Thyssen Telecom AG

Trademark Trial and Appeal Board

Apr 2, 1999

No. 75017336 (T.T.A.B. Apr. 2, 1999)

Paper No. 13
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 2, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thyssen Telecom AG1
________
Serial No. 75/017,336
_______
Milton Oliver of Ware, Fressola, Van Der Sluys & Adolphson,
LLP for Thyssen Telecom AG
David M. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney)
_______
Before Cissel, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Thyssen Telecom AG, as owner by assignment, has filed
an application to register the mark XTEND for “maintenance
and repairing of apparatus for telecommunications” in Class
37, and “rental of telecommunications apparatus, namely

1 The records of the Assignment Branch of this Office indicate
that the original applicant, XTEND Gesellschaft fur
Mehrwertdienste mbH, changed its name to Mediagate Gesellschaft
fur Multimedia Losungen mbH (recorded at reel 1653, frame 0615),
Ser. No. 75/017336
2
communications equipment, systems for video conferencing,
firewall systems, routers, multiplexers, and telephone
PABX’s (private automatic branch exchanges) [sic-PABXs]” in
Class 38.2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
ground that applicant’s mark, if applied to its identified
services, would so resemble the registered mark XTEND for
“circuits for use in transferring data or electrical
signals between two units of computer hardware,”3 as to be
likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but an oral hearing was not
requested.

and thereafter assigned the application to Thyssen Telecom AG
(recorded at reel 1662, frame 0030).
2 Application Serial No. 75/017,336, filed November 9, 1995. The
application was filed claiming priority under Section 44(d) based
on applicant’s application No. 395 21 644.3 filed May 23, 1995 in
the Federal Republic of Germany. Applicant later submitted a
certified copy of German Registration No. 395 21 664, which
issued on November 6, 1995, and expires on May 31, 2005. See
Section 44(e) of the Trademark Act.
The application originally included goods and services in
Classes 9, 37, 38 and 42. Applicant deleted the goods in Class
9; and the Examining Attorney withdrew the refusal to register as
to the services in Class 42, which applicant then divided out and
the divisional application issued as Reg. No. 2,180,857. This
refusal to register relates only to the Class 37 and 38 services.
3 Reg. No. 1,454,932, issued September 1, 1987, Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
claimed dates of first use and first use in commerce are October
23, 1983.
Ser. No. 75/017336
3
We affirm the refusal to register. In reaching our
decision we have considered all of the relevant du Pont4
factors.
The involved marks are identical, and applicant did
not argue otherwise.
We turn to a consideration of the cited registrant’s
goods and applicant’s services. Applicant’s position is
set forth in unnumbered pages 2 - 3 of applicant’s November
25, 1996 response to the first Office action, wherein
applicant stated as follows:
It is well known that Registrant
PYRAMID TECHNOLOGY, a subsidiary of the
German company SIEMENS NIXDORF, is primarily
in the business of fault-tolerant computing,
i.e. two adjacent mainframe computers which
operate in parallel, so that if a hardware
“crash” or software fault causes one
mainframe to cease processing, the parallel
“partner” mainframe computer can take over
the processing chores, so that an airline
reservation system, bank ATM network, or the
like, will operate continuously. Such
systems typically cost hundreds of thousands
of dollars, and the connection between the
mainframes is typically local, so
Applicant’s ID of goods has been amended to
emphasize that Applicant’s goods are used
for remote telecommunications, and would not
likely be confused with the fault-tolerant
“fail-over” circuits sold by Registrant.
In considering the likelihood of
confusion, the sophistication of the

4 See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973).
Ser. No. 75/017336
4
purchasers, the cost of the goods5, and the
time spent in evaluating the product before
purchase are highly relevant factors. Both
Pyramid Technology’s goods and Applicant’s
goods are purchased by highly educated
engineers or computer scientists employed by
large corporations. One can safely estimate
that few of the goods cost under $5,000 per
item, and often much more. These products
are bought only after careful specification
of performance characteristics of the
specific models being purchased, and their
compatibility with the other components of
the computing/communications systems in
which they are intended to be used.
Frequently, testing for compatibility is
done before the purchase is completed.
(emphasis in original)
Further, applicant asserted the following in its
brief on appeal (p. 2):
Registrant’s goods are used primarily
in fault-tolerant computing, and thus are
sold to owners of large mainframe computers,
who must carefully evaluate them for
compatibility and inter-operability with
their existing equipment. Similarly,
Applicant’s services are rendered primarily
to corporations, pursuant to contracts which
cover an extended period of time. These
corporations typically have employees who,
before recommending such contracts,
carefully evaluate the features and
performance records of competing vendors.
..... In the present case, Registrant sells
goods, while Applicant sells services which
involve study and contract evaluation by the
purchasers. (emphasis in original)

5 In this response applicant argued regarding the cited
registrant’s goods and applicant’s Class 9 goods; and then later
in the same paper applicant argued that “with regard to
[applicant’s] services in classes 37, 38 and 42, the possibility
of confusion is even more remote.” (emphasis in original)
Ser. No. 75/017336
5
The Examining Attorney argues that registrant’s goods
as identified are broad, and must be presumed to encompass
all goods of the type described; and that therefore, the
cited registrant’s circuits for use in transferring data
between two units of computer hardware could include the
same type of goods used in or with the telecommunications
equipment which applicant intends to offer for rent, and to
maintain and repair.
In support of this position, the Examining Attorney
submitted the following definitions from Newton’s Telecom
Dictionary (“The Official Dictionary of Computer
Telephony, Telecommunications, Networking, Data
Communications, Voice Processing and the Internet”) (8th
Ed. 1994): (1) “router” as “2. an interface between two
networks”; (2) “private automatic branch exchange” as
“PABX. A private telephone switch for a business or an
organization in which people have to dial ‘9’ to access a
local line.....”; (3) private branch exchange” as “PBX.
Term now used interchangeably with PABX. PBX is a private
telephone switching system, usually located on a customer’s
premises with an attendant console.....”; (4) “multiplexer”
as “Electronic equipment which allows two or more signals
to pass over one communication circuit....”; and (5)
“firewall” as “A LAN term. A barrier set up to contain
Ser. No. 75/017336
6
designated LAN traffic within a specified area....”. The
Examining Attorney also submitted The Internet Dictionary
(1995) definition of “firewall” as “(n) A security measure
on the Internet, protecting information, preventing access,
or ensuring that users cannot do any harm to underlying
systems....”.6 That is, registrant’s goods could encompass
telecommunications equipment such as firewalls, PABXs, and
routers, and applicant offers the services of renting, and
maintaining and repairing such items.
In further support of his position as to the
relatedness of the respective goods and services, the
Examining Attorney submitted seven third-party
registrations, which issued on the basis of use in
commerce, to show that it is common in the computer and
telecommunications industries for companies to offer the
goods of registrant and the services of applicant. That
is, the third-party registrations identify both
telecommunications equipment (which could be included
within the broad scope of the cited registrant’s goods),
and the maintenance, repair and leasing of
telecommunications equipment (like applicant’s services),

6 The Examining Attorney’s request that the Board take judicial
notice of the dictionary definitions of the term “firewall” is
granted. See University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., 213 USPQ 594, aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), and TBMP §712.01.
Ser. No. 75/017336
7
thereby showing that a single entity has adopted a single
mark for both.7
It is well settled that goods and/or services need not
be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is
sufficient that the goods and/or services are related in
some manner or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same producer or that there is an
association between the producers of the goods or services.
See In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and
In re International Telephone & Telegraph Corp., 197 USPQ

7 Some examples of the third-party registrations submitted by the
Examining Attorney include the following: (1) Reg. No. 2,014,813
for, inter alia, “low energy electrical circuits for data
communication, telecommunications applications, and control
engineering,...electronic computers, computer programs for use in
telecommunication and data transfer...,” and “installation,
assembly and maintenance and repair of data communication
circuits, overvoltage and electrical signal detection, modules,
printed circuit boards,...”; (2) Reg. No. 1,977,610 for, inter
alia, “information processing apparatus, namely, computers,
computer peripherals, computer printers, microcomputers...,” and
“installation and maintenance of computers and telecommunications
hardware”; and (3) Reg. No. 1,844,967 for, inter alia, “computer
software in the field of telecommunications, computer hardware,”
“telecommunication services, telecommunications equipment
leasing,” and “maintenance services for telecommunication
equipment for voice, data and video transmission.”
Ser. No. 75/017336
8
910 (TTAB 1978). Also, confusion in trade can occur from
the use of similar (or the same) marks for products on the
one hand and for services involving those products on the
other hand. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); Safety-Klean
Corporation v. Dresser Industries, Inc., 518 F.2d 1399, 186
USPQ 476 (CCPA 1975); and Steelcase Inc. v. Steelcare Inc.,
219 USPQ 433 (TTAB 1983), and cases cited therein.
Moreover, in determining the question of likelihood of
confusion, the Board is constrained to compare the goods
and/or services identified in applicant’s application with
the goods and/or services as identified in the cited
registration. If the parties’ respective goods and/or
services are described so as to encompass or overlap, then
applicant cannot properly argue that, in reality, the
actual goods of the applicant and the cited registrant are
not similar. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); CBS, Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198 (Fed. Cir. 1983); and Peopleware
Systems, Inc. v. Peopleware, Inc., 226 USPQ 320 (TTAB
1985).
In this case, the cited registration covers “circuits
for use in transferring data or electrical signals between
Ser. No. 75/017336
9
two units of computer hardware,” while applicant’s services
are, essentially, maintaining and repairing
telecommunications apparatus, and renting various
telecommunications apparatus, such as systems for
videoconferencing, firewall systems, routers, mutiplexers,
and telephone PABXs.
The function carried out by the goods enumerated in
applicant’s repair and maintenance services (e.g., PABXs as
switching systems, routers as interfacing between networks,
multiplexers as allowing two or more signals to pass over
one circuit) are precisely the function enumerated in
registrant’s identification of goods. Thus, the
registrant’s goods are closely related or are identical to
the goods for which applicant intends to offer the services
of maintaining, repairing and renting.
The third-party registrations submitted by the
Examining Attorney are not evidence of commercial use of
the marks shown therein, or that the public is familiar
with them. However, third-party registrations which
individually cover a number of different items and which
are based on use in commerce have some probative value to
the extent they suggest that the listed goods and/or
services emanate from a single source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and
Ser. No. 75/017336
10
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, footnote
6 (TTAB 1988).
Although applicant argued that the registrant’s goods
and applicant’s services are quite different, and that the
exact nature of these goods sold by registrant under the
mark XTEND is “well known,” applicant offered no evidence
on these matters as to either its own services, or the
cited registrant’s goods.8 Further, applicant argued,
without providing evidence, that the trade channels and
purchasers are different, and that the purchasers are
sophisticated.
Even if we assume that the purchasers are
sophisticated, this does not mean that they are immune from
confusion as to the origin of these goods and services,
especially when sold under the identical mark. Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and Aries Systems Corp. v.
world Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB 1992).
In addition, applicant has included no restriction to
trade channels or purchasers in its identification of
goods. Thus, the Board must consider that the parties’

8 Inasmuch as this is an ex parte appeal case, the cited
registrant has no input into this record. This situation is to
be distinguished from that set forth in the inter partes case of
Electronic Design & Sales Inc. v. Electronic Data Systems Corp.,
954 F.2d 713, 21 USPQ2d 1388 (Fed. Cir. 1992).
Ser. No. 75/017336
11
respective goods and services could be offered and sold to
the same class of purchasers through all normal channels of
trade. See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994); and In re Elbaum, 211 USPQ 639 (TTAB 1981).
Based on the identity of the marks, the relatedness of
registrant’s goods and applicant’s services, and the
similarity of the trade channels and purchasers, we find
that there is a likelihood that the purchasing public would
be confused when applicant uses XTEND as a mark for the
services of renting, maintaining and repairing
telecommunications apparatus.
Decision: The refusal to register under Section 2(d)
is affirmed.
R. F. Cissel
C. E. Walters
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial and
Appeal Board