SunGard Development

Trademark Trial and Appeal Board

Jun 9, 1999

EX (T.T.A.B. Jun. 9, 1999)

Hearing: Paper No. 17
June 4, 1998 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 9,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SunGard Development Corporation
________
Serial Nos. 75/031,718 and 75/031,719
_______
Glenn A. Gundersen and Stephanie E. Thier of Dechert Price
& Rhoads for SunGard Development Corporation.
David N. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Michael Szoke, Acting Managing Attorney).
_______
Before Cissel, Hanak and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
SunGard Development Corporation has filed
intent-to-use applications to register the marks PANORAMA1
and SUNGARD PANORAMA2 for “computer software used by
institutional and corporate capital market groups in
managing market, credit and other financial risks in

1 Application Serial No. 75/031,718 filed December 12, 1995.
2 Application Serial No. 75/031,719 filed December 12, 1995.
Ser Nos. 75/031,718 and 75/031,719
2
connection with the trading of securities, currency
derivatives and other financial instruments.”
The Examining Attorney has finally refused
registration in each application pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the basis of
Registration No. 1,357,720 for the mark PANORAMA for
“computer programs and instructional manuals sold as a unit
[and] computer magnetic storage discs.”3
Applicant has appealed. Briefs have been filed and an
oral hearing was held. Because both cases involve similar
records and the identical issue, we will consider them in a
single opinion.
Before turning to the merits of this case, we must
first discuss an evidentiary matter. Applicant, for the
first time in its brief on the case, listed a third-party
application (75/146,119) and two registrations (1,880,414
and 2,047,381) in support of its contention that the cited
mark is not entitled to a broad scope of protection. The
Examining Attorney, in his brief, objected to this
“evidence” as being untimely submitted. Applicant then
filed a request to remand its application to permit

3 Issued September 3, 1985; partial Section 8 affidavit filed.
As will be discussed infra, when this registration issued, it
covered additional goods.
Ser Nos. 75/031,718 and 75/031,719
3
introduction of copies of the third-party application and
two registrations along with another third-party
application (74/686,849). Accompanying the request were
photocopies of the registrations and printouts of
information concerning the applications taken from the
TRADEMARKSCAN data base. In support of its request,
applicant stated that “a clear pattern has emerged since
the date of Applicant’s final office action response in
which four different narrowly-defined PANORAMA software
marks have been approved for registration notwithstanding
the breadth of the cited registration.” The Board granted
applicant’s request and noted that “applicant states that
the third-party registrations and applications were not in
existence before the date of the applicant’s last response
but came into existence a few months prior to applicant’s
filing of the notice of appeal . . .”
It is the Examining Attorney’s position that
Registration No. 1,880,414 is not “new evidence” and was
available prior to the filing of the appeal. Thus, the
Examining Attorney maintains that the Board should not
consider this registration. Further, the Examining
Attorney argues that the printouts of the information
concerning the applications should not be considered since
they were taken from a private company’s data base.
Ser Nos. 75/031,718 and 75/031,719
4
Trademark Rule 2.142(d) provides that the record in an
application should be complete prior to the filing of the
appeal and that the Board will ordinarily not consider
evidence submitted after an appeal is filed. Although it
appeared from applicant’s statement in its remand request
that Registration No. 1,880,414 was newly issued, it is
clear that this registration issued well prior to the
filing of the appeal and could have been made of record
earlier. Thus, the Examining Attorney’s objection is
sustained.
Also, submission of printouts of information
concerning applications or registrations taken from a
private party’s data base does not make the applications or
registrations of record. The proper procedure to make
applications or registrations of record, instead, is to
submit copies of the actual registrations or the electronic
equivalent thereof, i.e., printouts of the registrations
taken from the Patent and Trademark Office’s own
computerized data base. See In re Melville Corp., 18
USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. Thus, we have
given no consideration to Registration No. 1,880,414 or
Application Serial Nos. 74/686,849 and 75/146,119.
We turn then to the issue of likelihood of confusion.
With respect to the goods, applicant maintains that its
Ser Nos. 75/031,718 and 75/031,719
5
computer software is used for a highly specialized purpose
and is sold to sophisticated purchasers, whereas the
computer programs in the cited registration are for basic
tasks such as word processing or document generation.
According to applicant, even though the function of
registrant’s computer programs is not specified in the
identification of goods because this was not a requirement
that would have been made by the Patent and Trademark
Office at the time the registration issued, the function of
registrant’s programs may be deduced from registrant’s name
(“Panorama Office Systems”) and the context of the
identification of goods as contained in the registration as
originally issued (“Electronic data processors, word
processors, keyboards, visual display units, printers,
power and signal cables, computer programs and
instructional manuals sold as a unit, computer magnetic
storage discs, and daisy-wheel printers” in Class 9; and
“Typewriters, typewriter ribbons and typewriter type
elements” in Class 16). Further, applicant argues that the
identification of goods in the cited registration should
not be interpreted so broadly as to include all computer
programs, particularly inasmuch as the Office now requires
that any identification of goods for computer programs or
comparable goods specify the purpose or function of the
Ser Nos. 75/031,718 and 75/031,719
6
programs and because the Office has allowed other PANORAMA
marks for computer software where the purpose or function
of the software is specified.4
The Examining Attorney, on the other hand, citing In
re Linkvest, S.A., 24 USPQ2d 1716 (TTAB 1992), argues that
because registrant’s goods are broadly described as
“computer programs,” it must be presumed that registrant’s
goods encompass all types of computer programs, including
the specific type sold by applicant.
The Examining Attorney acknowledges that Office
practice has changed such that any identification of goods
for computer programs must now specify the purpose or
function thereof. Also, the Examining Attorney
acknowledges that the question of the construction of a
broadly worded identification of goods, particularly in
regards to computer programs, is a recurring one. However,
the Examining Attorney notes that Linkfest is still cited
in the TMEP with approval, and argues that it would be
unfair for the Board, in effect, to narrow the scope of the
registrant’s identification of goods in a proceeding such

4 In urging reversal of the refusal to register, applicant also
points to a concurring opinion in a decision of the Board which
was not designated for publication in full. Such decisions, with
certain exceptions not applicable here, are not citable as
precedent, even if a copy of the decision is submitted. See TMBP
101.03 and cases cited therein.
Ser Nos. 75/031,718 and 75/031,719
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as this ex parte appeal, where registrant is not even a
party.
That the question of likelihood of confusion must be
determined on the basis of the goods set forth in an
applicant’s application and those in the cited
registration, rather than on what the evidence may show
them to be, is a well established principle. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Additionally, it is
well settled that where a registrant’s goods are broadly
described in its registration so as to include types of
goods which are identical or similar to an applicant’s
goods, then that applicant in an ex parte case cannot argue
that, in point of fact, registrant actually uses its mark
on goods which are dissimilar to applicant’s. In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Nevertheless, the Board has, on at least one occasion,
looked to extrinsic evidence, not for the purpose of
narrowing the description of goods in a cited registration,
but for the purpose of ascertaining the precise nature of
the goods. See In re Trackmobile, Inc., 15 USPQ2d 1152,
1154 (TTAB 1980). [“… when the description of goods for a
cited registration is somewhat unclear, as is the case
herein, it is improper to simply consider that description
Ser Nos. 75/031,718 and 75/031,719
8
in a vacuum and attach all possible interpretations to it
when the applicant has presented extrinsic evidence showing
that the description of goods has a specific meaning to
members of the trade.”] See also: In re Protection
Controls, Inc., 185 USPQ 692, 694 (TTAB 1975) [“… [T]he
identification of goods in the [cited] registration as
“monitoring instrument,” per se, is so indefinite and so
all inclusive as to be meaningless in attempting to
ascertain whether the respective monitoring apparatus [of
applicant and registrant] relate to the same or disparate
fields … [T]he better approach in this particular situation
… is to authorize publication of the mark for opposition
…”); and Acomb v. Plywood Plastics Corp., 187 USPQ 188, 190
(TTAB 1975) [“Judicial interpretation, as reflected by
decisions of this and other tribunals, has accorded a
registration in which the goods are recited in a general
rather then a specific manner a broad scope of protection
sufficient to cover all types of the particular product or
products enumerated therein. However,… in the instant
case, ‘molded wood products consisting of particulate wood
and resin’ [the description of goods in the cited
registration] is so broad and comprehensive as to be devoid
of any information as to just what molded wood products are
marketed by opposer.”]
Ser Nos. 75/031,718 and 75/031,719
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We believe this case presents a situation similar to
those above. The description “computer programs” is so
broad and comprehensive as to be devoid of any information
as to just what computer programs are marketed by
registrant.5 Thousands of computer programs are sold in
today’s marketplace for diverse purposes, and it is highly
unlikely that any single company markets every type of
computer program. Indeed, the Trademark Examining Group
has recognized that “computer programs” is an outdated
description and applicants are now required to specify the
function or purpose of their computer programs.6 It is,
therefore, improper to simply consider the description
“computer programs” in a vacuum and attach all possible
interpretations to it where, as here, there is evidence
from which we may determine the nature of registrant’s
computer programs. Stated differently, in this case we
believe it is appropriate to consider the entire
identification of goods at the time the registration issued
in order to ascertain the nature of registrant’s computer
programs. Considering then that the registration, when
issued, covered various office supplies and equipment for

5 We note, in this regard, that the Microsoft Press Computer
Dictionary (3d. 1997), at page 111, defines “computer program” as
“[a] set of instructions in some computer language intended to be
executed on a computer so as to perform some task.”
6 See TMEP §804.03(b).
Ser Nos. 75/031,718 and 75/031,719
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document production, it would be unreasonable to read
registrant’s “computer programs” so broadly as to include
all types of computer programs, including those for
managing market, credit and other financial risks in
connection with the trading of securities, currency
derivatives and other financial instruments. Rather, a
reasonable reading of the registration leads us to conclude
that registrant’s “computer programs” are for document
production, e.g., word processing.
We reject, however, applicant’s argument that the
function of registrant’s computer programs may be deduced
from registrant’s name (“Panorama Office Systems”). It is
common knowledge that a company often starts in one field
and then expands into other areas, yet retains its original
name. In such a situation, the original name is not an
accurate reflection of the products the company markets.
Thus, we have not considered registrant’s name in
determining the nature of registrant’s computer programs.
There are significant differences between computer
programs for document production and applicant’s highly
specialized computer software for financial applications
used by institutional and corporate capital market groups.
The latter are generally demonstrated before purchase and
are sold to very sophisticated purchasers. The former are
Ser Nos. 75/031,718 and 75/031,719
11
not. For the foregoing reasons, we find that applicant’s
use of the marks PANORAMA and SUNGARD PANORAMA for computer
software used by institutional and corporate capital market
groups in managing market, credit and other financial risks
in connection with the trading of securities, currency
derivatives and other financial instruments is not likely
to cause confusion with registrant’s mark PANORAMA.7
We wish to make clear that we are not overruling, nor
could we, the legal principle set forth by our principal
reviewing Court that, in determining likelihood of
confusion in ex parte cases, the Board must compare
applicant’s goods as set forth in its application with the
goods as set forth in the cited registration. We have
simply considered the information provided in the entire
registration, as issued, in determining the nature of the
goods set forth therein. Had there been no, or
insufficient, information therein from which to base such a
determination, the Board would have been obliged to presume
that registrant’s goods included all types of computer
programs. If, based on that, we had found that there was a

7 As for applicant’s argument that the cited mark is not entitled
to a broad scope of protection because other registrations/
applications have issued and/or been approved by the Office since
issuance of the cited registration, only one such registration is
properly of record, i.e., Registration No. 2,047,381. The
existence of this registration was not a basis for our decision
herein.
Ser Nos. 75/031,718 and 75/031,719
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likelihood of confusion, applicant’s remedy would then have
been to petition to restrict the registration. See Section
18 of the Trademark Act.
Moreover, if registrant’s computer programs are not of
the nature we have determined them to be, and registrant
believes it will be damaged by registration of applicant’s
mark, registrant is free to oppose.
Decision: The refusal to register is reversed in each
case.8
R. F. Cissel
E. W. Hanak
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

8 We recognize that the Examining Attorney was constrained to
make this refusal due to Office practice. We commend him on his
thorough discussion of the issues in this case.
Ser Nos. 75/031,718 and 75/031,719
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