E.E.P.D. Electronic Equipment Produktion & Distribution GmbH

Trademark Trial and Appeal Board

Jan 30, 2001

No. 75409001 (T.T.A.B. Jan. 30, 2001)

1/30/01
U
In r
Russell D.
E.E.P.D. E
GmbH.
D. Beryl G
107 (Thoma
Before Cis
Trademark
Opinion by
On De
Germany, f
the mark “
list of go
was applic
intent to
applicatio
Germany of
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.
Paper No. 13
RFC
NITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
e E.E.P.D. Electronic Equipment Produktion &
Distribution GmbH
________
Serial No. 75/409,001
_______
Culbertson of Shaffer & Culbertson, L.L.P. for
lectronic Equipment Produktion & Distribution
ardner, Trademark Examining Attorney, Law Office
s Lamone, Managing Attorney).
_______
sel, Seeherman and Chapman, Administrative
Judges.
Cissel, Administrative Trademark Judge:
cember 22, 1997, applicant, a corporation of
iled the above-referenced application to register
PROFIVE” on the Principal Register for a long
ods in Class 9. One basis for the application
ant’s assertion that it possessed a bona fide
use the mark on these goods in commerce. The
n also was based on applicant’s registration in
the same mark for “electric and electronic
Ser No. 75/409,001
2
apparatus, equipment and instruments and their electric and
electronic assembly, etc.,” in Class 9. A copy of this
German registration was submitted.
The Examining Attorney refused registration under
Section 2(d) the Lanham Act on the ground that applicant’s
mark, when used on the goods specified in the application,
would so resemble three trademarks registered in the
United States that confusion would be likely. All three
are owned by the same entity, BASIS International, Ltd., a
New Mexico corporation. Reg. No. 2,054,434 issued on the
Principal Register on April 22, 1997 for the mark shown
below
for “computer programs for use in designing applications
used in the field of business data processing,” in Class 9.
Reg. No. 2,054,433, also issued on the Principal Register
the same day, is for the mark shown below
(with a disclaimer of the term “DATA SERVER”) for the same
goods. The third cited registration was Reg. No.
2,141,774, which issued on the Principal Register on March
10, 1998, for the mark shown below
Ser No. 75/409,001
3
(with a disclaimer of the word “VISUAL”) for “computer
programs for use in the development of other computer
software for use in spread sheeting and business
applications,” in Class 9.
The Examining Attorney also held that the
identification-of-goods clause in the application as filed
was indefinite because some of the terms therein were
overly broad.
Applicant responded with a three-page amendment to the
way its goods were identified in the application as well as
written arguments that confusion would not be likely in
view of the cited registered trademarks.
The Examining Attorney was not persuaded by
applicant’s arguments, however, and the second Office
Action made the refusal to register under Section 2(d) of
the Lanham Act final. Submitted in support of the refusal
were copies of several third-party registrations and copies
of pages from applicant’s web site. The final refusal also
repeated the requirement for a more definite
identification-of-goods clause in the application. Several
Ser No. 75/409,001
4
pages of information were provided, specifying the
particular language in the application, as amended, which
was deemed to be indefinite.
Applicant responded by filing a notice of appeal, and
shortly thereafter, another proposed amendment to the
indentification-of-goods clause, an amendment deleting
Section 1(b) of the Lanham Act as a basis for registration,
(leaving Section 44(e) as the sole basis for registration),
and more arguments on the issue of likelihood confusion.
The Board instituted the appeal, but suspended action on it
and remanded the application to the Examining Attorney for
consideration of the amendments and the arguments submitted
by applicant.
Applicant and the Examining Attorney were able to
agree on an Examiner’s Amendment to the identification-of-
goods clause, but the refusal to register under Section
2(d) of the Act was maintained. The application, as
amended, identifies applicant’s goods as follows:
“electric and electronic apparatus, equipment and
instruments and their parts therefor, for regulating and
signaling, namely, guiding and navigation systems for
trains, airplanes, automobiles, traffic directing systems,
traffic routing systems, tracking systems, and tracking
systems controlled by satellite transmission; accident
memory systems comprising vehicle data recorders; engine
control apparatus, namely, electronic processors adapted to
monitor engine performance and provide engine control
signals; flight analyzers for detecting vehicle position;
tachographs; electronic deck logs for recording vehicle
Ser No. 75/409,001
5
operation records; satellite control apparatus; spacecraft
control apparatus; electronic teaching apparatus and
instruments, namely, electronic books; electrical
transformers; capacitors; electrical cables and wires;
electrical wire connectors; electrically lighted displays
for advertising purposes; electrical circuits, namely,
circuits for regulating and controlling electrical current
voltage; electronic apparatus instruments for light current
engineering, namely, high frequency transmitters; cash
registers; calculators in the nature of calculation
machines; automatic vending machines; electronic coin-
operated mechanisms; computers; data processors; computer
chips; electrical power supplies; computer cable; printed
circuit boards for computers, namely motherboards, graphics
boards, interface cards, and computer interface boards;
data acquisition equipment and data input equipment,
namely, computer monitors, computer keyboards, computer
mouse, touch pads, touch screens, input display screens,
datagloves, dataglasses, video monitors, bar code readers,
optical character scanners, image scanners, electric touch
sensitive switches, microphones, cameras; data output
equipment, namely, printers, plotters, and speakers; data
communications and telecommunication equipment, namely,
modems, TV-decoder for computers, ISDN accessories, namely
digital signal processors; computer hard disk drives,
computer memory cards, magnetic tapes drives, computer CD
drives, computer floppy disk drives, computer DVD drives,
computer memory chips, electronic apparatus for recording,
transmission or reproduction of sound or images, namely,
video tape decks, audio tape decks, CD players, DVD
players, CCDs, tuners, receivers, television sets,
amplifiers, loudspeakers, signal processors, mixers,
optical disk players, audio visual receivers, graphic
equalizer; photographic projectors, image projectors for
use with personal computers; apparatus for recording
electrical currents and fields, namely, scannographs; NMR-
tomography apparatus not for medical use; radiographic
apparatus not for medical use; ultrasonic scanning
apparatus not for medical use; electric and electronic
modules, namely, assembled and unassembled printed circuit
boards, circuit boards; electricity conduits, namely,
distribution boards and boxes; electric switches; electric
and electronic circuits; printed circuits; blank magnetic
data carriers; electric and electronic apparatus, equipment
and instruments and their parts therefor for weighing,
measuring, testing, examining, inspecting, controlling,
supervising, namely in the field of the automotive
Ser No. 75/409,001
6
industry, manufacturing industry, foodstuff industry,
agriculture, aeronautics, astronautics, astronomy, oil
refining, packaging industry, chemical refining, chemistry,
medical engineering, genetic engineering, biochemistry,
seafaring, research of materials, geology, electrical power
engineering, electrical power distribution, chronometry,
and optical systems, microscopes; metrology instruments.
International Class 9.
The Board resumed action on the appeal and applicant
filed its brief. The Examining Attorney filed a brief in
support of the refusal to register and applicant filed a
reply brief. Applicant did not request an oral hearing
before the Board.
The sole issue presented by this appeal is whether
confusion is likely between applicant’s mark, in connection
with the goods specified in the application, as amended,
and each of the cited registered marks, in connection with
the goods specified in those registrations.
As is frequently the case when the issue is likelihood
of confusion, in the instant case, a key consideration is
the similarity between the cited registered marks and the
mark sought to be registered. Notwithstanding applicant’s
arguments to the contrary, we find that applicant’s mark is
similar to each of the three cited marks because each
registered mark consists of or is dominated by “PRO 5” or a
close approximation of “PRO 5,” and applicant’s mark,
“PROFIVE,” is identical in pronunciation to this term and
Ser No. 75/409,001
7
creates a commercial impression which is very similar to
the commercial impressions created by the cited registered
marks.
The reason we cannot agree with the Examining Attorney
that confusion would be likely if applicant were to use its
mark in connection with the specific items of computer
hardware listed in the application is that the Examining
Attorney has not established that these items are related
to the computer software products listed in the cited
registrations in such a way that the use of these similar
marks in connection with both would likely lead to
confusion.
It has been the law for some time now that there is no
per se rule that confusion will necessarily result when
similar marks are used in connection with both computer
hardware and computer software. In re Quadram Corp., 228
USPQ 863, 865 (TTAB 1985); and Information Resources Inc.
v. X∗Press Information Services, 6 USPQ2d 1034 (TTAB 1988).
In order to support refusing registration under Section
2(d) where the goods in the application and the cited
registration are respectively software and hardware, the
burden is on the Trademark Examining Attorney to make of
record evidence that establishes that the goods are
sufficiently related such that confusion is likely.
Ser No. 75/409,001
8
In the instant case, the Examining Attorney attempted
to satisfy this requirement, but the evidence she relies on
simply falls short of establishing that the goods in the
application are commercially related to the goods specified
in the cited registrations in such a way that the use of
these similar marks on them is likely to cause confusion.
The evidence consists of copies of several third-party
registrations and copies of two pages from applicant’s web
site. Although the Examining Attorney contends in her
brief (p. 6) that the third-party registrations show “…that
a single owner provides the applicant’s goods and the
registrant’s goods,” the registrations she made of record
do not even show that goods of the type identified in the
application are provided by the same entities which provide
the kinds of products listed in the cited registrations.
As applicant points out, the third-party registrations in
question were submitted by the Examining Attorney with the
final Office Action of March 5, 1999, for the expressed
purpose of showing “that a single source provides both
computer programming services and computer software.” (p.
3). This they do, but the commercial relationship between
programming services and software is not the issue before
us in this appeal. The products listed in the cited
registrations are computer software, but applicant’s goods,
Ser No. 75/409,001
9
as identified in the application, are all items of computer
hardware.
In a similar sense, the excerpted pages from
applicant’s web site are equally unpersuasive of the
proposition the Examining Attorney sought to prove.
Although she contends that this evidence shows “that
applicant provides both computer hardware and computer
programming software,” (brief p. 6), what it actually shows
is that applicant can develop and produce specialized
circuit boards. This is a far cry from establishing that
applicant produces both the specific hardware items listed
in the application and the goods listed in the cited
registrations, i.e., specialized software used to develop
other software for use in business data processing and
other applications.
Without evidence in support of her contentions, the
Examining Attorney has left the Board with no basis upon
which to agree with her conclusion that the products listed
in the application are commercially related to those
recited in the cited registration. Thus, even though the
marks used on all these goods are similar, on this ex parte
record, we cannot find that confusion would likely result
from applicant’s use of its mark on the goods listed in the
application.
Ser No. 75/409,001
10
Accordingly, the refusal to register under Section
2(d) of the Lanham Act is reversed.
Ser No. 75/409,001
11