicant’s vice president of sales)
statement in his September 26, 2000 declaration that
“[applicant’s] mark cannot be pronounced ‘impact.’”
However, we nonetheless believe that consumers will read
applicant’s mark as “impact,” even though that does not
technically fully describe applicant’s mark. Consumers do
not generally describe all stylizations and designs in
Ser. No. 75/749666
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trademarks when asking for the goods or services. That is,
the word portion of a mark is the portion utilized in
calling for the goods, and is most likely to be impressed
in the purchaser’s memory and to serve as the indicator of
origin. See Spoons Restaurants Inc. v. Morrison Inc., 23
USPQ2d 1735 (TTAB 1991), aff’d unpub’d (Fed. Cir., June 5,
1992); and Consumers Building Marts, Inc. v. Mr. Panel,
Inc., 196 USPQ 510 (TTAB 1977). For example, a person
seeking a “COCA-COLA” brand beverage would not describe the
lettering script or the color of the script lettering;
rather, they would simply say the words, “COCA-COLA.”
While applicant’s mark shows the word IMPACT in stylized
form, and registrant’s mark IMPACT GRAPHICS includes the
descriptive/generic (and disclaimed) term “graphics,” it is
the word “IMPACT” which is the dominant feature of
registrant’s mark, and it is the pronounceable portion of
applicant’s mark.
Whatever the connotation of the word “impact” is
relative to printing services, it would be the same for
both registrant and applicant. One possible connotation,
evidenced by applicant’s specimen, is that consumers who
use the company’s printing services will achieve the
desired effect/impact on whomever the consumers are
directing their material to. (For example, applicant’s
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specimen of record includes the following statements:
“Because each one of us does whatever it takes to give our
customers’ image real impact faster and better than
anyone”; “[a]nd see how we can give your next headline the
impact it deserves.”)
The differences between these marks are not sufficient
to overcome the likelihood of confusion. See In re Dixie
Restaurants Inc., supra. We find that these marks,
considered in their entireties, are similar in appearance
and commercial impression, and they are very similar in
sound and connotation.
Considering next the parties’ respective services, it
is well settled that services (or goods) need not be
identical or even competitive to support a finding of
likelihood of confusion, it being sufficient instead that
the services are related in some manner or that the
circumstances surrounding their marketing are such that
they would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Peebles Inc., 23 USPQ2d 1795 (TTAB
1992); and In re International Telephone and Telegraph
Corporation, 197 USPQ 910 (TTAB 1978).
Ser. No. 75/749666
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Also, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Board is constrained to compare the services (or goods) as
identified in the application with the services (or goods)
as identified in the registration. See Octocom Systems
Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial Bank of
Commerce, National Association v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
As acknowledged by applicant, “both Registrant and
Applicant provide printing services” (brief, p. 7); and
“Applicant concedes that many printers may provide both
[offset and digital printing] services” (reply brief, p.
4).2 However, applicant contends that applicant’s
identified services are limited to digital reproduction of
customer graphics in wide format (i.e., sizes ranging from
a minimum of 36 inches); and that there is no evidence that

2 Also, the Examining Attorney submitted several excerpted
stories retrieved from the Nexis database to show that the same
entity may offer both digital printing and offset printing
services, such as the following (emphasis added): “Headline: New
Owner Transforms Printing Business--... Minuteman Press, a small
printing company with four employees that does mostly offset
printing and some digital printing, moved to Distillery Commons
in May. ..., “Business First-Louisville,” September 17, 1999.

Ser. No. 75/749666
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an offset printing service provider prints wide format
materials.
Applicant’s digital printing services are limited to
wide format runs of reproductions of customer graphics, but
applicant’s identification is not exclusively limited to
“billboards, banners, wall displays, truck sides and
backlits.” To the contrary, applicant set forth those
specific items only as examples of the things applicant may
print for a customer. Moreover, there is no limitation in
registrant’s identification of services as to any specific
type or size of offset printing services. Thus, the type
of products produced as the result of applicant’s services
could be produced as the result of registrant’s broader
identification of services.
We find applicant’s and registrant’s respective
printing services, as identified, are related under the
second du Pont factor.
Regarding the channels of trade, applicant contends
that its services are offered only through direct mail
advertising brochures, by a national sales force, and on an
Internet website (see Ms. Griesemer’s January 25, 2000
affidavit, paragraph 8), with purchases made only from
applicant’s trained salespersons; whereas registrant’s
services are offered only through registrant’s own
Ser. No. 75/749666
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store/production facility. However, neither applicant’s
nor registrant’s identification of services is limited as
to any such specific channels of trade. Applicant’s
limitation to “wide format” digital printing does not limit
the channels of trade to “direct sales” or purchasing “only
from applicant’s trained salespersons.” (Reply brief, p.
2.) Registrant’s limitation to certain types of customers
does not limit its methods of sale to sales only available
at its store/facility.3 The parties’ respective channels of
trade are potentially overlapping.
Applicant is correct that registrant’s purchasers are
limited in its identification of services to “modelling
agencies, models, entertainment industry, public relations
firms and advertising agencies.” However, applicant’s
identification of services is not limited as to customers;
and in fact, applicant stated that its services are
“targeted to outdoor advertisers...” and are “most often
purchased by the production manager of an advertising
agency or an in-house ad department” (brief, p. 2), and

3 Applicant cited the case of In re The Shoe Works Inc., 6 USPQ2d
1890 (TTAB 1988) in support of its argument about separate
channels of trade. In that case applicant’s identification of
goods was specifically limited as “women’s shoes sold solely
through applicant’s retail shoe store outlets”; and there was a
consent agreement between the parties. In the appeal now before
us, applicant’s identification of services is not so restricted
and there is no consent agreement between applicant and
registrant of record herein.
Ser. No. 75/749666
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advertising agencies are specifically listed in
registrant’s identification of services. In addition, the
declaration of James G. Clegg (paragraph 8) includes a
statement that “[o]ur finished products are used for
product advertising, for professional sports teams
advertising and venue decoration, for event promotion, for
advertising of all kinds of services and for delivering
public service messages or other information.” The record
before us clearly shows that both applicant and registrant
market their services to at least some of the same classes
of purchasers, such as the entertainment industry
(including sporting events) and advertising agencies. See
Canadian Imperial Bank v. Wells Fargo Bank, supra; and In
re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
We recognize applicant’s point that purchasers of the
involved printing services are likely to be experienced,
sophisticated buyers who exercise a degree of care. Even
when the purchasers are sophisticated, however, it does not
mean that they are sophisticated in their knowledge of
trademarks or that they are immune from confusion as to the
origin or affiliation of goods or services, especially when
the involved marks are substantially similar and the
services are clearly related. See Towers v. Advent
Ser. No. 75/749666
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Software Inc., 17 USPQ2d 1471, 1473 (TTAB 1989).4 Moreover,
it is not clear that all, or even most, purchasers of
applicant’s services would be sophisticated purchasers. In
fact, applicant’s president, Kim Griesemer, stated
(emphasis added) in her September 26, 2000 declaration
(paragraph 6) that “[applicant] routinely produces, as its
smallest product, a banner measuring 1½ by 5 feet. Wide
format printing also includes a finished product 14 feet by
48 feet or 85 feet by 224 feet. All of these sizes are
referred to in the industry as ‘wide format,’ meaning the
product is 36 inches or larger in either dimension.” Also,
applicant submitted in the record an estimate for a job of
$7,161.80 and an invoice for a banner of $208.92. Thus, it
is clear that applicant’s wide format printing services
cover a very broad span in terms of potential cost of the
various printing services.
Turning to the du Pont factor of the number and nature
of similar marks in use on similar goods or services,
applicant contends that there are that there are numerous
other “impact” marks and thus the term is weak as an
indicator of a single source, and is therefore afforded

4 This decision was affirmed by the Court of Appeals for the
Federal Circuit at 913 F.2d 942, 16 USPQ2d 1039 (1990). The
Board decision was released for publication as citable precedent
in 1990.
Ser. No. 75/749666
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only a narrow scope of protection. This argument is not
substantiated in the record. Applicant’s Exhibit E
(attached to the September 26, 2000 declaration of Kim
Griesemer, applicant’s president) is a copy of only the
“USPTO Report” portion of a private database search report
of the word IMPACT for “custom grand format printing
services.”5 According to Ms. Griesemer (declaration,
paragraph 10), the report shows “49 live marks using the
word ‘Impact’ with related services or goods.”6 Although we
have considered this evidence, it is of extremely limited
probative value, first, because it does not indicate any of
the goods or services7; and second, because the existence of
pending applications or even of registrations does not
prove use of the involved marks and that the relevant
public is aware of them. Thus, there is no evidence of

5 In her January 25, 2000 affidavit, she explained that “grand
format” printing (not included in applicant’s identification of
services) involves “billboard-size or wall-size displays, or
large banners which exceed two meters (80 inches) in width.”
(Paragraph 5.)
6 In her brief, the Examining Attorney objected to the evidence
relating to the existence of other pending applications or
registered marks incorporating the term IMPACT. The Examining
Attorney’s objection is untimely and is overruled. Applicant
first submitted this report with its September 29, 2000 request
for reconsideration, which the Examining Attorney denied on
November 11, 2000 without commenting on the acceptability of
applicant’s evidence. However, the probative value of the
evidence is quite limited for the reasons explained above.
7 The report does set forth the International Class number, and
there are none listed in International Class 42.
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record herein on the number and nature of similar marks in
use on similar or related goods or services.8
Even if applicant had shown that the cited mark is
weak, such marks are still entitled to protection against
registration by a subsequent user of the same or similar
mark for the same or closely related goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
Applicant states that it is not aware of any instances
of actual confusion. However, there is no evidence of
applicant’s and registrant’s respective geographic areas of
sales, or the amount of sales of the involved services
under their respective marks, IMPACT (stylized) and IMPACT
GRAPHICS, since applicant commenced its use in August 1999.
Further, there is no information from registrant on the
issue of actual confusion. This factor is not persuasive

8 Applicant requested on page 4 of its reply brief that “if
evidence of the marketplace realities is to be determinative,
applicant requests remand for the submission of additional
evidence.” The evidentiary record should be complete prior to
filing the ex parte appeal. See Trademark Rule 2.142(d).
Applicant’s request at this late stage of the appeal is denied.
Moreover, there is no indication that this information was not
previously available to applicant. (Applicant stated on page 5
of its reply brief, that “[a]pplicant’s President, Kim Griesemer,
in her affidavit of September 26, 2000, attached an excerpt of
the results of a search of ‘impact’ company names in the Dun &
Bradstreet database and in the American Business Directory.” The
September 26, 2000 declaration of Ms. Griesemer included only one
exhibit and that was the USPTO section of the report; and her
January 25, 2000 affidavit referenced only one exhibit which
related to applicant’s direct mail and Internet website.)
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in the overall balancing of the du Pont factors in this
case.
Accordingly, because of the substantial similarity of
applicant’s and registrant’s respective marks; the
relatedness of their respective services; and the overlap
of the trade channels to at least some of the same
purchasers; we find that there is a likelihood that the
purchasing public would be confused when applicant uses
its mark for its services.
Decision: The refusal to register under Section 2(d)
is affirmed.