TomTom International B.V.

Trademark Trial and Appeal BoardMar 22, 2013

No. 79091666 (T.T.A.B. Mar. 22, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 22, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re TomTom International B.V. _____ Serial No. 79091666 _____ David R. Haarz of Harness Dickey & Pierce PLC, for TomTom International B.V. Katherine S. Chang, Trademark Examining Attorney, Law Office 115, John Lincoski, Managing Attorney. _____ Before Bucher, Taylor and Hightower, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: TomTom International B.V. (“applicant”) seeks registration on the Principal Register of the mark TOMTOM VIA (in standard character format) for goods and services described, as amended, as follows: computer hardware and software for use with satellite and GPS navigation systems for navigation purposes; computer software featuring route planners and electronic maps for navigation and digital dictionaries for translation purposes; software for travel information systems for providing or displaying travel advice and information regarding petrol stations, car parks, restaurants, car dealers and other travel and transport related information; software for information management for the transport and traffic sector; software for viewing electronic maps; downloadable electronic maps; software for operating route planners; route planners in the form of hand-held Serial No. 79091666 2 personal computers; location, orientation and navigation, and global positioning systems (GPS) consisting of computers, computer software, transmitters, global positioning system receivers (GPS) and satellite receivers, network link for interface systems, patch cables, and parts and accessories therefor; holders for hand-held computers; satellite and radio transmitter and receiver apparatus technology, namely, processors, mobile telephones and receivers; telecommunications installations, networks and apparatus, namely, mounting racks especially fitted for telecommunications hardware and telecommunication switches; computer terminals, all in particular for the use of navigation systems, route planners, and digital maps in International Class 9; secure and non-secure telecommunications services, namely, transmission and delivery of digital data, photographs, audio files, data, information and image signals by means of computers, cable radio and satellite transfer, all in particular for navigation systems, route planners and the use of electronic maps; telecommunication services, namely, providing of temporary access to non-downloadable software providing map images and geographical and itinerary information obtained with the aid of a global positioning system (GPS) to enable others to determine locations or directions accurately; secure and insecure telecommunication services for the electronic transfer and temporary storage of digital data, photographs, audio files, data, information and image signals, all in particular for navigation systems, route planners and the use of electronic maps; technical consultancy in connection with the aforementioned services in International Class 38; and providing of navigation and information services, namely, information relating to traffic and traffic jams; all the aforesaid services also provided via a communications network or a cellular telephone or wireless navigation system in International Class 39.1 The 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 following three marks owned by two separate entities: 1 Application Serial No. 79091666 was filed on July 26, 2010, pursuant to Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a). Serial No. 79091666 3 for “wireless communication apparatus; namely, computer programs for modems, wireless local loop telephones, cellular telephones, Personal Communication Services (PCS) handsets, Personal Digital Assistants (PDAs); Personal Digital Assistant PDA devices processors, namely, handheld digital devices having programmable capacity and capacity to communicate by electronic, digital, microwave, broadband, analog, radio, and satellite using voice, graphics, video, data, sensory, infrared, ultraviolet, and laser audio transmissions in the nature of electronic personal organizers, mobile phones, smartphones, portable and pocket-size personal computers, palmtop computers in the nature of electronic personal organizers, personal navigational global positioning systems (GPS), handheld and portable multimedia players, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor, mobile digital devices with computer notebook functionality and connectivity in a handheld portable micro-sized form and which may be adaptable and fitted with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor in the nature of electronic personal organizers, mobile phones, smartphones, portable and pocket- size personal computers, palmtop computers in the nature of electronic personal organizers, personal navigational Global Positioning Systems (GPS), handheld multimedia players, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, and monitor, wireless digital devices in the nature of mobile and handheld phones, smartphones, imaging smartphones, hands-free phones, handheld multimedia players, electronic personal organizers, electronic personal information management organizers, portable and pocket-size personal computers, palmtop computers in the nature of electronic personal organizers, smart computers having context, user and location awareness and which may be outfitted and adaptable with modem, memory, PC MCIA slots, disk drives, keyboard, monitor, pocket printer, pocket camera, and pocket video camera, remote devices in the nature of portable micro sized computers with notebook functionality for the mobile enterprise having capabilities of remote desktop, remote email and transparency access to data, portable personal navigational Global Positioning Systems (GPS), smart computers having context, user and location awareness and with integrated multidimensional data, sound, video and graphics, portable multimedia player, public kiosks in the nature of computer terminals, and portable computer terminals both allowing dial- Serial No. 79091666 4 up connectivity and personal computer access, communication devices having capacity for acquisition, multiplexing, transmission, encoding, compression, filtering, transforming, decompression, decoding, demultiplexing and reception of communications data in the nature of smart phones, portable computers, portable interactive learning computers, electronic organizers, and voice-over software for transmitting and receiving communication signals, games and other data, parts and components thereof and accessories therefor; integrated circuits containing chipsets for spread spectrum modulation and demodulation, error correction encoding and decoding, voice coding and preprogrammed memories containing processor instructions” in International Class 9;2 VIA for “computers, notebook computers, laptop computers, portable computers, handheld computers, interactive computer kiosks used in retail, entertainment and hospitality establishments; computer programs for controlling access to and use of stand- alone computers, namely, network access server hardware and operating programs for use with stand-alone kiosk computers which may provide Internet access points, microcomputers, computer hardware, namely, semiconductors, microprocessors, integrated circuits, computer chips, computer motherboards, computer daughterboards, computer graphics boards, computer interface boards, computer accelerator board, circuit boards; computer workstations, namely, processors, central processing units, controllers, namely, electrical controllers, ethernet controllers; graphic cards; multi-output computer cards that feature an analog mixer, allowing a computer-based recording system to behave more like a traditional analog one; multimedia chipsets with integrated graphics and storage for desktop and notebook computer environments, computer chipsets for use in transmitting data to and from a central processing unit, computer peripherals, computer keyboards, computer printers, computer monitors, computer driver utilities programs for graphics; integrated circuits for spread spectrum modulation and demodulation error correction encoding and decoding, voice coding and preprogrammed memories containing processor instructions; software programmable microprocessors; hand-held devices, namely cellular telephones, digital telephones, Personal Digital Assistants (PDAs), tablet PCs, electronic personal organizers, handheld personal computers, MP3 players, handheld joy sticks and remote controls for playing interactive video games; extended 2 Registration No. 3083408 issued to VIA Technologies, Inc. (a Taiwan corporation) on April 18, 2006; Section 8 affidavit (six-year) accepted. No claim is made to the exclusive right to use the word “Telecom” apart from the mark as shown. Serial No. 79091666 5 multimedia software recorded on magnetic media featuring games and stories, children's educational software featuring instruction in the field of graphics, animation, interactive communications, movies and music videos; mobile computers, mixed-signal integrated circuits, personal electronics hardware with digital media playback and recording capabilities; wireless local loop telephones; software and hardware for management, storage, communications and network management of digital media and enhancement of graphical and video display; software for interactive multimedia disc players which allows the contents of multimedia to be transmitted across global communications networks; telematic systems namely, wireless mobile PC devices designed for use in moving vehicles that can provide entertainment, mobile telephony, vehicle monitoring, navigational information; satellite navigational systems, namely a global positioning system; entertainment systems comprising entertainment handsets, television displays and high definition television displays, chrome programmable and three-dimensional video engines, hardware digital accelerators supporting displays, namely, rotating monitors and multiple screen configurations, featuring real-time video effects and filtering; consumer electronics systems comprised of modems, base transceiver stations and portable stations, switching platforms, access nodes and data cards for scrambling, descrambling, encoding and decoding of voice, data, image and video transmissions, entertainment hardware and software that can record, create and play content, namely, video game software, interactive video games of virtual reality comprised of computer hardware and software; television sets, high definition television (HDTV) sets, set top boxes, hardware for graphic displays; hardware for storage, transmission, reception, reproduction, operation, processing, generation of video, graphics, electronic messages, voice messages, data, sensory signals, sound and images; computer software for use in providing multiple user access to a global computer information network for searching, retrieving, transferring, manipulating and disseminating a wide range of information; computer firmware, namely, computer utility software and other computer software used to maintain and operate computer system all stored in a computer's read only memory or elsewhere in the computer's circuitry, operating system software; BIOS software; computer networking hardware, telecommunications and data networking hardware, namely devices for transporting and aggregating voice, data, and video communications across multiple network infrastructures and communications; parts and fittings for use with wireless telephones, computer and telecommunications networking Serial No. 79091666 6 software for wireless network communications and connectivity, networking servers, computer network adapters, networking switches, routers, hubs, wireless and wired modems, computer communication and networking products, namely, parallel communication interface adapters, serial communication cards, synchronous communication cards, telephony cards; mobile telephones, computer software for use in performance and display of graphics and digital media; computer software for visual, voice and touch activated devices for generating, storing, transmitting and receiving communication signals and other data; semiconductors, integrated circuits, electronic subassemblies, subassemblies comprising single board computers, serial and parallel interface cards, disc and tape controller cards, parts and fittings for all of the aforementioned goods not included in other classes; downloadable specification sheets, data sheets, computer reference manuals, user guides and documents providing instruction in the use and operation of various electronic digital devices” in International Class 9;3 VIA TELECOM for “computer hardware, namely, computer semiconductors, computer chips, microprocessors, computer data processors, integrated circuits, computer chipsets for use in transmitting data to and from a central processing unit, computer main boards, computer motherboards, computer interface boards, circuit boards, multimedia accelerators boards, computer graphic cards, serial and parallel interface cards for data processing equipment in the form of printed circuits, computer cards for connecting portable devices to computer networks, central processing units, computer routers, computer hubs, computer servers, computer network adapters, computer switches, audiovisual receivers and converters, network access server hardware, switches, routers, hubs, modem, video graphic controllers, sound cards, video display cards, electric power supplies, computer thermal and cooling devices, computer input, output and storage devices, hard drives for computers, computer memories, blank computer discs, computer disk drives, computer accessory organizer storage cases, magnetically encoded communication debit cards, microcomputers, laptop computers, notebook computers; hand- held devices, namely, personal digital assistants, PC tablets, hand-held high-definition computer monitors for viewing video programming, electronic personal organizers, Personal Digital Assistants (PDA's), MP3 players; computer monitors, computer keyboards, computer mice, computer printer, computer scanner, computer peripherals and parts thereof; computer video 3 Registration No. 3173119 issued to VIA Technologies, Inc. (a California corporation) on November 21, 2006; Section 8 affidavit (six-year) accepted. Serial No. 79091666 7 conferencing equipment, namely, terminals, videophones, video processors, communications software for interacting over wireless, circuit switched or packet switched voice, or packet switched video networks; video output game machines for use with televisions; interactive remote controls for computer game equipment; computer hardware for telecommunications; radio, telephone, television, computer, Internet, global positioning system (GPS), microwave, satellite, broadband, radar, infrared, Wi-Fi, digital and analog signal transmitters; telecommunication devices, namely, Communication Services (PCS) handsets, telephones, cellular telephones, digital telephones, smart phones; sensory-activated interactive computer kiosks used in retail, entertainment and hospitality establishments; computer programs for controlling access to and use of stand-alone network access server computers; computer software, namely, software to manipulate, disseminate, search and retrieve information; computer operating software; computer firmware, namely, data synchronization programs; application development tool programs; computer software for the automatic configuration of computer networks; software for communication and telecommunication in local or global communications and computer networks; diagnostic test software; security software for information access control and secure communications; software for use in database management; computer utility software for use with computers; telecommunications equipment, namely, devices for transmission and collecting voice, data and video communications; computer peripherals; computer software to maintain and operate computer systems; computer software for wireless network communications and connectivity; entertainment software, namely, computer game software; electronic publications, namely, instructional manuals featuring instruction in the field of computers, telephony, education, graphics, animation, interactive communications, computer games, movies and music videos; downloadable software featuring instruction in the use and operation of various electronic digital devices; computer training manuals recorded on computer media; computer operation manuals in electronic format and printed instructional manuals sold as a unit” in International Class 9;4 4 Registration No. 3343749 issued to VIA Technologies, Inc. (a Taiwan corporation) on November 27, 2007. No claim is made to the exclusive right to use the word “Telecom” apart from the mark as shown. Serial No. 79091666 8 We note that the ‘119 registration (the second listed citation above) is owned by a California corporation affiliated with, and having received a consent from, a Taiwan corporation that is the owner of the ‘408 and ‘749 registrations. Applicant argues the fact that the cited marks are owned by two distinct entities should be a significant factor in our determination herein. After the examining attorney made the refusal final, applicant appealed to this Board. We affirm the refusal to register. 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 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. Relationship of the Goods/Services Applicant has stipulated, at least for purposes of our Section 2(d) analysis, that its goods and services are related to the registered goods in Class 9. This Serial No. 79091666 9 critical du Pont factor thus weighs in favor of a finding of likelihood of confusion. Accordingly, we turn our attention next to the similarity or dissimilarity of the respective marks – applicant’s mark at issue compared with the three cited marks owned by two registrants. B. Comparison of the Marks We begin our analysis of the similarity of the marks by noting that where the goods and services of an applicant are “similar in kind and/or closely related” to the goods of the cited registrants, the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). Applicant has applied to register the mark TOMTOM VIA. The registered marks are VIA TELECOM, , and VIA. In comparing the marks, we must consider the marks in their entireties as to appearance, sound, connotation and commercial impression, to determine the similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test, under this 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 marks is likely to result. Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire Serial No. 79091666 10 marks, not just part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). 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 fact, there is 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. In re National Data Corp., 224 USPQ at 751. 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). In this context, the examining attorney reminds us that within a composite mark, the word portion is normally accorded greater weight than a design portion, and that descriptive, disclaimed matter is usually less significant when comparing marks. As to appearance and sound, we acknowledge that there are some clear dis- similarities when one compares applicant’s mark with the cited marks. However, as to connotation and overall commercial impression, the examining attorney contends that the dominant portion of each registered mark is the word “VIA,” and that applicant has simply taken this word and added its house mark, TOMTOM. By contrast, applicant argues that its TOMTOM house mark must be deemed to be the primary and most distinctive element of its composite mark, and hence this portion provides its composite a significant distinguishing feature. On yet the other hand, the examining attorney points out that when product marks are otherwise Serial No. 79091666 11 virtually the same, the addition of a house mark is more likely to add to the likelihood of confusion than to distinguish the marks; it is likely that the two products sold under such marks would be attributed to the same source. In re Dennison Mfg. Co., 229 USPQ 141, 144 (TTAB 1986) (holding GLUE STIC for general purpose adhesive in stick form likely to be confused with UHU GLU STIC for adhesives for paper and stationery). As for applicant’s citation to Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1315-17 (TTAB 2005) (applicant's NORTON MCNAUGHTON ESSENTIALS trademark for women’s clothing is not confusingly similar to opposer’s registered mark ESSENTIALS for similar goods), in that case, the common term, “Essentials,” was found to be highly suggestive and commonly adopted by third parties in connection with items of clothing. However, there is nothing in the record on which we could base a similar finding that the term “VIA” has a highly suggestive connotation. Based upon evidence of record, the examining attorney also takes the position that it is common for trademark owners to accentuate the product mark when promoting goods and services, citing to examples such as Microsoft WORD, Ford MUSTANG, Apple iPOD and Comcast XFINITY, etc. While there is no evidence in the record reflecting on how applicant might choose to promote this product line, it seems likely that those acquainted with applicant’s house mark, upon first encountering the applied-for composite, would be inclined to view the word “VIA” as its distinctive product mark. Given applicant’s relatively prominent positioning in the market for GPS devices, it would certainly present the possibility of reverse Serial No. 79091666 12 confusion with regard to such customers later encountering registrant’s cited mark used in connection with legally identical goods. Accordingly, we find that applicant’s mark TOMTOM VIA is confusingly similar to the cited marks, VIA TELECOM, , and VIA. as to connotation and commercial impression. C. Third-party Uses Other than the three cited registrations, there is nothing in the record to suggest that “Via” is a term used by any other third parties in the field of GPS devices. However, throughout the prosecution of this application, in responses to office actions and in its final brief on appeal, applicant has focused most of its arguments on the fact that the cited marks are not all owned by the same legal entity. Accordingly, the examining attorney and applicant have fully engaged in litigating the sixth du Pont factor, which requires consideration of any evidence pertaining to “the number and nature of similar marks in use on similar goods.” In its brief, applicant argues as follows: Although the consent to registration that was provided in order to obtain Registration 3173119 states that VIA Technologies, Inc., a California corporation, is an “affiliate” of VIA Technologies, Inc., a Taiwan corporation, there is nothing to indicate that [sic] in the Consent Agreement or otherwise that those two companies can be considered “related companies” or that there is a “unity of control” or that the two entities constitute a “single source.” By submitting a Consent Agreement and merely stating that they are “affiliates,” the respective corporations are contradicting any indication that there is unity of control and that they are a single source. Applicant’s brief at 7. Serial No. 79091666 13 The examining attorney takes applicant’s argument to the next step, to imply “ … that the co-existence of these registrations – owned by affiliated companies and explicitly consented to by each party – means that any other party, including itself, is now permitted to register similar VIA marks. In other words, the consent given by each [owner of the cited registered marks] to the other is imputed to every subsequent applicant. Such an argument is clearly without merit.” Actually, applicant’s argument seems to be that while it does not claim to have any direct benefit from this earlier consent, the legal effect of such similar marks issuing to unrelated parties is to expose a serious weakness in the cited registrations permitting its quite different mark to register as well. However, the examining attorney is correct in noting that this “argument is clearly without merit.” In its brief, applicant cites to § 1207.01(d)(viii) of the Trademark Manual of Examining Procedure (TMEP), saying that whenever a consent agreement is submitted, the examining attorney will consider the agreement as well as all the other evidence of record in order to make a determination as to likelihood of confusion. Of course, that section also counsels the examining attorney of the importance of a consent agreement in any ex parte examination, as follows: Accordingly, the Court of Appeals for the Federal Circuit has indicated that consent agreements should be given great weight, and that the USPTO should not substitute its judgment concerning likelihood of confusion for the judgment of the real parties in interest without good reason, that is, unless the other relevant factors clearly dictate a finding of likelihood of confusion. Serial No. 79091666 14 In keeping with this guidance, Trademark Examining Attorney Doritt L. Carroll, when examining Application Serial No. 78495863 for VIA, accepted the “judgment of the real parties in interest,” a consent agreement dated November 10, 2005, between Via Technologies, Inc. a Taiwan corporation, and Via Technologies, Inc., a California corporation, which action led to the issuance of Registration No. 3173119. Accordingly, from this record, we find that the cited “VIA” marks are strong conceptually5 and commercially, and that a consent agreement between two affiliated parties has not weakened the cited registrations in the manner applicant has alleged. D. Balancing the factors In view of the fact that the cited VIA and VIA TELECOM marks are deemed to be relatively strong product marks, that applicant’s composite mark is confusingly similar, and that the goods and services are legally the same, we find that applicant’s registration of the mark TOMTOM VIA is likely to cause confusion. Decision: The refusal to register applicant’s mark TOMTOM VIA under Section 2(d) of the Lanham Act is hereby affirmed. 5 Applicant’s dictionary entry supports the conclusion that, at worst for registrants, the term “Via” may be suggestive when used in connection with the identified goods.