Etasis Inc.

Trademark Trial and Appeal Board

Jul 3, 2002

No. 75731257 (T.T.A.B. Jul. 3, 2002)

Mailed: July 3, 2002
Paper No. 11
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Etasis Incorporation
________
Serial No. 75/731,257
_______
Bruce H. Troxell of Dougherty & Troxell for Etasis
Incorporation.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hanak, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
Etasis Incorporation (a corporation of the Republic of
China) has filed an application to register on the
Principal Register the mark shown below
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/731257
2
for goods amended to read “personal computer[s] (PC) and
parts therefor, namely hard disk drives; electrical power
supplies for computers, namely switching, swicthable and
redundant power supplies.” Applicant included the
following statement: “The mark has a triangular portion
that is lined for the color red.” The application was
filed on June 17, 1999, based on applicant’s claimed dates
of first use and first use in commerce which may be
regulated by Congress of September 30, 1996 and October 12,
1996, respectively.
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark ENTASIS for “computer
software design for others”1; and for “computer game
software,”2 both registered to the same entity (Entasis,
LLC, a California limited liability company), as to be
likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.
1 Registration No. 2,146,700, issued March 24, 1998.
2 Registration No. 2,162,581, issued June 2, 1998.
Ser. No. 75/731257
3
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). 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); and In
re Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
We turn first to a consideration of the cited
registrant’s goods and services and applicant’s goods.
Applicant’s position is that its goods (personal computers
and hard disk drives therefor, and electrical power
supplies for computers) involve computer hardware, whereas
the registrant’s goods and services involve computer
software and these goods and services are not similar.
Applicant requested (brief, p. 6) that the Board take
judicial notice “of the realities of the computer industry
in which it is extremely rare for a single source to
manufacture and market both computer hardware and computer
software.” Applicant’s request is denied because this is
not the type of fact which may be judicially noticed. See
TBMP §712.01.
Ser. No. 75/731257
4
The Examining Attorney contends that applicant’s
computer hardware and registrant’s computer software and
its service of designing computer software for others are
all closely related and often emanate from a single source.
In support of his position as to the relatedness of the
respective goods and services, the Examining Attorney
submitted copies of several third-party registrations, all
of which issued based on use in commerce, and all of which
specifically involve in varying combinations, computer
software, computer hardware, power supplies for computers,
and designing computer software. He offered these third-
party registrations to demonstrate that the same company
will provide these goods and services, by showing that a
single entity has adopted a single mark for such goods and
services.3
While third-party registrations are not evidence of
commercial use of the marks shown therein, or that the
public is familiar with them, nonetheless, third-party
3 See, for example, Registration No. 2,398,029 issued for, inter
alia, “computer hardware..., computer software..., and electrical
power supplies...”; Registration No. 2,362,603 issued for, inter
alia, “computer disc drives,... uninterruptible power
supplies,... computer software design for others”; Registration
No. 2,388,886 issued for, inter alia, “computer hardware,... hard
disc drives,...computer operating software..., computer
software...”; and Registration No. 1,240,100 issued for, inter
alia, “computer hardware..., computer software....”
Ser. No. 75/731257
5
registrations which individually cover a number of
different items and which are based on use in commerce have
some probative value to the extent they suggest that the
listed goods emanate from a single source. See In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d
1467, footnote 6 (TTAB 1988).
Moreover, it is well settled that goods 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 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 or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and
In re International Telephone & Telegraph Corp., 197 USPQ
910 (TTAB 1978).
Also, it has been repeatedly held that, when
evaluating the issue of likelihood of confusion in Board
proceedings regarding the registrability of marks, the
Ser. No. 75/731257
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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. See Octocom
Systems Inc. v. Houston Computer Services Inc., 918 F.2d
937, 16 USPQ2d 1783 (Fed. Cir. 1990); and Canadian Imperial
Bank of Commerce, National Association v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In this case, we find that applicant’s goods are
closely related to registrant’s goods and services, as
identified. There is a clear commercial relationship
between computer hardware (i.e., applicant’s personal
computers, hard disk drives and electrical power supplies)
and computer software (i.e., registrant’s computer game
software and designing computer software for others) as
computer software is the means by which computer hardware
operates to organize and process data. See In re Compagnie
Internationale Pour L’Informatique-Cii Honeywell Bull, 223
USPQ 363 (TTAB 1984); and In re Graphics Technology
Corporation, 222 USPQ 179 (TTAB 1984).
Applicant argues that purchasers of these goods and
services “are sophisticated in nature and would be well
informed regarding the items available in the marketplace”
(brief, p. 6). However, the argument is not supported by
any evidence. Moreover, neither applicant’s nor
Ser. No. 75/731257
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registrant’s respective identifications of goods and
services are restricted as to purchasers or trade channels
and thus, the Board must consider that the parties’
respective goods and services could be offered and sold to
the same classes of purchasers--including the general
public, through all normal channels of trade. See Canadian
Imperial Bank v. Wells Fargo Bank, supra; In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994); and In re Elbaum, 211
USPQ 639 (TTAB 1981).
Turning then to a consideration of the marks, we agree
with the Examining Attorney that they are similar. It is,
of course, well settled that marks must be considered in
their entireties. However, our primary reviewing Court has
held that in articulating reasons for reaching a conclusion
on the question 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
or portion of a mark. That is, one feature of a mark may
have more significance than another. See Sweats Fashions
Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793,
1798 (Fed. Cir. 1987); and In re National Data Corporation,
753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985).
Moreover, under actual market conditions, consumers
generally do not have the luxury of making side-by-side
Ser. No. 75/731257
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comparisons. The proper test in determining likelihood of
confusion is not 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. See Puma-Sportschuhfabriken Rudolf Dassler KG v.
Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980).
In this case, it is obvious that there are some
differences in the appearances of the respective marks, as
applicant’s mark appears in stylized lettering and includes
a square design, whereas the registered mark is in typed
form. However, we find the dominant source-indicating
feature of applicant’s mark is the term ETASIS, which is
how purchasers or potential purchasers would generally
inquire about or request applicant’s goods. The non-word
portions of applicant’s mark do not offer sufficient
differences such that the marks as a whole would create
separate and different commercial impressions; and the
stylistic differences are thus not sufficient to overcome
the likelihood of confusion. See In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
With regard to sound, the marks are very similar,
ETASIS and ENTASIS, a difference of only one letter
different. Applicant’s argument regarding different
pronunciations of the two marks is not persuasive as there
Ser. No. 75/731257
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is no “correct” pronunciation of a trademark. See In re
Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA 1969); In
re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987); and In re
Energy Telecommunications & Electrical Association, 222
USPQ 350 (TTAB 1983).
The marks appear to be arbitrary, as there is no
evidence regarding the origins or meanings thereof. Thus,
potential purchasers have no context or meaning relating to
either mark, augmenting the importance of the similarities
of sound, appearance and commercial impression.
Overall, we find the marks are similar.
According to applicant, there have been no instances
of actual confusion in about five years of coexistence of
applicant’s mark and the mark in the cited registrations.
However, there is no evidence of applicant’s and
registrant’s geographic areas of sales, or the amount of
the sales under the respective marks. Further, there is no
information from the registrant. In any event, the test is
likelihood of confusion, not actual confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and In re Kangaroos U.S.A.,
223 USPQ 1025 (TTAB 1984).
Finally, any doubt on the question of likelihood of
confusion must be resolved against the newcomer as the
Ser. No. 75/731257
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newcomer has the opportunity to avoid 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 as to both cited registrations.