Genex Corp., Inc.

Trademark Trial and Appeal Board

Aug 14, 2002

No. 76074262 (T.T.A.B. Aug. 14, 2002)

Mailed: 14 AUG 2002
Paper No. 13
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Genex Corporation, Inc.
________
Serial No. 76/074,262
_______
Sydelle Pittas of Pittas\\Koenig for Genex Corporation,
Inc.
William T. Verhosek, Trademark Examining Attorney, Law
Office 114 (Margaret K. Le, Managing Attorney).
_______
Before Hairston, Chapman and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
Genex Corporation, Inc. (applicant) filed an
application to register the mark GENEX (in typed form) on
the Principal Register for services ultimately identified
as “export agencies in the field of heavy industrial
equipment and materials for electronic and telephonic
communication systems” in International Class 35.1
1 Serial No. 76/074,262, filed June 20, 2000. The application is
based on applicant’s assertion of a bona fide intention to use
the mark in commerce. In its appeal brief, applicant stated that
it “agrees to delete the word ‘electric’ from its recitation” of
services. Brief at 4. It then set out the services to read “…
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76/074,262
2
The examining attorney ultimately refused to register
the mark under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a registration2 of the mark GENEX (in
typed form) for:
Advertising for others via electronic communications
networks in the fields of computers, computing,
computer and technology-related services, or
entertainment; and procurement services for others,
namely, the purchasing and resale of computer
hardware, computer software and peripherals in
International Class 35.
Production of entertainment and educational material
for dissemination by electronic communications
networks, namely, animation, motion pictures, music
and dialogue, multimedia entertainment or educational
software, radio or television shows in International
Class 41.
Computer programming for others; developing, hosting,
maintaining, or providing the programming for websites
and on-line magazines for others on electronic
communications networks; custom interactive writing
services for others; consultation services regarding
computers and electronic communications networks in
International Class 42.
After the examining attorney made the refusal final,
this appeal followed.
The examining attorney’s position is that computer
hardware, computer software, and peripherals are common
components of electronic and telephonic communication
electric, electronic and telephonic communication systems.” In
the event that applicant is ultimately successful in this case,
the identification of services should be clarified to reflect the
services the examining attorney accepted.
2 Registration No. 2,304,435, issued on December 28, 1999.
Ser No. 76/074,262
3
systems. The examining attorney relies on the following
evidence for this assertion.
LAN is the internal electronic communication system
containing the computer-related hardware and software
that employees work with. Chicago Tribune, February
23, 1998, p. C7.
[M]ajor computer companies want to build encryption
into everything from desktop computers to cellular
phones. If that happens, electronic communications
systems of every kind would be impervious to
eavesdropping. Boston Globe, September 13, 1997, p.
F1.
Desktop University provides delivery of the ATI
training materials through IBM’s own electronic
communication systems, that works with a mainframe
computer… Los Angeles Business Journal, August 15,
1994, p. S12.
Electronic communication systems simply do with
computers what has been done for tens and even
hundreds of years… Journal of Commerce, November 7,
1990, p. 2B.
IVoice.com Inc. designs and manufactures voice and
computer telephony communications systems. The Record
(Bergen County, NJ), June 20, 2001, p. B3.
IDT Corp. said it was offering the first telephone
communications system that allows computer users to
make calls to regular phones… Chicago Sun-Times,
August 11, 1996, p. 41.
The deal with Siemens could give IBM an important tie
with a company on the cutting edge of central office
switches, the newest computer-to-telephone
communications system… Los Angeles Times, November
13, 1998, p. 2.
In addition, the examining attorney submitted copies
of six registrations (Nos. 2,420,943; 2,212,598; 2,078,856;
2,118,827; 1,900,081; and 1,820,788). These registrations
Ser No. 76/074,262
4
“indicate several entities that are in the exporting and
procurement and purchasing business.” Brief at 3. The
examining attorney argues that because “the identification
of the applicant’s services is very broad, it is presumed
that the application encompasses all services of the type
described, including those in the registrant’s more
specific identification.” Brief at 4. The examining
attorney held that there was a likelihood of confusion
because the marks are identical and the services are
related.
Applicant, on the other hand, emphasizes the nature of
its services in arguing that there is no confusion.
“Applicant’s business is arranging for export [only – not
import] of ‘heavy industrial equipment for electronic and
telephonic communication systems,’ primarily to Venezuela.
The exported goods are massive machines and whole systems
used by foreign countries, principally in South America, to
build their commercial and public infrastructure and
electronic and telephone systems.” Brief at 2. Applicant
also points out that the registrations the examining
attorney refers to contain a separate listing of the
services of the export agency and that “business people
understand that export services are separate, apart, and
different from, procurement and purchasing services.”
Ser No. 76/074,262
5
Brief at 3. Applicant also argues that despite the fact
that it has filed an intent-to-use application, the name of
applicant’s company is Genex Corporation, and there has
been no actual confusion since 1997. As a result,
applicant submits that the examining attorney’s refusal
should be reversed.
We affirm the refusal to register under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d).
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973). See also Recot, Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We start our analysis by noting the obvious:
applicant’s and registrant’s marks are identical. Both
marks are for the identical word, “Genex,” in typed form.
The record does not contain any evidence that the mark is
Ser No. 76/074,262
6
weak or in anyway suggestive of the services of either
party.
We now consider whether the services of the parties
are related. We must consider the services as they are
identified in the application and registration. Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”); In re
Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534
(Fed. Cir. 1997) (punctuation in original), quoting,
Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1813, 1816 (Fed. Cir. 1987)
(“’Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in
applicant’s application vis-à-vis the … services recited in
[a] … registration, rather than what the evidence shows the
… services to be’”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
Ser No. 76/074,262
7
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”).
“In order to find that there is a likelihood of
confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). Furthermore,
when both parties are using or intend to use the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar.” Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981). See also In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993) (“[E]ven when goods or services are not competitive
or intrinsically related, the use of identical marks can
lead to an assumption that there is a common source”).
Here, applicant’s services involve export agency
services in the field of heavy industrial equipment and
materials for electronic and telephonic communication
Ser No. 76/074,262
8
systems. While applicant’s declarant states that it “does
not deal with individual computers and their peripherals,”
(Neira declaration, p. 1), registrant’s identification of
services is not limited to “individual computers,” and we
cannot read this limitation into the identification of
services. Registrant’s services are procurement services
involving the purchasing and resale of computer hardware.
The examining attorney has pointed out that computers are
used in the communications and telephonic industry. There
is no reason that this identification of services would not
include the procurement of mainframe computers used in the
electronic and telephonic communication industry. As
discussed above, we are constrained to consider the issue
of likelihood of confusion based on the services identified
in the application and registration.
In addition, there is some evidence in the form of
registrations to suggest that the same source may provide
both export agency and procurement services. See In re
Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
(Although third-party registrations “are not evidence that
the marks shown therein are in use on a commercial scale or
that the public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may
Ser No. 76/074,262
9
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).
We find that applicant’s export agency services and
registrant’s procurement services are related.
Businesses/consumers familiar with registrant’s procurement
services of computers are likely to believe that
applicant’s export agency services concerning heavy
industrial equipment come from the same source. This is
particularly true when registrant could be procuring
computers related to the electronic and telephone
communication industry.
Even taking into consideration the fact that
purchasers of heavy industrial equipment are likely to be
sophisticated purchasers, this would not eliminate the
likelihood of confusion when the identical mark GENEX is
used on the services of applicant and registrant. Octocom
Systems, 16 USPQ2d at 1787. The evidence supports the
conclusion that business customers who are familiar with
registrant’s procurement services would likely believe that
applicant’s export agency services are in some way
associated with registrant.
Finally, we note that applicant’s president states
that there has been no actual confusion of which he is
aware. The absence of actual confusion does not mean there
Ser No. 76/074,262
10
is no likelihood of confusion. Giant Food, Inc. v.
Nation's Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,
396 (Fed. Cir. 1983); J & J Snack Foods Corp. v. McDonald’s
Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir.
1991). In addition, applicant has filed an intent-to-use
application. There is little evidence of the extent of any
use by applicant of its trademark or its trade name, for
that matter, and, of course, in an ex parte proceeding,
registrant has not had the opportunity to introduce any
evidence of confusion.
In this case, we rely on the facts that the marks are
identical, there is no evidence that the term “Genex” is
weak or even suggestive, the services are the type that the
same business could be using, and these services could
involve exporting and procuring computers and heavy
industrial equipment for the same industries. Our analysis
leads us to conclude that there is a likelihood of
confusion. While we acknowledge that this conclusion is
not free from doubt, we must resolve any doubt in favor of
the registrant and against the newcomer. Kenner Parker
Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d 1453,
1458 (Fed. Cir. 1992).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.