Hewlett-Packard Co.v.Pack-quisition Corp.

Trademark Trial and Appeal Board

Sep 27, 1999

No. 91106540 (T.T.A.B. Sep. 27, 1999)

Paper No. 20
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 27, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Hewlett-Packard Company
v.
Packquisition Corporation
_____
Opposition No. 106,540
to application Serial No. 75/000,036
filed on October 2, 1995
_____
Francine R. Gorowitz of Ladas & Parry for Hewlett-Packard
Company.
Timothy D. Pecsenye and Eric H. Vance of Blank Rome Comisky
& McCauley LLP for Packquisition Corporation.
______
Before Quinn, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
On October 2, 1995 Packquisition Corporation filed an
intent-to-use application to register the mark PACKARD
TECHNOLOGIES (TECHNOLOGIES is disclaimed) for the following
services:
Data and information processing in class 35;
electronic transmission of data and documents
via computer terminals; electronic transmission
of messages and data in class 38; and
Opposition No. 106,540
2
data and digital information (media duplication
of); conversion from one media form to another
media (document data transfer and physical)
in class 40.
Registration has been opposed by Hewlett-Packard
Company under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, if used in connection with the
above-identified services, would so resemble opposer’s
previously used and registered mark HEWLETT-PACKARD for a
variety of computer products and/or related services, as to
be likely to cause confusion. Opposer pleaded ownership of,
inter alia, the following registrations:1
Registration No. 1,861,560 issued November 8,
1994 for, in pertinent part, “house mark for
computers, computer software, data processing
and data storage systems and accessories …
facsimile machines;”
Registration No. 1,850,493 issued August 23,
1994 for, in pertinent part, “house mark for
computers, computer software, data processing
and data storage systems and parts therefor
… facsimile machines; and consulting
services in the field of data processing;
retail mail and telephone order services for
data processing products;”
Registration No. 1,710,346 issued August 26,
1992 (Sections 8 & 15 affidavit filed) for,
in pertinent part, “rental and leasing
services for data processing equipment,
consultation services in the field of data
processing;” and
Registration No. 1,014,357 issued June 24,

1 Because opposer pleaded ownership of thirteen registrations
which cover a wide range of goods and services, we have listed
only those registrations and the goods and/or services therein
which opposer maintains in its brief are closely related to the
services in applicant’s application.
Opposition No. 106,540
3
1975 (Renewed) for, in pertinent part,
“apparatus used for data acquisition and
processing; data acquisition and handling;
and computers and data processing systems.”
Further, opposer alleges that as a result of its extensive
use of the trademark HEWLETT PACKARD in connection with a
wide range of computer goods and services, the mark has
become famous.
Applicant, in its answer, denied the salient
allegations of likelihood of confusion.
The parties have fully briefed the case, but an oral
hearing was not requested.
The record consists of the file of the involved
application; opposer’s notice of reliance on certified
copies of its registrations; applicant’s notice of reliance
on certified copies of its registrations; and the testimony
deposition (with exhibits) of applicant’s vice-president of
operations, Donald C. Disque.2
According to the testimony of Mr. Disque, applicant is
in the printing business. While applicant’s core business
is financial printing, e.g., printing prospectuses, reports,

2 We note that opposer, in its brief and rely brief, has objected
to certain information applicant has attempted to enter into
evidence and has renewed certain objections it made during the
testimony deposition of Mr. Disque. Suffice it to say that
because none of the testimony or information at issue was crucial
to our decision herein, we do not find it necessary to rule on
each of opposer’s objections.
Opposition No. 106,540
4
and offering circulars, applicant also does commercial,
municipal, and legal printing. Currently, applicant has
Opposition No. 106,540
5
sales offices in New York and Philadelphia, and a
manufacturing facility in Marlton, New Jersey. Applicant
promotes its printing services by advertising in
publications and mailing brochures to prospective clients.
Applicant markets these services through sales
representatives who call on current and prospective clients.
According to Mr. Disque, applicant has used the marks
PACKARD and PACKARD PRESS in connection with its traditional
printing services. However, applicant wishes to “expand
[its] products and services to provide [its] customers with
other means of processing information – through CD-ROMS and
publishing on the Internet – and not [limit itself] just to
the paper industry.” (Disque deposition, p. 22). Applicant
selected the mark PACKARD TECHNOLOGIES to differentiate
these new services from its traditional printing services.
Inasmuch as certified copies of opposer’s registrations
are of record, there is no issue with respect to opposer’s
priority. King Candy Co., Inc. v Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn then to the issue of likelihood of confusion.
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services.
With respect to the involved marks, opposer’s mark
HEWLETT PACKARD and applicant’s mark PACKARD TECHNOLOGIES
Opposition No. 106,540
6
create similar commercial impressions. While applicant
argues that the inclusion of the word TECHNOLOGIES in its
mark helps to distinguish the marks, we disagree. First,
while we have considered the marks in their entireties,
there is nothing improper in giving more weight, for
rational reasons, to a particular feature of a mark. In
this case, we have given more weight to the PACKARD portion
of applicant’s mark which is identical to PACKARD in
opposer’s mark. This is so because of the highly
suggestive/merely descriptive nature of the disclaimed word
“Technologies.” See In re National Data Corp., 753 F.2d
1056, 224 USPQ 749 (Fed. Cir. 1985). Also, it is obvious
from the goods and services listed in opposer’s
registrations that opposer’s business is in the technology
field. Thus, the inclusion in applicant’s mark of the word
“Technologies,” which also suggests/merely describes the
field in which opposer does business, does not help
distinguish the involved marks.
With respect to the goods and services, we readily
acknowledge that opposer’s pertinent goods and services and
the services in connection with which applicant intends to
use its mark are specifically different. However, the test
here, is not whether opposer’s goods and services and
applicant’s services are likely to be confused. Rather, the
test is whether purchasers are likely to be confused as to
Opposition No. 106,540
7
source, connection or sponsorship of the goods and services.
As often stated, it is not necessary that the goods and
services be similar or competitive, or even that they move
in the same channels of trade to support a likelihood of
confusion. It is sufficient that the respective goods and
services are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods and services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarities of the marks used
therewith, give rise to the mistaken belief that they
originate from or are in some way associated with the same
source. See Hilson Research Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993) and Hercules
Inc. v National Starch and Chemical Corp., 223 USPQ 1244,
1247 (TTAB 1984).
In this regard, it has frequently been held that
likelihood of confusion may result from the use by different
parties of the same or similar marks for goods, on the one
hand, and in connection with services which deal with those
goods, on the other. See, for example: In re Peebles Inc.,
23 USPQ2d 1795 (TTAB 1992); INB National Bank v. Metrohost
Inc., 22 USPQ2d 1585 (TTAB 1992); In re Mucky Duck Mustard
Co., Inc., 6 USPQ2d 1467 (TTAB 1988); MSI Data Corp. v.
Opposition No. 106,540
8
Microprocessor Systems, Inc., 220 USPQ 655 (TTAB 1983); and
Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983).
Further, it is well settled that the issue of
likelihood of confusion in a proceeding such as this must be
determined on the basis of the goods or services specified
in the subject application vis-à-vis those set forth in
opposer’s registration. See Canadian Imperial Bank v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
In the present case, opposer’s computers, computer
software, facsimile machines, computer and data processing
systems, and data acquisition systems, in particular, are
all goods which would be used with the services in
applicant’s application, i.e., data and information
processing; electronic transmission of data and documents
via computer terminals; electronic transmission of messages
and data; data and digital information (media duplication);
and conversion from one media form to another media
(document data transfer and physical). Moreover, because
there are no restrictions in applicant’s application or
opposer’s registrations as to channels of trade or classes
of purchasers, the distinctions urged by applicant, i.e.,
that opposer’s goods are sold in mass merchandisers and
specialty stores, whereas applicant’s services will be
marketed by sales professionals to well-educated clients,
are not well taken. For purposes of our analysis of
Opposition No. 106,540
9
likelihood of confusion, we must assume that both opposer’s
goods and applicant’s services may be marketed in some of
the same manners, e.g., by sales professionals, to the same
classes of purchasers.
Two other duPont factors, to which the parties have
referred, require comment.
Although opposer pleaded that its mark is famous, it
offered no evidence in support of this allegation. Mere
ownership of a number of registrations is insufficient to
establish the fame of a mark. Thus, we cannot conclude,
based on the present record, that opposer’s mark has
achieved the status of a famous mark. Compare: Kenner
Parker Toys v. Rose Art Industries, 963 F.2d 350, 22 USPQ2d
1453, 1456 (Fed. Cir. 1992).
Finally, applicant points to the absence of any
instances of actual confusion. However, inasmuch as Mr.
Disque testified that applicant has not begun to the use the
mark PACKARD TECHNOLOGIES, there has been no opportunity for
confusion to occur. Also, the fact that applicant is aware
of no instances of actual confusion between opposer’s
HEWLETT PACKARD mark and applicant’s marks PACKARD and
PACKARD PRESS has no bearing on the issue of likelihood of
confusion in this proceeding which involves a different
mark, i.e., PACKARD TECHNOLOGIES.
Opposition No. 106,540
10
We conclude that purchasers familiar with the above
goods and services of opposer sold under the mark HEWLETT
PACKARD would be likely to believe, upon encountering
applicant’s mark PACKARD TECHNOLOGIES for its identified
services, that the goods and services originated with or
were somehow associated with or sponsored by the same
entity.
Decision: The opposition is sustained.
T. J. Quinn
P. T. Hairston
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board