NER Data Products, Inc.

Trademark Trial and Appeal Board

Mar 31, 2008

No. 78791038 (T.T.A.B. Mar. 31, 2008)

Mailed:
March 31, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NER Data Products, Inc.
________

Serial No. 78791038
(filed January 13, 2006)
_______

Patrick J. O’Shea of O’Shea, Getz & Kosakowski, P.C. for
NER Data Products, Inc.

Karen E. Bracey, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Grendel, Kuhlke, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

NER Data Products, Inc., applicant, has applied to
register the mark NER (in standard character form) on the
Principal Register for goods ultimately identified as
“toner; toner cartridges; ink jet printer ink” in
International Class 2.1
The examining attorney has refused to register the
mark under Section 2(d) of the Trademark Act because of a

1 Application Serial Number 78791038 is based on applicant’s
statement that it has a bona fide intent to use the mark in
commerce under Section 1(b).
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser. No. 78791038
2
prior registration for the mark NUR for the following
goods:2
International Class 2
Printers ink for use in connection with the goods
identified in the identification of goods of classes 7
and 9.

International Class 7
Digital ink jet printing machine systems for use in
wide and super-wide format printing consisting of
power-operated ink jet printers, structural parts and
mechanical fittings thereof, digital ink jet printers
and structural parts and mechanical fittings thereof;
computer software for use in wide and super-wide
format printing for the purpose of integrating
printing machine operations, tracking problems, and
generating production reports, printed publications,
namely instructional manuals, user manuals, and
product documentation, and metal substrates for use as
printing plates, all sold as a unit.

International Class 9
Digital ink jet printers for use in wide and superwide
production printing.

After the examining attorney made the refusal final,
this appeal followed. As discussed further below, we
affirm the refusal.
Evidentiary Objection and Applicant’s Request to Remand
Before getting to the merits of this case, we address
an evidentiary objection (brief, p. 2) raised by the
examining attorney in her brief as to certain attachments
filed with applicant’s appeal brief. Applicant argues the

2 Registration No. 2733636, issued July 8, 2003. The registration
also covers goods in International Classes 16 and 24; however,
the refusal does not involve these goods.

Ser. No. 78791038
3
materials are properly of record, but also requests remand
of the application to the examining attorney should the
objection be sustained. Reply, p. 3.
The objected to materials consist of copies of two
appeal briefs (with exhibits) filed in a 2002 ex parte
appeal involving the cited registration. The briefs were
filed by the owner of the cited registration (as applicant
at the time) in an attempt to overcome a refusal based on a
registration (since cancelled) that was owned by applicant.3
Applicant argues that the materials should be
considered because they were referenced in its response to
the first Office Action; that the examining attorney did
not raise an objection at that time; and that “as official
documents of the USPTO,” the materials are “self-
authenticating” and attaching the documents with its
response to the Office Action would have been “duplicative
and unnecessary.” Reply Brief, p. 2.
Applicant’s arguments are not well taken. The record
must be complete prior to appeal, subject to certain
exceptions not relevant here. 37 C.F.R. § 2.142(d); see
also TBMP § 1207.01 (2d ed. rev. 2004). Applicant’s

3 A decision was never reached by the Board in that proceeding.
Instead, the application was remanded to the examining attorney
who withdrew the refusal and the application matured into the
registration cited in this proceeding.
Ser. No. 78791038
4
submission of the appeal briefs (with exhibits) here is
late. While applicant referenced and relied on the briefs
filed by the cited registration owner, applicant did not
attach copies thereof. Moreover, briefs filed in other
proceedings before the Board are not materials which the
Board may take judicial notice. See TBMP § 1208.04 (2d ed.
rev. 2004) [taking judicial notice in ex parte proceeding].
Accordingly, we have not considered the additional materials
filed with applicant’s brief.
Applicant’s request to remand the application is
likewise denied inasmuch as it has not shown good cause.
See authorities cited in TBMP § 1207.02 (2d ed. rev. 2004)
(in particular, see discussion of circumstances where good
cause has been found). Even if we were to find good cause
and grant applicant’s request to remand, it would be
pointless to the extent that applicant seeks to rely on the
materials to show a dissimilarity of the respective goods
in actuality versus what the goods set forth in the
identifications of goods (see discussion below regarding
similarity of goods). And, should applicant be relying on
these briefs as evidence that the Trademark Office
previously accepted the arguments contained the briefs in
registering the cited registration, we need only point out
that the decisions of previous trademark examining
attorneys are not binding on the Board. Rather, the
Ser. No. 78791038
5
present application must be decided on its own merits. In
re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). See
also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). While uniform treatment under
the Trademark Act is highly desirable, our task here is to
determine, based upon the record before us, whether
applicant's mark is registrable.
We now turn to the merits of the refusal.
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act 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. See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also, In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
Initially, we look to the level of similarity of the
goods. The goods of applicant and the registrant need not
Ser. No. 78791038
6
be identical to find a likelihood of confusion under
Trademark Act Section 2(d). They need only be related in
such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the goods originate from or are associated
with the same source. See On-Line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir.
2000); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
It is also well-established that the question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods recited in
applicant's application vis-à-vis the goods recited in the
cited registration, rather than what the evidence shows the
goods and/or services to be. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re William Hodges & Co., Inc.,
190 USPQ 47 (TTAB 1976). This is because the presumptions
afforded a registration under Section 7(b) of the Trademark
Act extend to the goods or services as disclosed therein,
and include a presumption of use on all goods or services
encompassed by said description. See Burger Chef Systems,
Inc. v. Sandwich Chef, Inc., 201 USPQ 611 (TTAB 1978),
aff'd 608 F.2d 895, 203 USPQ 733 (CCPA 1979).
Ser. No. 78791038
7
Here, as the examining attorney has correctly pointed
out, applicant’s identification of goods includes “ink jet
printer ink” and is without any restrictions or otherwise
any language narrowing the scope of use of the ink jet
printer ink. Applicant’s use of “printer ink” in its
identification is broad enough to encompass printer ink
used in connection with production printing. As such,
applicant’s printer ink is highly related and potentially
identical to registrant’s goods, i.e., “printers ink for
use in connection with...digital ink jet printers for use
in wide and superwide production printing.” Again,
applicant’s argument that the cited registrant’s printer
ink is, in actuality, different from applicant’s printer
ink is not persuasive because our determination of the
issue of likelihood of confusion must be based on a
comparison of the goods set forth in the cited
registration’s and subject application’s identifications of
goods.
Applicant’s argument that that registrant’s goods are
marketed to different customers and move in different trade
channels is also not well taken. Because the respective
goods are legally identical and the identification of goods
in the application contains no restrictions, we must
presume that applicant’s goods will be marketed and sold to
Ser. No. 78791038
8
the same classes of consumers as registrant’s and through
the same channels of trade. In re Elbaum, 211 USPQ 639,
640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart,
Inc., 119 USPQ 139 (CCPA 1958).
Therefore, we find the goods, channels of trade, and
classes of purchasers are all factors which strongly
support the refusal to register.
We now focus our inquiry on the similarities and
dissimilarities in the respective marks, when considered in
their entireties. To determine whether the marks are
similar for purposes of assessing the likelihood of
confusion, we must consider the appearance, sound,
connotation and commercial impression of each mark. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In some cases, one of these means of comparison may
be critical in finding marks to be similar. In re Lamson
Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988); see also, In re
White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). Also, in
comparing the marks, we are mindful that where, as here,
the goods are legally identical, the degree of similarity
necessary to find likelihood of confusion need not be as
great as where there is a recognizable disparity between the
goods. Century 21 Real Estate Corp. v. Century Life of
Ser. No. 78791038
9
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Real Estate One, Inc. v. Real Estate 100 Enter.
Corp., 212 USPQ 957, 959 (TTAB 1981).
Comparing the appearance of the marks, NER and NUR,
the obvious similarity is that each begins with the letter
“N”, are followed by a vowel, and ends with the letter “R”.
Both marks are in standard character format and, thus, we
must assume they may appear in the same font and/or
stylized lettering.
As to the sounds of the marks, there is no correct
pronunciation of a trademark, and it obviously is not
possible for a trademark owner to control how purchasers
will vocalize its mark. Interlego AG v. Abrams/Gentile
Entertainment Inc., 63 USPQ2d 1862 (TTAB 2002), citing In
re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969).
With this in mind, we find it perfectly reasonable that
applicant’s mark could be pronounced in the same manner as
registrant’s mark. As the examining attorney illustrated
in her brief (p. 6), applicant’s mark will likely be
pronounced the same as the word “per” and registrant’s mark
in the same manner as the word “fur”; in which case, the
marks would be phonetically identical.
Applicant argues that because each mark comprises
three letters, it is more likely that they be pronounced by
Ser. No. 78791038
10
saying each letter individually, rather than being recited
as a word. Brief, p. 3. Acknowledging that this is
possible, we must also take into consideration, however,
the cases that have stated that marks involving letter
combinations are likely to be inherently difficult to
remember and, therefore, consumers are more susceptible to
confusion or mistake than with word marks. See Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and Alberto-Culver Co. v.
F.D.C. Wholesale Corp., 16 USPQ2d 1597 (TTAB 1990) and
cases cited therein. Confusion of letter combinations is a
concern even when the prospective purchasers of the goods
are sophisticated purchasers. See Weiss, supra, and
Chemetron, supra; Carlisle Chemical Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers … are
not infallible.”). Thus, even if consumers were to
verbalize the marks by saying each letter, the only
difference would be the second letter of the respective
marks and this could still lead to confusion.
As to meaning of either term, applicant argued in its
response to the first Office Action that each mark has a
Ser. No. 78791038
11
different defined dictionary meaning.4 Yet, only the
examining attorney provided evidence regarding possible
meanings for the terms “ner” and “nur”.5 The term “ner” has
no defined contemporary meaning, but is an obsolete
spelling for “nearer”6 or otherwise as a reference to the
father of Abner in the Bible.7 The term “Nur” may be
defined as “a hard knot in wood” but is more commonly found
spelled as “knur”.8 A review of Merriam-Webster's
Collegiate® Dictionary, Eleventh Edition revealed no
definition entry for either term.9
In addition to being very remote or obscure, we do not
see any obvious connection between the above-defined
meanings and the goods. Applicant has not argued how any
of the defined meanings have relevance to either
applicant’s or registrant’s goods. Accordingly, we find
that consumers will not view either mark as taking on a
connotation connected to any of the above-defined meanings.
Rather, consumers will likely view the marks as short terms

4 This argument was not repeated in applicant’s brief.
5 Attached to her final Office Action (dated January 5, 2007).
6 Webster's Revised Unabridged Dictionary, © 1996, 1998
MICRA, Inc.
7 Easton's 1897 Bible Dictionary.
8 Webster's Revised Unabridged Dictionary.
9 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Ser. No. 78791038
12
without any defined meaning or significance in relation to
the goods.
In view of the above, we find that applicant’s mark,
NER, is substantially similar to that of the prior
registrant, NUR, and this factor supports the examining
attorney’s refusal to register.
After considering the relevant du Pont factors, as
discussed above, we find that applicant’s mark is likely to
cause confusion with the mark in Registration No. 2733636.
Decision: The refusal to register is affirmed.