Sterling Software, Inc.

Trademark Trial and Appeal Board

Mar 7, 2002

No. 75788861 (T.T.A.B. Mar. 7, 2002)

3/7/02
Paper No. 12
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Sterling Software, Inc.
________

Serial Nos. 75/788,509;
75/788,510; 75/788,855;
75/788,856; 75/788,860;
and 75/788,861

_______

Anita Nesser of Baker Botts L.L.P. for Sterling Software,
Inc.

Ronald L. Fairbanks, Trademark Examining Attorney, Law
Office 112 (Janice O’Lear, Managing Attorney).
_______

Before Cissel, Seeherman and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 30, 1999, Sterling Software, Inc.
(applicant) filed six intent-to-use applications to
register the following marks (in typed form) on the
Principal Register for the following goods, all in
International Class 9:
(1) EUREKA:INTELLIGENCE
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

2
For: Computer software for use in connection with
enterprise information portals, namely, software for
personalized, browser-based, integrated searching,
analyzing and creating a wide variety of reports using
an organization's internal information and
intelligence over computer networks. (Ser. No.
75/788,509)

(2) EUREKA:STRATEGY

For: Computer software for use in connection with
enterprise information portals, namely, software for
creating and managing large databases and performing
calculations on, and generating a wide variety of
reports from, such databases, using an organization's
internal information over computer networks. (Ser.
No. 75/788,510)

(3) EUREKA:ANALYST

For: Computer software for use in connection with
enterprise information portals, namely, software that
performs high-speed multidimensional analysis on an
organization's internal information over computer
networks. (Ser. No. 75/788,855)

(4) EUREKA:PORTAL

For: Computer software for use in connection with
enterprise information portals, namely, software for
providing a single point of network entry for
accessing and viewing an organization's internal
information and intelligence over computer networks.
(Ser. No. 75/788,856).

(5) EUREKA:SUITE

For: Computer software for use in connection with
enterprise information portals, namely, software that
enables organizations to organize, manage and
distribute internally and externally stored
information via a global communication network. (Ser.
No. 75/788,860)

(6) EUREKA:REPORTER

Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

3
For: Computer software for use in connection with
enterprise information portals, namely, software for
producing production reports based on an
organization's internal information over computer
networks. (App. No. 75/788,861).

In each case, the Examining Attorney1 ultimately
refused to register the marks because of the following
registration of the mark shown below for “software
development and consulting services” in International Class
42:

The registration contains a disclaimer of the word
”software” and a statement that the stippling is a feature
of the mark and does not represent color. Additionally, we
note that affidavits under Section 8 and 15 pertaining to
this registration have been accepted and acknowledged,
respectively, by the Office. 15 U.S.C. §§ 1058 and 1065.2
After the Examining Attorney made the refusals final,
these appeals followed. Both applicant and the Examining
Attorney filed briefs. Oral hearings were not requested.

1 The present Examining Attorney was not the original Examining
Attorney in these cases.
2 Registration No. 1,913,902, issued August 22, 1995.
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

4

Inasmuch as the records and the issue in all six
applications are similar, we will consolidate the appeals
and issue a single opinion for all marks on appeal. In
this opinion, when we refer to portions of the record that
are common to all the applications, we will refer to
Application No. 75/788,509.
According to the Examining Attorney, “eureka” is a
“unique/arbitrary term” (Examining Attorney’s Br. at 9).
The Examining Attorney argues that it is the dominant
portion of applicant’s mark, which is identical to the
dominant portion of the registered mark. The Examining
Attorney points out that the word “software” is disclaimed.
He also maintains that the words in applicant’s mark are
suggestive of an ingredient, quality, characteristic,
function, feature, purpose, or use of the relevant goods,
and these words do not distinguish the marks in those
applications from the cited registration.
The Examining Attorney also found that the goods and
services are “highly related.” Examining Attorney’s Br. at
9. As evidence of this relatedness, the Examining Attorney
made of record numerous copies of registrations for the
purpose of showing that “one mark [was] used for both the
goods of computer software/computer programs and the
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

5
services of development and/or consulting of computer
software.” Office Action dated December 6, 2000, p. 3 n.1.
The Examining Attorney concluded that there would be a
likelihood of confusion.
On the other hand, applicant argues that “there are no
visual or aural similarities whatsoever between the marks,
and the commercial impression engendered by each mark is
substantially different.” Applicant’s Br. at 5. Applicant
also maintains that the Examining Attorney “is straining to
create a relationship between the Registrant’s services and
Applicant’s goods, while the record (and common sense)
dictate otherwise.” Applicant’s Br. at 7. Applicant
concludes that its services “simply do not move in the same
channels of trade as Applicant’s goods, and they are not
offered or sold to the same classes of purchasers,” and it
submits that the refusal should be reversed. Applicant’s
Br. at 11.
After considering the records and the arguments of the
applicant and the Examining Attorney, the Examining
Attorney’s refusals to register applicant’s marks for the
identified goods because they would be likely to cause
confusion with registrant’s mark for its services are
affirmed.

Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

6

Evidentiary Issues
Before we consider the likelihood of confusion issue,
we must first address several evidentiary issues that have
been raised on appeal. When the Examining Attorney
initially refused to register applicant’s marks, the
Examining Attorney relied on 76 third-party registrations
to demonstrate that registrant’s services were related to
applicant’s goods. In its Appeal Brief, applicant points
out that there are only 73 registrations at issue because
two copies of the same registrations were included and two
registrations were issued to the same entity. The
Examining Attorney now apparently accepts this number
because, in his Appeal Brief, he refers to “a
representative sampling of seventy-three (73)
registrations.” Examining Attorney’s Br. at 7 n.3.
However, applicant further requests that we disregard
23 of these registrations because they were issued under
Section 44(e) of the Trademark Act and were not based on
use. Applicant’s Brief at 3. Surprisingly, the Examining
Attorney persists in arguing that all 73 registrations have
probative value. Examining Attorney’s Br. at 7 n.3 (“The
applicant’s request that any of the previously attached
evidence be disregarded is without merit”). While the
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

7
Examining Attorney cites In re Mucky Duck Mustard Co. Inc.
for support, we note that this case stands for exactly the
opposite point.
In the instant case, however, 11 of the 15 third-party
applications and registrations which cover both
restaurant services and mustard were filed under the
provisions of Section 44 of the Act, that is, they are
based on foreign registration rather than on use in
commerce, and most of their owners appear to have
simply copied large parts of the title (including, in
some cases, even the punctuation used therein) of
International Class 30. Such registrations and
applications are not even necessarily evidence of a
serious intent to use the marks shown therein in the
United States on all of the listed goods and services,
and they have very little, if any, persuasive value on
the point for which they were offered.

In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
n.6 (TTAB 1988).
Therefore, we agree with applicant, and we will not
consider the registrations based on Section 44(e) as
evidence of the relatedness of the goods and services.
The Examining Attorney then goes on to attempt to
submit additional evidence in the same footnote in its
brief. Id. at 7-8 n.3 (“Furthermore, as of the date of
this brief, there are 448 registrations of the type
attached by the original examining attorney — 284 of which
did not claim a priority filing date via Section 44(e) of
the Trademark Act”). Not unexpectedly, applicant submits
that this ”’evidence’ cannot be considered by the Board.”
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

8
Reply Br. at 2. The Examining Attorney has not provided
any argument as to how we can consider this evidence on
appeal. The record should be complete prior to appeal. 37
CFR § 2.142(d). Of course, we do not take judicial notice
of registrations in the Office nor, even if timely
submitted, is it sufficient to simply include a list of
marks with registration numbers. In re Hub Distributing,
Inc., 218 USPQ 284, 285 (TTAB 1983) (“[W]e do not consider
a copy of a search report to be credible evidence of the
existence of the registrations and the uses listed
therein”); See also In re Smith and Mehaffey, 31 USPQ2d
1531, 1532 (TTAB 1994); In re Duofold, Inc., 184 USPQ 638,
640 (TTAB 1974). Worse yet is to simply reference a large
number of registrations without providing any other
details. Therefore, we agree with applicant, and we will
not consider this “evidence” in our decision.
Likelihood of Confusion
Now, we address the main issue in this appeal:
whether applicant’s marks for its goods would be
confusingly similar to the registered mark for the
identified services. Determining whether there is a
likelihood of confusion requires consideration of the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973). In
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

9
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first factor we consider is whether the marks are
similar in sound, appearance, meaning or commercial
impression. du Pont, 476 F.2d at 1361, 177 USPQ at 567.
Applicant seeks to register the marks EUREKA:INTELLIGENCE;
EUREKA:STRATEGY; EUREKA:ANALYST; EUREKA:PORTAL;
EUREKA:SUITE; and EUREKA:REPORTER in typed form. The cited
registration is for the mark:

Both marks contain the common term “eureka.” The
Examining Attorney submits that the term is unique and
arbitrary. Applicant, on the other hand, agrees that both
marks contain the same word “eureka,” but it maintains that
because “eureka” is defined as “used to express triumph
upon finding or discovering something,” it is highly
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

10
suggestive when used in connection with computer-related
goods or services because these programs are often used
“for location and/or discovery of something.” Request for
Reconsideration, p. 3. We do not agree with applicant that
the term “eureka” is highly suggestive when used in
connection with computer-related goods or services nor is
there any evidence that the term is widely used in this
field. Therefore, we agree with the Examining Attorney
that the word would not be highly suggestive of applicant’s
or registrant’s goods or services.
Next, we must compare the marks in their entireties to
see if the marks are similar. We agree that the word
“eureka” is the only term common to both applicant’s marks
and the registered mark. Applicant correctly notes that
the cited registration is a composite mark containing a
design element, applicant’s marks contain a colon, and the
other wording in the marks is different.
We acknowledge that the marks are certainly not
identical although that, of course, does not end the
likelihood of confusion analysis. It is well settled that
it is improper to dissect a mark. In re Shell Oil Co., 992
F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993).
However, more or less weight may be given to a particular
feature of a mark for rational reasons. In re National
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

11
Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The differences in type styles between registrant’s
design mark and applicant’s marks are not significant here
because applicant’s marks are in typed form and, thus, not
limited to any special depiction. Squirtco v. Tomy Corp.,
697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847-48 (Fed. Cir. 2000). Nor is the fact that the
registrant also has a design in its mark sufficient to
distinguish the marks. The design consists simply of the
stylized letters “ES.” These letters reinforce the
connection with EUREKA SOFTWARE, the first letters of the
two words in the mark. See In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)
(DELTA, the dominant portion of applicant’s THE DELTA CAFE
and design mark, held similar in sound, appearance, and
meaning to registrant’s DELTA mark).
As for the colon in applicant’s mark, we find that the
colon does not serve to distinguish applicant’s marks from
the registrant’s. The CCPA held that the addition of a
hyphen and another digit did not eliminate the similarity
of the marks. See Phillips Petroleum Co. v. C.J. Webb,
Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971)(“The
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

12
addition of the extra 6 and the hyphen has already been
held not to avoid likelihood of confusion, and in the
absence of some other apparent significance for the term 6-
66 we find this conclusion inescapable”). Punctuation
often does not significantly change the commercial
impression of marks. In re Burlington Industries, Inc.,
196 USPQ 718, 719 (TTAB 1977) (“[A]n exclamation point does
not serve to identify the source of the goods”). Here, the
colon seems to emphasize the significance of the word
“eureka” and to indicate that the next word is a
subcategory of goods available under the EUREKA trademark.
The only truly significant difference between the
marks is the fact that the word following EUREKA in each
mark is different: “software” in the registered mark and
“intelligence,” “strategy,” “analyst,” “portal,” “suite,”
and “reporter” in applicant’s marks. The term “software”
is disclaimed in the registered mark and it does not
significantly change the commercial impression of the
registrant’s mark. Disclaimed matter is often given less
weight than other elements of a mark. Hilson Research Inc.
v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993). Here, when applicant’s goods are software and
registrant’s services are “software development and
consulting services,” the word “software” would not
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

13
significantly distinguish the marks because both
applicant’s goods and registrant’s services involve
software.
The words in applicant’s marks also do not serve to
distinguish the marks. These words, “intelligence,”
“strategy,” “analyst,” “portal,” “suite,” and “reporter,”
are highly suggestive of software programs that: use “an
organization’s information and intelligence;” perform
“multidimensional analysis;” are “used in connection with
enterprise information portals;” or produce “production
reports.” The Examining Attorney also pointed out that
“suite” is a descriptive term, and commonly disclaimed, for
computer software. Application No. 75/788,860, Office
Action dated December 6, 2000, p.2 and attached
registrations. The Examining Attorney also argues that
“strategy does little to distinguish these marks. Strategy
is a suggestive term when used in relation to the
applicant’s goods [‘software for performing calculations …
generating reports’]”. Application No. 75/788,510, Office
Action dated December 6, 2000, p. 2 (emphasis omitted).
“Strategy” is defined as “[t]he art or skill of using
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

14
stratagems esp. in politics and business.” Webster’s II
New Riverside University Dictionary (1984).3
When we compare the marks in their entireties, we find
that they are similar. As we previously discussed, we find
that the presence of the colon seems to accentuate the
common word “eureka.” The suggestive meaning of the
additional words in applicant’s marks would simply indicate
different subspecialties of the software.
Next, we turn to the issue of whether applicant’s
goods and registrant’s services are related. “[I]t is well
established that a “relatedness” which speaks to a
likelihood of confusion may occur not only where goods are
involved but can exist between products on one hand and
services dealing with or related to those products on the
other hand.” MSI Data Corp. v. Microprocessor Systems,
Inc., 220 USPQ 655, 658 (TTAB 1983) (Computer hardware
manufacturing services to the order of or specification of
others held related to electronic ordering system for
gathering and transmitting data comprising a recorder-
transmitter and data receiver). See also Safety-Kleen
Corp. v. Dresser Industries, 518 F.2d 1399, 186 USPQ 476

3 We take judicial notice of this dictionary definition.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

15
(CCPA 1975) (Maintenance services found related to parts
for cleaning units). Relatedness may exist even if the
products and services are not competitive “if they could
come to the attention of the same types of customers
suggesting a common origin.” MSI Data, 220 USPQ at 658.
To determine whether the goods and services are
related, we must consider the goods and services as they
are described in the identification of goods and services
in the applications and registration.4 “’Likelihood of
confusion must be determined based on an analysis of the
mark applied to the … services recited in applicant’s
application vis-à-vis the … services recited in [a] …
registration, rather than what the evidence shows the …
services to be.’” Dixie Restaurant, 41 USPQ2d at 1534
(punctuation in original), quoting, Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1816 (Fed. Cir. 1987). See also Octocom Systems Inc.
v. Houston Computer Services, 918 F.2d 937, 942, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). Here, the services in the
registration are identified broadly as “software
development and consultation services.” Contrary to

4 Applicant’s evidence regarding registrant’s actual services,
submitted with applicant’s request for reconsideration, does not
limit the scope of the registration.
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

16
applicant’s argument, the Examining Attorney is not
“straining to create a relationship” between applicant’s
goods and registrant’s services. Applicant’s Br. at 7.
Obviously, these services can involve developing software
and providing consulting services for software involving
enterprise information portals. Canadian Imperial Bank, 1
USPQ2d at 1816 (Board properly considered “whether, in the
entire market for that service (banking services), there
was a likelihood of confusion”).
While the identifications of applicant’s goods in its
six applications are different, they are all for “computer
software for use in connection with enterprise information
portals, namely, software for … on an organization's
internal information over computer networks.”5 In this
case, the Examining Attorney has made of record dozens of
third-party registrations based on use in commerce to show
that the goods of the applicant and the services of
registrant often are marketed under the same marks. See
Mucky Duck Mustard, 6 USPQ2d at 1470 n.6 (Although third-
party registrations “are not evidence that the marks shown

5 Application No. 75/788,860 does not use the language “over
computer networks.” Instead it contains the language “via a
global communications network” in the identification of goods.
We do not view this difference to have a significant effect on
the issue of the relatedness of the goods and services.
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

17
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). These registrations support the Examining
Attorney’s position that the goods and services are
related. See, e.g., Reg. No. 2,306,921 (“computer software
for use in the field of engineering…” and “consultation
services and computer software development for others in
the field of engineering…”); No. 2,305,105 (“computer
software, namely, inventory tracking software…” and
“computer consultation services, namely, customer software
and development…”); No. 2,303,524 (“computer software for
developing custom-based software applications…” and “design
development installation and maintenance of computer
software…”); and No. 2,302,680 (“computer software, namely,
integrated human resources, payroll, benefits, and job
requisition software packages” and “computer consultation,
namely, consulting services … involving business management
software systems”). Even sophisticated purchasers would be
likely to be confused if applicant’s and registrant’s
services were used on such closely related goods and
services. Octocom Systems, 16 USPQ2d at 1787.
Ser Nos. 75/788,509; 75/788,510; 75/788,855; 75/788,856;
75/788,860; and 75/788,861

18
Applicant cites Reynolds and Reynolds Co. v. I.E.
Systems, Inc., 5 USPQ2d 1749 (TTAB 1987), and argues that
“[n]ot everything involving the use of computers is
necessarily related.” Applicant’s Br. at 7. We agree. In
that case, the very specific and different software of the
applicant and the opposer were not so closely related that
confusion was likely. Unlike the cited case, the goods and
services here are much more closely related.
In this case, we find that EUREKA is a strong term
that dominates applicant’s and registrant’s marks. There
is no basis to find that the word is weak or highly
suggestive of the goods and services. While there are
differences in the marks, these differences are eclipsed by
the common feature “EUREKA.” The goods and services are
related such that purchasers familiar with registrant’s ES
EUREKA SOFTWARE and design software development and
consultation services would likely believe that there is a
common source for computer software for use in connection
with enterprise information portals offered under the marks
EUREKA:INTELLIGENCE, EUREKA:STRATEGY, EUREKA:ANALYST,
EUREKA:PORTAL, EUREKA:SUITE, and EUREKA:REPORTER.
Decision: The refusals to register applicant’s marks
under Section 2(d) of the Trademark Act are affirmed.