DataMirror Corporation

Trademark Trial and Appeal Board

Jan 31, 2006

No. 76456629 (T.T.A.B. Jan. 31, 2006)

Mailed:
January 31, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re DataMirror Corporation
________

Serial No. 76456629
_______

John R. Garber for DataMirror Corporation

Angela M. Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney)
_______

Before Seeherman, Quinn and Hairston, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

DataMirror Corporation has appealed from the final
refusal of the Trademark Examining Attorney to register
iREFLECT as a trademark for goods identified as:
Computer software to manage the
resiliency, high availability,
mirroring and performance of operating
systems software, application software,
database software and data.1

1 Application Serial No. 76456629, filed October 1, 2002, based
on Sections 1(b) and 44(e) of the Trademark Act, with a right of
priority of April 2, 2002 based on applicant’s Canadian
application filed on that date.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76456629
2
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark so resembles the mark REFLECT
SYSTEMS, previously registered with the word SYSTEMS
disclaimed for “computer hardware and software for content
and data creation, distribution and storage,”2 that, if used
on applicant’s identified goods, it is likely to cause
confusion or mistake or to deceive.
Applicant and the Examining Attorney filed appeal
briefs. Applicant did not request an oral hearing.
Before turning to the substantive issue before us,
there are some procedural points that we must address.
First, although Office records indicate that applicant, on
October 19, 2004, filed a response to the August 18, 2004
Office action in which the Examining Attorney initially
refused registration on the basis of the cited
registration, the response itself cannot be located in the
office at this time. The Board attempted to obtain a copy
of the response from applicant’s attorney, but was advised
that he could not locate the paper either. In the
conversation with applicant’s attorney he advised that this
response contained only argument, and that applicant has
made those arguments that it wishes the Board to consider

2 Registration No. 2789812, issued December 2, 2003.
Ser No. 76456629
3
in its brief. Accordingly, it does not appear that there
is any prejudice to applicant due to the unavailability of
this response. Therefore, in the circumstances, we have
decided the appeal without the benefit of this paper.
With respect to other procedural points, we note that
with its appeal brief applicant has submitted new evidence
in the form of third-party registrations, and has quoted
extensively from press releases and the registrant’s
website, although the underlying documents were not
previously made of record. The Examining Attorney has
objected to our consideration of this material. The
objection is well taken. Trademark Rule 2.142(d) provides
that the record in an application must be complete prior to
the filing of an appeal. Applicant cannot supplement the
record by attaching new evidence to its brief, or by
quoting the contents of such new evidence in its brief.3
Applicant has also referred in its brief to a
registration and two applications that it owns for other
“i” prefix marks. Although these applications/registration
are not of record, the Examining Attorney has not objected
to our consideration of them, and has discussed them in her
brief. In view of her actions, we deem the information

3 Even if we were to consider this evidence, it would not change
our decision in this matter, as discussed infra.
Ser No. 76456629
4
about them in applicant’s brief to have been stipulated
into the record, for whatever probative value it may have.
This brings us to the substantive ground of refusal—
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 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or 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 turn first to the factor of the similarity of the
marks. It is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood of confusion, 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 a consideration of the marks
in their entireties. In re National Data Corp., 753 F.2d
Ser No. 76456629
5
1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case,
the dominant feature of the cited mark is REFLECT.
SYSTEMS, which has been disclaimed, has far less source-
indicating significance. Similarly, the REFLECT portion of
applicant’s mark has a stronger significance because it
appears in all-capital letters, and therefore stands out
from the “i”, which is depicted in lower case and would be
viewed as a prefix which simply means “Internet.”4
Applicant does not dispute that REFLECT is the
dominant feature of both marks. “The fact that REFLECT is
the dominant feature of both marks….” Brief, p. 3.
However, applicant argues that when the marks are compared
in their entireties, they are not confusingly similar.
We disagree with this position. When the marks are
compared in their entireties, and giving appropriate weight
to the dominant portions of each, the word REFLECT stands
out in both marks, such that the marks have strong visual
similarities. The term REFLECT will also be pronounced the
same in both marks, and although the additional elements in
each mark result in a different number of syllables when

4 See the following definition which appears in NetLingo © 2002:
“An ‘I’ placed before a word or phrase usually stands for
‘Internet.’” The Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).

Ser No. 76456629
6
the marks are spoken, and different initial and ending
sounds, these differences are not sufficient to distinguish
the marks phonetically. As to connotation, again the
presence of the word REFLECT, and the limited source-
indicating significance of the additional elements in each
mark, result in the marks in their entireties having a
similar connotation. Although we recognize that there are
specific differences in the marks, it must be remembered
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. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980). Accordingly, we
find that the marks convey similar commercial impressions.
Applicant has cited two cases for the proposition that
marks which have the same dominant feature but different
descriptive features are not confusingly similar. However,
in E.J. Brach & Sons v. Brock Candy Co. (Com’r Pats. 1958),
in which an application for TASTE TREATS for candy was
opposed by a company that had made prior use of CHOCOLATE
TREATS for candy, the term TREATS was not, as applicant
herein asserts, an arbitrary term, but was found to be
Ser No. 76456629
7
commonly used in connection with candy.5 In the present
case, on the other hand, REFLECT appears to be an arbitrary
term and there is no evidence in this record of third-party
use, or of third-party registrations.6 Thus, the sixth du
Pont factor favors a finding of likelihood of confusion in
this case, and we must treat the cited registration as
being entitled to a broad scope of protection.
For similar reasons, the second case that applicant
relies on, Nestle Food Corp. v. Kellogg Co., 6 USPQ2d 1145
(TTAB 1988), is also distinguishable. That case involved
the marks TASTER’S CHOICE for coffee and DINER’S CHOICE for
tea and flour-based mixes. Contrary to applicant’s
statement, the Board found, on the basis of third-party
registrations, that CHOICE was “not wholly arbitrary but,
rather, has a somewhat laudatory significance as applied to
the respective food products of these parties.” Id. at

5 The issue of whether CHOCOLATE TREATS was an inherently
distinctive mark for candy, or whether it had acquired
distinctiveness, was never addressed.
6 As noted above, applicant attached to its appeal brief copies
of third-party registrations which were found to be untimely and
therefore not considered by the Board. Nonetheless, the Board
notes that, although four registrations were submitted, they are
all for the mark REFLECTION and REFLECTION SIGNATURE (not
REFLECT) for computer programs in the field of communications,
and are all owned by the same entity. The adoption by a single
entity of the marks REFLECTION and REFLECTION SIGNATURE does not
indicate that the term REFLECT has a particular significance in
the computer industry, or that the registered mark should not be
considered a strong mark that is entitled to a broad scope of
protection.
Ser No. 76456629
8
1149. Again, there is no evidence in the present record of
third-party registrations of REFLECT marks. And contrary
to the present situation, the Board also found in the
Nestle case that the marks were “distinguished easily in
appearance, pronunciation, and meaning.” Id.
Applicant claims that because it also owns a
registration for the mark ICLUSTER, and applications for
the marks IDELIVER and IMIRROR, consumers will associate
the mark IREFLECT with those marks. Mere ownership of a
registration or applications does not show that the public
is familiar with the use of the marks shown therein.
Certainly there is no evidence of record that demonstrates
that applicant has a family of marks. Compare J & J Snack
Foods Corp. v. McDonald’s, 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991). Most importantly, the fact that an
applicant owns other marks that resemble the applied-for
mark does not entitle it to register a mark that is likely
to cause confusion with a registered mark. Baroid Drilling
Fluids Inc. v. Sun Drilling Products, 24 USPQ2d 1048 (TTAB
1992).
The factor of the similarity of the marks favors a
finding of likelihood of confusion.
This brings us to a consideration of the goods.
Applicant’s goods are identified as “computer software to
Ser No. 76456629
9
manage the resiliency, high availability, mirroring and
performance of operating systems software, application
software, database software and data”; the registrant’s
goods are identified as “computer hardware and software for
content and data creation, distribution and storage.”
Applicant argues that, other than the fact that both
goods are software, there are no other similarities between
them. Specifically, it asserts that applicant’s software
is “data resiliency or data protection software” that “runs
on computer systems that run Oracle relational databases.
This software scrapes the log of an Oracle relational
database on a source system, detects changes made to the
Oracle relational database on the source system and then
transmits those changes to one or more large systems where
another component of the software makes the same changes to
an Oracle relational database on the target.” Brief, p. 7.
As for the registrant’s goods, applicant points to
statements made in the registrant’s website, in material
that is not of record, to characterize it as software that
broadcasts video and multimedia over the Internet.
The problem with applicant’s position, aside from the
fact that the information about the registrant’s goods, and
much of the information about applicant’s goods, is not of
record, is that the question of likelihood of confusion
Ser No. 76456629
10
must be determined based on an analysis of the mark as
applied to the goods and/or services recited in applicant’s
application vis-à-vis the goods and/or services recited in
the cited registration, rather than what the evidence shows
the goods and/or services to be. See Canadian Imperial
Bank of Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987). As noted, the goods in the
cited registration are computer hardware and software for
content and data creation, distribution and storage--the
hardware and software are not limited to use in
broadcasting video and multimedia over the Internet. As
for applicant’s software, applicant’s website materials,
which are of record, show that it is used for “high
performance data distribution, data integration, and
disaster recovery initiatives.” It also “spreads
processing loads and network dependencies across a number
of servers and databases” and “can also be used for
workload distribution and load balancing.” Under the
heading “Customer Benefits,” the website also lists, inter
alia, “High performance data distribution, data integration
and workload balancing”; “Extreme scalability for high
volumes of data”; “Real-time, log-based replication”; and
“Distributed application support.”
Ser No. 76456629
11
We note that applicant deleted from its original
identification of goods software to manage the distribution
of database software and data. Therefore, in our
determination as to whether applicant’s goods and those of
the cited registration are related, we have not treated
applicant’s goods as including such software. However, it
is clear from applicant’s website that software that is
used to manage the distribution of database software and
data is related to computer software that manages the
availability and performance of database software and data,
and the latter software is currently identified in
applicant’s application.
It is a well-established principle that it is not
necessary that the goods 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 of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods 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 International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Ser No. 76456629
12
There is clearly a relatedness between computer
software that manages availability of database software,
and software for data distribution and storage, as the
software in complementary in nature. And, as applicant’s
website materials show, computer software used for data
distribution is closely connected to and/or can also manage
availability and performance of database software and the
like.
The factor of the similarity of the goods favors a
finding of likelihood of confusion.
We recognize that the purchasers of applicant’s and
the registrant’s goods must be considered sophisticated.
However, as we have often stated, even careful and
sophisticated purchasers are not immune from confusion. In
this case, because of the similarities of the marks and the
relatedness of the goods, we believe that the purchasers
are likely to believe that applicant’s and registrant’s
goods emanate from a single source.
Accordingly, after considering all the applicable du
Pont factors, we find that applicant’s use of its mark for
its identified goods is likely to cause confusion with the
cited registration.
Decision: The refusal of registration is affirmed.