Mattec Corp.v.Charles Anthony Czarnecki

Trademark Trial and Appeal Board

May 26, 1999

No. 91096813 (T.T.A.B. May. 26, 1999)

Paper No. 27
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MAY 26,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Mattec Corporation
v.
Charles Anthony Czarnecki
_____
Opposition No. 96,813
to application Serial No. 74/458,157
filed on November 15, 1993
_____
John D. Poffenberger and Keith R. Haupt of Wood, Herron &
Evans, L.L.P. for Mattec Corporation.
Gerald E. McGlynn III of Bliss McGlynn P.C. for Charles
Anthony Czarnecki.
______
Before Hairston, Wendel and Bucher, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Charles Anthony
Czarnecki to register the mark MATTECH for “computer
software for material waste prevention and user manuals sold
therewith.”1

1 Serial No. 74/458,157 filed November 15, 1993 claiming dates of
first use of November 8, 1993.
Opposition No. 96,813
2
Registration has been opposed by Mattec Corporation
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles opposer’s previously used and registered
mark shown below,
for “business consultation services in the field of quality
and quantity production control;”2 “computers, computer
interface modules and computer interface boards;”3 and
“computers, computer interface modules, computer interface
boards, and computer software programs for monitoring
industrial plant production;”4 as to be likely to cause
confusion.

2 Registration No. 1,321,203 issued February 19, 1985; Sections 8
& 15 affidavit filed.
3 Registration No. 1,607,299 issued July 24, 1990; Sections 8 &
15 affidavit filed.
4 Registration No. 2,028,581 issued January 7, 1997.
Opposition No. 96,813
3
Applicant, in its answer, denied the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; the testimony deposition (with
exhibits) of opposer’s president, Michael A. Thiel; and
opposer’s notices of reliance on applicant’s responses to
certain of opposer’s interrogatories and requests for
admissions. Applicant did not take testimony or offer any
other evidence. Only opposer filed a brief.
According to its president, Mr. Thiel, opposer was
founded in July 1983 and is in the business of developing
and selling computer software and hardware for use in
industrial plants. Mr. Thiel testified that opposer “deals
with the manufacturing industries; products for shop floor
control, products for scrap waste monitoring, products for
material control, [and] products for quality control.”
(Deposition, p. 8). Opposer uses the MATTEC mark in
connection with its complete product line and, in
particular, on boxes, invoices, and product manuals.
Opposer has a customer base of between 500 and 700
industrial plants or facilities, most of which are located
in the states of Michigan, Ohio, Indiana, Illinois and
Pennsylvania. In addition to its own sales personnel,
opposer uses independent manufacturing representatives to
market its products.
Opposition No. 96,813
4
Opposer advertises in industry specific trade magazines
(e.g., magazines concerning the automotive industry and
magazines concerning the plastics industry), and at national
and regional trade shows. Information concerning opposer
and its products also appears in industrial directories.
During the course of his deposition, Mr. Thiel
introduced copies of the three pleaded registrations for the
MATTEC and design mark. He testified that each registration
was active and valid. Further, Mr. Thiel testified that the
mark had been in continuous use in connection with the goods
and services since the dates of first use claimed in the
registrations.
As indicated above, applicant took no testimony and
offered no other evidence. Mr. Thiel, however, during the
course of his deposition, introduced a copy of an executive
summary which describes applicant’s computer software. It
reads, in pertinent part, as follows:
MatTech is an engineering tool designed
to help you continuously cut production
costs by reducing raw material waste.
MatTech combines an unsurpassed material
waste prevention knowledge base with
Client-Server technology to provide you
with the most technically advanced world
class product available. From our past
experiences, we estimate that by
utilizing MatTech, you can save an
average of 15% of your raw materials from
becoming wasted. Depending upon your
specific plant, these savings can reach
millions of dollars saved each and every
year! With MatTech’s multiple plant
and multiple division capabilities, the
Opposition No. 96,813
5
savings could be even higher for a
corporation with several plants.
With respect to priority, inasmuch as opposer
introduced copies of its pleaded registrations and offered
testimony that the registrations are “active and valid,” it
has established its priority.
We turn our attention then to the issue of likelihood
of confusion. At the outset, we note that opposer, in the
argument section of its brief, discusses the relatedness of
its computer software programs and applicant’s computer
software. Opposer makes no mention of the other goods and
services in its pleaded registrations. In view thereof, and
since opposer’s computer software programs are the most
pertinent of its goods, we will focus on these goods, as
well.
We find that opposer’s computer software programs for
monitoring industrial plant production are closely related,
if not identical, to applicant’s computer software for
material waste prevention. Opposer’s president, Mr. Thiel
testified that its “base [computer software] product starts
with machine monitoring, scrap control, [and] productivity
improvements.” (Dep., p. 9) emphasis added. Applicant’s
computer software is for material waste prevention. Also,
we note that the customers of the parties’ computer software
are the same--industrial plants.
Opposition No. 96,813
6
We turn then to compare the marks MATTEC and design and
MATTECH. Although the marks must be compared in their
entireties, there is nothing improper in giving more weight
to a particular portion of a mark if it would be remembered
and relied upon to identify the goods. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Thus,
if one of the marks consists of a word and a design, then
the word is normally accorded greater weight because it
would be used by purchasers to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987).
In the present case, the literal portions of the marks are
identical in terms of sound, differing in appearance and
spelling by only one letter. In finding that the
similarities of the marks outweigh the differences, we have
kept in mind the normal fallibility of human memory over
time and the fact that the average consumer retains a
general rather than a specific impression of trademarks
encountered in the marketplace.
We conclude that persons familiar with opposer’s
computer software programs for monitoring plant production
offered under the mark MATTEC and design, upon seeing the
mark MATTECH for computer software for material waste
prevention and user manuals sold therewith are likely to
believe the latter product emanates from opposer also.
Opposition No. 96,813
7
Decision: The opposition is sustained.
P. T. Hairston
H. R. Wendel
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board