Intel Corp.v.Felicia Wheeler-Sweet

Trademark Trial and Appeal Board

May 18, 1999

No. 91096517 (T.T.A.B. May. 18, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 5/18/99
Paper No. 31
BAC
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Intel Corporation
v.
Felicia Wheeler-Sweet
_____
Opposition No. 96,517
to application Serial No. 74/427,409
filed on August 20, 1993
_____
J. Paul Williamson of Arnold, White & Durkee for Intel
Corporation.
Felicia Wheeler-Sweet, pro se.
______
Before Cissel, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
An intent-to-use application was filed by Felicia
Wheeler-Sweet on August 20, 1993 to register the mark
INTELIMETRIC INCORPORATED on the Principal Register for
services described as “consulting in the field of computers
and computer programming.” Applicant disclaimed the term
“INCORPORATED.”
Opposition No. 96517
2
Intel Corporation has opposed registration of the mark,
alleging that opposer offers and sells a wide variety of
computer hardware and software under the trade name INTEL
CORPORATION and the trademark INTEL; that opposer
incorporated under the name INTEL CORPORATION in 1968 and
has continuously done business in interstate commerce under
that name to the present; that opposer has offered and sold
computer software products under the trade name INTEL
CORPORATION since 1989; that opposer has offered and sold a
variety of computer hardware products under the trademark
INTEL (and formatives thereof) continuously since 1969; and
that applicant’s mark, if used in connection with her
services, would so resemble opposer’s previously used trade
name INTEL CORPORATION and opposer’s various previously used
and registered INTEL trademarks1, as to be likely to cause
confusion, mistake, or deception.
Applicant denied the salient allegations of the notice

1 Opposer pleaded ownership of the following specific
registrations (“among others”) covering the mark INTEL: Reg. No.
938,772, issued July 25, 1972, Section 8 affidavit accepted,
Section 15 affidavit acknowledged, renewed (for 10 years on July
25, 1992), for “equipment for the testing and programming of
integrated circuits, registers and semiconductor memories.” The
claimed dates of first use are January 15, 1971.
Reg. No. 939,641, issued August 1, 1972, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, renewed (for 10
years August 1, 1992), for “integrated circuits, registers and
semiconductor memories.” The claimed dates of first use are
March 11, 1969.
Reg. No. 1,022,563, issued October 14, 1975, Section 8
affidavit accepted, Section 15 affidavit acknowledged, renewed
(for 10 years on October 14, 1995), for “microcomputers,
Opposition No. 96517
3

microcontrollers and microprocessors.” The claimed dates of
first use are July 6, 1971.
Opposition No. 96517
4
of opposition.
The record consists of the pleadings; status and title
copies of opposer’s three pleaded registrations and seven
additional registrations submitted under a notice of
reliance; the testimony, with exhibits, of Jonathan Sharp,
opposer’s “manager brand strategy”; and the testimony, with
exhibits, of Michele Andreetta, a trademark specialist with
opposer. Applicant submitted no evidence or testimony.2
Both parties filed briefs on the case.3 No oral hearing was
requested.
As noted above, in this case opposer has filed status
and title copies of ten registrations, including its three

2 Applicant did not attend opposer’s depositions.
3 In opposer’s reply brief, opposer moved to strike applicant’s
brief as untimely, or alternatively to strike applicant’s exhibit
B, attached to her brief. Applicant’s brief was filed one day
late. This delay is clearly de minimis in nature, and there is
no prejudice to opposer. Opposer’s motion to strike applicant’s
brief is denied. However, opposer’s alternative motion to strike
applicant’s exhibit B (a search report listing of third-party
applications and/or registrations) is granted. This information
was not timely and properly made of record during trial.
Further, third-party registrations may not be made of record
simply by filing a copy of a list or a search report. See TBMP
§703.02(b) and cases cited therein. We have not considered
applicant’s exhibit B.
Finally, on page 8 of opposer’s reply brief, opposer requested
that the Board take judicial notice of a copy of a computer
screen printout of applicant’s website (attached to the reply
brief as exhibit A). Alternatively, opposer requested that the
exhibit be considered as relating to the credibility of
applicant’s “unsubstantiated” allegations throughout her brief.
Opposer’s request that we take judicial notice of applicant’s
website is denied. This is not the type of fact which may be
judicially noticed. See Fed. R. Evid. 201(b), and TBMP §712.01.
Opposer’s exhibit A attached to its reply brief was not
considered in reaching our decision herein.
Opposition No. 96517
5
pleaded registrations for the mark INTEL4, as well as two
other registrations for the mark INTEL.5 Opposer’s other
five registered marks are in the formats shown below:
Reg. Nos. 914,978 and 1,573,324;6

4 Reg. Nos. 938,772; 939,641; and 1,022,563, as more specifically
identified in footnote 1.
5 Reg. No. 1,723,243, issued October 13, 1992, Section 8
affidavit accepted, Section 15 affidavit acknowledged, for “metal
key rings,” with claimed dates of first use of October 16, 1990;
“watches,” with claimed dates of first use of October 15, 1990;
“note paper, note cards, posters, microprocessor chip die plot
prints as art prints, pencils, ball point pens, ink pens and
stationery folders,” with claimed dates of first use of October
22, 1990; “plastic key chain tags,” with claimed first use dates
of October 19, 1990; “mugs and water bottles sold empty,” with
claimed dates of first use of October 1, 1990; and “jigsaw
puzzles, golf balls, golf tees and golf ball markers,” with
claimed dates of first use of September 27, 1990.
Reg. No. 1,725,692, issued October 20, 1992, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, for “all purpose
sport bags, gym bags and carry-on bags,” with claimed dates of
first use of October 12, 1990; “towels,” with claimed dates of
first use of October 27, 1990; and “clothing, namely, t-shirts,
coveralls, shirts and caps,” with claimed dates of first use of
October 1, 1990.
6 Reg. No. 914,978, issued June 15, 1971, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, renewed (for 10
years on June 15, 1991), for “integrated circuits, registers and
semiconductor memories,” with claimed dates of first use of March
11, 1969; and Reg. No. 1,573,324, issued December 26, 1989,
Section 8 affidavit accepted, Section 15 affidavit acknowledged,
for “printed material, namely, technical manuals, pamphlets, user
and product manuals, all of which relate to the field of
information and data technology and semiconductor devices,” with
claimed dates of first use of August 1, 1973.
Opposition No. 96517
6
INTEL INSIDE
Reg. No. 1,702,463;7 Reg. No. 1,705,796;8 and
Reg. No. 1,945,531.9
Because opposer owns valid and subsisting
registrations10 of its pleaded marks, the issue of priority

7 Reg. No. 1,702,463, issued July 21, 1992, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, for
“microprocessors,” with claimed dates of first use of January
1992.
8 Reg. No. 1,705,796, issued August 4, 1992, Section 8 affidavit
accepted, Section 15 affidavit acknowledged, for
“microprocessors,” with claimed dates of first use of January
1992.
9 Reg. No. 1,945,531, issued January 2, 1996, for “computer
hardware and peripherals therefor, cameras and headsets, and
computer software, for facilitating conferences among persons in
different locations through the transfer of voices and visual
images of participants and through the transfer of data among the
participants,” with claimed dates of first use of January 31,
1994.
10 Status and title copies of four of the above-identified
registrations (Reg. Nos. 1,702,463; 1,705,796; 1,723,243 and
1,725,692) submitted with opposer’s notice of reliance were
prepared by the Patent and Trademark Office in February 1997, and
therefore do not include information as to the Section 8
affidavits, which were due on four separate dates in 1998. When
a registration owned by a party has been properly made of record
in an inter partes case, and there are changes in the status of
the registration between the time it was made of record and the
time the case is decided, the Board will take judicial notice of,
Opposition No. 96517
7
does not arise. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Humana Inc. v. Humanomics Inc., 3 USPQ2d 1696 (TTAB 1987).
Moreover, the evidence clearly shows that opposer’s first
use preceded the filing date of applicant’s intent-to-use
application.
Thus, the sole issue before the Board is likelihood of
confusion. Based on the record before us in this case, we
find that confusion is likely.
Opposer corporation was founded in 1968 “to pursue
business opportunities around the integrated circuit” (Sharp
Dep., p. 15) and opposer’s initial areas of focus were on
memory devices. In 1971 opposer introduced its first
microprocessor, and in 1980 IBM used that as the basic
microprocessor in the IBM personal computer. Thus, by the
1980s opposer had shifted its business focus to logic
products, such as the microprocessor; and by the end of the
1980s opposer had again shifted business focus to the
personal computer business. Opposer’s microprocessor
remains a significant portion of opposer’s business, but
opposer makes “many other components that go into PC
[personal computer] systems” (Sharp Dep., p. 18). Also,

and rely upon, the current status of the registration as shown by
the records of the Patent and Trademark Office. See TBMP
§703.02(a), at page 700-10, and the cases cited therein. The
Board hereby takes judicial notice of the current status of the
four involved registrations.
Opposition No. 96517
8
opposer develops new products for the PC platform including
Internet cards, network management, and software, all sold
under the INTEL marks and INTEL INCORPORATED trade name.
Opposer sells its products to computer suppliers such as
IBM, and other “embedded application-type manufacturers such
as computer numerically controlled machines and other
devices requiring electronic support.” (Sharp Dep., p. 16).
In addition, opposer sells products, such as overdrive
processors and video phone and video conferencing type
products, directly to PC users. Throughout the 1990s
opposer’s target audience has grown much broader, due to the
expansion of the personal computer industry. Opposer
considers its target audience to be all people over the age
of twelve, essentially anyone who could purchase a PC.
Jonathan Sharp testified that opposer is also engaged
in the business of consulting with respect to computers and
computer programming in various ways. Opposer’s employees
educate and train students and teachers on technology
subjects especially relating to the personal computer.
Opposer develops markets for new technologies by working
with industry people including independent hardware vendors
and independent software vendors, providing technical advice
and software programming capability. Opposer also provides
technical support and assistance getting opposer’s video
Opposition No. 96517
9
conferring products installed and running, as well as
addressing issues that arise in the use of the product.
Opposer has between 1000-2000 licensees of its INTEL
INSIDE Program. These licensees spend hundreds of millions
of dollars advertising the INTEL INSIDE marks, and they
place point-of-purchase materials bearing the various INTEL
marks in over 2,500 retail outlets worldwide (e.g., Circuit
City, Best Buy, Comp U.S.A.).
Mr. Sharp testified that INTEL microprocessors are in
80% of the desk-top computers now in use. He further
testified that opposer’s worldwide sales of its products
sold under its various INTEL marks were $11 billion in 1994,
$16 billion in 1995, and $20 billion in 1996. Advertising
expenditures for the same years worldwide were between $300
and $600 million in 1994, just under $650 million in 1995,
and over $650 million in 1996, with approximately 50% of
those expenditures in the United States alone.
The record shows that opposer advertises its various
products through radio, television (e.g., “Super Bowl,”
“Seinfeld,” “Friends,” “Star Trek: Next Generation,” as well
as MTV and Discover channels); print advertising including
trade publications (e.g., PC Week, PC Magazine, Byte) and
general interest publications (e.g., National Geographic,
Wall Street Journal); and on the Internet through its own
website as well as advertising on third-party websites. In
Opposition No. 96517
10
addition, opposer sponsors civic events such as the
promotion of the Smithsonian Institution’s 150th
anniversary.
In studies carried out in the United States by opposer
to ascertain awareness of the INTEL and INTEL INSIDE brands,
there was an 80% awareness of the brand among businesses and
individuals who purchase PCs. In a 1995 study by a market
research company conducted a study in which they analyzed,
inter alia, the premium that people would pay on a typical
PC system price in order to get their brand of choice on
certain elements of the PC, and the premium purchasers would
pay for the INTEL brand microprocessor was over $300. The
record also shows that opposer’s trademarks and trade name
have regularly appeared, unsolicited, in stories in trade as
well as general publications.
According to her application, applicant is located in
the Washington, D.C. metropolitan area, and she intends to
offer consulting services relating to computers and computer
programming. Applicant has not furnished any evidence
regarding her business or her activities under the mark.
This is consistent with the fact that the application was
filed based on applicant’s claim that she intended to use
the mark.
Our determination of likelihood of confusion must be
based on our analysis of all of the probative facts in
Opposition No. 96517
11
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 1357, 177 USPQ 563 (CCPA 1973).
The first relevant du Pont factor is the similarity or
dissimilarity of the marks. Marks must be considered in
their entireties; but 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 In re National
Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
In applicant’s mark the word INCORPORATED is of little
significance. Opposer’s trade name INTEL CORPORATION and
its various marks including INTEL, INTEL INSIDE and INTEL
PROSHARE, and applicant’s mark INTELIMETRIC INCORPORATED all
include the root term INTEL. Although there are differences
in appearance between applicant’s mark and opposer’s marks
and trade name, there are significant similarities in that
the parties’ marks each start with INTEL as the first two
syllables. Often the first part of a mark is the most
likely part to be impressed upon the mind of the purchaser
and remembered. See Presto Products Inc. v. Nice-Pak
Products Inc., 9 USPQ2d 1895, 1997 (TTAB 1988). Here
Opposition No. 96517
12
INTELIMETRIC incorporates the root word, INTEL, from
opposer’s registered marks and opposer’s trade name. Thus,
the common significant element in the parties’ marks is the
same arbitrary element, INTEL. See L. & C. Hardtmuth, Inc.
v. Fabrique Suisse de Crayons Caran D’Ache S.A., 287 F.2d
599, 129 USPQ 103 (CCPA 1961). Moreover, while applicant’s
mark is presented for registration in typed form, applicant
could alter the actual presentation of the mark at any time
by altering the style and/or size of the lettering, or
highlighting or capitalizing the first two syllables of the
term (i.e., INTELIMETRIC or IntelImetric) thereby increasing
the emphasis on the first two syllables of the term. See
Jockey International Inc. v. Mallory & Church Corp., 25
USPQ2d 1233 (TTAB 1992). We find that the marks are similar
in sound and appearance.
The second relevant du Pont factor is the relatedness
of the goods and/or services, as described in the
application or registration(s), or in connection with which
opposer has shown prior use of its mark or trade name. It
is well settled that the involved goods/services need not be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
they are related in some manner or that the circumstances
surrounding their marketing are such that they would be
Opposition No. 96517
13
likely to be encountered by the same persons under
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). Of course, there is no per se
rule relating to likelihood of confusion in the computer
field. See In re Quadram Corp., 228 USPQ 863 (TTAB 1985).
Opposer’s goods encompass a wide variety of computer-
related products (e.g., microprocessors, microcomputers,
computer software, technical manuals and user and product
manuals all relating to data technology and semiconductor
devices, and computer hardware and peripherals therefor), as
well as collateral products (e.g., plastic key chain tags,
watches, jigsaw puzzles, towels, and clothing including t-
shirts and caps). In addition, opposer has established that
it provides consultation services involving education,
innovation and technical support (questions which arise from
the use of opposer’s computer products). The services set
forth in the application are consulting services in the
field of computers and computer programming. We find that
opposer’s goods and services and the services identified in
the opposed application are related. See Peopleware
Opposition No. 96517
14
Systems, Inc. v. Peopleware, Inc. 226 USPQ 320 (TTAB 1985)
(PEOPLEWARE for consulting services in the field of computer
selection, usage, design and development held to be
confusingly similar to PEOPLEWARE for services involving the
design, testing, and manufacture of microprocessor-based
computer hardware and software products); and In re Epic
Systems Corporation, 228 USPQ 213 (TTAB 1985) (EPIC for
computer time-driven relational data base programs and
related documentation held to be confusingly similar to EPIC
DATA for electronic data collection terminals and electronic
data collection units).
Purchasers may assume, upon encountering applicant’s
computer consulting services, that opposer is now offering
these specific consulting services through applicant as a
licensee, or the services are in some way sponsored by or
associated with opposer. See Seligman & Latz, Inc. v. Merit
Mercantile Corporation, 222 USPQ 720 (TTAB 1984).
The next relevant du Pont factors are the channels of
trade and the similarity of purchasers. The Board must
determine the issue of likelihood of confusion on the basis
of the goods/services as identified. See Canadian Imperial
Bank of Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and Mehaffey,
31 USPQ2d 1531 (TTAB 1994). Although applicant asserted in
her brief that she will sell only to corporations, and will
Opposition No. 96517
15
not sell to the general public, there are no such
limitations in applicant’s application. Therefore, the
services set forth in applicant’s application must be
presumed to move through all normal channels of trade and
are available to all potential customers. See In re Elbaum,
211 USPQ 639 (TTAB 1981). Computer products, and consulting
services in the field of computers and computer programming,
with no restrictions, would normally be offered through
similar, if not identical, channels of trade.
The next du Pont factor we look at in this case, the
fame of the opposer’s marks, is clearly established in
opposer’s favor. With recent annual worldwide sales
exceeding $20 billion dollars, recent annual United States
advertising figures of $325 million, and a showing that over
80% of PC buyers recognize the INTEL brand name, there is no
question that opposer has established the fame of its
involved marks for computer products. This record
establishes that, given opposer’s advertising and sales
figures, opposer is a major player in the computer business,
and that its INTEL and INTEL INSIDE marks for its various
computer-related goods are famous. Thus, opposer’s marks
“enjoy a wide latitude of legal protection.” See Kenner
Parker Toys Inc. v. Rose Art Industries Inc., 963 F.2d 350,
22 USPQ2d 1453 (Fed. Cir. 1992). See also, Nina Ricci
S.A.R.L. v. E.T.F. Enterprises Inc., 889 F.2d 1070, 12
Opposition No. 96517
16
USPQ2d 1901 (Fed. Cir. 1989); and Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
The fame of opposer’s marks increases the likelhood
that consumers will believe that applicant’s services
emanate from or are sponsored by the same source.
Applicant’s argument that there is no evidence of
actual confusion is not persuasive. In this case
applicant’s application is based on her intent to use the
mark, and she submitted no evidence of actual use. Even
assuming applicant has commenced use of her mark in
connection with her involved services, there is no evidence
of the extent of such activities. Under the circumstances
this case presents, we simply cannot conclude that there has
been an opportunity for confusion to occur. Moreover, the
test is not actual confusion, but likelihood of confusion.
See Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768,
1774 (TTAB 1992).
Applicant, as the newcomer, had the obligation to
select a mark which would avoid confusion. See In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988).
Based on the similarities in the parties’ marks, the
fame of opposer’s marks, the relatedness of opposer’s goods
and services with the services specified in the application,
Opposition No. 96517
17
and the similarity of the trade channels, we simply have no
doubt that applicant’s use of her mark for her services
would be likely to cause confusion, mistake, or deception
with opposer’s marks, as well as opposer’s trade name, as
used on and in connection with opposer’s various goods and
services.
Decision: The opposition is sustained, and
registration to applicant is refused.
R. F. Cissel
B. A. Chapman
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal Board