Softnetworks LLC

Trademark Trial and Appeal BoardJun 17, 2016

No. 86623436 (T.T.A.B. Jun. 17, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 17, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Softnetworks LLC _____ Serial No. 86623436 _____ Gene Bolmarcich of the Law Offices of Gene Bolmarcich, for Softnetworks LLC. Keri-Marie Cantone, Trademark Examining Attorney, Law Office 104, Dayna Browne, Managing Attorney. _____ Before Bergsman, Masiello and Heasley, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Softnetworks LLC (“Applicant”) seeks registration on the Principal Register of the mark SOFTNETWORKS (in standard characters) for the services set for the below: Information transmission via electronic communications networks; Providing co-location services for voice, video and data communications applications; Providing on-line communications links which transfer the web site user to other local and global web pages; Rental of communication apparatus and implements; Satellite communication services; Telecommunication consultation in the nature of technical consulting in the field of audio, text and visual data transmission and communication; Telecommunication services, namely, transmission of Serial No. 86623436 - 2 - voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communication networks, and the Internet; Telecommunications services, namely, wireless telephony and wireless broadband communications services for the transmission of voice and data; Transmission of information by electronic communications networks; Transmission of information through video communication systems; Video broadcasting services over the Internet or other communications network featuring the uploaded, posted and tagged videos of others; Wireless broadband communication services, in Class 38; and Computer services, namely, remote management of the information technology (IT) systems of others; Consulting in the field of IT project management; Information technology consulting services; Integration of computer systems and networks; IT integration services; Leasing of computers; Maintenance and upgrading of computer software; Monitoring the computer systems of others for technological purposes and providing backup computer programs and facilities; Planning, design and implementation of computer technologies for others; Preparation, update, installation and maintenance of computer software; Remote computer backup services; Web publishing, namely, creating a website and uploading it onto an Internet server; Web site design; Web site design consultancy; Web site development for others; Web site hosting services, in Class 42.1 During the prosecution of its application, Applicant stated that the mark SOFTNETWORKS has no meaning in the trade. SOFTNETWORKS appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the 1 Application Serial No. 86623436 was filed on May 8, 2015, under Section 1(b) of the Trademark Act, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce. Serial No. 86623436 - 3 - goods/services/collective membership organization listed in the application, or any geographical significance.2 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the two registered marks listed below, owned by the same entity, that it is likely to cause confusion when used in connection with the services set forth in the application: 1. Registration No. 4531556 for the mark HUAWEI SOFTNETWORK (standard characters) for the goods listed below: Data processing apparatus; computers, computer peripheral devices; microprocessors; computer monitors; computer programs used to monitor computer central processing units; blank integrated circuit cards; aerials; transmitters of electronic signals; apparatus sets for transmitting of communication, namely, communication servers and communication hardware; intercommunication apparatus; telephone apparatus; telephone transmitters; modems; video telephones; walkie- talkies; optical communication equipment, namely, optical transmitters; computer network routers; telephone call routers; mobile communication servers; gateway routers in the nature of computer control hardware; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; software used in the communication field for managing telecommunication networks, and to receive, process and store communication data in order to manage billing for telecommunication networks; software used in the communication field for managing network hardware, servers and routers and for managing wireless network subscriber access, information and services; data transmission equipment, namely, a wireless communication device; equipment for accessing 2 September 30, 2015 Response. Serial No. 86623436 - 4 - networks, namely, server hardware; automatic telephone exchanges, in Class 9;3 and 2. Registration No. 4503886 for the mark HUAWEI SOFTNET (standard characters) for the goods listed below: Aerials; transmitters of electronic signals; apparatus sets for transmitting of communication; telephone apparatus; telephone transmitters; modems; walkie-talkies; optical communication equipment, namely, optical transmitters; computer network routers; telephone call routers; mobile communication servers; gateway routers in the nature of computer control hardware; broadband wireless equipment, namely, telecommunications base station equipment for cellular and fixed networking and communications applications; data transmission equipment, namely, a wireless communication device; equipment for accessing networks, namely, server hardware; automatic telephone exchanges; all of the foregoing goods for use by mobile network carriers in the field of telecommunications, in Class 9.4 Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (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 services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated 3 Registered on May 20, 2014. 4 Registered on April 1, 2014. Serial No. 86623436 - 5 - by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). Because the goods identified in the HUAWEI SOFTNET registration are almost totally incorporated into the identification of goods in the HUAWEI SOFTNETWORK registration, we confine our analysis to the issue of likelihood of confusion between Applicant’s mark and the cited registered mark HUAWEI SOFTNETWORK in standard characters. That is, if confusion is likely between Applicant’s mark SOFTNETWORKS and the registered mark HUAWEI SOFTNETWORK, there is no need for us to consider the likelihood of confusion with the registered mark HUAWEI SOFTNET. Conversely, if there is no likelihood of confusion between Applicant’s mark and HUAWEI SOFTNETWORK, then there would be no likelihood of confusion with the mark HUAWEI SOFTNET. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). A. The similarity or dissimilarity of the marks. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) Serial No. 86623436 - 6 - (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”)). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The marks are similar because they both incorporate the coined term “Softnetwork.” The difference between Registrant’s “Softnetwork” and Applicant’s “Softnetworks” is insignificant. See Wilson v. Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); Weidner Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding that SHAPE and SHAPES are virtually the same marks); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of “Newport” is “almost totally insignificant in terms of the likelihood of confusion of purchasers.”). While there is no explicit rule that likelihood of confusion automatically applies where a senior user’s mark contains the entirety of the junior user’s mark, the fact Serial No. 86623436 - 7 - that Applicant’s mark is subsumed by the mark in the cited registration increases the similarity between the two. See, e.g., Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1660 (TTAB 2014) (applicant’s mark PRECISION is similar to opposer’s mark PRECISION DISTRIBUTION CONTROL) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to registrant’s mark ML MARK LEES). See also Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women's dresses is likely to be confused with LILLI ANN for women's apparel including dresses); In re United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women's clothing stores and women's clothing likely to cause confusion with CREST CAREER IMAGES for uniforms including items of women's clothing). In United States Shoe, the Board observed that “Applicant’s mark would appear to prospective purchasers to be a shortened form of registrant's mark.” 229 USPQ at 709. Here, because of the overall similarities of the marks, consumers are likely to view Applicant's SOFTNETWORKS mark as a variation or shortened version of Registrant’s HUAWEI SOFTNETWORK, with both marks indicating a single source for the goods and services at issue. We, thus disagree with Applicant’s contention that the name HUAWEI distinguishes the mark.5 We find that marks are similar in terms of appearance, sound, connotation and commercial impression. 5 4 TTABVUE 8. Serial No. 86623436 - 8 - B. The similarity or dissimilarity of the goods and services and established, likely- to-continue channels of trade. To show that the goods and services at issue are related and move in the same channels of trade, the Trademark Examining Attorney submitted excerpts from six websites for companies advertising, inter alia, telephone, internet, television, webhosting, web designing, and cloud computing services and the sale of routers, gateways, and modems.6 The Trademark Examining Attorney also submitted printouts of use-based, third- party registrations for goods and services listed in both the application and registration at issue.7 Third-party registrations based on use in commerce that individually cover a number of different goods and services may have probative value to the extent that they serve to suggest that the listed goods and services are of a type that may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786 (TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). The registrations, with relevant portions of the identifications, are listed below.8 6 August 31, 2015 Office Action. 7 September 28, 2015 Office Action. 8 The description of goods and/or services in Registration Nos. 1474762, 3029975, 3717634, 3660712, 3843777, 3843778, 4218818, 4190564, 4531555 (also not based on use), 4531556 (also not based on use), 4566258 (also not based on use), 4561596, 4513747, and 4779157 did not include goods and services in both Applicant’s application and Registrant’s registration. Also, we did not consider the printouts of Serial Nos. 86456478, 86623436, 86655045, and 86696972 because pending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Serial No. 86623436 - 9 - Mark Reg. No. Goods and Services SIERRA WIRELESS 4287452 Modems, routers, telecommunication services, namely, transmission of voice, data, graphics, images, audio and video by means of telecommunications networks, wireless communications networks, and the Internet. APPSONE 4079419 Computer e-commerce software to allow users to perform electronic business transactions via a global computer network; computer software that provides web-based access to applications and services through a web operating portal interface; Computer technical support services, namely, 24/7 service desk/help desk services for … web applications; remote administration and management of in- house and hosted databases and software applications and provide cloud computing IT application systems. 4K 4119847 Computer network servers, audio and video broadcasting services over the Internet, television broadcasting services, cloud hosting services, webhosting services. CONNECTING TOMORROW TODAY 4786246 Modems, gateways, providing access to the Internet, website hosting. STAYFILM 4735859 Servers, audio and video broadcasting over the Internet, broadcasting cable television programs, providing access to telecommunication networks, providing Internet access, website hosting services, web page designing services. Serial No. 86623436 - 10 - Mark Reg. No. Goods and Services Y 4766874 Portable telephones, wireless broadcasting, television broadcasting, providing Internet access, creating and maintaining websites for others, hosting websites. CURVATURE 4769680 Servers, routers, rental and leasing of telecommunications equipment, leasing for computers. Applicant argues that the third-party Internet evidence does not show the third parties using the same mark on the services and goods.9 However, the AT&T website provides “Quick links to install your AT&T or 3rd party router/modem/gateway.” The website also suggests that users “use AT&T provided networking equipment” and “[s]ave time and money by installing an AT&T router or modem yourself.” Similarly, Verizon advertises the sale of a “Verizon MiFi 4G LTE Global USB Modem” and a “Verizon 4G LTE Broadband Router.” CenturyLink references “CenturyLink modems.” While the XFINITY/Comcast and Cox websites do not advertise XFINITY/Comcast or Cox branded modems or routers, those companies lease or sell those products demonstrating that the goods and services move in the same channels of trade. 9 4 TTABVUE 6-7. Serial No. 86623436 - 11 - With respect to the third-party registrations, Applicant argues that only SIERRA WIRELESS, 4K and CURVATURE are relevant.10 As evidenced by the registrations listed in the table above, we found seven relevant registrations demonstrating how the respective goods and services of Applicant and Registrant are of a sort that may emanate from the same source. Based on the foregoing, we find that the Applicant’s services are related to Registrant’s goods and that the goods and services move in the same channels of trade. C. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Applicant argues that “[i]n cases involving sophisticated computer and communication related goods, one must be careful not to generalize when analyzing the commercial relationship between such goods on the one hand and highly specialized computer related services on the other hand.”11 However, this case involves, inter alia, products (e.g., servers and modems) purchased or leased by ordinary consumers for use in connection with their Internet, telephone and cable television services. These ordinary consumers encompass a broad spectrum of the purchasing public. Also, there is no evidence of record regarding the degree of purchasing care consumers exercise in selecting equipment used in association with their Internet, telephone and cable service, or in selecting their Internet, telephone 10 4 TTABVUE 7. Applicant correctly points out that the Trademark Examining Attorney failed to identify the relevant goods and services in the third-party registrations and that many did not even include goods in Class 9. 11 4 TTABVUE 8. Serial No. 86623436 - 12 - and cable service. The lack of evidence weighs against giving weight to this factor and, therefore, we find it to be neutral. D. Balancing the factors. Because the marks are similar, the goods and services are related and move in the same channels of trade, we find that Applicant’s mark SOFTNETWORKS for the services listed in the application and HUAWEI SOFTNETWORK for the goods listed in the registration are likely to cause confusion. Decision: The refusal to register Applicant’s mark SOFTNETWORKS is affirmed.