David Adress

Trademark Trial and Appeal Board

Dec 13, 2004

No. 76364167 (T.T.A.B. Dec. 13, 2004)

Mailed: December 13, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re David Adress
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Serial No. 76364167
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David Adress, pro se.
Anne Madden, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
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Before Chapman, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Applicant filed on January 30, 2002, an application to
register on the Principal Register the mark PC WIZ for
services identified as “consulting services in the field of
design, selection, implementation and use of computer
hardware and software systems for others” in International
Class 42.1 Applicant disclaimed the letters “PC.” The
1 During the prosecution of the application, applicant offered an
amendment to the identification of services to add the phrase “in
the states of New York, New Jersey and Connecticut.” This
amendment was erroneously accepted by the Examining Attorney.
Geographic restrictions to an applicant’s rights in a mark are
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76364167
2
application is based on applicant’s claimed date of first
use and first use in commerce of October 1, 2000.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), in view of the two
previously registered marks listed below, both issued to PC
Wizards, Inc.:
not accomplished through an amendment to the identification of
goods and/or services. See Trademark Rule 2.42; and Tamarkin Co.
v. Seaway Food Town Inc., 34 USPQ2d 1587 (TTAB 1995). In
applicant’s reply brief (p. 2), he stated the following:
“[W]e [sic] had argued that because the
registrant and applicant operated in widely
separated geographical areas, there would be
little opportunity for confusion to occur.
The cases that we cited were based on
adjudication of common law rights which can
reflect on geographical considerations. We
subsequently became aware that this is not
the situation in respect to trademark
registration and therefore, we admit that the
wide separation between the companies is not
relevant to these proceedings.”
Thus, it appears that applicant offered a contingent amended
identification of services in an effort to overcome the Examining
Attorney’s refusal under Section 2(d) of the Trademark Act, which
it did not accomplish. Because (i) applicant’s purpose for his
contingent amendment to the identification of services was not
met, and (ii) putting geographic restrictions into
identifications of services is inappropriate, the geographic
restriction in applicant’s identification of services has been
removed.
If applicant sought a concurrent use (geographically
restricted) application, he would have to have so amended his
application. However, he has never offered such an amendment
(which includes, inter alia, a clear statement that the applicant
is not entitled to exclusive use of the mark and reciting the
exception(s) to the applicant’s right to use the mark). In fact,
both applicant and registrant have Internet websites (applicant’s
specimen is a printout of a page from his website (www.PC-WIZ-
INC.com), and Exhibit 5 to applicant’s August 1, 2002 response is
a printout of a page from registrant’s website (www.pcwiz.net)).
The Examining Attorney noted in her brief (p. 6), that “the broad
reach of the Internet” is not limited to any geographic area.
Ser. No. 76364167
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(1) Registration No. 2531763, issued January 22, 2002,
for the mark PC WIZARDS (“PC” disclaimed); and
(2) Registration No. 2671071, issued January 7, 2003,
for the mark shown below
(“PC” disclaimed)(“The stippling shown in the drawing is a
feature of the mark and not intended to indicate color”).
Both registrations cover the following services:
“repair services for computer hardware,
namely, personal computer end network
installations and maintenance services”
in International Class 37; and
“computer consulting services, namely,
technical support services in the nature
of troubleshooting of computer hardware
and software problems via e-mail, by
telephone or in person; maintenance of
computer software; custom website design
and hosting for others” in International
Class 42.
When the refusal was made final, applicant appealed.
All briefs have been filed, but an oral hearing was not
requested.
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. See In re E. I. du Pont de Nemours & Co., 476 F.2d
Ser. No. 76364167
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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 a consideration of applicant’s
services and the cited registrant’s services. It is well
settled that goods and/or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods and/or services are related in some manner or that
the circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same producer or
that there is an association between the producers of the
goods and/or services. See In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991); and In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Ser. No. 76364167
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Of course, it has been repeatedly held that in
determining the registrability of a mark, this Board is
constrained to compare the goods and/or services as
identified in the application with the goods and/or
services as identified in the registration(s). See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987).
In this case, applicant identified his services as
“consulting services in the field of design, selection,
implementation and use of computer hardware and software
systems for others.” The cited registrant’s most relevant
services (and those emphasized by both applicant and the
Examining Attorney) are identified as “computer consulting
services, namely, technical support services in the nature
of troubleshooting of computer hardware and software
problems via e-mail, by telephone or in person; maintenance
of computer software; custom website design and hosting for
others.”
It is clear that, as identified, applicant’s
consulting services include design, implementation and use
of computer hardware and software systems; and registrant’s
computer consulting services include custom website design,
Ser. No. 76364167
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troubleshooting computer hardware and software problems,
and maintenance of computer software. These are closely
related, if not legally identical services. Indeed,
applicant acknowledged that “[T]he examiner has correctly
stated that the services of the registrant and applicant
are closely related in that they both pertain to computer
consulting for others.” (Applicant’s response of April 18,
2003, p. 3.)
We find that applicant’s services and the registrant’s
services overlap in part and are otherwise closely related.
Applicant argues that the involved services are
offered to sophisticated customers or at least to customers
who “exercise a reasonably high level of care in making
their choice” (applicant’s response of July 30, 2002, p.
3); that both applicant and registrant serve their
customers “primarily through on-site implementation and
troubleshooting of computer hardware and software”
(applicant’s response of April 18, 2003, p. 3); that “close
personal interaction is a hallmark of this type of
business” (Id.); and that the services involve custom
tailored design of computer systems and websites and
solutions to computer hardware and software problems, which
involve extensive discussions with the customers.
Ser. No. 76364167
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Purchasers, either institutional or individual, of
these computer hardware and software design, implementation
and troubleshooting services may make such purchasing
decisions with at least some degree of care. However, even
if purchased with some care, and through in-person
discussions by sophisticated purchasers, these purchasers
are not immune from confusion as to the source of services,
particularly when they are sold under similar marks. See
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); and In re Decombe, 9 USPQ2d 1812
(TTAB 1988). Moreover, there is a growing tendency for the
general public to be purchasers of computers and therefore
computer services such as those involved herein,
specifically, the design, implementation and
troubleshooting of computer hardware and software. Thus,
potential customers for both applicant and registrant
include poorly informed and unsophisticated purchasers.
See In re Linkvest S.A., 24 USPQ2d 1716, 1716-1717 (TTAB
1992); and In re Graphics Technology Corp., 222 USPQ 179,
181 (TTAB 1984). See also, In re TIE/Communications Inc.,
5 USPQ2d 1457, 1458 (TTAB 1987).
Turning now to the marks, applicant makes a
painstaking comparison of the etymology of the words “wiz”
Ser. No. 76364167
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(including spelled as “whiz”2 and “wizz”) and “wizard,”
including the older and current meanings; and pointing out
that the same definitions are not given in numerous
dictionaries, with some being, according to applicant,
contradictory. Applicant argues that “wiz” has a positive
connotation meaning “a person considered especially gifted
or skilled,” while “wizard” has a negative connotation of
“a conjurer, an enchanter, a sorcerer”; that the Examining
Attorney’s evidence that “wiz” is a shortened form of
wizard is inadequate; and that applicant’s mark is
different in sound, appearance, connotation and overall
commercial impression from each of registrant’s marks,
particularly noting that one of registrant’s marks includes
a design feature of a “wizard” thereby emphasizing that
connotation.
It is well settled that marks must be considered in
their entireties because the commercial impression of a
mark on an ordinary consumer is created by the mark as a
whole, not by its component parts. This principle is based
on the common sense observation that the overall impression
is created by the purchaser’s cursory reaction to a mark in
2 The Examining Attorney requested in her brief (p. 3) that the
Board take judicial notice of The American Heritage Dictionary
(Fourth Edition 2000) definition of “whiz.” The Examining
Attorney’s request is considered moot because the term “WHIZ” is
not part of the involved marks.
Ser. No. 76364167
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the marketplace, not from a meticulous comparison of it to
others to assess possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2001).
See also, Dassler KG v. Roller Derby Skate Corp., 206 USPQ
255 (TTAB 1980). The proper test in determining likelihood
of confusion does not involve a side-by-side comparison of
the marks, but rather must be based on the similarity of
the general overall commercial impressions engendered by
the involved marks.
In this case, applicant’s mark is PC WIZ and
registrant’s marks are PC WIZARDS and PC WIZARDS and
design. The design feature is merely the pictorial
representation of the word “wizard.” The marks
(applicant’s and each of registrant’s) are similar in sound
and appearance.
As to connotation, the Examining Attorney made of
record the entry from the on-line Merriam-Webster
Dictionary for the term “wiz” defined as “noun … wizard.”
The Board takes judicial notice of the following dictionary
definitions: (i) “wiz” defined as “n. Informal. A person
considered exceptionally gifted or skilled. [Short for
WIZARD.]” The American Heritage Dictionary (1976); (ii)
“wiz” defined as “n. [by shortening]: wizard” Webster’s
Ser. No. 76364167
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Third New International Dictionary (1993); and (iii)
“wizard” defined as “1. archaic: a man of wisdom and
knowledge: sage, wise man … 3. one endowed with
exceptional skill or able to achieve something held to be
impossible: a genius or prodigy esp. in a particular field
of endeavor” Webster’s Third New International Dictionary
(1993). Given that a commonly understood English meaning
of “wiz” is that of a shorthand version of “wizard,” we
find that these marks are similar in connotation. Thus,
consumers will likely perceive PC WIZ as a shorthand
reference to PC WIZARDS. Moreover, we are not persuaded
that consumers will mentally go through the thorough
analysis of the etymology and the older and current
specific dictionary meanings of the two terms, as suggested
by applicant. See In re Dixie Restaurants Inc., supra.
When considered in their entireties, we find that
applicant’s mark and each of registrant’s marks are highly
similar in overall commercial impression such that, when
used on the closely related, if not legally identical,
services involved herein, confusion as to source is likely.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); and In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
Ser. No. 76364167
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Applicant’s reliance on the case of In re Digirad
Corp., 45 USPQ2d 1841 (TTAB 1998) is not persuasive of a
different result herein.
While we have no doubt in this case, if there were any
doubt on the question of likelihood of confusion, we would
resolve it against applicant, as the newcomer has the
opportunity of avoiding confusion, and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
is affirmed.