Connect, Inc.

Trademark Trial and Appeal Board

Mar 27, 2002

No. 75695626 (T.T.A.B. Mar. 27, 2002)

3/27/02
Hearing: Paper No.
January 15, 2002 TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Connect, Inc.
________

Serial No. 75/619,820
Serial No. 75/695,625
Serial No. 75/695,626
Serial No. 75/695,630
_______

Clyde R. Christofferson for Connect, Inc.

Michael Webster, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
_______

Before Simms, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

The above applications have been filed by Connect, Inc. to
register the following marks:
POWERNET
for "high speed computer hardware communication
servers and computer network device interoperability
software for use in integrating multiple and
incompatible asynchronous wireless client computer
networks"1 in Class 9.

1 Serial No. 75/619,820; filed January 12, 1999, alleging dates of
first use and first use in commerce on May 15, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
2
POWERNET TWINCLIENT
for "Computer software for wireless data terminals
for use in providing high speed interoperability
between servers and both thin and thick clients"2
in Class 9.

POWERNET OPENAIR
for "high speed computer hardware communication
servers and wireless computer network device
interoperability software for use in providing
interoperable wireless computer network services"3
in Class 9.

POWERNET ENTERPRISE
for "priority management computer software for
use in managing the performance of data with
different class of service requirements on a
computer network"4 in Class 9.

The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act in each application on
the ground that applicant's marks, when used in connection with
applicant's goods, so resemble the mark POWERNET shown in
Registration No. 1,877,456 for "computer software programs for
use with uninterruptible power supplies (UPSs) for UPS monitoring

2 Serial No. 75/695,625; filed April 30, 1999, alleging dates of first
use and first use in commerce on January 15, 1999.
3 Serial No. 75/695,626; filed April 30, 1999, alleging dates of first
use and first use in commerce on April 15, 1999.
4 Serial No. 75/695,630 filed April 30, 1999, alleging a bona fide
intention to use the mark in commerce; the word ENTERPRISE has been
disclaimed.
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
3
and unattended shutdown of network operating systems" as to be
likely to cause confusion.5
When the refusal in each case was made final, applicant
appealed. Briefs have been filed and an oral hearing was held.
Because the issues in these four applications are substantially
the same, the appeals have been consolidated and are being
treated in a single decision.
In any likelihood of confusion analysis, we look to the
factors set forth in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand and the evidence
of record, including the similarity of the marks and the
relatedness of the goods or services.
Applicant's mark POWERNET and registrant's mark POWERNET are
identical in sound and appearance. The meaning of POWERNET may
differ somewhat in relation to the respective goods, POWERNET in
registrant's mark suggesting electrical support to a network and
applicant's POWERNET mark suggesting the strength of the network.
However, these differences in meaning are subtle, and not likely
to be readily perceived or recalled by purchasers in a marketing
environment. Thus, we find that the similarities in the two
terms far outweigh any possible differences in their meaning.

5 Issued February 7, 1995; Section 8 and 15 affidavit accepted and
acknowledged, respectively.
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
4
Moreover, although POWERNET is suggestive of the respective
goods, there is no evidence that the term is commonly used or
registered for such goods, or any other evidence in the record to
suggest that POWERNET should be entitled only to a limited scope
of protection.
Registrant's POWERNET mark is fully encompassed by
applicant's other marks, POWERNET TWINCLIENT, POWERNET ENTERPRISE
and POWERNET OPENAIR. The additional words in those marks,
TWINCLIENT, ENTERPRISE and OPENAIR, do not substantially affect
the overall commercial impressions the marks convey, particularly
in view of the suggestive nature of those words in relation to
the identified goods. The term TWINCLIENT suggests the type of
computer configuration, the term OPENAIR suggests the type of
transmission, and the disclaimed word ENTERPRISE is at least
suggestive of the type of network.6 Therefore, each of
applicant's marks, when considered in relation to the mark
POWERNET alone, is more likely to suggest a product related to

6 The identification of goods for the POWERNET TWINCLIENT mark states
that applicant provides software for use "between...both thin and thick
clients." A "thin client" is defined as "a desktop computer that
downloads all applications from the network server and obtains all of
its data from and stores all changes back to the server" and a thick or
"fat client" is "[a] client machine in a client/server environment that
performs most or all of the application processing with little or none
performed in the server." The Computer Glossary (Eighth Edition 1998).
The word "enterprise" suggests, for example, that applicant's network
includes different types of networks and computer systems from
different vendors. Id. The term "open air transmission" is defined in
the Data Telecommunications Dictionary (1999) as "[a] type of
transmission.... Radio, shortwave, and microwave transmissions are
primarily open air systems."
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
5
registrant's POWERNET software rather than a different product
and source therefor.
Turning to the goods, the Examining Attorney contends that
applicant's and registrant's goods are related based on the fact
that registrant's UPS software is used in connection with
applicant's hardware communications servers and software
products. The Examining Attorney argues that both applicant's
and registrant's software products are used with communication
servers in a computer network and that a computer network
encompasses wireless networks. The Examining Attorney has
submitted the following computer dictionary definition of UPS
describing the function and purpose of a UPS device as:
Backup power used when the electrical power fails or drops
to an unacceptable voltage level. A UPS system can be
connected to a file server so that, in the event of a
problem, all network users can be alerted to save files and
shut down immediately.7

As support for his position that the goods are related, the
Examining Attorney has made of record six use-based third-party
registrations and one third-party application covering both power
supplies or uninterruptible power supplies for computers, on the
one hand, and communications servers and software, including

7 The Computer Desktop Encyclopedia (1996).
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
6
client/server software, on the other.8 In arguing that the
respective goods are likely to be used and purchased by the same
parties, the Examining Attorney notes that there are no
restrictions in the respective identifications of goods as to
markets or purchasers and points to the statement in the second
of two declarations of applicant's CEO, James F. Christofferson,
that "both products may be purchased by the same ultimate
consumer." The Examining Attorney maintains that despite the
fact that respective goods perform different functions, the same
person, such as a network administrator, will purchase both
products or will influence purchasing decisions.
Applicant, on the other hand, attempts to distinguish the
markets or fields for the respective goods as well as the
purchasers for those goods. Based on the two declarations of Mr.
Christofferson, applicant argues that the products, while both
involving computer software and some connection to computer
networks, are unrelated in that they are used in different ways
in different fields "having nothing to do with one another apart
from a common connection to the general field of computers."
(Brief, p.2). Applicant contends that while registrant's goods

8 The remaining seven third-party applications submitted by the
Examining Attorney are not based on use, but rather on an intention to
use the mark, and are therefore of little probative value. The
Examining Attorney's printouts from the two third-party websites are
not particularly useful because it is not clear from either web page
that any computer products are being offered.
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
7
are "used in the field of power management to computer networks,"
applicant's products "[are] in the field of interoperability of
devices serving wireless computer networks." (Brief, p.6).
Applicant maintains that the fact that both products "have some
connection to computer networks," does not in itself establish a
relationship whereby relevant persons would be confused.
Applicant further argues that "there is not a shred of
evidence that those who would be involved in the purchase of
applicant's products would also be involved in the purchase of
registrant's [products]." (Brief, p.6). It is applicant's
contention that the Examining Attorney has failed to identify
"'relevant persons' who would be confused by the two marks."
(Reply brief p.2). According to applicant, the purchasing of
uninterruptible power supplies would fall to those responsible
for facilities management whereas "the customers with whom
[applicant does] business typically have purchased or are about
to purchase handheld bar code scanners to be used in keeping
track of inventory and the like." (Decl. January 31, 2000, p.1).
Relying on Electronic Design & Sales, Inc. v. Electronic Data
Systems Corp., 954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992),
applicant argues that the fact that both products "may be
purchased by the same ultimate consumers" is not sufficient to
identify a "relevant person" within the meaning of that case
since the "ultimate consumers" are companies, not individuals
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
8
within the companies. Applicant further contends that the
sophistication of the purchasers of its products "is evident"
(brief p. 6) and that there is no evidence that the "ordinary
user" of computers on a network would have occasion to knowingly
use these products much less have more than a de minimis
influence on purchasing decisions for those products.
Where the marks are identical, or nearly so, as in this
case, it is only necessary that there be a viable relationship
between the goods in order to support a holding of likelihood of
confusion. In re Concordia International Forwarding Corp., 222
USPQ 355, 356 (TTAB 1983). There is at least a viable
relationship between the goods in these cases.
First, it is necessary to understand the nature of
registrant's software program and the importance of its role in
network operations and stability. Registrant's software program
is used with uninterruptible power supplies (UPSs) for UPS
monitoring and unattended shutdown of network operating systems.
The UPS device is described in the dictionary definition supplied
by the Examining Attorney, and to further assist our
understanding of applicant's software, we take judicial notice of
the following additional dictionary references. To begin with,
as explained in Random House Webster's Computer and Internet
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
9
Dictionary,9 the "power supply," that is, "the component that
supplies power to a computer," is usually provided through a
standard electrical outlet. Since not all power supplies "do an
adequate voltage-regulation job,...a computer is always
susceptible to large voltage fluctuations." Id. For example,
power surges, blackouts or brownouts may cause damage to the
server and may cause unsaved data to be corrupted or
irretrievably lost. See Microsoft Computer Dictionary Fourth
Edition (1999). In order to prevent such damage, an
uninterruptible power supply (UPS) device is connected between a
computer and the power supply to "ensure[] that electrical flow
to the computer is not interrupted." Id. As further explained,
UPS devices
...are equipped with a battery and a loss-of-power sensor;
if the sensor detects a loss of power, it switches over to
the battery so that the user has time to save his or her
work and shut off the computer.

It is noted, as indicated in Random House Webster's Computer &
Internet Dictionary, supra, that many UPSs "now offer a software
component that [enables the user] to automate backup and shutdown
procedures in case there is a power failure while [the user] is
away from the computer." This is the type of software registrant
provides under its POWERNET mark.

9 Third Edition, 1999.
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
10
There is no question that there are specific differences in
the respective products in this case. They do not have the same
function and they are not used for the same purpose.10 However,
the question is not whether purchasers can differentiate the
goods themselves but rather whether purchasers are likely to be
confused as to the source of the goods. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
Thus, it is not necessary that the goods of the applicant and
registrant be similar or competitive to support a finding of
likelihood of confusion. It is sufficient if the respective
goods are related in some manner and/or that the conditions
surrounding their marketing are such that they would be
encountered by the same persons under circumstances that could,
because of the similarity of the marks used thereon, give rise to
the mistaken belief that they emanate from or are associated
with, the same source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993).
Notwithstanding the differences in these products,
applicant's communications servers and software, on the one hand,
and registrant’s UPS software, on the other, are related in the
sense that the UPS software would be an important if not an
indispensable accessory for applicant's hardware server system

10 However, contrary to applicant's apparent contention, the terminology
"computer network" retains its ordinary meaning in the context of
either applicant's or registrant's goods.
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
11
and associated software used in running wireless communications.
In addition, the third-party registrations and third-party
application made of record by the Examining Attorney, while not
evidence of use of the marks therein, suggest that applicant's
and registrant's products are of a type that would emanate from
the same source. See, e.g., In re Albert Trostel & Sons Co.,
supra at 1785-1786; and In re Mucky Duck Mustard Co., 6 USPQ2d
1467 (TTAB 1988).
Applicant contends that the markets for the respective
products are different. However, there is no restriction in
registrant's identification which would limit registrant's sale
of its UPS software to any particular market or field. In fact,
it would seem to be a matter of common sense for any company to
use some form of UPS device to ensure the stability and efficient
performance of its computer system, regardless of the particular
field in which that system is used.
Furthermore, the purchasers for applicant's and registrant's
products would be the same. It is reasonable to assume that the
same individuals, that is, a network manager or administrator or
consultant or some other computer specialist in a company, would
make the purchasing decisions concerning both products. There is
no limitation in registrant's identification of goods, and
nothing inherent in the nature or function of its goods which
would operate to limit the particular purchasers for registrant's
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
12
UPS software to purchasers other than those who would purchase
applicant's goods. Furthermore, although applicant denies that
the respective purchasers are the same, applicant has failed to
identify any person or department within its customers'
organizations who would be responsible for purchasing applicant's
system, and has not explained why such person would not also
purchase power supply software for that system from registrant.
Moreover, even if the actual purchasers for the respective
products are not the same, the users of applicant's network, not
the "ordinary user" described by applicant, but those responsible
for the management or maintenance of the system, would be likely
to influence the decision to purchase such goods in the future.
Finally, we note that although no specific evidence on this
point has been submitted, it is reasonable to assume that the
overlapping customers for, or users of, applicant's and
registrant's goods would be relatively sophisticated and
knowledgeable about those products. However, even such persons
would be susceptible to source confusion, particularly under
circumstances where, as here, the goods are related and are sold
under virtually identical or substantially similar marks. See In
re Total Quality Group Inc., 51 USPQ2d 1474 (TTAB 1999).
To the extent that we have any doubt on the issue of
likelihood of confusion, it is settled that such doubt must be
Ser. Nos. 75/619,820; 75/695,625; 75/695,626; and 75/695,630
13
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register in each case is affirmed.