NEON Enterprise Software, Inc.Download PDFTrademark Trial and Appeal BoardApr 7, 2009No. 76674218 (T.T.A.B. Apr. 7, 2009) Copy Citation 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 6 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 7 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 11 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 12 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 14 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 16 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 17 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 18 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc., supra. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation