Omicron electronics GmbH

Trademark Trial and Appeal BoardMar 20, 2012

No. 79075797 (T.T.A.B. Mar. 20, 2012)

Mailed: March 20, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Omicron electronics GmbH1 ________ Serial Nos. 79075796 and 79075797 _______ Catherine F. Hoffman of Mayback & Hoffman, P.A. for Omicron electronics GmbH. April Roach, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Seeherman, Zervas and Wolfson, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Omicron electronics GmbH has appealed from the final refusal of the Trademark Examining Attorney to register OMICRON, in standard characters,2 and OMICRON and design, as 1 The application, as originally filed, identified applicant as “Omicron electronics GmbH,” i.e., with the word “electronics” shown in all lower case, and therefore this is the manner in which applicant’s name appears in the USPTO database. Subsequent filings were made electronically through the Office’s TEAS system, and therefore the applicant’s name field was automatically populated with the name as originally entered. It is noted that in its appeal brief and reply brief applicant has been identified “OMICRON ELECTRONICS GmbH,” thereby suggesting that the lower case “e” in the original application was a typographical error. If that is the case, applicant should submit an amendment so that this error can be corrected. 2 Application Serial No. 79075797, filed on November 12, 2009 pursuant to Section 66(a) of the Trademark Act, based on an International Registration. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial Nos. 79075796 and 79075797 - 2 - shown below,3 for “designing electronic measurement, testing and analysis equipment used for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems; designing measurement, testing and analysis software for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems” in Class 42.4 Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s marks so resemble the mark OMICRON and design, as shown below, and registered for “computer consultation services in the fields of computers, software, information technology, e-business and networking,5 that, if used in connection with applicant’s identified services, they are likely to cause confusion or mistake or to deceive. 3 Application Serial No. 79075796, filed November 18, 2009, pursuant to Section 66(a) of the Trademark Act, based on an International Registration. 4 The applications also include goods in Class 9. However, the refusals of registration apply only to the services in Class 42. 5 Registration No. 2573459, issued May 28, 2002; Section 8 & 15 affidavits accepted and acknowledged. Serial Nos. 79075796 and 79075797 - 3 - The appeals have been fully briefed.6 Because they involve similar issues of law and fact and similar records, we are deciding both appeals in this single decision.7 Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). 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, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie 6 It is noted that applicant, in listing the table of authorities in its briefs, generally did not provide the United States Patents Quarterly (USPQ) citations for cases reported in the Federal Reporter and Federal Supplement. “Any cited decision of the Board or another court, which appears in the USPQ, should include a citation to the USPQ, in addition to any citation to an official reporter (if any), such as the Federal Reporter or Federal Supplement.” TBMP § 101.03 (3d ed. 2011). 7 The briefs filed in each application are virtually identical. To the extent that there is any difference in pagination, we have referred to the pages in Application Serial No. 79075797 for OMICRON. Serial Nos. 79075796 and 79075797 - 4 - Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We turn first to a consideration of the marks. It is a well-established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). The dominant feature of the marks at issue in this appeal is the term OMICRON. It is the only element in Application Serial No. 79075797, and is the only literal element in Application Serial No. 79075796. Although the mark in the latter application also includes a design element, when a mark comprises both a word and a design the word is normally accorded greater weight because it would be used by purchasers to request the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987). That is particularly true in this present case, since the design is abstract and purchasers would not ascribe to it a particular meaning, let alone articulate what the image is. As for the cited mark, again the element OMICRON conveys the dominant commercial impression. The Serial Nos. 79075796 and 79075797 - 5 - design would not be articulated or thought of as conveying a particular meaning, while the words “imagine.develop. evolve,” which appear in much smaller letters and below OMICRON, appear almost as a slogan or, as applicant puts it, a “tag line,” and certainly play a more subservient role. We simply do not find persuasive applicant’s argument that “there is more emphasis over the design portion of the mark than to the word ‘OMICRON’” because “of the partial oval design which is prominently displayed over the ‘OMI’ to catch [a] consumer’s eye first.” Reply brief, p. 5. Applicant has delineated the various differences between its marks and the cited marks, and we certainly agree that the marks are not identical. However, in comparing the marks, the test is not whether they can be distinguished when subjected to a side-by-side comparison. “Instead, it is the similarity of the general overall commercial impression engendered by the marks which must determine, due to the fallibility of memory and the consequent lack of perfect recall, whether confusion as to source or sponsorship is likely.” Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991). Applicant has also argued that “‘the mere presence of a common … portion [in two marks] is usually insufficient to support a finding of likelihood of confusion,’” quoting Serial Nos. 79075796 and 79075797 - 6 - Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694 (CCPA 1976). Brief, p. 6. However, that case involved the marks TEKTRONIX and D DAKTRONICS INC. (stylized), and the common portion was the suffix “tronix”/”tronics”, which the evidence of record showed conveyed the meaning that the products were electronic. In its quote from the decision, applicant omitted a key point made by the Court, namely that the common portion was “highly suggestive.” Thus, the unexpurgated statement in the opinion was “the mere presence of a common, highly suggestive portion is usually insufficient to support a finding of likelihood of confusion.” In the present case, the common element is OMICRON, and as far as the record shows, this term is arbitrary for applicant’s and the registrant’s services. The Tektronix case and the principle expressed therein are inapposite. When the marks are compared in their entireties, and giving greater weight to the dominant elements in each, applicant’s marks are very similar to the cited mark in appearance and pronunciation. The element common to them, OMICRON, is arbitrary and, as far as the record shows, has no meaning. However, to the extent that the term can be said to have any meaning at all, it would be the same in both marks. The additional words “imagine.develop.evolve.” Serial Nos. 79075796 and 79075797 - 7 - in the registered mark play such a subordinate role in the mark that consumers would not view them as contributing significantly to the overall meaning of the mark. Accordingly, we find that, because of the dominance of the element OMICRON in the cited mark, applicant’s marks and the registered mark convey the same connotation and commercial impression. The du Pont factor of the similarity of the marks favors a finding of likelihood of confusion. This brings us to a consideration of the services, keeping in mind that the greater the degree of similarity between an applicant’s mark and the cited registered mark, the lesser the degree of similarity between an applicant’s goods or services and the registrant’s goods or services that is required to support a finding of likelihood of confusion. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001). Further, as has often been stated, it is not necessary that the goods or services be identical or even competitive in nature in order to support a finding of likelihood of confusion, it being sufficient that the goods or services are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that they originate Serial Nos. 79075796 and 79075797 - 8 - from or are in some way associated with the same producer. In re Home Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). Further, in order to find a likelihood of confusion, it is sufficient if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Thus, we concentrate our analysis on the services of “designing measurement, testing and analysis software for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems” identified in applicant’s application. The registrant’s services are identified as “computer consultation services in the fields of computers, software, information technology, e-business and networking.” It is the examining attorney’s position that, as identified, the registrant’s computer consultation services in the fields of computers, software and information technology are not limited to a particular industry, and therefore would include electronics and electric power supply systems. Applicant, however, argues that the examining attorney has impermissibly expanded the scope of the registrant’s identification to the field of electric power supply systems Serial Nos. 79075796 and 79075797 - 9 - although, according to applicant “fields of computers, software, information technology, e-business and networking are distinct and sufficiently dissimilar to the industry and field of electric power supply systems.” Reply brief, p. 7. Applicant’s position is that the examining attorney has, in effect, rewritten the registrant’s identification to “computer consultation services in the fields of computers, software, information technology, e-business and networking, electric power supply systems; testing and analysis software for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems.” Brief, p. 10. We are not persuaded by applicant’s arguments. Although we agree that the identification in the cited registration is broadly described, we must give full weight to the identification as worded, and therefore must presume that the scope of the registration encompasses all services of the nature and type described, that they move in all appropriate channels of trade, and that the services would be purchased by all potential customers. Paula Payne Products Company v. Johnson Publishing Company, Inc., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); In re Elbaum, 211 USPQ 639 (TTAB 1981). As a result, we must view the registrant’s computer consulting services in the field of software as Serial Nos. 79075796 and 79075797 - 10 - encompassing all software, including software used in connection with electric power supply systems, and the software used for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems; in other words, the same type of software that applicant designs. See Trademark Act Section 7(b), which provides that a certificate of registration upon the principal register shall be prima facie evidence of, inter alia, the owner’s exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the certificate 8 Thus, based on the respective identifications, applicant’s and the registrant’s services are inherently related, as applicant’s software designing services and the registrant’s computer consulting services both must be deemed to be involved with the same type of software. The examining attorney has submitted a number of third- party registrations that show that entities have adopted a single mark for both computer software design and computer software consulting. See, for example, Registration Nos. 3278589, 353418 and 3355923. Third-party registrations 8 Accordingly, we must give full weight to the identification of services in the registration. If applicant believes that the identification is overly broad, the appropriate procedure to limit it would have been through a proceeding brought under Section 18 of the Trademark Act, not through argument on appeal. Serial Nos. 79075796 and 79075797 - 11 - which individually cover a number of different items and which are based on use in commerce serve to suggest that the listed goods and/or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Although the third-party registrations do not specifically identify the design of the specific software listed in applicant’s applications, they are probative to the extent that they show that computer software design and computer software consulting services can emanate from a single source. Moreover, the Internet evidence submitted by the examining attorney shows that various companies offer both computer consulting services and software design services. For example, the webpage for Entrance Software, www.entrancesoftware.com, states that: “Entrance Software is a Custom Development and Consulting Company. Our primary services are Custom Software Development, Software Consulting and Data Management.” There is also evidence that third parties provide both computer software consulting and software design services in the electric power supply field: Exponent has a long history of consulting in the power electronics arena. Our consulting capabilities spans the range from semiconductor device manufacturing support to applications of these devices in products where the power levels Serial Nos. 79075796 and 79075797 - 12 - are extremely low to the highest power and voltage levels found in electric utility systems. ... Exponent’s engineers and scientists consult in all aspects of power electronic systems. Our experience includes: Integration of power electronic systems into a [sic] high power transmission systems. ... Support to clients for design and construction of power electronic electrical equipment is an important part of those services. ... Software Consulting Services (topic heading) Exponent’s consulting team has experience in many aspects of software analysis and design ranging from evaluating intellectual property content of a software product to resolving failures related to embedded processors and machine control. At Exponent we have the capability to perform complex software review, study the interaction of hardware and software layers, as well as evaluate safety and reliability issues…. Our team of software developers and licensed engineers not only write the software but also tests and documents each portion of the code so the client can continue to maintain the software…. Examples of past projects include: ... Safety and reliability analysis of software in safety critical applications such as …process control applications including power generation systems…. www.exponent.com Smarter Process Inc. Electrical Power and Automation Engineers Technology and Computer Consultants ... ELECTRICAL POWER SYSTEMS ... COMPUTER AND IT NETWORKS www.smarterprocess.com Serial Nos. 79075796 and 79075797 - 13 - MBTurnkeyDesign, LLC Electronics—All areas of Instrument design, systems integration, data acquisition and motion control. Software—We can write the software necessary to make your product function via computer control using low level driver cost or other architectures. www.mbturnkeydesign.com Thus, because the software identified in applicant’s applications and the cited registration can encompass the same type of software, and because the third-party registrations and third-party use demonstrate that computer consulting in the field of software and software design services can emanate from a single source, we find that the services, as identified in applicant’s applications and the cited registration, are related, and that this du Pont factor favors a finding of likelihood of confusion. Similarly, because the registrant’s computer consulting services must be deemed to be in the field of software for testing, monitoring, developing and implementing electronic devices of electric power supply systems, the services will be offered and rendered to the same customers as applicant’s design services for such software. The du Pont factor of the channels of trade favors a finding of likelihood of confusion. Applicant has argued that the customers for the respective services are highly sophisticated, a point that Serial Nos. 79075796 and 79075797 - 14 - the examining attorney does not dispute. We also agree that the consumers for such services would be sophisticated and would exercise a high degree of care. To this extent, the du Pont factor of the conditions of purchase favors applicant. However, because the sole element of one of applicant’s marks, and the dominant element of its other mark and the registrant’s mark are all the identical term OMICRON, even careful consumers are not likely to recognize that the marks indicate different sources of the services. Although, as we have previously noted, there are some additional differences in the marks, given the arbitrary nature of OMICRON, even careful and sophisticated consumers encountering applicant’s services of “designing measurement, testing and analysis software for testing, analyzing, monitoring, developing and implementing electronic devices of electric power supply systems” offered under the marks OMICRON and OMICRON and design are likely to believe that they emanate from or are sponsored by the same source as the “computer consultation services in the fields of computers, software, information technology, e-business and networking” offered by registrant under its OMICRON and design mark. In the same way that applicant has chosen to adopt two variations of its OMICRON mark, one as a word mark and one with a design, consumers familiar with the registrant’s mark Serial Nos. 79075796 and 79075797 - 15 - are likely to view applicant’s marks as variations of the registrant’s mark or, in the converse situation, consumers who are familiar with applicant’s marks are likely to view the registrant’s mark as another variation of those marks. In either event, they will view all the marks are indicating services emanating from a single source. After considering all of the evidence and arguments, including the arguments not specifically discussed herein, we find that applicant’s marks for its identified services are likely to cause confusion with the cited registration. To the extent that there is any doubt on this issue, we must follow the well-established principle that such doubt must be resolved in favor of the registrant and prior user. In re Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973). Decision: The refusal of registration as to the services in Class 42 is affirmed for both applications. After the appeal period has passed, the applications will be approved for publication for the goods in Class 9. As noted in footnote 1, if applicant’s name as it appears in Office records contains a typographical error, applicant should, within thirty days, file an amendment to correct it.