Moore Business Forms, Inc.

Trademark Trial and Appeal Board

Aug 17, 1999

No. 75152840 (T.T.A.B. Aug. 17, 1999)

Paper No. 10
cmb
THIS DISPOSTION IS NOT CITABLE
AS PRECEDENT OF THE TTAB AUG. 17,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Moore Business Forms, Inc.
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Serial No. 75/152,840
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Robert A. Vanderhye of Nixon & Vanderhye P.C. for
Moore Business Forms, Inc.
Howard Smiga, Trademark Examining Attorney, Law Office 102
(Thomas V. Shaw, Managing Attorney).
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Before Quinn, Wendel and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Moore Business Forms, Inc. has applied to register the
mark MIDAS for "design and consultation services relating
to the integration of equipment used to automate document
production."1

1 Intent-to-use application Serial No. 75/152,840, filed August
19, 1996.
Ser. No. 75/152,840
2
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), on the ground that applicant's mark, when used in
connection with applicant's services, so resembles the
registered mark MIDAS TECHNOLOGY for "computer programs for
use in multiple document processing in personal computers
in the legal and accounting fields of the business and
industry markets as well as the legal and accounting fields
of the governmental market, specifically excluding the
banking field in those markets"2 as to be likely to cause
confusion, or to cause mistake, or to deceive.
When the refusal was made final, applicant appealed.
Applicant and the Trademark Examining Attorney have filed
briefs. No oral hearing was requested.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). 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,

2 Registration No. 1,859,480, issued October 25, 1994.
Ser. No. 75/152,840
3
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976).
Turning first to a consideration of the marks, we
find that applicant’s mark MIDAS and the registered mark
MIDAS TECHNOLOGY are confusingly similar when viewed in
their entireties in terms of appearance, sound, connotation
and commercial impression. The dominant feature of both
marks is the word MIDAS, which appears as the only term in
applicant’s mark and as the first word in registrant’s
mark. Additionally, MIDAS appears on this record to be an
arbitrary term as applied to the goods and services
involved in this case.3 Conversely, TECHNOLOGY is a weak
term as applied to the computer programs identified in the
registration, and it therefore contributes relatively
little to the commercial impression created by the
registered mark. While we cannot ignore the presence of
the word TECHNOLOGY in the registered mark, we certainly
cannot accept applicant’s argument that TECHNOLOGY is the
dominant feature of the registered mark.
Given the presence in both marks of the identical,
arbitrary term MIDAS, as the first word in registrant’s

3 We have given no consideration to the third-party registrations
submitted by applicant with its appeal brief, and sustain the
Trademark Examining Attorney’s objection to such untimely
submission. See Trademark Rule 2.142(d).
Ser. No. 75/152,840
4
mark and as the only word in applicant’s mark, we find that
the overall commercial impressions created by the marks are
the same.
The next step in our likelihood of confusion analysis
is a determination of whether applicant’s services as
recited in the application are similar to registrant’s
goods as identified in the registration. It is settled
that in cases involving identical or highly similar marks,
such as the present case, "it is only necessary that there
be a viable relationship between the goods or services in
order to support a holding of likelihood of confusion." In
re Concordia International Forwarding Corp., 222 USPQ 355,
356 (TTAB 1983). We find that the requisite commercial
relationship exists in this case between the services
recited in the application and the goods identified in the
registration, in that both the services and the goods could
and would be used by accountants and lawyers in connection
with their document production efforts.
That is, lawyers and accountants using registrant’s
"multiple document processing" computer programs to create
legal or accounting documents certainly are engaged in
automated document production, within the normal meaning of
those words as they appear in applicant’s recitation of
services. Furthermore, those law and accounting offices
Ser. No. 75/152,840
5
use various pieces of equipment in connection with their
automated production of legal or accounting documents, such
as computers, printers, document scanners, modems,
facsimile machines and the like.4 It is reasonable to
assume that they would require or desire that those pieces
of equipment be efficiently integrated, and that they could
or would utilize "design and consultation services relating
to the integration of equipment used to automate document
production" to achieve that end.
We reject applicant’s argument that the term
"document production" in applicant’s recitation of services
should be construed to refer only to large volume, high
speed manufacture of business forms and the like by
corporations and other "high speed document manufacturers,"
but not to the production of documents by lawyers and
accountants by means of the "multiple document processing"
computer programs identified in the registration. The

4 In this regard, we take judicial notice of the dictionary
definition of "document processing" from the New World
Dictionary of Computer Terms (6th Ed. 1997), submitted by
the Trademark Examining Attorney with his brief (emphasis
added):
Document Processing: The use of computer technology during
every stage of the production of documents, such as
instruction manuals, handbooks, reports and proposals. A
complete document processing system includes all the
software and hardware needed to create, organize, edit,
and print such documents, including generating indexes and
tables of contents.
Ser. No. 75/152,840
6
likelihood of confusion determination must be made on the
basis of the services set forth in the application, rather
than on the basis of the (perhaps more restricted) services
applicant actually intends to render in connection with the
mark. See Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); In re Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).5
Likewise, because applicant’s recitation of services
does not include any limitations as to trade channels or
classes of customers, we must presume that the services are
offered in all normal trade channels and to all normal
classes of customers for such services. See In re
Shoemaker’s Candies, Inc., 222 USPQ 326 (TTAB 1984). As
discussed above, those trade channels and classes of

5 To the extent that applicant is arguing that the words
"document production" in applicant’s recitation of services
have a particular, specialized meaning in the trade (i.e.,
that of the large volume, high speed manufacture of
documents) which distinguishes applicant’s services from
registrant’s goods, we note only that applicant has
submitted no extrinsic evidence of any such special
meaning. Cf. In re Trackmobile Inc., supra. Accordingly,
we will give the words their ordinary meaning, a meaning
which would include the document production engaged in by
lawyers and accountants using registrant’s computer
programs. Additionally in this regard, the dictionary
definition of "document processing" quoted supra at
footnote 4, of which we have taken judicial notice, shows
that the "document processing" computer programs covered by
the registration and the "equipment used to automate
document production" to which applicant’s recited services
are directed are more closely related than applicant’s
argument would allow.
Ser. No. 75/152,840
7
customers would include lawyers and accountants engaged in
automated document production.
In short, we find that the services recited in
applicant’s application are sufficiently commercially
related to the goods identified in the cited registration
that use of the confusingly similar and essentially
identical marks MIDAS and MIDAS TECHNOLOGY on or in
connection with such goods and services is likely to result
in source confusion.
Decision: The refusal to register is affirmed.
T. J. Quinn
H. R. Wendel
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board