Parasoft Corp.

Trademark Trial and Appeal Board

Aug 6, 2002

No. 75599576 (T.T.A.B. Aug. 6, 2002)

Mailed: August 6, 2002
Paper No. 21
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Parasoft Corporation
________
Serial No. 75/599,576
_______
LeRoy T. Rahn of Christie, Parker & Hale, LLP for Parasoft
Corporation.
John Dwyer, Trademark Examining Attorney, Law Office 116
(Meryl Hershkowitz, Managing Attorney).
_______
Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On December 4, 1998, Parasoft Corporation (a
California corporation) filed an application to register
the mark C++TEST! (typed drawing) on the Principal Register
for goods ultimately amended to read “computer program for
testing computer applications software” in International
Class 9. The application is based on applicant’s assertion
of a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/599576
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that applicant’s mark, when used on or in connection
with applicant’s goods, is merely descriptive of same.
Additionally, registration has been finally refused
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used on
or in connection with its goods, so resembles the mark
CTEST++ (typed drawing), which is registered for “systems
software for testing and quality assurance of other
computer software” in International Class 9,1 as to be
likely to cause confusion, or to cause mistake, or to
deceive.
The Examining Attorney also made final his requirement
under Trademark Rule 2.61(b) for further advertising or
literature.
Applicant has appealed. Both applicant and the
Examining Attorney have briefed the issues before us. An
oral hearing was not requested.
We turn first to the refusal to register on the ground
of mere descriptiveness. It is well settled that a term is
merely descriptive of goods or services, and therefore
1 Registration No. 2,109,462, issued October 28, 1997.
Ser. No. 75/599576
3
unregistrable pursuant to Section 2(e)(1), if it
immediately conveys knowledge or information about the
qualities, characteristics, purposes or features of the
goods or services on or in connection with which it is used
or intended to be used. See In re Nett Designs, 236 F.3d
1339, 57 USPQ2d 1564 (Fed. Cir. 2001); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978);
and In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB 1992). In
order to be “merely descriptive,” a term need only describe
a single significant quality, characteristic, purpose or
feature of the goods. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987).
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used or is intended to be used on or in connection
with those goods or services, and the possible significance
that the term would have to the average purchaser of the
goods or services because of the manner of its use. See In
re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed.
Cir. 1987); Abcor, supra, 200 USPQ at 218; In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); and In
re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
Ser. No. 75/599576
4
The Examining Attorney has submitted substantial
evidence showing the descriptiveness of “C++”” and “TEST.”2
We need not list it here because applicant does not contest
the descriptiveness of the individual terms. Specifically,
applicant has acknowledged that “C++” is the generic name
of a computer programming language (see e.g., applicant’s
brief, p. 5, and applicant’s March 4, 2000 “request for
reconsideration of suspension,” p. 1); and applicant has
acknowledged that “test” is descriptive for its goods (see
e.g., applicant’s brief, pp. 3 and 8).
However, applicant argues that its mark includes an
arbitrary component, the exclamation point, which creates a
different commercial impression from the words alone, and
makes the mark suggestive because it requires some thought
in order to determine the nature of applicant’s goods.
The Examining Attorney contends that the exclamation
point in applicant’s mark is simply a slight alteration of
2 In support of the descriptiveness refusal, the Examining
Attorney submitted (i) a computer dictionary definition of “C++”
and an English dictionary definition of “test”; (ii) photocopies
of several representative excerpted stories retrieved from the
Nexis database to demonstrate use of the descriptive term “test”
in relation to applicant’s goods for testing software; (iii)
photocopies of several pages from an Internet search to
demonstrate use of the term “C++” in relation to the involved
goods; (iv) photocopies of several third-party registrations in
which either “C++” or “test” was disclaimed in relation to
computer software; and (v) photocopies of 18 pages from
applicant’s website.
Ser. No. 75/599576
5
an otherwise merely descriptive term; that the addition of
the exclamation point in fact emphasizes the descriptive
significance of “C++TEST”; and that the combination of two
descriptive elements with a common punctuation mark does
not create a new non-descriptive term.
On this record, we find that the Examining Attorney
has established a prima facie showing that the mark
C++TEST!, taken as a whole, is merely descriptive of
applicant’s goods.
Specifically, we disagree with applicant’s argument
that the presence of the exclamation point prevents its
applied-for mark from being merely descriptive. Rather,
this conventional punctuation mark does not, by itself, add
any distinctiveness to the mark. If anything, the
exclamation point emphasizes the descriptive nature of the
remainder of the mark. Consumers would likely view the
punctuation as an emphasis of applicant’s testing function
of C++ language software.3 See In re Brock Residence Inns,
3 Applicant cited a Board decision which was designated by the
Board as nonprecedential, providing a photocopy of said decision.
The Examining Attorney explained that he did not consider the
cited case because it was nonprecedential. Applicant nonetheless
urges that the Board consider the decision “for consistency”
(applicant’s brief, p. 7). Citation to nonprecedential decisions
is improper. See General Mills Inc. v. Health Valley Foods, 24
USPQ2d 1270, footnote 9 (TTAB 1992); and In re American Olean
Tile Company Inc., 1 USPQ2d 1823, 1825 (TTAB 1986). Applicant’s
request that we consider the case is denied. In any event, we do
not find our decision herein is inconsistent with the
Ser. No. 75/599576
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Inc., 222 USPQ 920 (TTAB 1984)(the slogan FOR A DAY, A
WEEK, A MONTH OR MORE! held incapable of distinguishing
applicant’s hotel services); In re Wileswood, Inc., 201
USPQ 400 (TTAB 1978)(the slogans AMERICA’S BEST POPCORN!
and AMERICA’S FAVORITE POPCORN! held merely descriptive of
unpopped popcorn); and In re Burlington Industries, Inc.,
196 USPQ 718 (TTAB 1977)(the term CHAMPAGNE! held merely
descriptive of ladies’ hosiery).
We find that the applied-for term unquestionably
projects a merely descriptive connotation, and we believe
that competitors have a competitive need to use this term.
See In re Tekdyne Inc., 33 USPQ2d 1949, 1953 (TTAB 1994),
and cases cited therein. See also, 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §11:18 (4th
ed. 2000).
In its reply brief (in the section regarding the issue
of descriptiveness, p. 3), applicant again argued that the
presence of an exclamation point makes a commercial
impression that distinguishes applicant’s goods from those
of others; and then stated that the mark has been widely
used in marketing applicant’s products, requesting that “if
nonprecedential case cited by applicant as the facts of that case
are not even arguably the same as those in the case now before
us.
Ser. No. 75/599576
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the Section 2(d) refusal is reversed, therefore, Applicant
respectfully requests the Board to remand the case to the
Examining Attorney to permit Applicant to submit evidence
of distinctiveness.”
Applicant’s request is denied. Once an application
has been considered and decided on appeal, the Board has no
authority to reopen it for further examination. See
Trademark Rule 2.142(g). See also, TBMP §1218. It should
be noted that after an appeal is filed, the proper
procedure, if an applicant wishes to assert a claim of
acquired distinctiveness in the alternative, is to file a
request for remand in a separate document, rather than as a
statement in its appeal brief and/or reply brief. See TBMP
§1215.
Next, we turn to the refusal to register under Section
2(d), based on the registered mark CTEST++ for “systems
software for testing and quality assurance of other
computer software.” In determining this issue we have
followed the guidance of the Court in In re E. I. duPont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Ser. No. 75/599576
8
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
We turn first to a consideration of applicant’s goods
vis-a-vis those of the cited registrant. We find that the
goods are essentially identical, both being computer
software used for testing other computer software.
Applicant did not argue to the contrary.
Likewise applicant did not argue, and we do not find,
any differences in the channels of trade or purchasers. We
must presume, given the identifications, that the goods
travel in the same channels of trade, and are purchased by
the same class of purchasers. See Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
Regarding the respective marks, we begin with the
admonition by our primary reviewing Court that “when marks
would appear on virtually identical goods or services, the
degree of similarity necessary to support a conclusion of
likely confusion declines.” Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992).
The Examining Attorney takes the position that
applicant’s mark incorporates the registered mark, but
modifies it slightly by transposing the location of the
Ser. No. 75/599576
9
word “TEST” and adding an exclamation point; and that the
marks remain similar. Applicant contends that the only
common element in these marks is the word “TEST”; and that
the marks are fundamentally different, with the placement
of the “++” in a different part of applicant’s mark, and
the arbitrary punctuation “!” present in applicant’s mark.
In this case, there are obvious differences between
the two involved marks, specifically that only applicant’s
mark includes an exclamation point and that the “++” symbol
appears in a different location in each of the two marks.
However, we agree with the Examining Attorney that these
differences do not serve to distinguish the marks.
Although registrant’s mark is distinctive because of
the manner in which the elements have been arranged, and
applicant’s mark is merely descriptive, the marks are very
similar in appearance and commercial impression to that of
applicant’s merely descriptive mark. Both consist of the
elements “C,” “++” and “TEST,” and rearrangement of the
elements in applicant’s mark does not create a mark
sufficiently different from registrant’s mark to avoid
confusion.
Applicant strongly urges that the arbitrary
exclamation point appearing at the end of its mark creates
a different commercial impression, but we disagree. As
Ser. No. 75/599576
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discussed previously herein, the exclamation point does not
add any distinctiveness to the mark.
Upon considering the marks in their entireties, we
find that applicant’s mark C++TEST! and the cited
registrant’s mark CTEST++ are similar in sound, appearance,
connotation and overall commercial impression.
Applicant, citing, inter alia, the case of In re
General Motors Corp., 23 USPQ2d 1465 (TTAB 1992), also
contends that the cited registered mark is a weak mark
entitled to a narrow scope of protection; and that because
it is entitled to a narrow scope of protection, even minor
differences between the marks will avoid confusion.
It is true that in the General Motors case, the Board
found no likelihood of confusion between applicant’s mark
GRAND PRIX for “automobiles,” and registrant’s six
registered marks, GRAND PRIX and GRAND PRIX with three
different designs, for a variety of automotive products
(e.g., tires, mufflers, motor oil), holding that the term
GRAND PRIX was highly suggestive and entitled to a narrow
scope of protection. However, in balancing all the
relevant du Pont factors, the Board also considered the
interesting confluence of facts including that applicant
had established “relative fame of [its] mark”; that there
had been coexistence of the parties’ marks for over thirty
Ser. No. 75/599576
11
years; and that there had been no instances of actual
confusion. This is to be distinguished from the case now
before the Board, where there is no evidence of the nature
discussed in the General Motors case.
Moreover, even weak marks remain entitled to
protection against registration by a subsequent user of the
same or similar mark for the same or related goods.4
Applicant’s identified goods, as noted above, are legally
identical to registrant’s identified goods. See Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB
1976).
To the extent we have any doubt on the question of
likelihood of confusion, it must be resolved against the
newcomer, as the newcomer has the opportunity of avoiding
confusion and is obligated to do so. See TBC Corp. v.
Holsa Inc., 126 F.3d 1470, 44 USPQ2d 1315 (Fed. Cir. 1997);
and In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988).
Finally, we turn to the third issue before us, whether
the Examining Attorney’s requirement for further
information under Trademark Rule 2.61(b) was proper.
4 We specifically note that the cited registered mark is on the
Principal Register with no disclaimer and no claim of acquired
distinctiveness under Section 2(f) of the Trademark Act; and it
is, of course, entitled to the statutory presumptions under
Section 7(b).
Ser. No. 75/599576
12
In the first Office action the Examining Attorney
required advertising or literature (e.g., promotional
materials) regarding the nature of applicant’s goods, and
if such materials were not available, then applicant was to
describe the nature, purpose and channels of trade of its
identified goods. In response to the first Office action,
applicant submitted advertising literature in the nature of
a one-page glossy brochure, which contained extensive
information on how applicant’s computer program for testing
computer applications software works.
However, in the final Office action, the Examining
Attorney reiterated the requirement, stating that the one
page of literature was inadequate, and requiring more
information about the goods, such as a fact sheet or
advertising. (The Board notes that with this same final
Office action, the Examining Attorney attached photocopies
of 18 pages he had printed out from applicant’s website as
relevant to the issue of descriptiveness.) Applicant
responded to the final Office action on this issue, and it
offered photocopies of two pages from applicant’s website,
one titled “Products Page,” and one titled “C++TEST”; and
applicant stated that “Further, information can be obtained
on the website.... The channels of trade would be the
Ser. No. 75/599576
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Internet, and any computer storage medium product, such as
CD ROMs.” (Applicant’s response, p. 3.)
The Examining Attorney treated the “response” to the
final Office action as a request for reconsideration and
denied same in an Office action dated December 19, 2000,
without commenting on either the additional pages of
literature or the statements of applicant regarding its
goods.
Applicant filed its brief on the case addressing only
the refusals to register under Sections 2(d) and (e)(1).
However, the Examining Attorney made clear in his brief
that whether applicant had submitted sufficient information
under Trademark Rule 2.61(b) remained an issue. He
specifically stated that applicant was required to provide
product literature relating to how the goods operate, the
salient features, and the prospective customers and/or
channels of trade; and alternatively, applicant could
provide a full description of the nature, purpose and
channels of trade for these goods. Applicant, in its reply
brief, pointed out that in the December 19, 2000 Office
action, the Examining Attorney did not indicate that the
additional information submitted by applicant was
inadequate; and further, applicant argued that it has
Ser. No. 75/599576
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complied with the Examining Attorney’s requirement with all
the necessary information about applicant’s goods.
Certainly, the Examining Attorney’s requirement under
Trademark Rule 2.61(b) for additional information about the
goods was appropriate. However, the record shows that
applicant has made a good faith attempt to comply with the
Examining Attorney’s requirement; and the Examining
Attorney is under a duty to be specific with regard to what
is still needed from applicant. See TMEP §814 (3d ed.
2002). Here, upon receiving the denial of its request for
reconsideration, applicant did not even realize that the
requirement for additional information remained an issue.
On this record, we find that applicant has sufficiently
complied with the Examining Attorney’s requirement for
additional information under Trademark Rule 2.61(b). Nor
do we see from the Examining Attorney’s actions that
applicant knew that even more information as to how the
goods operate, the salient features and the prospective
purchasers and channels of trade was required. Cf., In re
Babies Beat Inc., 13 USPQ2d 1729 (TTAB 1990).
Decision: The requirement for more information under
Trademark Rule 2.61(b) is reversed. The refusals to
register under both Sections 2(d) and 2(e)(1) are affirmed.