LGC Wireless, Inc.

Trademark Trial and Appeal Board

Aug 4, 2004

No. 78039039 (T.T.A.B. Aug. 4, 2004)

Mailed: 8/4/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re LGC Wireless, Inc.
________
Serial No. 78039039
_______
John P. Yung of Bartel Eng & Schroder for LGC Wireless,
Inc.
Steven R. Berk, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).1
_______
Before Seeherman, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
LGC Wireless, Inc. has appealed from the final refusal
of the Trademark Examining Attorney to register INTERREACH
as a trademark for the following goods:
Telecommunication equipment, namely
radio frequency hubs, optical hubs,
multiplexers, and termination equipment
for telecommunication networks;
computer hardware and software for
monitoring and optimizing radio,
cellular, mobile, wireless or cordless
1 A different Examining Attorney handled the initial examination
phase of this application.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78039039
2
telecommunication networks, network
statistical analysis, frequency
allocation, traffic control and network
parameter management.2
Registration has been refused pursuant to Section 2(d) of
the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant's mark so resembles the mark INTEREACH,
previously registered for "providing multiple-user access
to a global computer information network"3 that, when used
on the identified goods, it is likely to cause confusion or
mistake or to deceive.
Applicant and the Examining Attorney have filed appeal
briefs. Applicant did not request an oral hearing.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
2 Application Serial No. 78039039, filed December 18, 2000,
based on an asserted bona fide intention to use the mark in
commerce. On August 29, 2003, applicant filed an amendment to
allege use, subsequently accepted by the Examining Attorney,
asserting first use and first use in commerce as early as May 29,
2001.
3 Registration No. 2401428, issued November 7, 2000. This
registration also includes the service of "designing web sites
for others" in Class 42. However, it is clear that the Examining
Attorney has based her finding of likelihood of confusion only on
the Class 38 services, e.g., "It is common for the same party to
provide both telecommunication goods and access to the services."
Office action mailed June 27, 2002.
Ser No. 78039039
3
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). 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). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
We turn first to a consideration of the goods and
services, because it is this factor, as well as the factors
of channels of trade and classes of customers, on which
applicant focuses its arguments that confusion is not
likely. In particular, applicant asserts that its goods
and the registrant's services are so different that they
would not generally be offered by the same entity, and
would be offered to a different group of purchasers, such
that they would not interface in the marketplace.
Applicant has explained that its goods are
telecommunication equipment for the wireless
telecommunication industry:
Applicant's [sic] sell its goods to
wireless operators and not to the
general public. Applicant sells
specialized wireless telecommunication
equipment to assist wireless carriers
in bringing radio frequency signals
into buildings and other structures.
Ser No. 78039039
4
...Registrant's service and Applicant's
goods are not likely to be encountered
by the same consumers under normal
circumstances. They do not compete
with each other [nor] do they advertise
through the same trade journals. ...A
consumer will not find the Registrant's
services or Applicant's products in the
same store or in the same trade
publication since their respective
products and services serve different
markets and have different target
audiences.
Response filed November 15, 2001.
Applicant has further described its goods as follows:
Applicant's goods are marketed, for
example, to cellular radio, mobile or
other wireless system phone companies
whose managers place applicant's
equipment inside buildings to increase
wireless signal strength, coverage,
capacity and clarity. Applicant's
goods transfers and forwards [sic]
carrier signals from base stations to
remote antennas and performs [sic]
complex routing based on, inter alia,
signal strength at various sites,
density of multiple discrete signals
and site saturation based on heavy use
or localized system failure.
For example, as a mobile phone user
enters into a shopping mall, the signal
of the cell phone is transferred from
the base stations to remote units
inside the mall based on the variables
such as the person's location, signal
strength, number of people using the
system at that time and in that
vicinity, etc. All of the complex
hardware and technology which allows a
shopper to use his/her cell-phone is
unknown to the shopper--but certainly
not to purchasers of applicant's
equipment.
Ser No. 78039039
5
***
Applicant's complex telecommunications
hardware and software have nothing to
do with the services provided in web
hosting or web design. Applicant's
machinery is purchased by owners and
operators of radio, cellular, mobile
and wireless networks for placement
only in buildings to facilitate
communication signal processing and
nowhere else. Applicant's equipment is
neither found, used or needed in web
hosting or web design nor is it
required by web service providers.
Response filed November 1, 2002.
(emphasis in original)
It is clear from applicant's identification of goods,
as well its explanation of its goods, that its identified
telecommunications equipment is not sold to the general
public, but only to purchasers who would operate, or need
to operate, radio, cellular and other wireless
telecommunications networks. Such purchasers are clearly
discriminating and sophisticated. The question, thus, is
whether these purchasers, who would be the only people
exposed to both applicant's goods and the cited
registrant's internet access services, are likely to be
confused by applicant's use of the mark INTERREACH on its
goods.
The Examining Attorney has attempted to demonstrate
that confusion is likely among such purchasers by
submitting third-party registrations and website materials.
Ser No. 78039039
6
Third-party registrations which individually cover a number
of different items and which are based on use in commerce
serve to suggest that the listed goods and/or services are
of a type which may emanate from a single source. See In
re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The Examining Attorney has not referred to specific
registrations in his brief to highlight any that list both
the goods identified in applicant's application and the
services identified in the cited registration. What is
highlighted in the registrations themselves are the words
"telecommunication," "hardware," "software" and "access."
However, reviewing these registrations carefully, we find
very few that could be said to include goods and services
of the specific types at issue herein. For example, in
Registration No. 2623061, although the words
"telecommunications hardware" are highlighted, the actual
goods are "mounting racks for computer hardware and
telecommunications hardware." In Registration No. 2721329,
although the word "access" is highlighted several times, it
is in the phrase "providing access to and use of database
of emergency information by emergency administration
personnel and public services access providers."
There are some registrations with identifications
which arguably include the goods and services in
Ser No. 78039039
7
applicant's application and the cited registration. For
example, there is a registration for CINGULAR (No. 2596041)
in six classes which includes "telecommunications
transmission equipment, components, switching, and network
systems comprised of--radio transmitters and receivers;
antennas; switches, signal transfer point servers; signal
control point services; service resource platform services;
call routing servers and software for the foregoing;
computers and computer software for the activation and
operation of wireless telecommunications services" and
which also includes "providing multiple-user access to
global computer networks to transmit, receive and otherwise
access and use information of general interest to
consumers."4 Another registration, No. 2476060, owned by
Williams Companies, Inc. for WILLIAMS, includes "computer
hardware namely, modems, DSA/DXV units, routers, firewalls,
unix servers, Ethernet hubs, power supplies, dial-up
switches and cabinet therefor," and also includes
"providing on-line access and electronic data interchange
to multi-user global computer information networks." This
registration, however, is for goods and services in ten
4 The other classes include advertising services, providing
online brokerage, banking and payment services, and customer and
employee newsletters.
Ser No. 78039039
8
classes, and includes "brokerage of electricity services,"
"transportation of crude and refined petroleum products,
natural gas, and ethanol by pipelines and other means," and
"material treatment services, namely conditioning,
processing and treating natural gas." These registrations
are obviously for house marks, and are of limited probative
value in demonstrating that goods and services of the type
identified in the subject application and cited
registration are likely to be offered under the same
product/service mark.
Two registrations (Nos. 2556343 and 2525452), owned by
American Calcar, Inc., include both "computer hardware and
computer software for use in telecommunications, weather
reporting, messaging, global positioning, database access,
and imaging" and "providing multiple-user access to a
global computer information network for the transfer and
dissemination of a wide range of information." Although
"computer hardware and software for use in
telecommunications" might arguably include the specific
telecommunications equipment offered by applicant, the
language in the third-party registrations is so general
that it has little probative value in demonstrating that
the specific items listed in applicant's identification are
sold under the same mark as the internet access services.
Ser No. 78039039
9
As for the website evidence,5 some is so general that
the purpose for which the Examining Attorney has made it of
record is unclear. For example, the material from Sprint
which was highlighted by the Examining Attorney shows only
that Sprint supplies "equipment and products," a "catalog"
and "wireline and wireless service." Qualcomm develops
"innovative digital and wireless technology," and "QUALCOMM
Enterprise Services provides strategic mobile solutions,
consulting, and services that help our customers meet their
business objectives and improve their competitive
advantage." Qualcomm also apparently offers software under
the trademark EUDORA. Verizon offers "DSL and Internet
Services" as well as "phones and equipment." None of this
evidence shows that these companies offer both goods such
as those identified in applicant's application and the
services identified in the cited registration.
The Examining Attorney has also submitted website
material from Lucent Technologies and from Avaya. The
language highlighted by the Examining Attorney on the
Lucent website reprint advertises that Lucent provides
5 Although it is clear from the submissions that the material
has been taken from the various companies' websites, the website
addresses do not appear, nor do the dates on which the material
was printed. However, because applicant has not raised any
objection to the authenticity of this material, we have
considered it.
Ser No. 78039039
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"Broadband Access Connectivity When and Where Your
Customers Need It"; "Broadband Access Products"--a
"portfolio of products for copper, fiber, and wireless
access to meet the growing demand for bandwidth capacity
for a variety of services including analog voice, analog
data, ISDN, DSL, ATM, and IP"; "Circuit-to-Packet Products"
"to provide new packet-ready technology to combine the best
of both voice and data services"; and "Core Optical
Products" in which "Lucent couples intelligent optical
transport network products with multi-terabit
switch/routers to enable bandwidth-hungry, revenue-
generating services." The Avaya website lists, as
highlighted by the Examining Attorney, "communications
Systems," "Connectivity Solutions" (i.e., wiring solutions)
and "LAN and Backbone Switches" "to build an effective,
fully-featured network to support your business
requirements."
Nowhere does the Examining Attorney explain how the
website evidence shows that third parties offer the same
products listed in applicant's application and the internet
network services identified in the cited registration.
Although these companies are clearly involved in offering
products and services related to communications systems, we
are unable to conclude, based on the evidence of record,
Ser No. 78039039
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that these companies offer the specific products and
services, let alone that they offer them under a single
mark. It is not sufficient to merely show that applicant's
goods are telecommunications equipment, and the cited
registrant's services are offered via telecommunications
equipment. See Harvey Hubbell Incorporated v. Tokyo
Seimitsu Co., Ltd., 188 USPQ 517 (TTAB 1975); In re Cotter
and Company, 179 USPQ 828 (TTAB 1973).
It must be remembered that the only customers likely
to come into contact with both applicant's goods and the
cited registrant's services are highly sophisticated
purchasers. They are not likely to assume that products
and services offered under the same mark or a confusingly
similar mark emanate from the same source simply because
they are all involved in the telecommunications area. On
this record, we cannot say that such purchasers will assume
that a company that provides multiple-user access to a
global computer information network also sells, under the
same mark, the specialized equipment for optimizing
wireless telecommunication that is identified in
applicant's application.
We also note that, while the marks involved are
virtually identical in appearance and pronunciation, they
do have different suggestive connotations, because of the
Ser No. 78039039
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respective goods and services with which they are used.
Applicant's mark indicates that the equipment helps calls
to reach the interior of buildings, while the cited mark
suggests access via the internet. Further, because the
cited mark has a somewhat suggestive significance, it is
not entitled to the broad scope of protection that an
invented term or a totally arbitrary mark would have.
We repeat that, on a different record, we might come
to a different result. However, based on the record before
us, we find that the Office has not met its burden of
demonstrating that the goods and services are sufficiently
related that the sophisticated consumers who would come
into contact with both are likely to be confused by
applicant's use of the mark INTERREACH.
Decision: The refusal of registration is reversed.