Nartron Corporationv.Hewlett-Packard Development Company, L.P.

Trademark Trial and Appeal Board

Sep 13, 2012

No. 92050789 (T.T.A.B. Sep. 13, 2012)

Oral Hearing: April 17, 2012 Mailed: September 13, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Nartron Corporation
v.
Hewlett-Packard Development Company, L.P.
_____

Cancellation No. 92050789
to Registration No. 3600880

_____

Hope V. Shovein of Brooks Kushman PC for Nartron Corporation.

Martin R. Glick of Arnold & Porter LLP for Hewlett-Packard
Development Company, L.P.
______

Before Kuhlke, Mermelstein and Lykos, Administrative Trademark
Judges.

Opinion by Lykos, Administrative Trademark Judge:

On April 9, 2009, Nartron Corporation (“petitioner”) filed
a petition to cancel Hewlett-Packard Development Company’s
(“respondent”) registration on the Principal Register for the
mark TOUCHSMART, in standard character format, for “[p]ersonal
computers, computer hardware, computer monitors, computer
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92050789
2
display screens” in International Class 9.1 Petitioner seeks to
cancel respondent’s registration on the grounds that
respondent’s mark so resembles petitioner’s previously used and
registered mark SMART TOUCH for “electronic proximity sensors
and switching devices” in International Class 92 that it is
likely to cause confusion, mistake, or deception of prospective
consumers under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d). Petitioner has pleaded ownership of Registration No.
1681891 for the mark SMART TOUCH filed May 22, 1991 and
registered on April 7, 1992. Respondent, in its answer, denied
the salient allegations in the petition for cancellation and
asserted various affirmative defenses.3
I. The Record
Pursuant to Trademark Rule 2.122(b), the record includes
registrant's registration file and the pleadings. With its

1 Registration No. 3600880, registered on April 7, 2009, pursuant to
Section 1(a). The registration alleges January 29, 2007 as the date of
first use anywhere and in commerce.

2 Registration No. 1681891, registered on April 7, 1992 on the Principal
Register pursuant to Section 1(a), alleging December 17, 1986 as the date
of first use anywhere and January 7, 1988 as the date of first use in
commerce; Sections 8 and 15 affidavits acknowledged and accepted;
renewed.

3 Insofar as respondent did not argue any of its asserted affirmative
defenses in its brief, they are hereby deemed waived.
Cancellation No. 92050789
3
petition to cancel, petitioner properly made of record its pleaded
Registration No. 1681891. See Trademark Rule 2.122(d).4
In addition, the parties introduced the following:
A. Petitioner’s Evidence
1. Petitioner’s Notice of Reliance (filed September 23,
2010) and Exhibits 1-17 attached thereto, comprised of
the following items:

a. Petitioner’s pleaded Registration No. 1681891 with
portions of the application file history, including
the specimen of use (Exhibit 1);

b. Printed publications consisting of articles,
news briefs and brochures retrieved from the
Internet and Westlaw® database(Exhibits 2-11);

c. A printout from the Internet of a copy of
Hewlett-Packard Company’s Annual Report on Form
10-K for the fiscal year ended October 31, 2008
(Exhibit 12); and

d. Discovery materials consisting of respondent’s
September 9, 2009 Initial Disclosures;
respondent’s April 8, 2010 Responses to
Petitioner’s First Set of Interrogatories;
respondent’s April 8, 2010 Responses to
Petitioner’s First Set of Rule 34 Requests;
respondent’s July 8, 2010 letter to petitioner’s
counsel regarding discovery responses and
document production, including respondent’s July
8, 2010 Privilege Log; respondent’s July 8, 2010
Responses to Petitioner’s First Set of Requests
for Admission (Exhibits 13-17).

4 Respondent incorrectly states in its brief that the file of
petitioner’s pleaded registration is also automatically of record.
Respondent’s Brief, p. 2. Only the file of the “registration against
which a petition ... for cancellation is filed” is automatically of
record. See Trademark Rule 2.122(b) (emphasis added). See also Cold War
Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626,
1628 (Fed. Cir. 2009) and TBMP § 704.03(b)(1)(A)(3d ed. rev. 2012) for an
explanation of how to make a file of record for a pleaded registration.

Cancellation No. 92050789
4
2. Petitioner’s Rebuttal Notice of Reliance (filed
January 20, 2011) and Exhibits 1-5 attached thereto,
comprised of the following:

a. A copy of respondent’s Application Serial No.
77826570 obtained from TESS (Exhibit 1); and

b. Printouts of the pages found at the URLs shown
in Respondent’s Exhibits 60, 72, 42, 53 and 54
(Exhibits 2-5).

3. The testimony deposition of John Washeleski, Senior Vice
President of Engineering for petitioner (“Washeleski
Deposition”) with Petitioner’s Exhibits 1-30 and
Respondent’s Exhibit No. 100 attached thereto.

B. Respondent’s Evidence

1. Respondent’s Notice of Reliance (filed November 22, 2010)
and Exhibits 1-85 attached thereto comprised of the
following:

a. Certified copies of registrations and an application
owned by respondent incorporating the term “SMART”
(Exhibits 2-6);5

b. Third-party registrations in International Class 9
obtained from TARR incorporating the term SMART
(Exhibits 7-31);

c. Third-party registrations in International Class 9
obtained from TARR incorporating the term TOUCH
(Exhibits 32-41);

d. Printed publications, namely articles obtained from
Westlaw and Internet web sites(Exhibits 42-79);

e. Dictionary definitions of the word “smart” (Exhibits
80-82);

f. Discovery materials consisting of petitioner’s July
22, 2009 Initial Disclosures; Petitioner’s April 29,
2010 Responses to Respondent’s First Set of

5 Respondent submitted under notice of reliance as Exhibit 1 the involved
registration in this proceeding, which, as noted above is automatically
of record.
Cancellation No. 92050789
5
Interrogatories; and Petitioner’s April 29, 2010
Written Responses to Respondent’s First Set of
Document Production Requests (Exhibits 83-85).

2. The testimony deposition of Ashley Frankart who has
worked for respondent since 2007 in the field of
marketing, and Exhibits 1-8 attached thereto; and

3. The testimony deposition of Jean Neumann who has
worked for respondent since 2000 in the fields of
product administration and brand naming, and
Exhibits 1-14 attached thereto.

Both parties filed briefs, petitioner filed a reply brief,
and both parties were represented by counsel at an oral hearing.
II. Evidentiary Issues
In its brief,6 respondent made the following objections:
1. Respondent objects to Exhibit 5 to Petitioner’s Notice of
Reliance and Exhibit 15 to Mr. Washeleski’s deposition, an article
obtained from the Internet entitled “Cypress’s PSoC(R) CapSense
Enables Touch Sensing Inside HP Compaq Notebook PC’s,” as
inadmissible hearsay pursuant to Fed. R. Evid. 801 and 802.
Specifically respondent argues that they are offered for the truth

6 In addition, respondent objected to the following materials obtained
from petitioner’s Internet web site on the ground that they were not
properly authenticated and therefore lack foundation pursuant to Fed. R.
Evid. 901: Exhibit 8 to petitioner’s Notice of Reliance and Exhibit 24 to
Mr. Washeleski’s Deposition; Exhibit 9 to petitioner’s Notice of Reliance
and Exhibit 25 to Mr. Washeleski’s deposition; Exhibit 10 to Petitioner’s
Notice of Reliance and Exhibit 28 to Mr. Washeleski’s Deposition; Exhibit
11 to Petitioner’s Notice of Reliance and Exhibit 20 to Mr. Washeleski’s
deposition; and Exhibit 12 to Petitioner’s Notice of Reliance and Exhibit
21 to Mr. Washeleski’s deposition. Counsel for respondent withdrew the
objections during oral argument. In any event, even if the
authentication objections were not withdrawn, they would be overruled
pursuant to Safer, Inc. v. OMS Investments Inc., 94 USPQ2d 1031 (TTAB
2010), which changed Board practice to allow materials from Internet web
sites to be submitted into evidence under notice of reliance.
Cancellation No. 92050789
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of the matter asserted – “that HP uses embedded capacitive sensors
in its computers” and do not fall within any exception to the
hearsay rule. We agree. Accordingly, respondent’s objections are
sustained and the exhibits have been given no consideration
2. Respondent objects to Exhibit 7 to Petitioner’s Notice of
Reliance and Exhibit 23 to Mr. Washeleski’s deposition, an article
obtained from the Internet entitled “GM Gives $2 Billion Contract
to Hewlett Packard” as inadmissible hearsay pursuant to Fed. R.
Evid. 801 and 802. Specifically respondent argues that they are
offered for the truth of the matter asserted—that HP entered into a
contract with a U.S. based automotive manufacturer and do not fall
within any exception to the hearsay rule. We agree. Accordingly,
respondent’s objections are sustained and the exhibits have been
given no consideration.
3. Respondent objects to Exhibits 26 and 27 to Mr.
Washeleski’s deposition as inadmissible as improperly authenticated
and therefore lacking foundation, citing Fed. R. Evid. 901. In
response, petitioner essentially argues that the objections are
moot because petitioner does not rely on the objected-to evidence
in its brief. We agree; insofar as petitioner does not rely on the
aforementioned evidence, we do not consider this evidence and any
objections thereto are moot.
4. Respondent objects to Exhibits 2-5 to Petitioner’s Rebuttal
Notice of Reliance as inadmissible because they are offered in
Cancellation No. 92050789
7
support of petitioner’s “objections” to certain Internet evidence
Respondent submitted (Exhibits 42, 53, 54, 60, 72 to Respondent’s
Notice of Reliance). Respondent, relying on Manpower, Inc. v.
Manpower Info. Inc., 190 USPQ 18 (TTAB 1976), argues that each of
these objections pertains to alleged defects that could have been
cured but that the submission of these materials with petitioner’s
rebuttal notice of reliance was not sufficiently prompt. In
response thereto, petitioner argues that Exhibits 2-5 were offered
as rebuttal evidence to show that the URLs do not lead to the pages
shown in respondent’s Exhibits 42, 53, 54, 60, and 72. The Board
has observed that the ephemeral nature of web pages serves to limit
their probative value. The fact that petitioner’s evidence shows
that the URLs lead to different pages cannot be cured; rather
petitioner’s evidence simply serves the purpose of rebuttal. We
agree with petitioner, and therefore respondent’s objections are
overruled.
III. The Parties
Petitioner develops and manufactures advanced electronic and
electromechanical systems and components, including sensors,
displays, and controls for automotive and consumer product markets.
Washeleski Deposition, p.6, lines 18-25; Exhibit 13. Petitioner’s
products work with “programmable logic devices, microcontrollers,
and microcomputer and basic circuits,” (Washeleski Deposition, p.
6, lines 22-25), and are capable of working in connection with all
Cancellation No. 92050789
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types of computers. Washeleski Deposition, p. 7, lines 1-4.
Petitioner is a pioneer in the technology field of capacitive
sensing - function based on “either touch or proximity actuation” —
(Washeleski Deposition, Exhibit 14), and holds numerous innovative
patents in this area. Washeleski Deposition., p. 6, line 18 and
Exhibit 11; Washeleski Deposition, Exhibits 9, 14 and 17. Indeed,
the goods identified in petitioner’s pleaded SMART TOUCH
registration, “electronic proximity sensors and switching devices,”
are based upon this technology which is described as follows:
Smart Touch® sensing is a breakthrough in human
interface technology allowing direct access to
computer power, such as with the highly successful
iPhone™ and other handled devices. By combining the
reliability and flexibility of completely solid state
sensing along with anthrotonic considerations,
capacitive sensing interface technology creates new
automotive design opportunities.
…

Washeleski Deposition, Exhibit 9, “Smart Touch sensing places the
power of the microprocessor at your fingertips;” Washeleski
Deposition, p. 22, line 10 to p. 23, line 1.
In addition to the automotive industry, petitioner’s
goods have other applications, including portable media
players, major appliances, computers and printers.
Washeleski Deposition, p. 32, lines 17 to p. 33, line 9.
As further explained:
Smart Touch® enables a person to use fingers to
control computer software through a display screen. A
key feature of Smart Touch® allows multiple touches
Cancellation No. 92050789
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simultaneously or sliding fingers across a screen.
Applications include the automobile IP [instrument
panel], radio and HVAC controls.

Washeleski Dep. p. 34, lines 1-9 and Exhibit 16.
The customers of petitioner’s goods are original equipment
manufacturers (“OEM”) who integrate petitioner’s products with
computer hardware or software to manufacture finished products for
the consumer electronic and the auto industry, which are in turn
sold under the other manufacturer’s trademarks. Washeleski
Deposition, p. 43, lines 5-18; p. 57, lines 7-9 (customers are “the
makers of products who then incorporate those sensors into their
products”). Petitioner’s products are sold through negotiated
contracts or purchase orders. Washeleski Deposition, p. 71, lines
8-14 to p. 72, lines 18-25. During sales discussions, petitioner
typically enters into confidentiality agreements with potential OEM
customers. Washeleski Deposition, p. 71, lines 8-14 to p. 72,
lines 18-25. The sales cycle is relatively long, and can last up
to a year. Washeleski Deposition, p. 70, line 29 to p. 71, lines
3. During his testimony deposition, petitioner’s Vice President of
Engineering, John Washeleski, was able to name two customers who
purchase electronic proximity sensors from petitioner, a fire truck
manufacturer and an automobile manufacturer. Washeleski
Deposition, p. 60, lines 14-25; p. 72, lines 11-16.
Respondent is a “technology solutions provider to consumers,
businesses and institutions globally.” Neumann Deposition, Exhibit
Cancellation No. 92050789
10
2. Respondent testified that the goods identified in the involved
registration are not sold separately but rather are sold as “an
all-in-one touch capable personal computer,” “meant to be used in a
communal area within the house, whether it be a kitchen or an
entryway, somewhere that the entire family could access calendars,
perhaps in the kitchen where you could access recipes.” Neumann
Deposition, p. 13, lines 16-22. Respondent further testified that
none of the goods listed in its registration are sold as component
parts for use in the manufacturing process. Respondent targets
both “enterprise customers” (i.e. business operating in the
education, health care, hospitality and retail fields) as well as
the high end consumer family. Neumann Deposition, p. 37, lines 4-
13; p. 38, lines 10-14; Frankart Deposition, p. 21, line 16 to p.
22, line 3. Respondent further testified that the goods involved
in its registration are sold to consumers via “brick and mortar
retail stores” such as Best Buy and Office Depot and online or
through negotiated contracts with businesses with starting prices
ranging from $799.99 - $1699.99. Neumann Deposition, p. 14, lines
3-25; p. 35, lines 7-19; Exhibit 5.
IV. Standing
Petitioner has demonstrated through the TARR printout made
of record that petitioner is the owner of its pleaded
registration and that the registration is valid and subsisting.
Because petitioner's registration is of record, petitioner has
Cancellation No. 92050789
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established its standing. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus.,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
V. Section 2(d) Claim
We now turn to petitioner’s Section 2(d) claim.
A. Priority
In a cancellation proceeding in which both parties own
registrations, petitioner must prove priority of use. See
Brewski Beer Co. v. Brewski Bros., Inc., 47 USPQ2d 1281 (TTAB
1998) and cases cited therein. Because petitioner's
registration is of record, petitioner may rely on the
registration as proof that the mark was in use as of the filing
date of the underlying application. Trademark Act § 7(c). See
J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435, 437 (CCPA 1965).
Petitioner's registration issued on April 7, 1992 from an
application filed on May 22, 1991. This is long prior to the
June 4, 2007 filing date of respondent's underlying application,
which is the earliest date on which respondent is entitled to
rely given the absence of any evidence of earlier use. Thus,
petitioner has established its priority.
Cancellation No. 92050789
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B. Likelihood of Confusion
Petitioner must establish that there is a likelihood of
confusion by a preponderance of the evidence. We base our
determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of
confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). We will now analyze the relevant du Pont
factors presented in this case, keeping in mind that our
determination is based on the goods as listed in the involved
registration. See Cunningham v. Laser Golf Corp., 55 USPQ2d at
1846. See also Canadian Imperial Bank v. Wells Fargo Bank, 811
F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992).
1. The Goods
We begin our analysis with a comparison of the parties’
respective goods. Petitioner’s goods are identified as “electronic
proximity sensors and switching devices.” Petitioner’s goods, by
their intrinsic nature, are component parts sold to OEM’s for use
in the manufacture of finished products. This is corroborated by
the evidence and testimony of record. See discussion supra.
Respondent’s goods are identified as “[p]ersonal computers,
computer hardware, computer monitors, computer display screens.”
Respondent, however, repeatedly and emphatically testified that
Cancellation No. 92050789
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each of the individual goods identified in its TOUCHSMART
registration are not marketed or sold separately under the
TOUCHSMART mark but rather are sold only as an “all-in-one touch-
capable personal computer.” Respondent’s Brief, p. 6. Neumann
Deposition, p. 11, lines 7-15; p. 68, lines 10-19; Frankart
Deposition, p. 12, line 21 to p. 13, line 7. See discussion supra.
Respondent also testified that none of the individual goods listed
in the registration are sold to OEM’s as component parts for use in
manufacturing other products. Neumann Deposition, p. 11, lines 17-
20; Frankart Deposition, p. 13, lines 13-19. Respondent therefore
contends that for purposes of analyzing likelihood of confusion
testimony, the only relevant product for comparison is the personal
computer which by its very nature is sold only to the average
consumer in retail trade channels.7
If, hypothetically, respondent’s identification were “personal
computers comprised of computer hardware, computer monitors, and
computer display screens, all sold as a unit” or if the sole item
in the identification were “personal computers,” we could accept
respondent’s argument that the only appropriate good for comparison
purposes is the “all-in-one” personal computer. Since it is not,
however, we must compare each individual item listed in
respondent’s TOUCHSMART registration. This includes “computer

7 Petitioner did not assert a claim of abandonment or non-use for the
remaining goods listed in respondent’s TOUCHSMART registration in this
proceeding.
Cancellation No. 92050789
14
hardware” which is listed separately in respondent’s registration.
It is this item that we will focus on for purposes of our analysis,
as it is closest in nature to the goods in petitioner’s
registration.
Petitioner argues that “[t]he broad descriptor ‘computer
hardware’ encompasses far more than ‘personal computers’ (a
separate description in the identification of goods). The scope of
the term ‘computer hardware’ extends to the electronic proximity
sensors and switching devices of Nartron’s asserted registration,
and to that extent, the parties’ identified goods are legally
identical.” Petitioner’s Rebuttal Brief, p. 5. Thus, the crux of
this issue is whether “computer hardware” encompasses “electronic
proximity sensors and switching devices;” and if not, whether the
goods are sufficiently related to support petitioner’s claim of
likelihood of confusion. When a term used in the identification of
goods is unclear, the Board may resort to extrinsic evidence to
determine or clarify how the term is used or understood in the
relevant industry or trade. See In re Edwards Life Sciences, 94
USPQ2d 1399 (TTAB 2010) (“However, applicant has submitted
extrinsic evidence to demonstrate the meaning of its description of
goods, not to restrict or limit the goods. Where, as here,
applicant's description of goods provides basic information, and
the goods are of a technical nature, it is entirely appropriate to
Cancellation No. 92050789
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consider extrinsic evidence to determine the specific meaning of
the description of goods.”).
Based on the evidence of record, we cannot definitively find
that the identification “computer hardware” encompasses “electronic
proximity sensors and switching devices.” According to the
testimony of Mr. Washeleski, petitioner’s customers, OEM’s,
“integrate Nartron’s products with hardware and software to sell
the integrated products.” Washeleski Deposition, p. 43, lines 10-
13. This statement serves to prove that petitioner’s “electronic
proximity sensors and switching devices” are discrete products not
subsumed within the broader category of “computer hardware.” We
must therefore conclude that goods are not legally identical.
It is well established that the respective goods do not have
to be identical or even competitive in order to determine that
there is a likelihood of confusion; rather, it is sufficient that
the respective goods are related in some manner, or the conditions
surrounding their marketing must be such that the goods will be
encountered by the same purchasers under circumstances that would
give rise to the mistaken belief that they originate from the same
source. See, e.g., On-line Careline Inc. v. America Online Inc.,
229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984). While the record shows that petitioner’s goods may be
incorporated into “computer hardware,” this is not sufficient to
Cancellation No. 92050789
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establish that the goods are related based on the theory that they
are complementary or that the conditions surrounding their
marketing create circumstances to give rise to likely confusion.
By analogy, at least on its face, computer hardware is not related
to an automobile despite the fact that it is incorporated into the
final product. Thus, without more, we cannot conclude that because
one item, petitioner’s proximity device, may be a component part of
another, respondent’s computer hardware, it is related.
Moreover, as discussed below, the record points to the opposite
conclusion.
2. Trade Channels and Conditions of Sale/Purchasers
We now turn to a discussion of the trade channels,
conditions of sale, and relevant purchasers. Petitioner
contends that respondent’s identification of goods is not
limited to any particular field, and therefore may include the
automotive industry, where it has actively promoted and marketed
its goods. In response thereto, respondent maintains that it
does not sell or target the automotive industry and has objected
to any evidence to the contrary. In addition, respondent
maintains that none of the other items listed in its
identification are sold as component parts to OEM’s.
Because the trade channels and classes of purchasers in
both parties’ respective registrations are unrestricted, we must
presume that petitioner’s and respondent’s goods are offered in
Cancellation No. 92050789
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all channels of trade and provided to all purchasers as are
normal for the respective goods. Paula Payne Products Co. v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973);
Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139
(CCPA 1958); and In re Elbaum, 211 USPQ 639 (TTAB 1981). Given
the highly technical and specialized nature of petitioner’s
goods, petitioner’s goods as identified would not be sold in
retail or online stores to the average consumer. The
“reasonable” or normal trade channel for a “personal computer”
is a retail store or online web site sold to the average
consumer, and not an OEM. However, as we have emphasized,
respondent’s registration is not limited to “personal computers”
and we therefore must also consider the “reasonable” or normal
trade channels for “computer hardware.” The normal trade
channels for computer hardware would include retail stores and
online sale services. In addition, the record shows that
computer hardware is sold to OEM’s and because respondent’s
registration is not limited in any manner, we must also assume
that respondent’s “computer hardware” is also sold as a
component part for use in finished products to OEM’s. As such,
we assume that both petitioner’s and respondent’s “computer
hardware” are both sold in the OEM trade channel and to the same
purchasers.
Cancellation No. 92050789
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Regarding the purchasers and conditions of sale,
petitioner’s goods by their intrinsic nature are of a type
purchased by technology professionals who are sophisticated and
knowledgeable in their purchasing decisions, and would be highly
familiar with the nature, use and purpose of both parties’
products. See Electronic Design & Sales Inc. v. Electronic Data
Systems Corp., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir.
1992) (“sophistication is important and often dispositive
because sophisticated consumers may be expected to exercise
greater care;” finding no likelihood of confusion resulting from
the contemporaneous use of E.D.S. and EDS despite the fact that
“the two parties conduct business not only in the same fields
but also with some of the same companies.”). See also J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition § 23:101
(4th ed. 2009) (“Where the relevant buyer class is composed
solely of professional, or commercial purchasers, it is
reasonable to set a higher standard of care than exists for
consumers.”). The record evidence demonstrates that they
exercise an unusually high degree of care when making purchasing
decisions. See discussion supra. This is reflected in the
record which shows that petitioner’s goods are only purchased by
corporate officials after serious and lengthy consideration, and
only after entering a confidentiality agreement. See discussion
supra. We therefore find that in this particular case, the
Cancellation No. 92050789
19
sophistication of the purchasers and conditions of sale diminish
the likelihood of confusion.
3. Strength of the Marks/Scope of Protection
We will now analyze the strength of petitioner’s SMART
TOUCH mark in order to determine the scope of protection to be
accorded petitioner’s mark as we analyze the remaining du Pont
factors.
At the outset, we note that both the terms “smart” and
“touch” are weak as used in connection with both petitioner’s
and respondent’s goods. Indeed, the term “smart” is often
recognized as descriptive when used in relation to technological
goods. See, e.g., Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB
2006) (the term “smart” “tells the consumer that the product is
highly automated and capable of computing information”). “In
computer technology [“smart”] is a relative term, indicating how
sophisticated a program or machine is and how many capabilities
it has….” Respondent’s Notice of Reliance, Exhibit 80
(definition of “smart” from Oxford English Dictionary).
Respondent’s goods include “computers” which by definition are
“smart” technology products.
Moreover, the term “touch” is at least strongly suggestive
of respondent’s “computers”, and by illustration, the evidence
indicates that respondent’s computers sold under the TOUCHSMART
mark in fact include “touch capable” computers. Petitioner also
Cancellation No. 92050789
20
uses the term “touch” in a descriptive manner in marketing its
goods. See Washeleski Deposition, Exhibit 19, (“Connecting you
with your vehicle… by using intuitive gestures with the Touch of
a finger to operate controls.”). In addition, both the terms
“SMART” and “TOUCH” have been disclaimed in third-party
registrations and widely used by others. See Respondent’s
Notice of Reliance, Exhibits 22-31 (registrations) and Exhibits
53-67 (use) for “smart” and Exhibits 32-41 (registrations) and
Exhibits 68-73 (use) for “touch.” We find particularly
probative the following use based third-party registrations of
record for marks comprised of or including the phrase “smart
touch” for use in connection with electronic or technological
goods or accessories therefor:
Registration No. 3828904 for the mark SMART TOUCH
(stylized) for “cell phone covers and cell phone
screen protectors” in International Class 9;

Registration No. 3574250 for the mark SMARTTOUCH GDO
for “biometrically enabled, fingerprint-activated
garage door openers” in International Class 9;

Registration No. 2571855 for the mark SMARTTOUCH for
“electronic controls for vehicle mounted snow plows”
in International Class 9; and

Registration No. 1745089 for the mark SMARTTOUCH for
“automatic weighing equipment; namely, retail
programmable service counter scales” in International
Class 9.

Based on this evidence, we find that neither petitioner’s
nor respondent’s marks are particularly strong. As such,
Cancellation No. 92050789
21
neither mark would be entitled to the same scope of protection
as an arbitrary or less suggestive mark would receive.
4. Third-Party Uses
The sixth du Pont factor focuses on the number and nature
of similar marks in use on similar goods. At the outset we note
that because third-party registrations of marks are not evidence
that the registered marks are in use, the third-party
registrations respondent made of record are of no probative
value with regard to this factor. See In re Mighty Leaf Tea,
601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). See also
2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition § 11:89 (4th ed. 2009)(“The mere citation of third
party registrations is not proof of third party uses for the
purpose of showing a crowded field and relative weakness.”).
Moreover, while respondent did submit evidence of use by other
parties of the terms “smart touch” and “smart” and “touch” used
individually in marks, we do not find this evidence particularly
useful for determining whether the relevant public has been so
exposed to the term that it should be accorded minimal
protection. As such, we find this du Pont factor to be neutral.
5. The Marks
We now turn to the du Pont likelihood of confusion factor
regarding the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial
Cancellation No. 92050789
22
impression. Petitioner argues that the involved marks merely
consist of a transposition of the same two words “SMART” and
“TOUCH,” making them similar in sound, appearance and
connotation.
Respondent argues that the marks are different in
appearance because petitioner’s SMART TOUCH mark “is a two-word
mark consisting of two-five letter words” and respondent’s
TOUCHSMART mark is a “single ten-letter word mark.”
Respondent’s Brief, p. 22. Respondent also argues that due to
the transposition of the terms “SMART” and “TOUCH,” the marks
not only sound different but have a different meaning – the term
“TOUCH” in respondent’s mark used as a verb in the imperative
form “urging the consumer to touch smartly.” Respondent’s
Brief, p. 23. In addition, respondent relies on federal
district court case law to argue that because its TOUCHSMART
mark is always preceded by the “HP” house mark, confusion is
less likely.
At the outset we point out that the registered mark at issue
in this proceeding is TOUCHSMART not HP TOUCHSMART. While
respondent may indeed only use its TOUCHSMART mark in connection
with the HP house mark, this fact is irrelevant to our analysis.
Respondent is reminded that unlike federal courts, we are an
administrative board tasked solely with the question of right to
registration. FirstHealth of the Carolinas Inc. v. CareFirst of
Cancellation No. 92050789
23
Md. Inc., 479 F.3d 825, 81 USPQ2d 1919, 1921 (Fed. Cir. 2007)
(quoting TBMP). The question before us is the registrability of
the mark set out in respondent’s registration, which does not
include respondent’s house mark. Hence the federal district court
infringement cases respondent relies upon are inapposite here.
Petitioner is correct – both marks are comprised of the
same elements: the words “smart” and “touch.” However, in this
particular instance, the transposition of the terms does change
the connotation of the mark. Respondent’s TOUCHSMART mark, with
the word “touch” used as a verb in the imperative form, evokes
the meaning of inviting the user to touch the electronic device,
whereas petitioner’s SMART TOUCH where “touch” is used as a
noun, evokes the meaning of the electronic device reaching out
to sense the perimeter. We also find the marks to have a
different overall commercial impression. In view of the
weakness of the composite terms (see discussion supra) and the
difference in meaning brought about by the transposition, we
find that the dissimilarities outweigh the similarities and the
marks are not substantially similar.
6. Actual Confusion and Contemporaneous Use
Respondent contends that despite three years of
contemporaneous use, there is no evidence of actual confusion,
and that petitioner has conceded this point. Respondent’s
Brief, p. 11. A showing of actual confusion would of course be
Cancellation No. 92050789
24
highly probative, if not conclusive, of a likelihood of
confusion. The opposite is not true, however. The lack of
evidence of actual confusion carries little weight. J.C. Hall
Co., 144 USPQ at 438. The issue before us is the likelihood of
confusion, not actual confusion. Herbko Int’l Inc. v. Kappa
Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)
(actual confusion not required). The absence of actual
confusion is not probative unless it is accompanied by evidence
demonstrating that in light of the parties’ actual business
activities, confusion, if likely, would have occurred. See
Cunningham, 55 USPQ2d at 1847. Given the short (three-year)
period of contemporaneous use at issue and the lack of evidence
that the parties’ goods have in fact been sold in the same
channels of trade and to the same parties, we cannot conclude
that the absence of evidence of actual confusion supports
respondent’s argument that confusion is not likely. Since there
is neither evidence of actual confusion nor significant evidence
of its absence, these factors are neutral.
7. Intent/Bad Faith
Petitioner contends that based on respondent’s responses to
its admission requests as well as the privilege log it produced
during discovery, respondent became aware of petitioner’s SMART
TOUCH mark through an internal trademark search, and that its
Cancellation No. 92050789
25
“obvious concealment of any relevant search reports tips the
‘intent’ factor in Nartron’s favor.” Petitioner’s Brief, p. 20.
In response thereto, respondent contends that it acted in
good faith in selecting the TOUCHSMART mark, pointing to the
testimony of Ms. Neumann, who was personally involved in the
decision, stating that she was not aware of either petitioner or
its products. Neumann Deposition, p. 7, lines 7-15. She also
testified that her selection of the TOUCHSMART mark was
influenced by respondent’s other marks with the suffix “SMART.”
Id., p. 9, lines 8-12. Respondent also maintains that the
listing of its trademark search report on a privilege log “is
the opposite of concealment.” Petitioner’s Brief, p. 27.
Bad faith, or intent to confuse, falls under the thirteenth
du Pont factor “any other established fact probative of the
effect of use.” L.C. Licensing Inc. v. Berman, 86 USPQ 1883,
1890 (TTAB 2008). “[W]hen there is evidence of an applicant's
intent to adopt a mark that suggests to purchasers a successful
mark already in use by another, the Board may, and ought to,
take into account that intent when resolving the issue of
likelihood of confusion when that issue is not free from doubt.”
First International Services Corp. v. Chuckles Inc., 5 USPQ2d
1628, 1633 (TTAB 1988). However, “an inference of ‘bad faith’
requires something more than mere knowledge of a prior similar
Cancellation No. 92050789
26
mark.” Sweats Fashions, Inc. v. Pannill Knitting Co., Inc., 833
F.2d 1560, 1565, 4 USPQ2d 1793 (Fed. Cir. 1987).
This record does not establish that respondent intended to
adopt his marks in bad faith. 8 Respondent has unequivocally
testified that it was unaware of petitioner and its SMART TOUCH
mark. As such we deem this du Pont fact neutral.
8. Balancing the Factors
In a particular case, any of the du Pont factors may play a
dominant role. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ at 567. In fact, in some cases, a single factor
may be dispositive. Kellogg Co. v. Pack'em Enterprises Inc.,
951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). In the present
case, the sophistication of the customers, conditions of sale,
and the dissimilarity and weakness of the marks outweigh the
other du Pont factors, such as any peripheral relatedness of the
goods, and overlap in trade channels, that would favor a finding
of likelihood of confusion. Accordingly, we find that
petitioner has failed to prove its case.
DECISION: The cancellation proceeding is dismissed.

8 We do not view respondent’s listing of its trademark search report on a
privilege log as tantamount to an admission of its knowledge of
petitioner’s registration or of its intent to adopt a mark which would be
likely to confuse. The time for arguing about the propriety of such a
listing is long past; one of the reasons for a privilege log is to allow
for timely challenges to the withholding of discovery based on claims of
privilege. Fed. R. Civ. P. 26(b)(5)(A)(2). If petitioner did not timely
challenge the withholding of such discovery, we will not now presume that
it was done for nefarious purposes, rather than in a good-faith assertion
of privilege.