The Peak Technologies Group, Inc.

Trademark Trial and Appeal Board

Dec 14, 1999

No. 75247109 (T.T.A.B. Dec. 14, 1999)

Paper No. 10
EWH/EM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 14, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Peak Technologies Group, Inc.
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Serial No. 75/247,109
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Michael C. Maier for The Peak Technologies Group, Inc.
Frances G. Smith, Trademark Examining Attorney, Law Office
113 (Meryl Hershkowitz, Managing Attorney).
_______
Before Hanak, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
The Peak Technologies Group, Inc. (applicant) seeks to
register NUCLEUS STOCK AUDIT in typed drawing form for
“computer software designed to manage warehouse inventories
and computer hardware used therewith, namely, bar code
readers and user manuals sold therewith.” The application
was filed on February 14, 1997 with a claimed first use
date of June 1996. In the first office action, the
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examining attorney required that applicant “disclaim the
descriptive wording STOCK AUDIT apart from the mark as
shown … because it describes a feature of the goods,
namely, that they are computer programs for taking one’s
inventory, i.e., stock.” Applicant responded as follows:
“No claim is made to the exclusive right to use STOCK AUDIT
apart from the mark as shown.”
The examining attorney refused registration pursuant
to Section 2(d) of the Trademark Act on the basis that
applicant’s mark, as applied to applicant’s goods, is
likely to cause confusion with two marks previously
registered to different entities. The first mark is
NUCLEIS registered for “computer programs used in
connection with managing information for equipment
tracking, maintenance processing and materials processing.”
Registration No. 1,493,948. The second mark is NUCLEUS
registered for “computer programs, and computer programs
with data processing apparatus, all for use with a computer
for data management.” Registration No. 1,503,735. When
the refusal to register was made final, applicant appealed
to this Board. Applicant and the examining attorney filed
briefs. Applicant did not request a hearing.
In any likelihood of confusion analysis, two key
considerations are the similarities of the goods and the
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similarities of the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”).
Because the marks and goods set forth in the two cited
registrations are somewhat different, we will begin our
analysis with a comparison of the mark and goods of the
earlier registration (Registration No. 1,493,948) with
applicant’s mark and goods. As set forth in the
application, applicant’s goods, as previous noted, are
“computer software designed to manage warehouse inventories
and computer hardware used therewith, namely, bar code
readers and user manuals sold therewith.” The goods set
forth in Registration No. 1,493,938 are “computer programs
used in connection with managing information for equipment
tracking, maintenance processing and materials processing.”
Both the application and this earlier registration
encompass computer software/computer programs of certain
types. Applicant attempts to distinguish its goods from
the goods of this earlier registration by arguing that
“applicant’s goods cover software and hardware, namely bar
code readers, designed to manage warehouse inventories, as
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well as related manuals.” (Applicant’s brief page 5,
original emphasis). Applicant goes on to note that “a bar
code reading system for warehouse inventorying also is
dissimilar to the goods covered by the NUCLEIS
registration, i.e., computer programs used in connection
with managing information for equipment tracking,
maintenance processing and materials processing.”
(Applicant’s brief page 5). The fact that the application
encompasses computer hardware whereas the NUCLEIS
registration does not is largely irrelevant in that both
the application and this registration encompass computer
software/computer programs. In other words, if there is a
relationship between some of applicant’s goods and the
goods of a cited registration, then depending upon the
similarity of the marks, this alone is sufficient for a
likelihood of confusion even if applicant’s other goods are
arguably dissimilar from the goods of a cited registration.
Applicant’s computer software is designed to manage
warehouse inventories, whereas the NUCLEIS computer
programs are used in connection with managing information
for equipment tracking, maintenance processing and
materials processing. Applicant has never taken issue with
the examining attorney’s statement of the obvious, namely,
that “equipment and materials are typically stocked in
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warehouses.” (Examining attorney’s brief page 8). Thus,
applicant’s computer software designed to manage warehouse
inventories includes, among other things, computer
software/computer programs to manage equipment and
materials, things that are typically stored in warehouses
and thus are encompassed by the term “warehouse
inventories.” In short, despite differences in
terminology, we find that certain of applicant’s goods
(computer software designed to manage warehouse
inventories) are essentially encompassed by some of the
goods included in Registration No. 1,493,948, namely
“computer programs used in connection with managing
information for equipment tracking … and materials
processing.” Thus, the goods of the application and the
registration for NUCLEIS are, in part, extremely similar,
if not identical.
Turning to a consideration of the marks, we note at
the outset that when the goods of the application and
registration are extremely similar, the degree of
similarity of the marks necessary to support a finding of
likelihood of confusion declines. Century 21 Real Estate
v. Century Life, 970 F.2d 874, 23 USPQ2d 1698, 1700 Fed.
Cir. 1992).
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In this case, applicant has taken the entire mark of
Registration No. 1,493,948 (NUCLEIS); altered it ever so
slightly by changing the second to the last letter from an
I to a U; and added to it the subordinate, descriptive
wording STOCK AUDIT. This slight alteration involving the
substitution of the letter U for the letter I becomes all
the more insignificant when one takes into account that the
plural form of the word “nucleus” is “nuclei.” The
American Heritage Dictionary of the English Language (3d
ed. 1992).
It is well established “that one may not appropriate
the entire mark of another and avoid a likelihood of
confusion by the addition thereto of descriptive or
otherwise subordinate matter.” Bellbrook Dairies v.
Hawthorn-Mellody Dairy, 253 F.2d 431, 117 USPQ 213, 214
(CCPA 1958). We find this legal proposition likewise
applies to a situation, as is the case here, when one
appropriates the entire mark of another and alters it ever
so slightly.
Moreover, not only has applicant essentially just
added the descriptive wording STOCK AUDIT to the mark of
Registration No. 1,493,948, but in addition, in actual
practice applicant depicts its mark with the NUCLEUS
portion in very large lettering and the STOCK AUDIT portion
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in much smaller lettering. See applicant’s specimens of
use. It must be remembered that applicant is seeking to
register NUCLEUS STOCK AUDIT in type drawing form. This
means that applicant’s mark is “not limited to the mark
depicted in any special form.” Phillips Petroleum v. C.J.
Webb, 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). If
applicant were to obtain a typed drawing registration of
NUCLEUS STOCK AUDIT, it would obtain the benefits of
federal registration and yet still be able to depict, as it
currently does, its mark with the NUCLEUS portion in large
lettering on one line and the STOCK AUDIT portion in much
smaller lettering on a second line. Indeed, in the future
it would be able to reduce even further the size of the
lettering in which it depicts, on a second line, the words
STOCK AUDIT.
Given the extremely close similarity between certain
of applicant’s goods and certain of the goods for which
NUCLEIS is registered, we find that there exists a
likelihood of confusion resulting from the contemporaneous
use of applicant’s mark and the mark NUCLEIS, which is the
subject of Registration No. 1,493,948. This would be
particularly true if applicant were to continue to depict
its mark with the NUCLEUS portion in large lettering on one
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line, and the STOCK AUDIT portion in much smaller lettering
on a second line.
Turning to a consideration of the second registration
cited by the examining attorney, namely, a Registration No.
1,503,735, we find that there also exists a likelihood of
confusion resulting from the contemporaneous use of the
mark which is the subject of this registration and
applicant’s mark. Obviously, in this case applicant has
adopted the registered mark NUCLEUS in its entirety and has
not even slightly altered said registered mark. Moreover
the goods of this second registration are very broadly
described as “computer programs, and computer programs with
data processing apparatus, all for use with a computer for
data management.” At page 5 of its brief, applicant
concedes the very broad description of goods of this second
registration and furthermore concedes that “most, if not
all, computer software ‘manages’ information.” Thus,
applicant has implicitly conceded that the computer
software/computer programs set forth in its description of
goods would be encompassed by the description of goods set
forth in Registration No. 1,503,735 for NUCLEUS.
Accordingly, we find that there also exists a likelihood of
confusion resulting from the contemporaneous use of
applicant’s mark and the mark NUCLEUS.
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A few final comments are in order. Without providing
any evidentiary support whatsoever, applicant argues, at
pages 5 and 6 of its brief, that the trade channels for its
goods and the goods of the cited registrations are
different; that the buyers of the respective goods are
sophisticated purchasers; that the two registered marks are
not famous; and that there has been no actual confusion.
Because applicant has failed to provide evidentiary support
for the foregoing arguments, we have not given them any
weight.
As for applicant’s argument that “the coexistence of
the NUCLEIS and NUCLEUS registrations for more than ten
years is probative evidence that any potential confusion
would be de minimis,” we simply do not understand
applicant’s reasoning. (Applicant’s brief page 6).
Obviously, confusion does not arise from the mere existence
of registrations within the PTO. Confusion arises in the
marketplace when very similar marks are used on very
similar goods or services. If applicant is implicitly
arguing that because the mark NUCLEUS was allowed to be
registered despite the existence of the registration for
the mark NUCLEIS and hence its mark should register, we
simply note that this is no justification for permitting
applicant’s mark to be registered when clearly applicant’s
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mark, when used in the marketplace, would cause confusion
with the two previously registered marks.
Decision: The refusal to register is affirmed as to
both cited registrations.
E. W. Hanak
G. D. Hohein
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial and
Appeal