Atmel Corp.

Trademark Trial and Appeal Board

Feb 18, 2004

No. 76223480 (T.T.A.B. Feb. 18, 2004)

Mailed: 18 FEB 2004
Paper No. 14
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Atmel Corporation
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Serial Nos. 76223479 and 76223480
_______
Gina McCarthy of the Law Offices of Thomas Schneck for
Atmel Corporation.
Shari Sheffield, Trademark Examining Attorney, Law Office
110 (Chris Pedersen, Managing Attorney).
_______
Before Seeherman, Bottorff, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 12, 2001, Atmel Corporation (applicant)
applied to register two marks on the Principal Register.
The first application is for the mark IPITEC in typed form.1
The second application is for the mark IPITEC in the
stylized form shown below:2
1 Serial No. 76223480.
2 Serial No. 76223479.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser Nos. 76223479 and 762223480
2
Both applications are based on an allegation of a bona
fide intention to use the marks in commerce. Ultimately,
the identifications of goods in both applications were
amended to read as follows: “integrated circuit chips,
namely digital signal processors, and computer software,
namely compilers, debuggers, simulators, and assembler
optimizers to support digital signal processor operations”
in International Class 9.
The examining attorney3 has refused to register
applicant’s marks on the ground that if the marks were used
on or in connection with the identified goods, they would
so resemble the registered mark, IPITEK (typed), for
“fiber-optic data links, sensors and transmission
apparatus” in International Class 9 as to be likely to
cause confusion, to cause mistake or to deceive. 15 U.S.C.
§ 1052(d).4
3 The current examining attorney was not the original examining
attorney in these cases.
4 Registration No. 1,641,149, issued April 16, 1991, renewed.
Ser Nos. 76223479 and 762223480
3
When the refusals were made final, these appeals
followed.5
The examining attorney argues that applicant’s marks
are highly similar to the registrant’s mark. The examining
attorney also argues that “fiber optic apparatus and
integrated circuits and software therefore can be found in
the same channels of trade.” Brief at 7.
Applicant submits that its marks and the registrant’s
mark “are dissimilar in commercial impression, appearance
and connotation.” Brief at 3. Regarding the goods,
applicant maintains that registrant’s fiber optic
components “are known for promulgating optical, not digital
signals… Registrant’s goods are associated with optical
signals and Applicant’s goods are associated with
electrical digital data and for at least that reason the
goods are dissimilar and unrelated.” Brief at 5.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
5 In view of their common questions of law and fact, we have
consolidated these two cases for purposes of final decision and
are issuing this single opinion. References to the record are to
the ‘479 application.
Ser Nos. 76223479 and 762223480
4
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he 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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We first look at the similarities or dissimilarities
of the marks. Regarding the typed marks, IPITEC and
IPITEK, the only difference is the last letter, which are
the phonetically similar letters, “C” and “K.” Therefore,
these marks would be pronounced identically. Concerning
the appearance of the marks, the slight difference in the
last letter of the marks would hardly be significant.
“Side by side comparison is not the test.” Grandpa Pigeon’s
of Missouri, Inc. Borgsmiller, 477 F.2d 586, 177 USPQ 573,
574 (CCPA 1973). Considering “the fallibility of memory
over a period of time and the fact that purchasers normally
retain a general rather than a specific recollection of
trademarks” (Roffler Industries, Inc. v. KMS Research
Laboratories, 213 USPQ 258, 263 (TTAB 1982)) customers will
not likely remember the differences in the marks because of
these final, phonetically similar letters. Regarding
Ser Nos. 76223479 and 762223480
5
applicant’s ‘479 mark, which is shown in stylized format,
no difference can be asserted with the stylization of the
registered mark. Squirtco v. Tomy Corp., 697 F.2d 1038,
1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (“[T]he argument
concerning a difference in type style is not viable where
one party asserts rights in no particular display”). In
addition, the stylization of applicant’s mark would not
overcome the strong similarities in the marks due to the
arbitrary letter string IPITE.
We also cannot agree with applicant that the slight
differences between “-tec” and “-tek” create different
meanings. Brief at 4 (The “ending ‘TEK’ in the
registrant’s mark IPITEK does not carry the same
connotation as ‘TEC,’ as it is without meaning and
nonsensical. Thus, a different connotation is associated
with each of the marks”). The use of the phonetically
similar last letters would hardly create a different
meaning nor would the element “TEK” in registrant’s mark be
considered “nonsensical.”
We must also consider the well-established principle
of our trademark law that confusion is more likely
between arbitrarily arranged letters than between
other types of marks. This principle was set forth
fifty years ago in the decision of the Court of
Customs and Patent Appeals in Crystal Corp. v.
Manhattan Chemical Manufacturing Co., 75 F.2d 506, 25
USPQ 5, 6, (1935) wherein the following reasoning was
Ser Nos. 76223479 and 762223480
6
applied in holding Z.B.T. likely to be confused with
T.Z.L.B. for talcum powder.
We think that it is well known that it is more
difficult to remember a series of arbitrarily
arranged letters than it is to remember figures,
syllables, words, or phrases. The difficulty of
remembering such lettered marks makes confusion
between such marks, when similar, more likely.
Edison Brothers Stores, Inc. v. Brutting E.B. Sport-
International GmbH, 230 USPQ 530, 533 (TTAB 1986).
Therefore, we conclude the discussion of this factor
by finding that applicant’s marks and the cited
registration are very similar in sound, appearance,
meaning, and commercial impressions.
Next, we look at the goods of applicant and registrant
to determine if there is a relationship between them. We
must consider the goods as they are described in the
identification of goods in the application and
registration. Octocom Systems, Inc. v. Houston Computers
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“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 the sales of goods are directed”). The cited
Ser Nos. 76223479 and 762223480
7
registration contains no limitations so we must assume that
registrant’s fiber-optic data links, sensors and
transmission apparatus travel through all normal channels
of trade. Schieffelin & Co. v. Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since there are
no restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade for those alcoholic beverages”).
Furthermore, it is not necessary for the examining
attorney to show that the registrant and applicant are
competitors.
[G]oods or services need not be identical or
even competitive in order to support a finding of
likelihood of confusion. Rather, it is enough that
goods or services are related in some manner or that
circumstances surrounding their marketing are such
that they would be likely to be seen by the same
persons under circumstances which could 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 each parties'
goods or services.
In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Applicant’s goods are integrated circuit chips, namely
digital signal processors, and computer software, namely
compilers, debuggers, simulators, and assembler optimizers
to support digital signal processor operations.
Ser Nos. 76223479 and 762223480
8
Registrant’s goods are fiber-optic data links, sensors, and
transmission apparatus. The question is not whether the
goods are identical or even used together but whether
prospective purchasers would assume that the goods of
applicant and registrant come from the same source.
We start our analysis of the relatedness of the goods
by observing, as the excerpts from the record show, that
integrated circuits are, of course, used with fiber optic
technology.
Agilent’s leading-edge optoelectronic, mixed-signal,
and digital integrated circuit technologies form key
building blocks for high speed wired and mobile
networks. Agilent is a leading supplier of CMOS
sensors for digital imaging, RF and microwave
semiconductors, infrared wireless and high performance
fiber optic transceivers…
www.agilent.com.
TriQuint Semiconductor, Inc. (NASDAQ: TQNT) is a
leading worldwide supplier of a broad range of high
performance communications integrated circuits.
TriQuints products span the RF and millimeter wave
frequency ranges and employ analog and mixed signal
circuit designs. They are used in fiber optics,
telecommunications, wireless communications, and
aerospace systems.
www.triquint.com.
NurLogic Design, Inc., a developer of high band
connectivity solutions, today announced the successful
delivery of its first parallel integrated circuit (IC)
chipset for the high end communications industry…
This chipset is the first NurLogic’s roadmap of
developing parallel fiber optic networking solutions,
including transmitters and receivers and physical
(PHY) layer devices.
www.nurlogic.com.
Ser Nos. 76223479 and 762223480
9
Several registrations also suggest that integrated
circuits and/or signal processors and fiber optic
technology may originate from the same source. See
Registration No. 2,076,848 (integrated circuits and fiber
optic cable and fiber optic connectors); Registration No.
2,240,396 (signal processors and fiber optic cables); and
Registration No. 2,306,528 (signal processors and fiber
optic transmission products). See In re Mucky Duck Mustard
Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although third-
party registrations “are not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, [they] may have some probative value
to the extent that they may serve to suggest that such
goods or services are the type which may emanate from a
single source”). See also In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1786 (TTAB 1993).
Applicant’s argument that “Registrant’s goods are
associated with optical signals and Applicant’s goods are
associated with electrical digital data and for at least
that reason the goods are dissimilar and unrelated” (Reply
Brief at 6) is undercut by the evidence of record that
shows that optical and digital technology is associated
with the same source.
Ser Nos. 76223479 and 762223480
10
Marvell (NASDAQ: MRVL), a technology leader in the
development of broadband mixed-signal and digital
signal processing technology solutions, announced
today that it has become the first integrated circuit
communications solutions provider to bridge fiber
optic and copper networks with the introduction of the
world’s smallest factor Gigabit Ethernet over wire
transceiver… -[T]he latest product to be introduced in
Marvell’s Alaska transceiver family -breaks new ground
and creates an industry first by allowing the linkage
of high-speed fiber optic networks with existing
copper networks….
www.marvell.com.
Lucent Technologies (NYSE: LU) Microelectronics Group,
the world’s leading communications semiconductor
business, today announced three new integrated
circuits (ICs) that transmit data in high-speed fiber-
optic network communications systems… The LG1627BXC
clocked laser driver is used with direct modulated
laser diodes in digital transmissions systems and
includes differential data and clock inputs.
www.agere.com.
These articles indicate that the source of fiber optic
products and products involving digital signals are not
mutually exclusive. See also Registration No. 2,486,294
(digital signal processors, integrated circuits, fiber
optic cables, and fiber optic connectors). In response to
these articles, applicant admits that “integrated circuit
chips may be used in conjunction with fiber optic network
communications.” Brief at 15. Despite applicant’s attempt
to minimize the relatedness of these goods,6 it is clear
6 Applicant does argue that the chips are outside of or ancillary
to the fiber optic components and the evidence fails to show
“that a specific type of integrated circuit chip and software,
namely, the digital signal processor and corresponding software
as identified by Applicant, travel in the same channel of trade
Ser Nos. 76223479 and 762223480
11
that applicant’s and registrant’s goods are not dissimilar.
The evidence certainly suggests that the distinction that
applicant argues between fiber optic data links, sensors,
and transmission apparatus and digital signal processors is
overstated. We also note that applicant offers nothing
other than argument of counsel to rebut the examining
attorney’s evidence of the relatedness of the goods. We
are left to conclude that registrant’s fiber optic goods
and applicant’s digital signal processors and other goods
could be used together and the channels of trade would be
similar. Therefore, we find that they are related.
Applicant argues that “customers and users of such
products would be knowledgeable and sophisticated
purchasers who would exercise a high degree of deliberation
in their product selections.” Reply Brief at 12. However,
“[h]uman 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). When virtually
identical marks, IPITEC and IPITEK, are used on the
as fiber optic components.” Brief at 15. As discussed
previously, goods do not have to be identical or interchangeable
for them to be considered related for likelihood of confusion
purposes.
Ser Nos. 76223479 and 762223480
12
identified goods, even sophisticated purchasers would
likely be confused. In re Total Quality Group Inc., 51
USPQ2d 1474, 1477 (TTAB 1999) (“[E]ven careful purchasers
are not immune from source confusion”). See also In re
Hester Industries, Inc., 231 USPQ 881, 883 (TTAB 1986)
(“While we do not doubt that these institutional purchasing
agents are for the most part sophisticated buyers, even
sophisticated purchasers are not immune from confusion as
to source where, as here, substantially identical marks are
applied to related products”).
When we consider the marks and the goods in this case,
we conclude that the typed marks are virtually the same
except for the phonetically similar, “C” and “K.” We also
determine that the goods are related. If applicant were to
use its marks on the identified goods, we find that
confusion would be likely. To the extent that we have
doubts, we resolve them, as we must, in favor of the prior
registrant and against the newcomer. In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973); In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988).
Decision: The examining attorney’s refusals to
register applicant’s marks IPITEC, in typed and stylized
Ser Nos. 76223479 and 762223480
13
form, for the identified goods because of a prior
registration for the mark IPITEK on the ground that they
are likely to cause confusion are affirmed.