AbleNet, Inc.

Trademark Trial and Appeal Board

Mar 10, 2004

No. 78120762 (T.T.A.B. Mar. 10, 2004)

Mailed: March 11, 2004
Paper No. 10
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AbleNet, Inc.
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Serial No. 78120762
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Elizabeth D. Lewen of Sherrill Law Offices, PLLC for
AbleNet, Inc.
Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______
Before Quinn, Hairston and Rogers, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by AbleNet, Inc. to
register the mark shown below
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 78120762
2
for an “electronic educational device with sound recording
and play-back units and a plurality of switches for use in
combination with a standard publication namely, a book, to
provide audible play-back of text read from a designated
page or facing pages of the publication by activating a
designated switch from the plurality of switches.”1
The Trademark Examining Attorney2 has refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), on the ground that applicant’s mark, if
applied to the identified goods, would so resemble the
previously registered mark BOOKWORM for an “electronic
hand-held Braille reading device used for translating
Braille,”3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs on
the case. We reverse the refusal to register.
Our determination under Section 2(d) of the Act is
based on an analysis of all the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. In re E. I. du Pont de Nemours and
1 Application Serial No. 78120762, filed April 10, 2002, which
alleges a bona fide intention to use the mark in commerce.
2 The present Examining Attorney was not the original Examining
Attorney in this case.
3 Registration No. 2,438,958, issued March 27, 2001.
Ser No. 78120762
3
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any
likelihood of confusion analysis, however, two key factors
are the similarities/dissimilarities between the marks and
the similarities/dissimilarities between the goods or
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
Turning first to a consideration of the respective
marks, we find that they are similar to the extent that
they share the word BOOKWORM. However, there are specific
differences in the marks. Registrant’s mark is simply the
word BOOKWORM whereas applicant’s mark consists of BOOKWORM
along with a prominent and fanciful design of a worm
reading a book and applicant’s name “AbleNet.”
Turning next to a consideration of the respective
goods, it is well settled that goods need not be identical
or even competitive in order to support a finding of
likelihood of confusion. Rather, it is sufficient that the
goods 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
in 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 source or that
there is an association or connection between the sources
Ser No. 78120762
4
of the respective goods or services. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
Applying these principles to the present case, we find
that the Examining Attorney has failed to establish that
applicant’s and registrant’s goods are similar or related
in any way that would result in source confusion.
Applicant’s goods are an “electronic educational
device with sound recording and play-back units and a
plurality of switches for use in combination with a
standard publication, namely, a book, to provide audible
play-back of text read from a designated page or facing
pages of the publication, by activating a designated switch
from a plurality of switches.” Registrant’s goods are an
“electronic hand-held Braille reading device used for
translating Braille.”
The Examining Attorney contends that the goods are
related because “[t]he function of each of these products
is to enhance a users [sic] ability to read a publication.”
(Brief, p. 6). According to the Examining Attorney, a non-
sighted person could very well avail him or herself of
applicant’s product, and both applicant’s and registrant’s
goods may be sold in electronic stores, bookstores and
other specialty stores. The Examining Attorney has
Ser No. 78120762
5
submitted a printout of a newspaper article about applicant
which indicates that applicant produces products for
persons with disabilities.
Notwithstanding the Examining Attorney’s contentions,
we are not convinced that applicant’s and registrant’s
goods would travel in the same channels of trade to the
same class of purchasers. It is obvious that the class of
purchasers of registrant’s electronic hand-held Braille
reading device used for translating Braille is non-sighted
persons. While applicant’s identification of goods
contains no limitations as to class of purchasers, i.e.,
non-sighted persons are not excluded, it nonetheless seems
to us that an electronic educational device with a
plurality of switches and a book with regular text is not
the type of device that would usually be marketed to non-
sighted persons. In point of fact, there is no evidence in
the record to indicate that this type of device is marketed
to non-sighted persons. Further, although it appears that
applicant produces products for persons with disabilities,
there is no evidence which suggests that applicant produces
products for non-sighted persons. The respective goods, as
identified, do not appear to be competitive or
complementary, and there is no evidence on which we may
conclude that the goods are otherwise related in any way.
Ser No. 78120762
6
Further, there is no evidence that the types of goods
involved in this case travel in the same channels of trade.
In view of the highly specialized nature of registrant’s
electronic hand-held Braille reading device, we are not
persuaded that this type of device would be sold in
electronics stores and bookstores, or even the same
“specialty” stores as applicant’s goods. However, even
assuming that applicant’s and registrant’s goods would be
sold in the same specialty stores, i.e., stores
specializing in products for persons with disabilities of
all types, it would appear that purchasers of registrant’s
highly specialized device would be knowledgeable with
respect to the source of electronic devices for reading
Braille, and thus are likely to know that a company
offering an electronic educational device and a standard
book is not likely to be the source of electronic devices
for reading Braille.
In sum, in view of the specific differences in
applicant’s and registrant’s marks and because the goods
are not sufficiently related, we find that there is no
likelihood of confusion in this case.
Decision: The refusal to register under Section 2(d)
is reversed.
Ser No. 78120762
7
Rogers, Administrative Trademark Judge, dissenting:
I agree with the majority's conclusion that the
applicant's mark and the mark in the cited registration are
similar. Moreover, because the involved identifications of
goods include products that would be marketed to blind or
visually impaired individuals, the identical pronunciation
of registrant's mark, BOOKWORM, and the clearly dominant
portion of applicant's mark, ABLENET BOOKWORM and design,
is particularly significant.
As for the goods and prospective purchasers or users
thereof, I start with the cited registration and its
identification, which reads "electronic hand-held Braille
reading device used for translating Braille." Braille is
defined as "a system of lettering, devised by [Louis]
Braille for use by the blind, in which each character is a
combination of raised dots that are read by touch" and "to
write in Braille characters." The Random House College
Dictionary 163 (revised ed. 1982). Registrant's hand-held
device for translating Braille could be a device that would
translate Braille characters to visually readable text,
perhaps as an item that a sighted person might use to read
something written in Braille by a blind or visually
impaired person. On the other hand, the device could be a
Ser No. 78120762
8
hand-held speech synthesizer that would translate Braille
into audible sounds for a blind or visually impaired person
to listen to. Because our analysis of likelihood of
confusion must be based on the identification as written in
the registration, we must conclude that it could encompass
both of the items I have described, even if independent
investigation might reveal that the registrant actually
uses its mark for only one of these items or, for that
matter, something different that I have not contemplated by
my reading of the identification.
As for applicant's identification, it specifies that
applicant's product is an "electronic educational device
with sound recording and play-back units and a plurality of
switches for use in combination with a standard publication
namely, a book, to provide audible play-back of text read
from a designated page or facing pages of the publication
by activating a designated switch from the plurality of
switches." While this is a lengthy identification, it
still is not entirely clear what the product does.
However, I construe the identification to include any item
that "reads" the designated page or pages of a book,
synthesizes the text into speech and records it, allowing
the user to play the recording back as needed. Such an
item would be especially useful for a blind or visually
Ser No. 78120762
9
impaired person wanting to read a particular book, without
having to search out a recording by some individual reading
the book aloud. For example, a blind or visually impaired
student could use the device to help read a textbook. I
would so construe applicant's identification even if the
record did not reveal that applicant markets products for
the disabled (including, presumably, the blind or
individuals suffering from disabling illness or injury
affecting their vision).
In short, I view the involved identifications each as
encompassing devices that can help blind or visually
impaired individuals read books, whether they are in
Braille or in printed form, by creating an audible English
version. Thus, even if the products would not be
competitive, in that one is used to translate Braille,
while the other is used to transform text into sound, they
both would be marketed to the same class of prospective
purchasers. In addition, since neither identification
includes a restriction on channels of trade, we must
presume that the identified goods can be marketed in any
channel of trade that would normally be used to market
products of this type to blind or visually impaired
individuals, i.e., the goods could be marketed in the same
channels of trade.
Ser No. 78120762
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On this record, I would affirm the refusal of
registration under Section 2(d) of the Lanham Act.