Toshiba America Business Solutions, Inc.

Trademark Trial and Appeal Board

Sep 26, 2006

No. 76525244 (T.T.A.B. Sep. 26, 2006)

Mailed:
September 26, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Toshiba America Business Solutions, Inc.
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Serial No. 76525244
Serial No. 76525481
_______

Susan L. Mizer of Tucker Ellis & West LLP for Toshiba
America Business Solutions, Inc.

Sean Crowley, Trademark Examining Attorney, Law Office 116
(Michael Baird, Managing Attorney) (Serial No. 76525244).

Melvin T. Axilbund, Trademark examining attorney, Law
Office 113 (Odette Bonnet, Managing Attorney) (Serial
No. 76525481).
_______

Before Bucher, Rogers and Cataldo,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Toshiba America Business Solutions, Inc. (applicant)
has applied to register the mark ENCOMPASS, for goods
identified as "computer software, namely software and
programs in the field of quantitative and qualitative
document management for businesses, specifically, software
This Opinion is Not
Citable as Precedent of
the TTAB
Ser No. 76525244 & No. 76525481
2
and programs for analysis of document imaging, management
and output device requirements to improve document
management and output document functionality and
reliability," in Class 9 (Serial No. 76525244), and for
services identified, following amendment, as "computer
services, namely providing temporary use of on-line
nondownloadable computer software and computer programs in
the field of quantitative and qualitative document
management for businesses, specifically, software and
programs for analysis of document imaging, management and
document functionality and reliability," in Class 42
(Serial No. 76525481).
The applications were filed based on applicant's
stated intention to use the mark in commerce for the
identified goods and services. The mark has been refused
registration by each of the respective examining attorneys,
in view of the prior registration of the mark ELITE
ENCOMPASS (Registration No. 2891154) for "software for
electronic document management for use by corporate,
government and professional service organizations," in
Class 9. See Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d). When the examining attorneys made their
respective refusals of registration final, applicant
appealed from each refusal.
Ser No. 76525244 & No. 76525481
3
Applicant and the examining attorneys filed separate
briefs in each case. In view of the common issue presented
by the appeals, the Board has chosen to issue this single
decision.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); see also, In re
E.I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). In the analysis of likelihood of
confusion presented by this case, key considerations are
the similarities of the marks and the related nature of the
goods and services. 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 [or services] and differences
in the marks”).
To determine whether the marks are similar for
purposes of assessing the likelihood of confusion, we must
consider the appearance, sound, connotation and commercial
impression of each mark. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
Ser No. 76525244 & No. 76525481
4
USPQ2d 1689, 1692 (Fed. Cir. 2005). In a particular case,
any one of these means of comparison may be critical in
finding marks to be similar. In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988); see also, In re White Swan
Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). In fact, “the PTO
may reject an application ex parte solely because of
similarity in meaning of the mark sought to be registered
with a previously registered mark.” In re Sarkli, Ltd.,
721 F.2d 353, 220 USPQ 111, 113 (Fed. Cir. 1983).
In essence, applicant contends that the marks are
visually and aurally different because the registered mark
includes the term ELITE, while applicant's mark does not.
Further, applicant contends, "other marks held by
Registrant" include the term ELITE and consumers would
therefore draw an association between ELITE ENCOMPASS and
registrant's company name. We construe this as an argument
that the marks have different connotations.
The examining attorneys, in contrast, view the marks
as similar because ENCOMPASS is the entirety of applicant's
mark and they contend it is the dominant element in the
registered mark. They both contend that applicant, as the
latecomer, cannot avoid a likelihood of confusion with a
previously registered mark merely by deleting one of its
two words and proposing to use the remaining word. They
Ser No. 76525244 & No. 76525481
5
both also note that applicant has not provided any support
for its contention that registrant has registered the word
ELITE in other marks, and they both assert that prospective
consumers would be most likely to view ELITE as a laudatory
term modifying the term ENCOMPASS. Therefore, the
examining attorneys contend that consumers would view the
respective marks as identifying computer programs and
software of different quality levels but having the same
source or sponsorship. In support of this contention, each
of the examining attorneys has requested, and we grant the
requests1, that we take judicial notice of a dictionary
definition of "elite": "the choice or best of anything
considered collectively, as of a group of class of
persons"2; and "the choice part … the best of a class."3
We agree with the assessment of the examining
attorneys, and cannot accept the speculation of applicant
that prospective consumers will be conditioned through some
pattern of use by registrant to perceive the ELITE element
in registrant's mark not as a laudatory term but instead as

1 See 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).

2 Random House Unabridged Dictionary (1997), reproduced at
www.infoplease.com/dictionary/elite.

3 Merriam Webster's Collegiate Dictionary, p. 374 (10th ed.
1996).
Ser No. 76525244 & No. 76525481
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a dominant house mark. As noted by the examining
attorneys, there is no support for this contention in the
record and, in any event, even if we could assume that
ELITE is used as a house mark by registrant, it would still
have the same laudatory connotation.
Examining Attorney Crowley has also requested, and we
grant the request, that we take judicial notice of a
dictionary definition of "encompass": "1. to form a circle
about; encircle; surround" "2. to enclose; envelop" "3. to
include comprehensively."4 ENCOMPASS is a term that is
suggestive of software or computer programs that are all
encompassing in their management of electronic documents.
While not entirely arbitrary in relation to the involved
goods and services, the term is inherently distinctive.
Moreover, the combination of ELITE and ENCOMPASS is even
more distinctive, as the former is an adjective but, in
registrant's usage, is not used to modify a noun. The
combination of the adjective "elite" and the verb
"encompass" is slightly incongruous and makes for a more
distinctive mark. This only enhances the likelihood that
consumers will find ELITE ENCOMPASS and ENCOMPASS similar,
if used in conjunction with related goods or services.

4 Random House Unabridged Dictionary (1997), reproduced at
www.infoplease.com/dictionary/encompass.
Ser No. 76525244 & No. 76525481
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Notwithstanding applicant's contention that prospective
purchasers of the involved computer programs or software
may be sophisticated, a contention we address infra,
consumers nonetheless have an imperfect recollection of
marks. “Human memories even of discriminating purchasers
... are not infallible.” In re Research and Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). Therefore,
consumers familiar with registrant's ELITE ENCOMPASS
products, when confronted with the similar ENCOMPASS
products or services, may not recall that registrant's mark
included the laudatory term ELITE. On the other hand,
consumers confronted with registrant's mark after having
seen applicant's mark, may simply conclude that
registrant's products are a higher level of the products or
services offered by applicant.
In sum, we agree with the contentions of the examining
attorneys that the marks are similar, particularly in their
connotation and overall commercial impression. We now turn
to consideration of the involved goods and services,
keeping in mind that “the second DuPont factor expressly
mandates consideration of the similarity or dissimilarity
of the services as described in an application or
Ser No. 76525244 & No. 76525481
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registration.” In re Dixie Restaurants, 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997)(internal quotation marks
omitted). Thus, it is irrelevant, notwithstanding
applicant's argument in each brief, that its mark
"ENCOMPASS is also used in connection with computer
programs for resource usage monitoring, tracking and
account management." Applicant also fails to explain how
purported use of the applied-for mark on additional
computer programs would affect the analysis of likelihood
of confusion when the involved marks would be used,
respectively, in conjunction with the identified computer
programs and services of applicant and the identified
software of registrant.
Applicant argues in each of its briefs that its
"services range in price from approximately, several
hundred dollars to tens of thousands of dollars and are
marketed to [for example]" major accounting firms and major
automotive facilities.5 Therefore, applicant asserts in

5 Even though one of applicant's applications seeks to register
the ENCOMPASS mark for goods, both briefs use the word services.
We construe the argument in Serial No. 76525244 as if it employed
the word goods. Also, the argument in one of the applications
references "major accounting firms, for example" as a class of
customers, while the other references "major automotive
facilities, for example." Given the similarity in the nature of
applicant's goods and services, we construe the respective
arguments broadly, and as asserting that these two classes of
customers would be potential customers for both applicant's goods
and services.
Ser No. 76525244 & No. 76525481
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each brief, "it is extremely likely that the vast majority,
if not all, of the relevant buyer class is composed solely
of professional buyers." Even if, applicant argues in the
alternative, the "purchasing class" is not considered to
consist solely of professional buyers, the "products at
issue are likely to be considered 'expensive'" and the
prospective purchasers should be assumed to be not merely
"reasonably prudent" but "discriminating."
First, there is nothing in the record to establish the
cost of applicant's goods or services, or the class of
customers for them.
Second, even though applicant's respective
identifications are restricted to goods and services "for
businesses," and we can therefore assume that they would
include "major" businesses of the sort to which applicant
has referred, we must construe the goods and services as
also being marketed to smaller businesses, including, for
example, sole proprietorships or consultants that would
have need of computer programs or services costing as
little as a few hundred dollars. Thus, we are unable to
assume, as applicant apparently has, that all prospective
purchasers of its goods or services will be professional
purchasing managers or heads of large information
technology sections of large companies.
Ser No. 76525244 & No. 76525481
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Third, although registrant's identification limits
classes of customers to "corporate, government and
professional service organizations," we must assume these
classes to include small corporations, smaller local
governments and smaller professional services
organizations. Again, we cannot, therefore, conclude that
registrant's goods would only be purchased by professional
purchasing agents for large entities or by heads of
information technology sections of such entities. In
short, we agree with the examining attorneys that the
involved goods and services must be considered to be
marketed to prospective purchasers of varying degrees of
sophistication, alike only insofar as each purchaser would
have need of computer programs or services making such
programs available on-line, for document management. As
already noted, even discriminating purchasers may suffer
from imperfect recollection of marks and be confused as to
source. In re Research and Trading Corp., 230 USPQ at 50.
Even if discriminating purchasers recognized the
presence of ELITE in registrant's mark, or its absence from
applicant's marks, such purchasers likely would assume
there to be some common source or sponsorship, as there is
nothing in the record to suggest that ENCOMPASS is widely
used for document management software or related services.
Ser No. 76525244 & No. 76525481
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Purchasers need not conclude that goods or services come
from the same source to be confused, as it is sufficient to
find a likelihood of confusion when purchasers may conclude
that there is some common sponsorship or authorization. In
re Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
Decision: The refusal of registration under Section
2(d) of the Trademark Act is affirmed.