Norcom Inc.

Trademark Trial and Appeal Board

Jan 24, 2001

No. 75543910 (T.T.A.B. Jan. 24, 2001)

1/24/01 Paper No. 13
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Norcom Incorporated
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Serial No. 75/543,910
_______
Christopher P. Bussert and Sara K. Stadler of Kilpatrick Stockton
LLP for Norcom Incorporated.
Amy Gearin, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Norcom Incorporated has filed an application to
register the mark "DOCUWORKS" for "office supplies, namely,
typing paper, multi-purpose paper, inkjet paper, laser paper,
copier paper; business and scratch pads; index cards, sheet
protectors, binders, pad holders, project planners, daily
planners, report covers, envelopes, indexes, clip boards, file
folders, hanging files, notebooks, steno books, memo books,
writing tablets, pocket dividers, tabbed dividers, and index
guides."1
1 Ser. No. 75/543,910, filed on August 27, 1998, which alleges a bona
fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/543,910
2
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 applied to its goods, so resembles the
mark "DOCUWORKS," which is registered for "photocopying and
document reproduction services,"2 as to be likely to cause
confusion, mistake or deception.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the refusal to register.
The determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), "in any likelihood of confusion
analysis[,] two key considerations are the similarity of the
goods and the similarity of the marks."3 Here, inasmuch as the
respective marks are identical in all respects and engender the
same commercial impression,4 the focus of our inquiry is on
whether any of applicant's goods are so related to registrant's
services that, when such goods and services are offered under the
2 Reg. No. 2,200,051, issued on October 27, 1998, which sets forth
dates of first use of January 10, 1998.
3 The court, in particular, pointed out that: "The 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."
4 Applicant, we observe, not only does not seriously appear to contend
otherwise, but acknowledges, in its initial brief, "[t]he fact that
the 'DOCUWORKS' marks at issue happen to be identical."
Ser. No. 75/543,910
3
mark "DOCUWORKS," confusion as to the source or sponsorship
thereof is likely to occur. We note in this regard that, as a
general proposition, where the respective marks are identical (as
in this case) or essentially the same, there need be only a
viable relationship between the goods and/or services in order to
support a holding of likelihood of confusion. See, e.g., In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1983) and
In re Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
Applicant, as summarized in its initial brief, argues
essentially that there is no real likelihood of confusion because
the respective goods and services are "distinctly different,"
with applicant selling "'garden variety' office supplies" while
registrant offers photocopying and document reproduction
services. In particular, applicant insists that (emphasis in
original):
[T]here is no evidence that consumers could
find, much less purchase, the goods and
services at issue in the same "retail
stores." Indeed, in the reality of the
marketplace, the types of third[-]party
branded goods and services at issue do not
share any channels of trade. For one thing,
there is no record evidence that a consumer
could find branded office supplies and
photocopying services offered by unrelated
third parties in the same "retail stores."
And even if some of the business[es] cited by
the Examining Attorney do offer both office
supplies and photocopying services, this
circumstance does nothing to support a
finding of likely confusion because the cited
businesses are offering the goods and
services at issue, if at all, either under
Ser. No. 75/543,910
4
their own "house mark" or as an unbranded
convenience to customers.
Applicant also contends that "confusion between the marks at
issue is extremely unlikely" because, according to the record,
"the marks at issue have coexisted for more than a year with
absolutely no evidence of actual confusion"; there exists "a
multitude of 'DOCU' [prefixed] marks ..., which necessarily
narrows the scope of protection to which the cited registration
is entitled"; and there is a "lack of any predatory intent" on
the part of applicant to trade upon the goodwill in registrant's
mark.
Several declarations have been submitted by applicant
in support of its position, including two from its chief
financial officer in which he states, inter alia, that applicant
provides "new, prepackaged office supplies for use by the general
consumer"; that applicant intends to market its goods under its
"DOCUWORKS" mark through such retail channels as grocery stores,
drug stores and mass merchandisers, but it does not intend to
offer any services under such mark; that even if some of the
goods applicant provides under its "DOCUWORKS" mark "were to be
used for photocopying purposes, the consumers themselves would
have to perform the photocopying function using their own
equipment, which would not involve professional 'document
reproduction services' in the least"; that in adopting its mark,
applicant "had no intention of trading upon the reputation of any
other person or firm" (emphasis in original); and that, since
applicant began marketing its goods in March 1999, he is "unaware
Ser. No. 75/543,910
5
of a single instance in which anyone believed that the DOCUWORKS
mark or the office supplies ... sold under that mark were
associated or connected with the Cited Registrant or had the
sponsorship, endorsement, or approval of the Cited Registrant."
The Examining Attorney, on the other hand, contends
that confusion is likely because, among other things:
Some of the applicant's products, namely,
"typing paper, multi-purpose paper, inkjet
paper, laser paper, and copier paper[,"] are
sold as supplies for copying or duplicating
devices. In addition, as the evidence of
record shows, office supplies and document
reproduction services are commonly offered by
a single source under a single mark. It
would, therefore, be reasonable to assume
that office supplies, namely, "typing paper,
multi-purpose paper, inkjet paper, laser
paper, copier paper, business and scratch
pads, index cards, sheet protectors, binders,
pad holders, project planners, daily
planners, report covers, envelopes, indexes,
clip boards, file folders, hanging files,
notebooks, steno books, memo books, writing
tablets, pocket dividers, tabbed dividers and
index guides," are goods that are in
registrant's normal field of expansion.
Furthermore, according to the Examining Attorney, because "[t]he
evidence of record establishes that office supplies and
photocopying and document reproduction services are sold together
in retail stores and that there are [registrations of] marks on
the principal register in which office supplies and photocopying
or document reproduction services originate from the same
source," the Examining Attorney asserts that:
In this case, the average consumer, who uses
registrant's photocopying services, under the
mark DOCUWORKS, would recollect the mark,
DOCUWORKS, when purchasing applicant's office
supplies, such as copier paper and laser
paper, at a retail store. They would
Ser. No. 75/543,910
6
mistakenly assume some sponsorship,
affiliation or connection between the goods
and services because they are used together
and are commercially related.
As to applicant's remaining contentions, the Examining
Attorney urges that the absence of any known incidents of actual
confusion over the course of a year's time is not controlling on
the issue of likelihood of confusion, particularly since, in an
ex parte proceeding, "the registrant has not had an opportunity
to be heard on the issue"; that "[w]hile there are other 'DOCU'
[formative] marks on the principal register, there is only one
DOCUWORKS mark on the principal register and that is the cited
mark in this case"; and that, even though applicant adopted its
mark in good faith, such "does not change the fact that office
supplies, such as copier paper and laser paper, and photocopying
and document reproduction services are used together, and will
likely be associated with one another in the minds of consumers."
Any doubt, therefore, as to whether there is a likelihood of
confusion must, the Examining Attorney maintains, be resolved in
favor of the registrant.
As support for her position, the Examining Attorney
notes that the record contains copies of various excerpts from
the "NEXIS" database, use-based third-party registrations and an
advertisement which, according to the Examining Attorney,
constitute "evidence that office supplies and photocopying or
document reproduction services are sold together in retail
stores." Representative of the 14 "NEXIS" excerpts are the
following (emphasis added):
Ser. No. 75/543,910
7
"Staples Inc. said it will open an
office superstore ... in Russellville.
The ... store will carry general office
supplies, office furniture, computers,
business machines and assorted software.
Faxing, photocopying and binding services
will also be available." -- Arkansas
Democrat-Gazette, April 21, 1999;
"Many small businesses and student
customers want to shop for office supplies
and use photocopy machines 'whenever it's
most convenient, even if it's 3 in the
morning,' Staples President Jim Peters said.
Westboro-based Staples is believed to be the
first among office supply stores to open all
night." -- Patriot Ledger (Quincy, MA), April
8, 1999;
"Farther north, construction is
scheduled to begin ... on a new Kinko's. The
photocopying shop and office supply store is
leaving its location ... for a larger store
...." -- Broward Daily Business Review,
December 9, 1998;
"The coalition has been lobbying for
four years to block the Postal Service from
offering photocopying, packaging services and
money transfer services, as well as the sale
of office supplies and novelty items." --
Washington Post, October 23, 1998;
"Banc One spokesman John Russell said
the bank is seeking retailers like Mail Boxes
Etc. to draw customers to the bank. He said
the retailer, which provides postal services,
packing and shipping, photocopying, faxing,
and office supplies in 2,700 stores in the
United States, attracts small business
customers ...." -- American Banker, March 7,
1997; and
"The Thatches opened the photocopying
and office supply shop ...." -- Kansas City
Star, August 31, 1995.
Of the use-based third-party registrations, there are
seven which list marks which are registered for photocopying
services and/or document reproduction services, on the one hand,
Ser. No. 75/543,910
8
and retail store services featuring office supplies, on the
other. Four of these, however, are owned by the same registrant.
In addition, there is one third-party registration for a mark
which is registered both for document reproduction services and
such office supplies as "paper, namely, copy, bond and colored."
While, admittedly, the third-party registrations are not evidence
that the different marks shown therein are in use or that the
public is familiar with them, it nevertheless is settled that
such registrations have probative value to the extent that they
serve to suggest that the services and goods listed therein are
of the kinds which may emanate from a single source. See, e.g.,
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
(TTAB 1988) at n. 6.
Furthermore, as pointed out by the Examining Attorney,
the record also contains a Yellow Pages advertisement by "Office
Depot" which touts the retail availability of both "Office
Supplies" and an "In-Store Copy & Print Center." Applicant, we
additionally observe, likewise submitted a copy of essentially
the same ad (see exhibit D) with its request for reconsideration.
As correctly noted by the Examining Attorney in her
brief, it is well settled that goods and services need not be
identical or even competitive in nature in order to support a
finding of likelihood of confusion. Instead, it is sufficient
that the goods and services are related in some manner and/or
that the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons under
Ser. No. 75/543,910
9
situations that would give rise, because of the marks employed in
connection therewith, to the mistaken belief that they originate
from or are in some way associated with the same entity or
provider. See, e.g., Monsanto Co. v. Enviro-Chem Corp., 199 USPQ
590, 595-96 (TTAB 1978) and In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). It is also well
established that a refusal under Section 2(d) of the statute is
proper if use of the respective marks in connection with any of
the goods and services respectively set forth in the application
and cited registration would be likely to cause confusion. See,
e.g., Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d
1335, 209 USPQ 986, 988 (CCPA 1981) [likelihood of confusion must
be found if use of a mark for any item in an applicant's
application is likely to cause confusion with a mark for any of
registrant's goods] and Shunk Manufacturing Co. v. Tarrant
Manufacturing Co., 318 F.2d 328, 137 USPQ 881, 883 (CCPA 1963)
[where there is a likelihood of confusion as to any of the goods
listed in an application, it is unnecessary to rule on other
goods listed therein].
While, in the present case, the issue of whether any of
applicant's goods would be viewed by purchasers as sufficiently
related to the cited registrant's services is concededly a close
question, we cannot agree with applicant's contentions, as
reiterated in its reply brief, that the evidence of record
establishes that the respective goods and services are unrelated
because, for instance, "consumers never could find office
supplies under Brand A and photocopying services under Brand B in
Ser. No. 75/543,910
10
the same stores" and that "office supplies and document
reproduction services never are offered by a single source under
a single mark" (emphasis in original). Instead, we are
constrained to concur with the Examining Attorney that the record
demonstrates that there are retailers which offer to consumers,
typically under the same house mark (although in one instance
under the identical product and service mark), office supplies
such as inkjet paper, laser paper and copier paper, on the one
hand, and photocopying and/or document reproduction services, on
the other. In view thereof, and given the obvious inextricable
nexus between various inkjet, laser and copier papers and the
photocopying and document reproduction services which utilize
such products, we believe that consumers, whether ordinary
purchasers or business professionals, would find such goods and
services to be related as to their source or sponsorship,
particularly when offered under the identical mark.
In particular, although applicant's inkjet, laser and
copier papers, as well as its other "garden variety" office
supplies, may not necessarily--in light of applicant's stated
intent--be sold by applicant or registrant in the same retail
outlets where registrant's photocopying and document reproduction
services are performed, it is still the case that consumers
commonly purchase both office supplies and copying services and
that they cross-shop the retail establishments offering such
goods and services. It is therefore reasonable to conclude, in
light of the evidence of record before us, that consumers
familiar with the photocopying and document reproduction services
Ser. No. 75/543,910
11
provided by registrant under its "DOCUWORKS" mark in copy centers
or office supply stores would assume, upon seeing applicant's
inkjet paper, laser paper, copier paper and other office supplies
for sale under the identical mark "DOCUWORKS" in such retail
channels as grocery stores, drug stores and mass merchandisers,
that the respective services and goods share a common origin or
affiliation. Specifically, those acquainted with registrant's
"DOCUWORKS" photocopying and document reproduction services are
likely to assume, for example, that registrant has expanded its
business to offer, under the identical mark "DOCUWORKS," a line
of closely related office supplies such as inkjet, laser and
copier paper.
Our conclusion in this regard is not diminished or
otherwise altered by applicant's statement that its chief
financial officer is unaware of the occurrence of any incidents
of actual confusion during the year since applicant commenced
marketing its office supplies in March 1999. While the absence
of any instances of actual confusion over a significant period of
time is a factor indicative of no likelihood of confusion, it is
a meaningful factor only where the record demonstrates
appreciable and continuous use by the applicant of its mark in
the same markets as those served by registrant under its mark.
See, e.g., Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992). It is not a mitigating factor where, as here,
the record is devoid of information concerning details of the
nature and extent of the sales and marketing activities of
applicant and registrant under their respective marks; the
Ser. No. 75/543,910
12
asserted period of contemporaneous use thereof has been
exceedingly short; and the goods and services involved do not
appear to be very expensive, such that any instances of actual
confusion would be expected to be reported by consumers and thus
would have come to the attention of applicant and/or registrant.
Compare In re General Motors Corp., 23 USPQ2d 1465, 1470-71 (TTAB
1992). Moreover, while the prefix "DOCU-" may indeed be
suggestive of a wide variety of goods and services involving
documents, including office supplies used in their creation as
well as document photocopying and other reproduction services,
there is nothing in the record which indicates that the mark
"DOCUWORKS" similarly has been so commonly adopted and/or used in
connection with numerous goods and services that it is entitled
to only a narrow scope of protection.
Finally, to the extent that we may nevertheless have
any doubt concerning whether the contemporaneous use of the mark
"DOCUWORKS" by applicant for office supplies, including inkjet
paper, laser paper and copier paper, and by registrant for
photocopying and document reproduction services is likely to
cause confusion, we resolve such doubt, as we must, in favor of
the registrant. See, e.g., In re Hyper Shoppes (Ohio) Inc., 837
F.2d 840, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988) and In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal under Section 2(d) is affirmed.