Veripos Limited

Trademark Trial and Appeal BoardMar 13, 2014

No. 85607112 (T.T.A.B. Mar. 13, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: March 13, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Veripos Limited _____ Serial No. 85607112 _____ Joseph T. Nabor of Fitch Even Tabin & Flannery LLP for Veripos Limited. Ira Goodsaid, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). _____ Before Bergsman, Adlin and Masiello, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Veripos Limited (“applicant”) filed a use-based application to register the mark TerraStar, in standard character form, for the following goods and services as amended: Computer hardware for navigation and positioning purposes; computer operating software for navigation and positioning purposes; computer software for use with global navigation satellite systems in calculating correction factors, in navigation and positioning and for generating maps; computer software which features a geographic database for use with global navigation and positioning satellite systems; computer software for providing map, navigation and positioning data via a data Serial No. 85607112 2 communications network or a wireless navigation device; Global Navigation Satellite System devices; navigation apparatus for vehicles and vessels; electronic navigational and positioning apparatus and instruments; radio and satellite receivers for navigation and positioning purposes; global positioning systems; satellite navigation and positioning systems; computers and data processors for navigation and positioning purposes; satellite and radio antennas and signal demodulators for navigation and positioning purposes; interfaces and peripheral devices for computerized satellite and radio antennas and signal demodulators for navigation and positioning purposes, in Class 9; Data broadcast for the purpose of enhancing accuracy, reliability and integrity of precise navigation and positioning; rental of broadcast receiving apparatus used for navigation and positioning purposes; broadcast services, namely, broadcast of geo-locational and related data in the field of navigation and positioning apparatus and services for vehicles and vessels; providing access to data communication networks that provide specific map, navigation and position data and information consultation in conjunction with all the foregoing, in Class 38; Global Navigation Satellite System navigation and positioning services, and providing information, advisory, consultancy and helpdesk services in relation to the foregoing and information in conjunction therewith, in Class 39; and Development of computer hardware and software for navigation and positioning purposes; computer programming for navigation and positioning purposes; computer technology support services including help desk services for the purpose of enhancing accuracy, reliability and integrity of precise navigation and positioning, in Class 42. The Trademark Examining Attorney refused to register applicant’s mark under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground Serial No. 85607112 3 that applicant’s mark so resembles the previously registered marks listed below as to be likely to cause confusion. The registrations are owned by the same entity. 1. Registration No. 3890404 for the mark TERRESTAR, in standard character form for the following goods: Telecommunications equipment, namely, telephones and wireless and mobile telephones for voice, data; wireless telephones; computers, computer terminals, and computer hardware for use in the telecommunications industry; telephone modems and radio modems; electronic messaging, and access to the Internet for use in wireless communications systems; computer programs utilizing radio communications networks, local and/or wide area communication networks, terminals for facilitating wireless radio communication, in Class 9;1 2. Registration No. 3911408 for the mark TERRE STAR and design, shown below, for the following goods and services: Telecommunications equipment, namely, telephones and wireless and mobile telephones for voice and data communications; telematics apparatus, namely, hand- held devices for wireless access to global communications networks and e-mail; wireless telephones, in Class 9; and Satellite telecommunications services, namely, the provision and transmission of satellite telecommunications services; providing satellite services for mobile users for voice and data communications; wireless transmission and networking of messages, communications and of data; electronic mail services; data 1 Registered December 14, 2010. Serial No. 85607112 4 communication services, namely, wireless data communications services, in Class 38;2 and 3. Registration No. 4019806 of the mark TERRESTAR, in standard character form, for the following services: Satellite and terrestrial telecommunications services, namely, the provision and transmission of satellite and terrestrial telecommunications; providing satellite and terrestrial transmission services for voice, and data communications; radio, telephone, and satellite communication and broadcasting services relating to the Internet; satellite transmission services; wireless transmission and networking of messages, communications and of data; electronic mail services; data communication services, namely, wireless data communications services, in Class 38.3 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). These 2 Registered January 25, 2011. 3 Registered August 30, 2011. Serial No. 85607112 5 factors, and any other relevant du Pont factors in the proceeding now before us, will be considered in this decision. A. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In a particular case, any one of these means of comparison may be critical in finding the marks to be similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we are mindful that the test 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 so that confusion as to the source of the goods offered under the respective marks is likely to result. San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). Applicant’s mark is TerraStar, in standard character form, and the registrant’s marks are TERRESTAR, in standard character form, and . Because TerraStar and TERRESTAR are presented in standard character form, they are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording and not Serial No. 85607112 6 in any particular display. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983); In re RSI Systems, LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988). For purposes of our analysis, applicant’s mark may be considered as TERRASTAR or TerraStar and registrant’s mark may be considered as TERRESTAR or TerreStar. In fact, registrant displays its mark as TerreStar.4 The two standard character marks are very similar, the only difference being that applicant’s mark has the letter “a” instead of the letter “e” after “Terr” and before “Star.” Slight differences in marks do not normally create dissimilar marks. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985) (“Moreover, although there are certain differences between the [marks’ CAYNA and CANA] appearance, namely, the inclusion of the letter ‘Y’ and the design feature in applicant’s mark, there are also obvious similarities between them. Considering the similarities between the marks in sound and appearance, and taking into account the normal fallibility of human memory over a period of time (a factor that becomes important if a purchaser encounters one of these products and some weeks, months, or even years later comes across the other), we believe that the marks create substantially similar commercial impressions”). See also United States Mineral Products Co. v. GAF Corp., 197 USPQ 301, 306 (TTAB 1977) (“‘AFCO’ and ‘CAFCO,’ which differ only as to the letter ‘C’ in USM’s mark, are substantially similar in 4 Applicant’s February 11, 2013 response to an Office action. Serial No. 85607112 7 appearance and sound”) and In re Bear Brand Hosiery Co., 194 USPQ 444, 445 (TTAB 1977) (“The mark of the applicant, ‘KIKS’ and the cited mark ‘KIKI’ differ only in the terminal letter of each mark. While differing in sound, the marks are similar in appearance and have a somewhat similar connotation”). With respect to the registered mark , the word portion TERRE STAR is the dominant element of the mark. In the case of marks consisting of words and a design, the words are normally given greater weight because they would be used by consumers to request the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also Sweats Fashions Inc. v. Pannill Knitting Co., 833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); Giant Food, Inc. v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1983). Thus, the registered mark is very similar to applicant’s mark TerraStar because in the setting of registrant’s mark as displayed in the drawing, the term Terre Star projects the basic significance of the mark. The presence or absence of a space between the two words (Terre Star vs. TerraStar) is an inconsequential difference which, even if noticed or remembered by consumers, would not serve to distinguish these marks. See, e.g., Seaguard Corp. v. Seaward International, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essentially identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827 (TTAB 1984) (“there can be little doubt that the marks [BEEFMASTER for restaurant services and BEEF MASTER for frankfurters and Serial No. 85607112 8 bologna] are practically identical and indeed applicant has not argued otherwise.”) (Emphasis in the original). In view of the foregoing, we find that the marks are highly similar in terms of appearance, sound, connotation and commercial impression. B. The similarity or dissimilarity and nature of the services, the established likely-to-continue channels of trade and classes of consumers. Based on the copies of the applicant’s website and registrant’s website that applicant submitted with its February 11, 2013 response to an Office action, applicant contends that the goods and services are different because applicant’s goods and services are in the field of global navigation and positioning (e.g., “Global, high accuracy GNSS positioning service using both the GPS and GLONASS constellations.”) while registrant’s goods and services are in the field of traditional voice and data communications (e.g., “As a wholesale mobile voice and data service provider, TerreStar offers next generation mobile communications through a network of partners and service providers to users who need ‘anywhere’ coverage throughout the United States and Canada.”). However, because the scope of the registration applicant seeks is defined by its application (and not by its actual use) it is the application (and not actual use) that we must look to in determining applicant’s right to register: The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed. Serial No. 85607112 9 Octocom Syst. Inc. v. Houston Computers Svcs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Likewise, in considering the scope of the cited registrations, we look to the registrations themselves, and not to extrinsic evidence about the registrant’s actual goods, customers, or channels of trade. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958). 1. Class 9. Applicant is seeking to register its mark for the following goods in Class 9: Computer hardware for navigation and positioning purposes; computer operating software for navigation and positioning purposes; computer software for use with global navigation satellite systems in calculating correction factors, in navigation and positioning and for generating maps; computer software which features a geographic database for use with global navigation and positioning satellite systems; computer software for providing map, navigation and positioning data via a data communications network or a wireless navigation device; Global Navigation Satellite System devices; navigation apparatus for vehicles and vessels; electronic navigational and positioning apparatus and instruments; radio and satellite receivers for navigation and positioning purposes; Serial No. 85607112 10 global positioning systems; satellite navigation and positioning systems; computers and data processors for navigation and positioning purposes; satellite and radio antennas and signal demodulators for navigation and positioning purposes; and interfaces and peripheral devices for computerized satellite and radio antennas and signal demodulators for navigation and positioning purposes. The Class 9 description of goods in the cited registrations is set forth below: Telecommunications equipment, namely, telephones and wireless and mobile telephones for voice [and], data [communications]; Telematics apparatus, namely, hand-held devices for wireless access to global communications networks and e- mail; wireless telephones; computers, computer terminals, and computer hardware for use in the telecommunications industry; telephone modems and radio modems; electronic messaging, and access to the Internet for use in wireless communications systems; and computer programs utilizing radio communications networks, local and/or wide area communication networks, terminals for facilitating wireless radio communication. The Trademark Examining Attorney argues that the goods are related because: The registrant’s phones, computers, hardware and software for use in the telecommunications industry are identified broadly enough to encompass the applicant’s computer hardware and software for navigation and Serial No. 85607112 11 positioning purposes; Global Navigation Satellite System devices; and radio and satellite receivers for navigation and positioning purposes (emphasis in the original). None of the goods are limited so as to avoid the same trade channels.5 We disagree. The “telecommunications industry” is involved in “communicating information, including data, text, pictures, voice, and video over long distances.”6 Thus, registrant provides communication equipment. Applicant’s identification of goods does not include communications equipment per se. Applicant provides navigation and positioning equipment. Applicant’s identification of goods includes computer hardware and software for navigation and positioning purposes. The issue we must resolve is whether registrant’s computer hardware and software for use in the telecommunications industry is related to applicant’s computer hardware and software in the navigation and positioning field. There is simply no evidence in the record to support finding that the goods are related. Moreover, there is no basis for us to find that applicant’s products and registrant’s products will be sold to the same consumers under circumstances likely to give rise to the mistaken belief that the goods emanate from the same source. In view of the foregoing, we find that the goods in Class 9 are not related and there is no evidence to support a finding that the goods move in the same channels of trade or are sold to the same classes of consumers. 5 Trademark Examining Attorney’s Brief, pp. 5-6 (unnumbered). 6 THE COMPUTER GLOSSARY, p. 394 (1995). The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Serial No. 85607112 12 2. Class 38. Applicant is seeking to register its mark for the following services in Class 38: Data broadcast for the purpose of enhancing accuracy, reliability and integrity of precise navigation and positioning; rental of broadcast receiving apparatus used for navigation and positioning purposes; broadcast services, namely, broadcast of geo-locational and related data in the field of navigation and positioning apparatus and services for vehicles and vessels; providing access to data communication networks that provide specific map, navigation and position data and information consultation in conjunction with all the foregoing. The Class 38 identification of services in the cited registrations is set forth below: Satellite and terrestrial telecommunications services, namely, the provision and transmission of satellite and terrestrial telecommunications; providing satellite and terrestrial transmission services for voice, and data communications; radio, telephone, and satellite communication and broadcasting services relating to the Internet; satellite transmission services; wireless transmission and networking of messages, communications and of data; electronic mail services; data communication services, namely, wireless data communications services. Serial No. 85607112 13 Registrant’s satellite transmission of data communications is broad enough to encompass applicant’s “data broadcast for the purpose of enhancing accuracy, reliability and integrity of precise navigation and positioning” because registrant’s data communications are not restricted to any field. Therefore, applicant’s attempt to restrict its Class 38 recitation of services does not serve to distinguish applicant’s services, customers, or channels of trade from registrant’s services, customers, or channels of trade. In other words, registrant’s services include applicant’s services, and we must presume that they would be offered through the same channels of trade to the same classes of consumers.7 3. Classes 39 and 42. There is no evidence of record showing that applicant’s identification of services in Classes 39 and 42 is in any way related to registrant’s goods or services and the Trademark Examining Attorney does not make any such arguments. While it might be reasonable to assume that applicant’s navigation and global positioning services requires some type of computer and/or communications services, in the 7 As noted above, we are constrained to limit our review to the description of goods and services in the application and registrations at issue. However, we point out that applicant was not without possible remedies here, including seeking a consent from the owner of the cited registration, or seeking a restriction of the registration under Section 18 of the Trademark Act, 15 U.S.C. § 1068. A party in applicant's position can file a petition for cancellation of the cited registrations, requesting a restriction or modification of registrant's description of goods and services on the basis that the description of goods and services is overly broad or have been abandoned in a particular field. This Section 18 claim, if successful, would modify the description of goods and services to exclude navigation and positioning applications from registrant’s description of goods and services. See In re Cook Medical Technologies LLC, 105 USPQ2d 1377, 1384 (TTAB 2012); IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, 1954-55 (TTAB 2009), citing In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). Serial No. 85607112 14 absence of any evidence on this point, we are unable to find that the goods and services are related. C. Balancing the factors. 1. Classes 9, 39 and 42. Although the marks are similar, because there is no evidence that the goods and services are related or that they move in the same channels of trade or are encountered by the same classes of consumers, we find that applicant’s mark TerraStar for the goods listed in Class 9 and the services listed in Classes 39 and 42 is not likely to cause confusion with the marks TERRESTAR and for the goods and services listed in the cited registrations. 2. Class 38. Because the marks are similar, the services are legally identical, and the channels of trade and classes of consumers are presumed to be the same, we find that applicant’s mark TerraStar for “data broadcast for the purpose of enhancing accuracy, reliability and integrity of precise navigation and positioning; rental of broadcast receiving apparatus used for navigation and positioning purposes; broadcast services, namely, broadcast of geo-locational and related data in the field of navigation and positioning apparatus and services for vehicles and vessels; providing access to data communication networks that provide specific map, navigation and position data and information consultation in conjunction with all the foregoing” is likely to cause confusion with registrant’s marks TERRESTAR and for “satellite and terrestrial telecommunications services, Serial No. 85607112 15 namely, the provision and transmission of satellite and terrestrial telecommunications; providing satellite and terrestrial transmission services for voice, and data communications; radio, telephone, and satellite communication and broadcasting services relating to the Internet; satellite transmission services; wireless transmission and networking of messages, communications and of data; electronic mail services; data communication services, namely, wireless data communications services.” Decision: The Section 2(d) refusal for the services in Class 38 is affirmed and registration to applicant for the services in Class 38 is refused. The Section 2(d) refusal for the goods and services in Classes 9, 39, and 42 is reversed. The application will be forwarded for issuance of a registration in Classes 9, 39, and 42 in due course.