Newpage Corporation

Trademark Trial and Appeal Board

Feb 11, 2008

No. 78578276 (T.T.A.B. Feb. 11, 2008)

Mailed:
February 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Newpage Corporation
________

Serial No. 78578276
_______

Theodore D. Lienesch of Thompson Hine LLP for Newpage
Corporation.

Karen Bush, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Taylor, and Wellington, Administrative
Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Newpage Corporation (“applicant”) filed, on March 2,
2005, an application to register on the Principal Register
the mark STERLING ULTRA DIGITAL (in standard character
format) for “coated printing papers” in International Class
16. The application is based on applicant’s allegation
that it first used the mark anywhere and in commerce on
April 23, 2003. Applicant disclaimed the term “digital”
THIS OPINION IS
NOT A PRECEDENT
OF THE T.T.A.B.
Ser No. 78578276
2
and claimed ownership of a prior registration for the mark
STERLING.1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
the previously registered mark ULTRA DIGITAL (in standard
character form) for “pressure sensitive and non-pressure
sensitive paper for use on plateless imaging systems” in
International Class 16.2
Applicant appealed the final refusal of its
application and filed a request for reconsideration. The
examining attorney denied applicant’s request for
reconsideration and, subsequently, both applicant and the
examining attorney filed briefs. As discussed below, the
refusal to register is affirmed.
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

1 Registration No. 1046345 for “coated book and magazine paper”
in International Class 16.
2 Registration No. 2933722, issued March 15, 2005. An assignment
of the registration to GPA Acquisition Company, Inc. was recorded
with the Office on December 6, 2004 (at reel 2986, frame 0121).
Ser No. 78578276
3
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).
We turn first to the similarity and dissimilarity of
applicant's goods, i.e., coated printing papers, and
registrant’s goods, i.e., pressure sensitive and non-
pressure sensitive paper for use on plateless imaging
systems. On page 6 of its appeal brief, applicant states
that “for the limited purpose of this appeal, Applicant
will stipulate to the relatedness of the goods.” In
addition to this concession, the examining attorney has
submitted evidence in support of her contention that the
respectively identified goods are highly related,
complementary and are found in the same trade channels.
Specifically, she attached copies of various use-based
third-party registrations to her final Office action which
show that various trademark owners have adopted a single
mark for goods of the kind that are identified in both
applicant's application and the cited registration. Third-
party registrations which individually cover a number of
Ser No. 78578276
4
different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. In re
Infinity Broad Corp., 60 USPQ2d 1214 (TTAB 2001); In re
Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The examining attorney also attached printouts from
the websites of three office supply retailers (Staples,
OfficeMax and Office Depot) showing that both applicant’s
and registrant’s recited goods may be purchased at each of
these websites, and that they are offered to the same
classes of consumers.
Based on the evidence and for the foregoing reasons,
we find that the goods are highly related, and that the
respective goods travel in the same trade channels to the
same class(es) of purchasers. Accordingly, we resolve the
du Pont factors regarding the similarity of the goods,
trade channels and classes of purchasers against applicant.
We next consider the similarity and dissimilarity
between the marks. Our focus is on 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 (Fed. Cir. 2005). For purposes of sound and
appearance, the only difference between the marks is
Ser No. 78578276
5
applicant’s addition of the term STERLING to the registered
mark, ULTRA DIGITAL.
Before we examine the level of similarity between the
marks, we note that the examining attorney has described
applicant’s addition of the term STERLING to registrant’s
mark as the “addition of a house mark,” referencing
applicant’s ownership of the registration for the mark
STERLING. Examining Attorney’s brief, p. 3. Applicant has
taken issue with this characterization and, in its request
for reconsideration, stated that STERLING is not a house
mark. Applicant does admit, however, that its registered
STERLING mark covers “the same products” as the subject
application. Applicant’s brief, p. 13. Regardless of
whether the term STERLING is a house mark of applicant, for
those who are aware of the registrant’s mark they may
perceive STERLING as a house mark. Therefore, the facts of
this case are certainly akin to the likelihood of confusion
cases involving an applicant seeking to register a mark
that merely adds their house mark or trade name to another
party’s mark. Accordingly, we discuss this case law below
and, where appropriate, rely on the decisions in resolving
the issue of similarity of the marks.
The Board has frequently held that the mere addition
of a trade name or house mark to a registered mark will not
Ser No. 78578276
6
avoid confusion. See In re Dennison Mfg. Co., 229 USPQ
141, 144 (TTAB 1986), citing Menendez v. Holt, 128 US 514
(1888) (“It is a general rule that the addition of extra
matter such as a house mark or trade name to one of two
otherwise confusingly similar marks will not serve to avoid
a likelihood of confusion between them.”) The addition may
actually exacerbate the likelihood of confusion because
purchasers familiar with the registrant's mark are likely
to assume that the house mark serves to identify what had
previously been an anonymous source. See Key West
Fragrance & Cosmetic Factory, Inc. v. The Mennen Co., 216
USPQ 168 (TTAB 1982); In re Cosvetic Laboratories, Inc.,
202 USPQ 842 (TTAB 1979); In In re Hill-Behan Lumber
Company, 201 USPQ 246 (TTAB 1978).
Nonetheless, there is no steadfast rule that one
party’s addition of a house mark or trade name to another’s
mark will not avoid confusion. Instead, we “must consider
the entire marks, including the presence of the house mark
in applicant's mark in light of the evidence of record.”
In re Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007).
As discussed in the Fiesta decision, there are cases where
the common element of the marks may be so highly suggestive
that it will be accorded less significance when considering
the overall commercial impression of applicant’s mark. Id.
Ser No. 78578276
7
at 1364-1365, citing Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313 (TTAB 2005) (common term
“essentials” in applicant’s mark, NORTON MCNAUGHTON
ESSENTIALS, contributes relatively less to the mark's
overall commercial impression than does the house mark
NORTON MCNAUGHTON in view of term’s position in applicant’s
mark and finding that term is highly suggestive as applied
to parties’ clothing items.) The Knight Textile decision
is not alone; applicant has identified, and relies upon,
other decisions with similar conclusions.
Again, each case must be decided on its own factual
circumstances and the evidence of record. As discussed
further below and based on the evidence of record of this
proceeding, we find that the registered mark ULTRA DIGITAL
is not so highly suggestive that applicant may incorporate
the entire mark and negate the obvious similarities by
merely preceding it with the term STERLING. Rather, the
marks are confusingly similar when used in connection with
the aforementioned closely-related goods.
Applicant’s principal argument is that the common
element of both marks, namely, the cited mark ULTRA
DIGITAL, is “so highly suggestive of printing paper used
for digital printing” that the addition of the term
STERLING in applicant’s mark suffices for purposes of
Ser No. 78578276
8
distinguishing the marks. Applicant’s brief, p. 14.
Applicant argues that the term “digital” is descriptive of
registrant’s goods and, in this regard, submitted evidence
that registrant’s goods are used in a digital printing
process. Applicant also points out that the term is
disclaimed in its application3 and was likewise disclaimed
in registrant’s related registration for the same mark,
ULTRA DIGITAL.4 As to “ultra”, applicant argues this term
is laudatory and has little, if any, significance.
Applicant submitted copies of third-party registrations for
marks containing the term “ultra” or “digital” in
connection with paper products.
We must view registrant’s mark ULTRA DIGITAL as a
whole in determining the degree of strength or weakness of
the mark, rather than as the separate words ULTRA and
DIGITAL. See, e.g., Nike Inc. v. WNBA Enterprises LLC, 85
USPQ2d 1187 (TTAB 2007)(marks with “S” and star designs
held confusingly similar because, in spite of weakness of

3 Applicant voluntarily provided the disclaimer in its November
22, 2006 response to the final office action.
4 Applicant references Registration No. 3177379, (issued on
November 28, 2006) for the mark ULTRA DIGITAL for “film products
for plateless imaging systems, namely, plastic film for use in
laminating paper, plastic film for use in reproduction of images
from plateless imaging systems” in International Class 16, with a
disclaimer of the term “digital.” An assignment of the
registration to GPA Acquisition Company, Inc. was recorded with
the Office on December 7, 2004 (at reel 2986, frame 0121).

Ser No. 78578276
9
individual elements, there was no evidence that a unitary S
and star design, as a whole, is weak and entitled to only a
narrow scope of protection).
In doing so, we find that the record is devoid of any
evidence showing that the two terms are commonly used
together. There is no evidence of any non-trademark usage
of the phrase “ultra digital” or any evidence that the
phrase has some specific meaning. And, as the examining
attorney pointed out in her final Office action, the two
terms “ultra” and “digital” appear together on the register
only four times. Of these four registrations, one is the
cited registration, another for ULTRA DIGITAL is owned by
the same registrant (GPA Acquisition Company, Inc.), and
two are for the mark ULTRAVISION DIGITAL (owned by Hitachi
Home Electronics (America), Inc.). Based on this lack of
evidence, even if we were to accept applicant’s contention
that the term “digital” is descriptive of the registrant’s
goods and also accept that the term “ultra” may have
laudatory value, we are unable to make a finding that the
phrase itself, or the two terms together, is commonly used
or registered.
On page 11 of its brief, applicant argues that “there
is no authority that an allegedly ‘unique’ combination of
two terms, without more, constitutes a strong mark.” For
Ser No. 78578276
10
purposes of clarity, there is no finding in this decision
that the cited registered mark is a “strong” mark in
connection with the identified goods or that the mark
should be accorded a wide scope of protection. Rather, we
acknowledge that the mark is suggestive.
We turn our attention now to the additional term
STERLING in applicant’s mark, and how it would be perceived
as it appears in applicant’s mark. On page 8 of its brief,
applicant relies on a definition of “sterling” as meaning
“of the highest quality”5 and posits that this term in its
mark is “suggestive of the high quality of applicant’s
products sold under the mark, or perhaps that applicant
places a special importance to the paper products sold
under the mark and therefore provides additional guarantees
and warranties.” Applicant acknowledges “connotative
similarities” between the marks inasmuch as applicant’s
mark “refers to paper usable in the digital printing
process that may meet or exceed the requirements for such
paper (‘ULTRA’).”
Viewing the marks as a whole, we find that the
addition of the term STERLING in applicant’s mark, because

5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Ser No. 78578276
11
it will be perceived as a house mark, does very little to
distinguish the connotations or overall commercial
impressions created by the marks. Even if, arguendo,
STERLING is not perceived as a house mark, the term does
not distinguish the overall commercial impressions of the
two marks. Applicant’s suggestion that the term “sterling”
connotes that its products are “of high quality” is very
similar or simply builds on what applicant suggests is the
connotation created by the registered mark, i.e., that the
paper may “meet or exceed the requirements for such paper.”
Thus, consumers familiar with the registrant’s ULTRA
DIGITAL paper who see the mark STERLING ULTRA DIGITAL are
likely to regard the mark as identifying a higher quality
version of the registrant’s ULTRA DIGITAL product. As to
applicant’s other suggestion that “sterling” may imply that
the products are sold with “additional guarantees and
warranties,” we find no evidence to support this.
Applicant also highlights the fact that it is the
owner of an incontestable registration for the mark
STERLING for “the same products” as those identified in the
subject application. The fact that applicant is already
using the additional term in connection with the same or
closely related goods does not change the likelihood that
consumers who know only of the registrant’s mark, ULTRA
Ser No. 78578276
12
DIGITAL, and then encounter the mark STERLING ULTRA DIGITAL
will see STERLING as a house mark. For such consumers,
this may even add to the likelihood of confusion. As
explained, consumers may view the additional term as
identifying what was previously an unknown source. In
other words, upon encountering applicant’s mark STERLING
ULTRA DIGITAL, consumers who are already familiar with the
registered mark, ULTRA DIGITAL, may now mistakenly believe
that “Sterling” is merely the house mark.]
Accordingly, in comparing the two marks in their
entireties, ULTRA DIGITAL and STERLING ULTRA DIGITAL, we
find the similarities outweigh the dissimilarities. We
resolve this du Pont factor against applicant.
In conclusion, because of the similarity in the marks
and the goods, as well as the similarity in the trade
channels and classes of purchasers, we find that purchasers
familiar with registrant's goods offered under the mark
ULTRA DIGITAL are likely to believe, upon encountering
applicant's mark STERLING ULTRA DIGITAL for the goods
identified in its application, that they originate with or
are somehow associated with the same entity.
To the extent that there are any doubts about whether
there is a likelihood of confusion, we must resolve said
doubts in favor of the prior registrant and against the
Ser No. 78578276
13
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).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.