Computer Network Systems, Inc.

Trademark Trial and Appeal Board

Jun 4, 2007

No. 76557740 (T.T.A.B. Jun. 4, 2007)

Mailed: 6/4/07

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Computer Network Systems, Inc.
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Serial No. 76557740
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Donna M.D. Thomas and David R. Hale of Astrachan Gunst
Thomas for Computer Network Systems, Inc.

Tasneem Hussain, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Quinn and Grendel, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Applicant filed an application to register the mark
PRIORITY PARTNERS for
Franchising services, namely, offering
technical and administrative assistance
in the establishment and/or operation
of a computer consulting and computer
network support business, excluding
computer programming and software
design; distributorships in the field
of computer and network related
hardware and software (in International
Class 35);

THIS DISPOSITION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76557740
2
Installation, maintenance and repair of
computer networks (in International
Class 37); and

Computer consultation excluding
computer programming and software
design; computer network design for
others; computer systems analysis;
integration of computer systems and
networks; monitoring computer systems
of others for technical purposes and
providing back up computer programs and
facilities; technical support services
namely troubleshooting of computer
hardware and software problems; and
maintenance of computer software,
namely updating computer software for
others (in International Class 42).1

The trademark examining attorney refused registration
in all three classes under Section 2(d) of the Trademark
Act on the ground that applicant’s mark, when applied to
applicant’s services, so resembles the previously
registered mark PRIORITY for “computer programming,
software design, and data processing services in the
accounting, marketing and management fields” (in
International Class 42)2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have submitted briefs.
The examining attorney maintains that applicant’s mark
PRIORITY PARTNERS is dominated by “PRIORITY”; this is

1 Application Serial No. 76557740, filed October 16, 2003,
alleging a bona fide intention to use the mark in commerce.
2 Registration No. 1237819, issued May 10, 1983; renewed.
Ser No. 76557740
3
identical to the entirety of registrant’s mark PRIORITY.
Based on third-party registrations covering services of the
types rendered by applicant and registrant, the examining
attorney contends that the services are related.
Applicant contends that the marks are different, and
that its mark is dominated by the term “PARTNERS.”
Further, applicant argues that the services are different,
and that the services are bought by sophisticated business
purchasers. Applicant also criticizes the third-party
registration evidence submitted by the examining attorney
in an attempt to show that the services are related. Also,
according to applicant, there has been a period of three
years of contemporaneous use of the marks without any
actual confusion. Applicant has introduced a dictionary
definition of “data processing,” and information about
registrant and its services, including a press release and
excerpts from registrant’s website.
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 (CCPA 1973). See also: In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
Ser No. 76557740
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however, two key considerations are the similarities
between the marks and the similarities between the
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 first turn to compare registrant’s mark PRIORITY to
applicant’s mark PRIORITY PARTNERS. In determining the
similarity or dissimilarity of the marks, we must compare
the marks in their entireties as to appearance, sound,
connotation 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). Nevertheless,
it is well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) [“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”].
Ser No. 76557740
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When considering applicant’s mark, we find that the
word “PARTNERS” is subordinate to the remainder of
applicant’s mark, namely the word “PRIORITY.” Purchasers
likely would view the word “PARTNERS” merely as a
designation of applicant’s type of business (whether the
perception is correct or incorrect is irrelevant to our
analysis)3 or that applicant will partner with a customer in
rendering its services. The dominant portion of
applicant’s mark, “PRIORITY,” is identical to the entirety
of registrant’s mark. That is to say, applicant has
appropriated the entirety of registrant’s mark and merely
added an insignificant, subordinate word. Contrary to
applicant’s argument that “PARTNERS” is the dominant
portion of its mark, the dominant portion is the word
“PRIORITY,” which is the first word and most distinctive
portion of the mark, and is the portion of the mark most
likely to be remembered by prospective purchasers. Presto
Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895
(TTAB 1988).
In terms of sound and appearance, the marks look and
sound similar; applicant’s mark begins with “PRIORITY,” and

3 In this connection, we take judicial notice of the dictionary
definition of “partner”: “one that is united or associated with
another or others in an activity or a sphere of common interest,
especially a member of a business partnership.” The American
Heritage Dictionary of the English Language (4th ed. 2000).
Ser No. 76557740
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this is the entirety of registrant’s mark. The marks also
convey similar meanings, both suggesting that the services
rendered thereunder will put the user in a preferential or
more important position, or that the entity makes its
customers and their needs a priority.4 In view of the
similarities between the marks, we find that they engender
similar overall commercial impressions.
The substantial similarity between the marks PRIORITY
and PRIORITY PARTNERS is a factor that weighs heavily in
favor of a finding of likelihood of confusion in this case.
We next turn to a consideration of the services. It
is not necessary that the respective services be
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 services are related in
some manner, and/or that the conditions and activities
surrounding the marketing of the 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
originated from the same producer. In re Melville Corp.,

4 Notwithstanding any suggestiveness of the marks, we note the
absence of evidence of any third-party uses or registrations in
the computer field of marks that are the same as or similar to
the marks involved herein.
Ser No. 76557740
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18 USPQ2d 1386 (TTAB 1991).
According to the dictionary definition submitted by
applicant, the term “data processing” means “the
preparation of information for processing by computers; the
storing or processing of raw data by computers.” The
American Heritage Dictionary (2d College Ed. 1982).
In considering the services we recognize, at the
outset, that there is no per se rule relating to source
confusion vis-à-vis computer products and services. See,
e.g., Information Resources, Inc. V. X*Press Information
Services, 6 USPQ2d 1034, 1038 (TTAB 1985). The Board has
acknowledged that to support a holding of likelihood of
confusion, “there must be some similarity between the goods
and services at issue herein beyond the fact that each
involves the use of computers.” Reynolds & Reynolds Co. v.
I.E. Systems, Inc., 5 USPQ2d 1749, 1751 (TTAB 1987).
As applicant is quick to point out, it has excluded
“computer programming” and “software design” (two of the
three types of services rendered by registrant) from its
services identified in Classes 35 and 42. Applicant, while
stating that “it is theoretically possible that purchasers
of one service might be purchasers of the second,” (Reply
Brief, p. 3), regards the possibility as remote given the
broad field of computers and software. The examining
Ser No. 76557740
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attorney, in support of the Office’s position that
applicant’s and registrant’s services are related,
introduced seven third-party registrations that, according
to the examining attorney, cover the types of services
involved herein. Applicant contends that the registrations
are insufficient to establish a relationship between the
services, asserting, albeit without any evidence in the
record, that there exist registrations and applications for
services in the computer field numbering in “the hundreds
of thousands.” Thus, applicant concludes, the evidence
falls short of showing that the services of applicant and
registrant are commonly offered by a single source.
Third-party registrations which individually cover a
number of different items (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 that may emanate from a
single source. In re Albert Trostel & Sons Co., 29 USPQ
1783 (TTAB 1993). Because this is the only evidence
bearing on the relatedness of the services, a close
inspection of the registrations is necessary.
The examining attorney submitted seven use-based
third-party registrations covering various services in the
computer field. Those registrations, with the pertinent
services indicated, are as follows: Reg. No. 2428698,
Ser No. 76557740
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TRIZETTO for “computer diagnostic services and inspections
of computer networks; maintenance of software for others in
the nature of updating software” in Class 42 (the same as
or similar to applicant’s Class 42 services), and “custom
computer programming services for others, including
database development, information archival and retrieval
services; computer software design services” (the same as
or similar to registrant’s services); Reg. No. 2458918,
SYKES for “computer hardware maintenance services” in Class
37, and “technical support services to users of computer
software and hardware; software maintenance for others” in
Class 42 (the same as or similar to applicant’s Class 37
and 42 services, respectively), and “computer programming,
software design and development, and data processing
consulting” (the same as or similar to registrant’s
services); Reg. Nos. 2607773 and 2721126 for INNOVANTAGE
and CDI CORPORATION, respectively, for “short term computer
hardware and software maintenance” in Class 42 (the same as
or similar to applicant’s Class 42 services) and “data
processing services” and “computer software design services
for others” (the same as or similar to registrant’s
services); Reg. No. 2706085, EXTOL for “software
maintenance for others” in Class 42 (the same as or similar
to applicant’s Class 42 services), and “computer
Ser No. 76557740
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programming and software design” (the same as or similar to
registrant’s services); Reg. No. 2921035, COGITA for
“wholesale and retail distributorships and wholesale and
retail store services featuring computer software, hardware
and peripherals; distributorships in the field of computer
software, hardware and peripherals; business management
services relating to computer software, hardware and
peripherals” in Class 35, “installation, maintenance and
repair of computer hardware,” “installation, repair and
maintenance of network systems consisting of computer
hardware and peripherals” in Class 37, and “installation,
maintenance and repair of computer software” in Class 42
(the same as or similar to applicant’s Class 35, 37 and 42
services, respectively), and “computer software design and
computer programming services for others” (the same as or
similar to registrant’s services); and Reg. No. 2939635,
WORKPLACE MESSAGING for “technical support services, namely
troubleshooting of computer hardware and computer software
problems; integration of computer systems and networks;
installation, updating and maintenance of computer
software; computer systems analysis” in Class 42 (the same
as or similar to applicant’s Class 42 services), and
“computer software design for others; computer programming
Ser No. 76557740
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for others” (the same as or similar to registrant’s
services).
The registrations suggest that applicant’s services in
each of Classes 35, 37 and 42 and registrant’s services in
Class 42 are of types that may emanate from a single source
under the same mark. As can be seen from this evidence,
all of the seven registrations list services in Class 42,
while some list services in both Classes 37 and 42. With
respect to Class 35, we note that only one of the
registrations, Reg. No. 2921035, lists services in this
class. Although this registration does not list
franchising services, the recitation of services does
include a type of distributorship services in Class 35
(applicant’s identification of services includes both
franchising and distributorship services), as well as the
types of services rendered by registrant. Thus, this
registration provides support of the relatedness of
applicant’s Class 35 services and registrant’s services.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 209
USPQ 986, 988 (CCPA 1981) [likelihood of confusion may be
found if there is an overlap in any item in the involved
identifications of goods and/or services].
We find that applicant’s services in Classes 35, 37
and 42 and registrant’s services are sufficiently related
Ser No. 76557740
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that, when rendered under the substantially similar marks
PRIORITY and PRIORITY PARTNERS, confusion is likely to
occur among the relevant purchasers. These purchasers,
familiar with registrant’s services rendered under the mark
PRIORITY, would be likely to believe, upon encountering
applicant’s services under the mark PRIORITY PARTNERS, that
applicant’s services are “partner” or associated services
with those already offered by registrant.
Applicant argues that the customers for the respective
services are not the same; that “they are business people
seeking network support services from Applicant, and
business people within the insurance industry seeking
computer programs and software design and data processing
services from registrant.” (Reply Brief, p. 4).
Applicant, relying on portions of registrant’s website,
attempts to limit registrant’s customers to insurance
agents and carriers. Registrant’s recitation of services,
however, is not so limited; the only limitation on the
services is that they are directed to the “accounting,
marketing and management fields.” The issue of likelihood
of confusion must be determined on the basis of the
services identified in the application and the cited
registrations. In re Dakin’s Miniatures Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). Further, applicant may not
Ser No. 76557740
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restrict the scope of registrant’s services by relying on
extrinsic evidence. Canadian Imperial Bank of Commerce v.
Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Given that applicant’s services are not restricted as to
customers, the services must be construed as broad enough
to encompass customers in the accounting, marketing and
management fields.
Applicant also contends that purchasers of the
involved services are sophisticated. Even assuming
arguendo that purchases of applicant’s and registrant’s
services would involve a deliberate decision,5 this does not
mean that the purchasers are immune from confusion as to
the origin of the respective services, especially when, as
we view the present case, the substantial similarity of the
marks and the similarity between the services outweigh any
sophisticated purchasing decision. See HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902
F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) [similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods]. See also In re
Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50

5 Applicant’s franchising services and distributorship services
in Class 35 necessarily would involve sophisticated purchasers.
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(Fed. Cir. 1986), citing 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.”].
Applicant’s assertion that there have been no
instances of actual confusion does not compel a different
result here. The relevant test is the likelihood of
confusion, and it is unnecessary to show actual confusion
in establishing likelihood of confusion. In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984). In any event, the
involved application is based on an intention to use the
mark. Although applicant states in its brief, filed June
23, 2006, that there has been a three-year period of
contemporaneous use, there is no supporting evidence for
this statement, and given that the application was filed in
October 2003 based on an intention to use the mark, there
is some question as to the accuracy of that statement.
Even if use has commenced, the record is devoid of any
evidence pertaining to the nature and extent of the use by
applicant and registrant and, thus, we cannot ascertain
whether there has been ample opportunity for confusion to
arise.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
Ser No. 76557740
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doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register in all three
classes is affirmed.