NEON Enterprise Software, Inc.

Trademark Trial and Appeal Board

Apr 7, 2009

No. 76674218 (T.T.A.B. Apr. 7, 2009)

Mailed:
April 7, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re NEON Enterprise Software, Inc.
________

Serial No. 76674218
_______

Michael P. Adams and Diane K. Lettelleir of Winstead
Sechrest & Minick for NEON Enterprise Software, Inc.

William Breckenfeld, Trademark Examining Attorney, Law
Office 116 (Michael W. Baird, Managing Attorney).
_______

Before Grendel, Zervas and Taylor, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

NEON Enterprise Software, Inc., applicant herein,
seeks registration on the Principal Register of the mark
ISERVE DBA (in standard character form) for services
recited in the application as “providing services to assist
third parties in maintaining their databases and managing
their IMS environments in the form of technical support
services, namely, troubleshooting of computer hardware and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 76674218
2
software problems,” in Class 42.1 Pursuant to the Trademark
Examining Attorney’s requirement, applicant has disclaimed
the exclusive right to use DBA apart from the mark as
shown.2
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark on the ground that the
mark, as applied to the services recited in the
application, so resembles the mark ISERV SYSTEMS,
previously registered (in standard character form; SYSTEMS
disclaimed) for goods and services identified in the
registration as “computer software for providing human
services organizations with real time data regarding
providers, patients and delivered services,” in Class 9,
and “design and implementation of computer systems for
human service organizations which provide real time data
regarding providers, patients and delivered services;

1 Serial No. 76674218, filed on March 19, 2007. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). September 2005 is alleged in the application to
be the date of first use of the mark anywhere and the date of
first use of the mark in commerce.

2 See Trademark Act Section 6, 15 U.S.C. §1056. The Trademark
Examining Attorney (with his first Office action) submitted an
entry for “DBA” from the Internet dictionary FOLDOC (Free On-Line
Dictionary Of Computing, at http:/foldoc.org) which shows that
“DBA” stands for “database administrator,” which itself is
defined as “A person responsible for the design and management of
one or more databases and for the evaluation, selection and
implementation of database management systems.”

Ser. No. 76674218
3
technical support services, namely, troubleshooting of
computer hardware and software problems,” in Class 42, as
to be likely to cause confusion, to cause mistake, or to
deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. The appeal
is fully briefed.
After careful consideration the evidence of record and
the arguments of counsel, we affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
Initially, we note that our likelihood of confusion
findings and analysis in this case need be and will be
based solely on the Class 42 services recited in the cited
registration.
Ser. No. 76674218
4
We begin our likelihood of confusion analysis with the
second du Pont factor, which requires us to determine the
similarity or dissimilarity of the services as recited in
the application and in the cited registration,
respectively. It is settled that it is not necessary that
these respective services be identical or even competitive
in order to find that the they are related for purposes of
our likelihood of confusion analysis. That is, the issue
is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. See In re Rexel Inc., 223 USPQ
830 (TTAB 1984). It is sufficient that the services be
related in some manner, or that the circumstances
surrounding their use be such, that they would be likely to
be encountered by the same persons in 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 source or that there is an
association or connection between the sources of the
respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978). For purposes of this proceeding
Ser. No. 76674218
5
involving the registrability of applicant’s mark, our
comparison of the services must be based solely on the
services as they are recited in the application and the
cited registration, respectively, not on what any extrinsic
evidence might show about the specific nature of the
applicant’s or registrant’s services. In re Shell Oil Co.,
9902 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re La
Peregrina Ltd., 86 USPQ2d 1645 (TTAB 2008); In re Jump
Designs LLC, 80 USPQ2d 1370 (TTAB 2006). Finally,
“[l]ikelihood of confusion may be found based on any item
that comes within the identification of goods [or services]
in the involved application and registration.” In re La
Peregrina Ltd., supra, 80 USPQ2d at 1646.
Applying these principles in this case, we find as
follows.
Applicant’s services, as recited in the application,
are “providing services to assist third parties in
maintaining their databases and managing their IMS
environments in the form of technical support services,
namely, troubleshooting of computer hardware and software
problems.” The record establishes that the designation
“IMS” in applicant’s recitation of services stands for
“Information Management System,” which apparently is an IBM
product described on IBM’s website as “IBM’s premier
Ser. No. 76674218
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transaction & hierarchical database management system,” and
as “IBM’s Premier Transaction and Database Managers for
critical online applications.” (Applicant’s January 22,
2008 Response to Office Action, Exhibit C.)
The Class 42 services recited in the cited
registration are “design and implementation of computer
systems for human service organizations which provide real
time data regarding providers, patients and delivered
services; technical support services, namely,
troubleshooting of computer hardware and software
problems.”
We find that applicant’s services as recited in the
application are encompassed within, and thus are legally
identical to, that portion of the services recited in the
cited registration as “technical support services, namely,
troubleshooting of computer hardware and software
problems.”
In the cited registration’s recitation of services,
the “design and implementation of computer systems for
human service organizations which provide real time data
regarding providers, patients and delivered services” are
specifically directed to “human service organizations” and
perform a specified function, i.e., they “provide real time
data regarding providers, patients and delivered services.”
Ser. No. 76674218
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However, in the registration’s recitation of services, the
wording “technical support services, namely,
troubleshooting of computer hardware and software
problems,” is set apart from the remainder of the
recitation by a semicolon, and it therefore stands alone
and constitutes a separate service which must be compared
to applicant’s recited services for purposes of our
analysis under the second du Pont factor.
Thus, in the manner in which the services are recited
in the application and in the cited registration,
applicant’s “technical support services, namely,
troubleshooting of computer hardware and software
problems,” which specifically are offered “to assist third
parties in maintaining their databases and managing their
IMS environments,” must be deemed to be encompassed within,
and thus legally identical to, the cited registration’s
more broadly but identically worded “technical support
services, namely, troubleshooting of computer hardware and
software problems.” That is, we must presume that
registrant’s broadly-recited “technical support services,
namely, troubleshooting of computer hardware and software
problems” could include all such services, including those
which, like applicant’s, are offered “to assist third
Ser. No. 76674218
8
parties in maintaining their databases and managing their
IMS environments.”
For these reasons, we find that the services recited
in applicant’s application and the “technical support
services, namely, troubleshooting of computer hardware and
software problems” recited in the cited registration are
legally identical. The second du Pont factor therefore
weighs in favor of a finding of likelihood of confusion.
We turn next to the third du Pont factor, under which
we determine the similarity or dissimilarity of the
respective trade channels in which applicant’s and
registrant’s services, as recited in the application and
registration respectively, are or could be marketed.
Because the services as recited in the cited registration
do not include any trade channel restrictions or
limitations, we must presume that those services are or
could be marketed in all normal trade channels for such
services and to all normal classes of purchasers for such
services. In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB
1994); In re Elbaum, 211 USPQ 639 (TTAB 1981).
For the reasons discussed above, we have found that
applicant’s services are legally identical, in part, to the
services recited in the cited registration, i.e., as to
“technical support services, namely, troubleshooting of
Ser. No. 76674218
9
computer hardware and software problems.” To that extent,
we likewise find that applicant’s services and the services
recited in the cited registration are or could be marketed
in identical trade channels. In re Smith & Mehaffey,
supra. The third du Pont factor therefore weighs in favor
of a finding of likelihood of confusion.
The fourth du Pont factor requires us to consider any
evidence pertaining to the conditions under which the
services are purchased, including the cost of the services,
the care with which the services are purchased, and the
knowledgeability and sophistication of the purchasers of
the services. As discussed above, we are presuming that
both applicant and registrant are offering the more
specific services recited in applicant’s application, i.e.,
“technical support services, namely, troubleshooting of
computer hardware and software problems,” offered “to
assist third parties in maintaining their databases and
managing their IMS environments.” Therefore, it is the
conditions of purchase of these more specific services with
which we are concerned under this du Pont factor.
There is no specific evidence which establishes, one
way or the other, whether these services are expensive,
and/or are purchased by knowledgeable and sophisticated
purchasers, and/or are purchased with a higher than normal
Ser. No. 76674218
10
degree of care. However, we will assume from the
recitation of services itself that the services are of a
type which are or would be purchased by, or in consultation
with, information technology professionals who would be
relatively knowledgeable about the services. On the basis
of this assumption (which, as noted, is not supported by
specific evidence in the record), we find that the fourth
du Pont factor weighs against a finding of likelihood of
confusion.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc., supra. The test, under the first
du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the services offered under the
respective marks is likely to result. The focus is on the
recollection of the average purchaser, who normally retains
a general rather than a specific impression of marks. See
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). Furthermore, although the marks at issue must be
Ser. No. 76674218
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considered in their entireties, it is well-settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. See In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944 (Fed. Cir. 2004); In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
Finally, in cases such as this, where the applicant’s
services are (in part) identical to the services recited in
the cited registration, the degree of similarity between
the marks which is required to support a finding of
likelihood of confusion is less than it would be if the
services were not identical. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
First, we find that the dominant feature in the
commercial impression of applicant’s mark is the term
ISERVE, and that the dominant feature in the commercial
impression of the cited registered mark is the term ISERV.
ISERVE and ISERV are dominant because they both appear on
this record to be arbitrary, if not coined, as applied to
the relevant services. ISERVE and ISERV also appear first
in their respective marks, a fact which enhances their
dominance in the marks’ respective commercial impressions.
Ser. No. 76674218
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See Palm Bay Imports Inc., supra, 73 USPQ2d at 1692.
Moreover, we find that the disclaimed remaining matter in
applicant’s mark, DBA (which stands for “database
administrator; see supra at footnote 2), and the disclaimed
remaining matter in the cited registered mark, SYSTEMS, are
both merely descriptive of, if not generic for, the
services recited in the application and in the cited
registration, respectively. As such, we find that they
contribute little or nothing to the source-indicating
significance of the respective marks. In re Dixie
Restaurants Inc., supra. It is ISERVE and ISERV which
would be perceived as the primary if not the sole source
indicators in the respective marks.
We do not disregard the designation DBA in applicant’s
mark and the word SYSTEMS in the cited registered mark, and
we have considered the marks in their entireties. However,
for the reasons stated above, we find that it is the term
ISERVE that dominates the commercial impression of
applicant’s mark, and the term ISERV which dominates the
commercial impression of the cited registered mark. These
elements of the respective marks therefore are entitled to
more weight in our comparison of the two marks. See In re
Chatam International Inc.; In re National Data Corp.,
supra.
Ser. No. 76674218
13
Comparing the marks in terms of appearance, we find
that they are dissimilar to the extent that applicant’s
mark, but not the cited registered mark, includes the
designation DBA, while the cited registered mark, but not
applicant’s mark, includes the word SYSTEMS. The marks
also look slightly dissimilar to the extent that in
applicant’s mark there is an “E” at the end of “ISERV.”
However, ISERVE and ISERV, the dominant elements of the
source-indicating significance of the respective marks, are
highly similar in appearance when considered as a whole.
The two designations (and the two marks) both begin with
the identical letters “ISERV.” We find that the “E” with
which applicant’s ISERVE designation ends does not suffice
to distinguish the otherwise identical designations ISERVE
and ISERV. On balance, we find that the similarity between
the marks which results from the fact that they both begin
with the identical letters ISERV outweighs the points of
dissimilarity between the marks, i.e., the different
disclaimed terms DBA and SYSTEMS, and the presence of the
final “E” on the designation ISERVE in applicant’s mark.
We find that the marks are similar in terms of appearance.
In terms of sound, we find that the marks are
dissimilar to the extent that the designation DBA in
applicant’s mark sounds different than the word SYSTEMS in
Ser. No. 76674218
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the cited registered mark. However, we find that the
dominant feature in the source-indicating significance of
applicant’s mark, ISERVE, is phonetically identical to the
dominant feature in the source-indicating significance of
the cited registered mark, ISERV. The phonetic similarity
between the marks which arises from the identical-sounding
dominant terms ISERVE and ISERV with which the respective
marks begin outweighs the phonetic dissimilarity between
the marks which results from the phonetic difference
between the disclaimed terms DBA and SYSTEMS in the
respective marks.
In terms of connotation, we find that the marks are
dissimilar to the extent that the DBA (which stands for
“database administrator”) in applicant’s mark does not have
the same meaning as the word SYSTEMS in the cited
registered mark. However, we find that the dominant
source-indicating features of the respective marks, i.e.,
the arbitrary or coined terms ISERVE and ISERV, to the
extent that they have any connotation at all, would have
exactly the same connotation. Whatever the connotation of
the letter “I” with which each mark begins, the connotation
would be the same in both marks. The letters “SERV” in the
cited registered mark would immediately be understood to be
a mere slight misspelling of the word “serve,” which is the
Ser. No. 76674218
15
obvious meaning of the letters “SERVE” with which
applicant’s mark ends. Whatever the connotation of the
combination of the letter “I” and the word “serve,” the
connotation is the same in both marks. This identical
connotation of ISERVE and ISERV outweighs the difference in
the marks’ connotations which results from the difference
in connotation between the disclaimed terms DBA and SYSTEMS
in the respective marks. We therefore find that the marks
are similar in terms of connotation.
In terms of overall commercial impression, we find
that the marks are similar. They each begin with the
highly similar coined or arbitrary term ISERV or ISERVE,
followed by a highly descriptive or generic designation,
i.e., DBA or SYSTEMS. ISERVE and ISERV, the dominant
features in the source-indicating significances of the
respective marks, are essentially identical. Purchasers
are not likely to perceive or recall the slight difference
in the spelling of the terms. Even if they do, they are
likely to assume that the services offered under the two
marks originate from the same or a related source. For
these reasons, we find that the marks are similar in terms
of commercial impression.
Considering the marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
Ser. No. 76674218
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we find that the marks are similar, especially when used on
identical services. We find that the first du Pont factor
weighs in favor of a finding of likelihood of confusion.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists. Even if we assume (under
the fourth du Pont factor) that the purchasers of the
services might be knowledgeable about the services, we find
that they still are likely to be confused due to the
similarity between the marks, and the legally identical (in
part) nature of the services and trade channels. Balancing
the du Pont factors, we conclude that a likelihood of
confusion exists.
Applicant has presented evidence (Exh. A to
applicant’s January 22, 2008 Response to Office Action)
that it is the owner of prior Registration No. 3374666,
which is of the mark ISERVE for “computerized database
management,” and also is the owner of pending intent-to-use
application Serial No. 76659188, which is for the mark
ISERVE SP for “computerized database management” (Notice of
Allowance issued). Applicant argues that both of those
marks were approved for publication notwithstanding the
existence of the cited registration in this case, and that
Ser. No. 76674218
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a similar result should be reached here. We are not
persuaded.
Applicant’s prior registration and pending application
both are for “computerized database management” services.
Whatever may be the similarity or dissimilarity between
those services and the services recited in the cited
registration in this case, they are not legally identical
(in part) to the services recited in the cited
registration, as are applicant’s services as recited in the
present application. As a result, the Office’s apparent
finding that there was no likelihood of confusion in
applicant’s prior registration and application is entitled
to little probative value in the present case. In any
event, it is settled that the registrability of applicant’s
mark in the present application must be determined on its
own record and its own merits. In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
On the record in this case, and for the reasons
discussed above, we conclude that a likelihood of confusion
exists and that registration must be refused pursuant to
Trademark Act Section 2(d). To the extent that any doubts
might exist as to the correctness of this conclusion, we
resolve such doubts against applicant. See In re Shell Oil
Co., supra; In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
Ser. No. 76674218
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6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.