Breach Security, Inc.

Trademark Trial and Appeal Board

Jun 18, 2007

No. 78668939 (T.T.A.B. Jun. 18, 2007)

Mailed: June 18, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Breach Security, Inc.
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Serial No. 78668939
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Kathleen A. Pasulka of Procopio Cory Hargreaves Savitch LLP
for Breach Security, Inc.

John E. Mikos, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Grendel, Cataldo and Bergsman,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Breach Security, Inc. to
register the mark WEBDEFEND in standard character form on
the Principal Register for the following goods, as amended:
“Network security appliance that prevents security breaches
in web applications” in International Class 9.1

1 Application Serial No. 78668939 was filed July 12, 2005, based
on applicant’s assertion of its bona fide intent to use the mark
in commerce.

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76587886
2
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as intended to be used on its goods, so
resembles the mark WEBDEFENDER, previously registered on
the Principal Register in typed or standard character form
for “computer software for controlling access to resources
on global computer information network through one-time
password token based authentication” in International Class
9,2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs on
the issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, however, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.

2 Registration No. 2947022, issued May 10, 2005.
Ser No. 76587886
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Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Marks
We begin by considering the similarities and
dissimilarities between the marks. In our likelihood of
confusion analysis, we must compare the marks in their
entireties as to appearance, sound, connotation and
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). The test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in their entireties that confusion as to the source
of the goods offered under the respective marks is likely
to result.
In this case, applicant’s mark, WEBDEFEND, comprises
the majority of the cited mark, WEBDEFENDER. The only
difference between the marks is the presence of the letters
“ER” at the end of the registered mark. Consumers are not
likely to note or remember such a minor difference that
barely affects either the pronunciation or appearance of
the marks. As such, applicant’s mark is nearly identical
to the mark in the cited registration in appearance and
Ser No. 76587886
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sound. We note that under actual marketing conditions,
consumers do not necessarily have the luxury of making
side-by-side comparisons between marks, and must rely upon
their imperfect recollections. See Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). Further,
both marks connote goods that provide security or defense
for products accessing a computer network or web. Thus,
despite the fact that the applicant’s mark lacks the last
syllable of the mark in the cited registration, the marks
WEBDEFEND and WEBDEFENDER are highly similar in appearance,
pronunciation, connotation and commercial impression.
In support of its argument that the mark in the cited
registration is weak and thus entitled to a narrow scope of
protection, applicant submits printed copies of pending
trademark applications from a private database
(trademark.com) as well as a printed summary of the results
of a search of the term “defender software” on the Google
Internet search engine.3 We note, however, that an
application made of record in a Board ex parte proceeding
is of very limited probative value, and is evidence only of

3 Inasmuch as the examining attorney did not object to
applicant’s submission of third party applications taken from a
private database with its response to the first Office action, we
will consider them of record for such probative value as they may
have. See TBMP §1208.02 (2d ed. rev. 2004) and the authorities
cited therein.

Ser No. 76587886
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its filing. See In re Phillips-Van Heusen Corp. 63 USPQ2d
1047, 1049 n.4 (TTAB 2002). In addition, the listed
applications submitted by applicant are for marks that are
more dissimilar from registrant’s mark than the mark in the
application at issue herein. Similarly, the Google search
summary is of very limited probative value in that there is
too little information contained therein to determine the
nature and extent of use of the marks referenced therein.
In addition, of course, there is no way to know what
effect, if any, these purported uses of “DEFENDER” marks
may have had in the minds of consumers. See Carl Karcher
Enterprises Inc. v. Star Restaurants Corp., 35 USPQ2d 1125,
1131 (TTAB 1995). Thus, we find applicant’s argument and
evidence unpersuasive.
Nonetheless, and as noted above, both applicant’s
WEBDEFEND mark and registrant’s WEBDEFENDER mark connote
goods that provide security for products accessing a
computer network. Applicant’s goods, as identified,
prevent security breaches in computer network applications.
Registrant’s goods, as identified, control access to
resources on computer networks through password
authentication. Thus, we find that both marks, on their
faces, are somewhat suggestive as applied to their
respective goods. As a result, we find that registrant’s
Ser No. 76587886
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mark is entitled to a narrower scope of protection than
that afforded to a more distinctive mark. See, for
example, Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915,
189 USPQ 693, 694-95 (CCPA 1976).
In view of the similarities between the marks, and
their relative weakness notwithstanding, this du Pont
factor favors a finding of likelihood of confusion.
The Goods
We next turn to the similarity or dissimilarity
between applicant’s goods and the goods identified in the
cited registration. In his discussion of the relationship
between the goods, the examining attorney states as
follows:
There is no indication in the record as to the
precise nature of applicant’s “network security
appliance.” It is plausible that it either
consists of or utilizes computer software to
accomplish its purpose of securing the web
applications. The registrant’s goods are
computer software. Accordingly, registrant’s
identification of goods without limitation should
be accorded due deference and must be considered
to be closely related to applicant’s goods.

(Brief, p. 7). We note, however, that registrant’s
computer software is not identified without limitation, but
rather is used specifically “for controlling access to
resources on global computer information network through
one-time password token based authentication.” Thus, we
Ser No. 76587886
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are not persuaded by the examining attorney’s conclusory
statement that applicant’s “network security appliance”
must be found to be related to the goods identified in the
cited registration.
In support of his contention that the goods are
related, the examining attorney has submitted copies of
several third-party registrations. However, the third-
party registrations submitted by the examining attorney
fail to yield a single registration in which the same mark
is used to identify a “network security appliance” or, for
that matter, any sort of goods that prevent security
breaches, and registrant’s goods. While the third-party
registrations make reference to goods that are similar to
those identified in the cited registration, they do not
refer either to the goods recited in the challenged
application or to similar goods used for the purpose of
providing computer network security. In short, none of the
evidence submitted by the examining attorney demonstrates
or suggests that applicant’s goods and registrant’s goods
emanate from a common source. Thus, in the present case,
there is insufficient evidence to support the examining
attorney’s conclusory statement that registrant’s goods and
applicant’s goods are related. Nor are applicant’s goods,
as identified, so closely related to registrant’s goods
Ser No. 76587886
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that we may find upon the face thereof that they are
complementary or that a viable relationship exists between
them. Furthermore, because it is not clear that
applicant’s goods consist in whole or in part of computer
hardware, we are not persuaded by the examining attorney’s
argument that our previous case law compels a finding that
such goods are related to those of registrant.
Based on this record and the mere conclusory statement
of the examining attorney, we see the likelihood of
confusion claim asserted by the examining attorney as
amounting to only a speculative, theoretical possibility.
Language by our primary reviewing court is helpful in
resolving the likelihood of confusion issue in this case:
We are not concerned with mere theoretical
possibilities of confusion, deception, or mistake
or with de minimis situations but with the
practicalities of the commercial world, with
which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
418 F.2d 1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g
153 USPQ 412 (TTAB 1967). Further, we are not persuaded
that applicant’s goods are within the normal field of
expansion for registrant’s recited goods. Simply put,
there is nothing in the record to support a finding that
Ser No. 76587886
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purchasers are likely to believe that registrant will
expand its goods to encompass the goods identified in the
application at issue. Cf. In re General Motors Corp., 196
USPQ 574 (TTAB 1977). Accordingly, based upon the record
before us this du Pont factor weights heavily against a
finding of likelihood of confusion.
In reaching our decision on likelihood of confusion we
have not relied upon applicant’s arguments regarding
sophistication of purchasers. In that regard, we note
that, as identified, applicant’s goods as well as those of
registrant may well be used by sophisticated purchasers.
However, there is no evidence of record that either
registrant’s or applicant’s goods would be purchased only
by highly sophisticated persons. Further, it is settled
that even sophisticated purchasers are not necessarily
knowledgeable in the field of trademarks or immune from
source confusion. See In re Decombe, 9 USPQ2d 1812, 1814-
1815 (TTAB 1988).
In view primarily of the lack of evidence of a
relationship between applicant’s goods and the goods
identified in the cited registration, we find that the
examining attorney has not met his burden of demonstrating
that a likelihood of confusion exists between applicant’s
goods and those of registrant.
Ser No. 76587886
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Decision: The refusal of registration is reversed.
Accordingly, the involved application will be forwarded for
publication in due course.