Prosodie S.A.

Trademark Trial and Appeal Board

Dec 7, 2004

No. 76210364 (T.T.A.B. Dec. 7, 2004)

Mailed: 12/7/2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Prosodie S.A.
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Serial No. 76210364
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Robert E. Rosenthal of Duane Morris for applicant.
Angela M. Micheli, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
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Before Simms, Quinn and Drost, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Prosodie S.A. to register
the mark PROSODIE for “telecommunications services, namely,
local and long distance transmission of voice and data by
means of telephone transmissions, telephone voice
messaging, data transmission, facsimile transmission and
providing multiple-user access to a global computer
information network.”1
1 Application Serial No. 76210364, filed February 14, 2001, based
on an allegation of a bona fide intention to use the mark in
commerce.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 76210364
2
The trademark examining attorney refused registration
on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles the
previously registered mark PROSODY for the goods and
services set forth below2 as to be likely to cause confusion
under Section 2(d) of the Trademark Act.
Computer telephony equipment, namely,
speech processing and recognition
platforms, audio recorders and players,
dialers, tone and pulse detectors,
matrix conferencing platforms, signal
processors, telephone interfaces;
telecommunications equipment, namely,
speech processing and recognition
platforms, audio recorders and players,
dialers, tone and pulse detectors,
matrix conferencing platforms, signal
processors, telephone interfaces;
computer software in the field of
telecommunications for speech
processing and recognition, audio
recording and audio playing, dialing,
tone and pulse detection, matrix
conferencing, signal processing, and
telephone interfacing; speech
processors; circuit boards for
computers; integrated circuits; and
parts for all aforesaid goods (in
International Class 9);
Installation, maintenance and repair of
computer telephony equipment,
telecommunications equipment and
computer hardware (in International
Class 37);
Computer telephony, namely, providing
computer-controlled telephone
communication services; [and] telephone
2 Registration No. 2488171, issued September 11, 2001.
Ser No. 76210364
3
communication services (in
International Class 38); and
Installation, maintenance and repair of
computer software (in International
Class 42).
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant asserts that registrant’s goods and services
are marketed to business customers, and that these
purchasers are sophisticated original equipment
manufacturers (OEMs) and computer application developers.
Applicant contends that registrant’s primary product is a
card for speech processing computer applications, and that
registrant’s services are closely associated with the
speech processing cards. Applicant also argues that
registrant’s mark is descriptive of the “prosody” element
of the standard used by registrant and, thus, the cited
registered mark is entitled to only a limited scope of
protection. Further, although indicating that “the term
PROSODIE means ‘prosody’ in French,” applicant points to
the differences between the French and English spellings of
the marks. 3 In support of its arguments, applicant
3 We take judicial notice of the dictionary definition of the
term “prosody”: “song sung to instrumental music, modulation of
Ser No. 76210364
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submitted excerpts from registrant’s website on the
Internet, as well as from its own website. Applicant also
introduced an excerpt from the website of a third party in
the computer field in an attempt to show the
descriptiveness of the term “prosody.”
The examining attorney maintains that not only are the
marks foreign equivalents, but they are phonetically
equivalent as well. According to the examining attorney,
applicant’s and registrant’s services are related
telecommunications services and that, in one instance, the
services are identical (that is, telephonic transmission
and communication services). In the examining attorney’s
view, the services are otherwise complementary. With
respect to registrant’s services, the examining attorney
emphasizes that the identification of goods and services in
the cited registration control, and that the
identifications do not include any limitations as to
classes of purchasers or trade channels.
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
the voice; the study of versification, esp. the systematic study
of metrical structure; the rhythmic aspect of language.”
Webster’s Third International Dictionary (unabridged ed. 1993).
Ser No. 76210364
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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 Company, 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 Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
As to the marks, although applicant contends that the
difference in the spelling of the marks PROSODIE (French)
and PROSODY (English) is “quite evident,” applicant
acknowledges that the terms are foreign equivalents. Thus,
the marks convey the same meaning. Further, the marks are
phonetic equivalents, and therefore are identical in sound.
The marks also look alike, differing only in the last two
letters. We find that the similarities between the marks
in sound, appearance and meaning far outweigh the minor
difference in spelling, and that PROSODIE and PROSODY
engender virtually identical overall commercial
impressions.
Ser No. 76210364
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Applicant contends that registrant’s mark is weak,
pointing to alleged descriptive uses of the term by
registrant and a third-party. The uses highlighted by
applicant are ambiguous at best, and we find that the
evidence falls short of supporting applicant’s contention.
Given the dictionary definition of “prosody,” it would
appear that the term is only suggestive of registrant’s
goods and services. An additional point should be made
regarding applicant’s argument that registrant’s mark is
descriptive as used in connection with registrant’s
services. (Brief, pp. 5-6). Section 7(b) of the Trademark
Act provides that a certificate of registration on the
Principal Register shall be prima facie evidence of the
validity of the registration, of the registrant’s ownership
of the mark and of the registrant’s exclusive right to use
the mark in commerce in connection with the goods and
services specified in the certificate. During ex parte
prosecution, an applicant will not be heard on matters that
constitute a collateral attack on the cited registration,
as is the case herein. See In re Dixie Restaurants, supra;
and In re Peebles Inc., 23 USPQ2d 1795, 1797 n. 5 (TTAB
1992).
Insofar as the goods and services are concerned, it is
not necessary that the goods and/or services of the parties
Ser No. 76210364
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be similar or competitive, or even that they move in the
same channels of trade to support a holding of likelihood
of confusion. It is sufficient that the respective goods
and/or services of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and/or services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Applicant’s services and registrant’s goods and
services are all related to telecommunications. In
comparing the services, applicant would have us focus on
registrant’s website excerpts showing, according to
applicant, that registrant’s services “must be closely
associated with the speech processing cards extensively
promoted under the PROSODY name.” (Brief, p. 4).
Applicant is relying upon registrant’s website to
improperly restrict the scope of registrant’s services as
identified in the cited registration. An applicant,
however, may not restrict the scope of the goods covered in
the registrant’s registration by extrinsic evidence. See
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
Ser No. 76210364
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1986).4 We remind applicant that the nature and scope of a
party’s goods or services must be determined on the basis
of the goods or services recited in the application or
registration. See, e.g., Hewlett-Packard Co. v. Packard
Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
and In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687,
1690 n. 4 (Fed. Cir. 1993). If the cited registration
describes goods or services broadly, and there is no
limitation as to the nature, type, channels of trade or
class of purchasers, it is presumed that the registration
encompasses all goods or services of the type described,
that they move in all normal channels of trade, and that
they are available to all classes of purchasers. See In re
Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992).
In comparing the identifications in the application
and the cited registration, we have focused on the fact
that both specifically include telephone communication
services (referred to as “telephone transmissions” in the
application). Thus, at least insofar as these services are
concerned, they are identical. See Tuxedo Monopoly, Inc.
4 So as to be clear, this is not a situation where the
terminology in registrant’s identification is unclear as to
justify applicant’s reliance on extrinsic evidence to show that
the registrant’s identification has a specific meaning to members
of the trade. Compare In re Trackmobile Inc., 15 USPQ2d 1152,
1154 (TTAB 1990).
Ser No. 76210364
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v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981) [likelihood of confusion may be found
between any one item in an application’s identification of
goods]. Further, registrant’s telephone communications
services are otherwise closely related to the rest of
applicant’s services listed in the application.
In reaching our decision, we have considered
applicant’s contention that the purchasers of its services
and the goods and services of registrant are sophisticated,
and that the purchase is made only after careful thought.
It should initially be noted that neither applicant’s
identification nor registrant’s identification is limited
by class of purchasers. As broadly identified, the
telephone communications services of both applicant and
registrant are presumed to move in all normal trade
channels to all classes of purchasers. These purchasers
would include ordinary consumers who would not necessarily
be sophisticated or thoughtful in purchasing such services.
However, even if prospective purchasers of applicant’s and
registrant’s services, such as OEMs and applications
developers, are sophisticated, we find that the virtual
identity between the marks and the telephone communications
services clearly outweigh any purchaser sophistication.
Ser No. 76210364
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See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re
Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra; and
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.