Compu-netix, Inc.

Trademark Trial and Appeal Board

Sep 14, 2004

No. 75373098 (T.T.A.B. Sep. 14, 2004)

Mailed: 9/14/04
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Compunetix, Inc.
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Serial No. 75373098
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Ansel M. Schwartz for applicant.
Ann E. Sappenfield, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______
Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Compunetix, Inc. to
register the mark ENSEMBLE for “equipment, namely,
videoconferencing bridges for use in displaying two or more
images simultaneously for videoconferencing.”1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, if applied to applicant’s goods, would so
1 Application Serial No. 75373098, filed October 14, 1997, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75373098
2
resemble the previously registered mark ENSEMBLE for
“telecommunications services, namely, electronic and
wireless transmission of messages, voice, and data;
electronic messaging services, namely, the recording,
storage and retrieval of voice and text messages; [and]
providing access to a global computer network,”2 as to be
likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
The examining attorney maintains that, in addition to
the marks’ being identical, applicant’s goods and
registrant’s services are complementary. According to the
examining attorney, the recitation of services in the cited
registration is broad enough to include teleconferencing
services, and applicant’s “teleconferencing hardware” is
likely to be used in conjunction with teleconferencing
services. Further, the examining attorney asserts,
applicant’s goods are in the normal fields of expansion of
registrant’s services. In support of the refusal, the
examining attorney submitted fifteen third-party
registrations which show, according to the examining
attorney, that entities have registered a single mark for
2 Registration No. 2283712, issued October 5, 1999.
Ser No. 75373098
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both telecommunications hardware and related
telecommunications services. The examining attorney also
submitted a dictionary definition of “ensemble.”
The gist of applicant’s argument is that, although the
goods and services in this case fall under the general
category of “telecommunications,” this fact does not
automatically mean that they are related for purposes of
likelihood of confusion. Applicant contends that its
bridges are used in videoconferencing where two or more
images (connecting three or more parties) appear on the
display; two-party calls would not utilize such goods
because these calls would not need a videoconferencing
bridge. Applicant indicates that its bridges cost over
$75,000 each. Applicant also points to the fact that there
are different purchasers for the involved goods and
services; registrant’s services are bought by ordinary
individuals who need to send messages electronically,
whereas applicant’s goods are directly bought by a
purchasing agent for a company, generally a
telecommunications service provider, after negotiating with
one of applicant’s salespersons. Applicant further states
that the purchasers of its expensive bridges are
sophisticated. According to applicant, there have been no
instances of actual confusion despite three years of
Ser No. 75373098
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contemporaneous use of the marks. Applicant submitted a
product brochure.
Our determination under Section 2(d) 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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities or dissimilarities between the marks and the
similarities or dissimilarities between the goods and/or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The marks involved herein are identical. This factor
obviously weighs in favor of a finding of likelihood of
confusion.
We turn next to the second du Pont factor, that is,
the similarity or dissimilarity of applicant’s and
registrant’s respective goods and services. As has been
often stated, it is not necessary that the goods and/or
services of the parties be similar or competitive, or even
that they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods and/or services of the parties are
related in some manner, and/or that the conditions and
Ser No. 75373098
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activities surrounding the marketing of the goods and/or
services are such that they would or could be encountered
by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken
belief that they originate from the same producer. In re
Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); and In re International
Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
The mere fact that applicant’s goods and registrant’s
services fall under the broad category of
“telecommunications” is an insufficient basis upon which to
find that the goods and services are related for purposes
of our likelihood of confusion analysis. See: Electronic
Data Systems Corp. v. EDSA Micro Corp., 23 USPQ2d 1460
(TTAB 1992). Applicant’s highly specialized
videoconferencing bridge is distinctly different from
registrant’s particular telecommunications services that
offer users the ability to send messages electronically to
each other.
It is common knowledge that telecommunications have
invaded virtually every facet of business and personal life
in this country. Whether teleconferencing or
videoconferencing, using a cell phone, e-mailing, IM-ing or
otherwise, the use of telecommunications is ubiquitous in
Ser No. 75373098
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all aspects of life, especially in business. Thus, we are
not persuaded that a relationship exists between
applicant’s goods and registrant’s services simply because
each fits in the extraordinarily broad category of
telecommunications.
Applicant’s videoconferencing bridge, as shown by the
product literature of record, is a specialized piece of
equipment with a very distinct technical function, namely,
to provide multi-image displays for videoconferencing.
This equipment is used to provide continuous, real time
video when conferencing three or more parties. According
to applicant, the goods cost in excess of $75,000 apiece,
and are purchased through direct sales between the end user
and applicant’s salesperson, only after a period of
negotiation.
A significant factor in our decision is not only the
differences in the specific nature of applicant’s goods and
registrant’s services, but the differences in classes of
purchasers for these goods and services. Although the
examining attorney repeatedly refers to a “consumer” being
confused, no indication is ever given as to the identity of
this “consumer” or as to what class this “consumer”
belongs. Although registrant’s services appear to be
rendered to ordinary consumers, it is clear that
Ser No. 75373098
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applicant’s videoconferencing bridges are not purchased by
these same consumers. As identified in applicant’s
application, videoconferencing bridges are not the type of
goods purchased by ordinary consumers, a fact further
confirmed by applicant. Rather, as indicated by applicant,
its goods are sold to telecommunications service providers
such as MCI and Sprint. Simply stated, the examining
attorney failed to identify any overlap in prospective
purchasers for the goods and services; indeed, based on
this record, it would appear that there are no common
customers for them.3
Further, at least insofar as applicant’s goods are
concerned, they are purchased after careful consideration
by sophisticated and discriminating purchasers employed by
telecommunications service providers. This factor supports
our conclusion that confusion is unlikely to occur.
In this case, in an attempt to show a relationship
between applicant’s goods and registrant’s services, the
examining attorney made of record fifteen third-party
registrations that show companies have registered their
3 We recognize that the individuals who buy the bridges for the
telecommunications service providers would, of course, also be
purchasers of telecommunication services inasmuch as virtually
everyone has a cell phone or access to the Internet. However,
such people are obviously sophisticated purchasers who would know
that these goods and services do not emanate from the same
entities.
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marks for both telecommunications goods and services.
Third-party registrations which individually cover a number
of different goods and/or services 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. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993).
We do not find that this evidence is persuasive of a
different result herein. As previously noted, the field of
telecommunications is so vast that third-party
registrations for goods and services in this general area
are not sufficient to show that all telecommunications
goods and services, and more particularly, applicant’s
videoconferencing bridges and registrant’s
telecommunications services, are related. In point of
fact, not a single one of these registrations covers both
the specific goods and services shown in the application
and registration, namely, videoconferencing bridges on the
one hand, and electronic and wireless transmission of
messages, voice and data, electronic messaging services and
providing access to a global computer network on the other.
Further, a close review shows that few of the registrations
cover videoconferencing goods and/or services, adding
credence to applicant’s claim that videoconferencing is a
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niche market. Likewise, we do not find this evidence
persuasive to show that applicant’s goods are in the normal
fields of expansion of registrant. As pointed out by
applicant, videoconferencing is a unique area of extreme
technical complexity which precludes a natural expansion
for telecommunications entities.
Lastly, although certainly not dispositive, the fact
that, during a three-year period of contemporaneous use of
the marks, applicant has not heard of any instances of
actual confusion, lends further support to our view that
confusion is not likely.
Based on the record before us, we see the examining
attorney’s assessment of the likelihood of confusion as
amounting to only a speculative theoretical possibility.
We conclude that even when sold under identical marks, the
differences between applicant’s goods and registrant’s
services, and the differences in the prospective purchasers
therefor, preclude a likelihood of confusion.
Decision: The refusal to register is reversed.