Symphonic Source

Trademark Trial and Appeal BoardMar 14, 2013

No. 85443743 (T.T.A.B. Mar. 14, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 14, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Symphonic Source _____ Serial No. 85443743 _____ William H. Dietrich of Slater & Matsil, LLP for Symphonic Source Jason Paul Blair, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _____ Before Bucher, Zervas and Wolfson, Administrative Trademark Judges. Opinion by Wolfson, Administrative Trademark Judge: Symphonic Source (“applicant”) seeks registration on the Principal Register of the mark cloudingo (in standard characters) for services ultimately identified as “cloud computing featuring software for use in customer relationship management (CRM) database management, deduplication, and data cleansing,” in International Class 42.1 The Trademark Examining Attorney has refused registration of applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), having determined that registration would lead to a likelihood of confusion in view of the 1 Application Serial No. 85443743 was filed on October 10, 2011, based on an allegation of first use of December 13, 2010, and first use in commerce of August 30, 2011. Serial No. 85443743 2 services recited in Reg. No. 2170665, for the mark depicted below, for “computer programming for others; computer software design for others; rental of computers and software; consultation services and technical research in the field of computer technology; maintenance of computer software; and retail and wholesale store services featuring computer software, computer hardware, computer packages, kits, computer parts, fittings and accessories and related printed materials” in International Class 42.2 After the examining attorney made the refusal final, applicant appealed to this Board. We affirm the refusal to register. Applicable Law Our determination under Trademark Act § 2(d) is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry 2 Registered July 7, 1998; renewed. Serial No. 85443743 3 mandated by Section 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); see also In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999). A. Comparison of the Services We first consider the services. We base our evaluation on the services as they are identified in the registration and application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled that it is not necessary that the respective services be identical or even competitive in order to find that they are related for purposes of our likelihood of confusion analysis, it being sufficient that the services are related in some manner and/or that the circumstances surrounding their marketing are such that they would be likely to be encountered by the same persons under circumstances that would give rise, because of the marks employed thereon, to the mistaken belief that the services originate from or are in some way associated with the same producer. In re Home Builders Assn. of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990). The services identified in applicant’s mark cloudingo are “cloud computing featuring software for use in customer relationship management (CRM) database management, deduplication, and data cleansing.” “Cloud computing” is defined as “computing operations carried out over computers linked to the web. The users pay Serial No. 85443743 4 for computing as a service rather than pay for hardware purchases.”3 A “cloud computing” service company thus provides a server for others, on which the provider’s clients store their data, and carries out computing operations by way of the web. As can be seen, applicant specializes in cloud computing in the CRM field, providing management of CRM databases, deduplication and data cleansing of CRM files saved to the cloud over the Internet. The registrant’s services are broadly stated as including “computer programming for others” and “computer software design for others.” By their terms, they encompass programming and design of CRM software. The web pages placed in the record by the examining attorney illustrate that companies do, in fact, program/design CRM software for others, namely large and small business clients with marketing, sales and customer service and support divisions within their organization. For example: The web page from “Rightway Solution” notes that: “CRM is one of those systems through which you can store all the important information about your customer’s behavior, their likes and dislikes, the latest trends and the basic requirements in a centralized system so that it can be accessed ay time required. … Righway [sic] has that special skill set that is required to develop tailored CRM Software using SaaS, SOA, Web 2.0, RIA technologies like AJAX, Adobe Flex and Adobe AIR for multi-screen applications. We also integrate the custom CRM software with other business applications and 3 Barron’s Educational Series, Inc., Dictionary of Computer and Internet Terms, 10th ed. 2009. Judicial notice may be taken of dictionary evidence. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); see also, TBMP §712.01 (3d. ed. rev. 2012). Serial No. 85443743 5 websites of our clients to bring a coherent communication prototype within the organization.”4 The web page from “Reality Software” advertises that it: “specializes in custom software development and develops high quality customer relationship management software.” It defines customer relationship management software (CRM software) as “a system that allows a business to maintain all customer records in one centralized location that is accessible to an entire organization. CRM software is essentially meant to address the needs of marketing, sales and customer service and support divisions within an organization and allow the three to share data on clients to improve sales and customer service. … A good CRM program will allow a business to effectively manage a large number of customers, increase the value of each customer to the company, retain good customers, and determine how customers can be given a higher level of service.”5 The website for “Soft Age Group” advertises that: “CRM application development and CRM integration become an integral part of today’s solution packages offered by our specialists. … CRM development…is successfully realized by means of implementing various Customer Relationship management application programming strategies. Thus software is designed in compliance with specific needs of a particular business, irrespective of its size: CRM for small business is as essential as for any large company. … Softage Group is an expert in CRM integration and CRM programming. … Our software development services, backed up by our commitment and focus will help raise your effectiveness manifold. … Our large and small business customer Relationship management software is customizable. … Our CRM specialists develop fully customizable software. 4 At www.rightwaysolution.com/software-development-expertise/crm-development- software.html, accessed June 5, 2012; attached to Office action dated June 5, 2012. 5 At www.realitysoftware.ca/services/software-development/crm/, accessed June 5, 2012; attached to Office action dated June 5, 2012. Serial No. 85443743 6 Every feature of our solutions can be altered, formatted or modified in accordance with your concrete requirements.”6 The evidence shows that CRM software is typically created by custom programming development service providers. The CRM software is used by businesses to manage their client/customer database information across a wide spectrum of functions within the business. Using cloud computing, businesses could gain assistance from the cloud provider in managing the infrastructure and platforms on which the CRM software runs, including such services as provided by applicant, namely, deduplicating and data cleansing. We therefore find that based on the evidence of record, the examining attorney has established that applicant’s and registrant’s services are related and may emanate from the same source. See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). Applicant argues that the services “appear to travel in different trade channels,” that “cloud computing services, especially for customer relationship management, are likely purchased upon careful consideration in light of the fact that sensitive customer data and/or proprietary data may be stored in the cloud,” and that “applicant and registrant have co-existed in the marketplace since at least October of 2011” without any instances of actual confusion. Applicant contends that these facts corroborate a finding that there is no likelihood of confusion. 6 At www.softage-group.com/pages/section/3/crm-software-development-solutions, accessed June 5, 2012; attached to Office action dated June 5, 2012. Serial No. 85443743 7 Suffice it to say that there is no evidence of record to support applicant’s arguments. First, there is no evidence that programming CRM software for others and providing a cloud computing environment for such software would be directed through different channels of distribution. To the contrary, CRM software is designed to span across multiple areas within a business, and thus appears highly suitable for placement in a cloud computing environment. As to the conditions under which sales are made, even assuming that purchasers of CRM software use a higher degree of care when it comes to their buying decisions, even careful purchasers are not immune from source confusion as to the producers of such software or the computing environments in which it may be found. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of discriminating purchasers...are not infallible.”). See also In re Decombe, 9 USPQ2d 1812 (TTAB 1988); HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers, careful purchasing decision, and expensive goods). Regarding the lack of actual confusion, at best, the marks have co-existed for little over a year. Such use is insufficient to establish such long and continuous contemporaneous use that would compel a finding that there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Serial No. 85443743 8 Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the fact that the services are related weighs in favor of a finding of likelihood of confusion. The du Pont factors regarding lack of actual confusion, the degree of care in selecting the services, and the channels of trade are considered neutral. B. Comparison of the Marks In considering whether there is a confusing similarity in appearance, sound, connotation, and commercial impression between the marks, we note that the fact that applicant seeks registration of its mark for services closely related to opposer’s registered mark “accentuates the likelihood of consumer confusion about the sources of services marketed under similar marks.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (where the services are closely related, “the degree of similarity necessary to support a conclusion of likely confusion declines.”). See also, Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325 (TTAB 2007). Applicant argues that the cited mark is weak and that the marks are dissimilar in appearance and overall commercial impression. The examining attorney contends that the cited mark is strong and that the similarities in connotation and overall commercial impression of the marks outweigh their differences in appearance and pronunciation. As an arbitrary term (as applied to computer services), the word DINGO is inherently distinctive. Moreover, the five Serial No. 85443743 9 third-party registrations of record do not prove otherwise. Absent evidence of actual use, third-party registrations have little probative value because they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the purchasing public is not aware of registrations reposing in the U.S. Patent and Trademark Office); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011); Scarves by Vera, Inc. v. Todo Imports, Ltd., 544 F.2d 1167, 192 USPQ 289, 294 (2d Cir. 1976) (“The significance of third-party trademarks depends wholly upon their usage.”). The probative value of the third-party registrations is further undercut by the differences in the marks involved (with respect to Reg. Nos. 2000047 and 3613886) and the goods or services for which the marks have been registered. Reg. No. 2000047, for the mark “BUILDINGONLINE,” clearly is a compound of the words “building” and “online” and therefore has no bearing on the issues herein. Reg. No. 3613886, for the mark FRISKY DINGO for “digital versatile discs featuring music, comedy, drama, action, adventure and/or animation” is likewise non-probative in view of the mark and the goods involved. The remaining three registrations include Reg. No. 3760701, which was cited by both applicant and the examining attorney, for the mark DINGO for providing a “computer search platform” relating to mobile devices,7 does not involve computer programming or 7 The complete list of services in Reg. No. 3760701 is: “computer services, namely, providing search platforms to allow users to request content from and receive content to a Serial No. 85443743 10 design services for others; thus the fact that this registration co-exists with the cited registration does not prove that the mark DINGO is weak. Moreover, the final two registrations both belong to the cited registrant: Reg. No. 2170665 (the cited registration) and Reg. No. 2310150. The latter registration is for the mark DINGO for “maintenance management software” in International Class 9. The software, as described by the identification of goods in that registration, is used for applications that are completely unrelated to customer relationship management software.8 Therefore, the term DINGO has not been shown by the registrations to be a weak mark. In comparing the marks in their entireties as to appearance, sound, connotation and commercial impression, we find that registrant’s mark and the applied-for term cloudingo are similar in connotation and commercial impression and that these similarities outweigh their differences in appearance and pronunciation. The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the respective mobile device; providing customer-defined generated content and content of others automatically selected and customized based on the known or estimated geographical location of an Internet, mobile telephone or other wired or wireless digital network based customer.” 8 The complete list of goods for Reg. No. 2310150 is: “maintenance management software used for condition monitoring, oil analysis, vibration analysis and thermography; and maintenance management software used for the collection, storage and graphical interpretation of condition monitoring data, oil analysis data, vibration analysis data and thermography data for vehicles, machinery and equipment.” Serial No. 85443743 11 marks is likely to result. Palm Bay, 73 USPQ2d at 1692. On the other hand, different features may be analyzed to determine whether the marks are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). There are apparent differences in the appearance of the two marks, given the presence of the dingo design in registrant’s mark. However, the design does not distinguish the marks, because the design is merely the pictorial representation of the word DINGO, and carries the same impression as the word itself. The word also carries greater weight than the design, because it is the word which “would be used by purchasers to request the goods or services.” M.C.I. Foods, Inc. v. Brady Bunte, 96 USPQ2d 1544, 1551 (TTAB 2010). Here, however, because the word and the design are equivalents, there is no impression of registrant’s mark other than that of the animal known as a “dingo.” Applicant argues that because the term “CLOUD” comprises the first part of applicant’s mark, it will make the greater impression, and be the portion most likely remembered by a prospective purchaser when referring to applicant’s services. See Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 Serial No. 85443743 12 (TTAB 1988) (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered”). The examining attorney notes, however, that the term “cloud” is merely descriptive in relation to applicant’s cloud computing services, arguing that it cannot, therefore, be considered the dominant portion of the mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has noted that the descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion”). In response, applicant argues that its mark is “a single, coined term without any meaning or definition,” but that even if the term CLOUD were “minimized,” the remainder of the mark – “ingo” – cannot be the dominant portion because it “acts more as a suffix.”9 We believe that consumers will readily perceive the word “cloud” in applicant’s mark. As to the remainder, while it is possible the relevant public will consider the “-ingo” suffix to be a kind of exclamatory accent note appended to the word “cloud,” it is just as likely that the telescoping of the words “cloud” and “dingo” will be perceived as “cloud-dingo,” the letter “d” serving a dual purpose in forming the beginning of the word “dingo.” Therefore, applicant’s mark cloudingo would be perceived as similar in appearance to DINGO, the phonetic equivalent of CLOUD DINGO, and as having similar connotation and commercial impression as the word DINGO. As noted, both marks contain the same arbitrary word DINGO in association with related services, and the addition of the descriptive word CLOUD 9 Applicant’s Brief, pp. 11-12. Serial No. 85443743 13 in applicant’s mark and the design of a dingo in registrant’s mark do not sufficiently distinguish the marks overall to avoid a likelihood of confusion. C. Balancing the factors In view of the facts that the cited mark is commercially strong, the marks are similar, and the services related, we find that applicant’s registration of the mark cloudingo is likely to cause confusion. The overriding concern is not only to prevent buyer confusion as to the source of the services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). Decision: The refusal to register applicant’s mark cloudingo under Trademark Act § 2(d) is affirmed.