AXALTO S.A.

Trademark Trial and Appeal Board

Aug 14, 2008

No. 78724979 (T.T.A.B. Aug. 14, 2008)

Mailed:
August 14, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re AXALTO S.A.
________

Serial No. 78724979
_______

Edward W. Weisz of Cohen, Pontani, Lieberman & Pavane for
AXALTO, S.A.

Ahsen Khan, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).1
_______

Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

AXALTO, S.A. (applicant) has filed an application to
register the mark PROTIVA in standard characters for goods
identified as “multi-factor authentication apparatus for
logical access consisting primarily of encoded smart cards,
digitally encoded tokens, and authentication software” in

1 Two Examining Attorneys other than the one currently assigned
handled this application prior to appeal.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78724979
2
International Class 9.2
The Examining Attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion with Registration No. 2296799 for
the mark PROTEVA in standard characters for goods
identified as “electrical and scientific apparatus,
specifically computers” in International Class 9. The
registration issued on November 30, 1999, and it is active.
Applicant and the Examining Attorney have filed
briefs. We affirm.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” The opinion in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1977) sets forth the factors to consider in
determining likelihood of confusion. Here, as is often the
case, the crucial factors are the similarity of the marks
and the similarity of the goods of applicant and

2 Application Serial No. 78724979, filed October 3, 2005, based
on a statement of applicant’s bona fide intention to use the mark
in commerce under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b), and based on a foreign registration under Trademark
Act Section 44(e), 15 U.S.C. § 1126(e), and also claiming
priority under Trademark Act Section 44(d), 15 U.S.C. § 1126(d),
based on a foreign application filed on September 19, 2005.
Serial No. 78724979
3
registrant. 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 and differences in the
marks.”). We will consider each of the factors as to which
applicant or the Examining Attorney presented arguments or
evidence.
As to the marks, in comparing the marks we must
consider the appearance, sound, connotation and commercial
impression of the marks at issue. Palm Bay Imports Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant says very little about the marks other than
arguing that, “the Examiner only analyzed the supposed
similarity in sound in concluding that the marks are
similar.” Applicant’s Brief at 2.
The Examining Attorney argues that the marks are
“nearly identical in sound and appearance with the only
difference being that applicant’s mark is spelled with an
‘i’ and registrant’s mark is spelled with an ‘e.’”
Examining Attorney’s Brief at 5. The Examining Attorney
also argues that the marks create a similar commercial
impression.
Serial No. 78724979
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We conclude that the marks are highly similar. As the
Examining Attorney argues, they differ by only one letter,
and that difference is not significant. The differing
letters in question, “i” and “e,” are both vowels with
similar sounds. The differing letters also appear in the
middle of the marks, which are otherwise identical. Thus,
the marks are highly similar in both appearance and sound.
Also, both marks appear to be coined terms with no meaning.
There is no obvious connotation or commercial impression.
However, due to the high degree of similarity in appearance
and sound, to the extent that the marks may project a
connotation or commercial impression, we conclude that it
too would be highly similar. Overall, the difference
between the marks is subtle, if not imperceptible.
Furthermore, as the Examining Attorney points out, the
proper test for similarity is not a side-by-side
comparison. Rather, purchasers rely on their imperfect
recollection of marks. In re 1st USA Realty Professionals
Inc., 84 USPQ2d 1581, 1587 (TTAB 2007).
Accordingly, we conclude that PROTIVA and PROTEVA are
highly similar.
As to the goods, the goods of applicant and the
registrant need not be identical to find likelihood of
confusion under Section 2(d). They need only be related in
Serial No. 78724979
5
such a way that the circumstances surrounding their
marketing would result in relevant purchasers mistakenly
believing that the goods originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Furthermore, in comparing the goods and the channels
of trade we must consider the goods as identified in the
application and registration. See 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.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”).
Applicant identifies its goods as “multi-factor
authentication apparatus for logical access consisting
primarily of encoded smart cards, digitally encoded tokens,
Serial No. 78724979
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and authentication software” in International Class 9. The
goods in the cited registration are identified as
“electrical and scientific apparatus, specifically
computers” in International Class 9.
Here also, applicant offers limited argument.
Applicant appears to argue that the Examining Attorney
found the goods related merely because the goods are in the
same class or because the goods are “in the same broad
field.” Applicant’s Brief at 5. Applicant also argues,
“Applicant’s goods (i.e., smart cards) are marketed toward
and purchased by highly sophisticated customers. In
contrast registrant’s goods (i.e., computers) are marketed
towards the general public.” Id. (We will address
applicant’s sophisticated-purchaser argument, also
referenced here, separately below.)
The Examining Attorney argues that the respective
goods are highly related because the identification of
goods in the cited registration is broad enough to include
applicant’s goods and because the respective goods would be
used together. The Examining Attorney has provided
substantial evidence in support of the position that the
respective goods are overlapping, and closely related.
First, applicant assumes that the goods identified in
the cited registration are narrow in scope, that is, that
Serial No. 78724979
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“computers” would only be sold to the general public. The
Merriam-Webster’s Collegiate Dictionary (11th ed. 2003)
defines “computer,” in relevant part, as “a programmable
usu. electronic device that can store, retrieve and process
data.”3 There is nothing in this definition, nor in the
identification of goods, which would limit the sales of
“computers” to the general public. In fact, “computer,” as
defined here, and as generally understood, is an extremely
broad term encompassing a wide range of devices which could
be sold to a wide range of potential purchasers.
The Examining Attorney has provided voluminous
evidence regarding “smart cards,” the item of goods
applicant emphasizes in its brief. That evidence shows (1)
that “smart cards” falls within the definition of a
“computer,” (2) that “smart cards” and the other
authentication apparatus applicant identifies may be
incorporated into a “computer” and (3) that “smart cards”
and the other authentication apparatus applicant identifies
are also used with and complementary to “computers.”
Excerpts from applicant’s own website show that
applicant itself markets the identified goods, along with

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Serial No. 78724979
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“computers,” such as, card readers, for use in connection
with computer systems for businesses, such as, financial
institutions. Attachment to June 8, 2007 Office Action.
An excerpt from google.com explains what a “smart
card” is:
We’ll focus on two types of smart cards: memory
smart cards, which can be viewed as miniscule
removable read/write discs with optional
security; and processor cards, which can be
viewed as miniature computers with an input and
output port.

Id.
An excerpt from google.com states:
A Smart Card is a plastic card the size of a
credit card with an integrated circuit built into
it. The integrated circuit may consist of EEPROM
in the case of a memory card or it may also
contain ROM, RAM and even a CPU… Smart cards
include a microchip as the central processing
unit, random access memory (RAM) and data storage
of around 10MB… A smart card is a mini-computer
without the display screen and keyboard. Smart
cards contain a microchip with an integrated
circuit capable of processing and storing
thousands of bytes of electronic data. Due to
the portability and size of smart cards, they are
seen as the next generation of data exchange.

Id.
Another excerpt from mips.com includes an article
entitled, “Smart Card: The Computer in Your Wallet.” Id.
An excerpt from nist.gov, a site connected with the
Federal National Institute of Standards and Technology
includes the following:
Serial No. 78724979
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Q. What is a smart card?

A. A smart card is typically a “credit card”
sized form factor with a small-embedded computer
chip. The card-computer can be programmed to
perform tasks and store information. There are
different types of smart cards, memory cards,
processor cards, electronic purse cards, security
cards, and JavaCards. A smart card that has a
processor is inserted into a smart card reader
(commonly called a card terminal) and is
available for use. The software wishing to
communicate with the reader needs to send some
commands to manage the reader, things like power
up and transfer command to card. The commands
sent to cards can be custom, but we prefer to use
the standard ISO7816 Specifications, which define
command formats in great detail. Many different
types of readers exist and soon we hope to see
them shipped as standard equipment on PCs.
…

Q. Why are smart cards always associated with
security?

A. One of the fundamental problems in securing
computer systems is the need for tamper-resistant
storage of keys. Smart cards provide this
functionality as well as the ability to upgrade
and/or replace a security solution when it
becomes compromised. For example, there are
millions of digital satellite systems that are
smart-card enabled, and when some enterprising
hackers crack the security, the millions of DSS
units need not be replaced, we can just mail out
new cards. With JavaCard it gets even better in
that we just send new cardlets [JavaCard
application] to everyone.

Id.
An excerpt from howstuffworks.com states, “Smart cards
can be used with a smart-card reader attachment to a
Serial No. 78724979
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personal computer to authenticate a user.” Attachment to
June 8, 2007 Office Action.
The Examining Attorney has also provided third-party
registrations to show that the respective goods are
related.
For example:
Registration No. 2145060 for the mark SECURITY
FOR A CONNECTED WORLD for goods identified as:

computer hardware and software, namely,
smartcards to store information in electronic
format; card readers; and computer software in
the field of network I&A (identification and
authentication) for outside access to the
network, data encryption and decryption,
identification of persons by stored images
recorded on smartcards, password protection for
access to networks, computer programs and
computer files, and security for communications
between network users and public networks such as
the global communications network; and computer
systems comprising such cards, such card readers,
and computers loaded with such computer software;
computer systems comprising smartcards to store
information in electronic format; card readers;
and computers loaded with computer software in
the field of network I&A (identification and
authentication) for outside access to the
network, data encryption and decryption,
identification of persons by stored images
recorded on smartcards, password protection for
access to networks, computer programs and
computer files, and security for communications
between network users and public networks such as
the global computer network; computer hardware
and software for use as a global computer network
firewall that is used to protect user access from
an untrusted network to a trusted network, using
integrated authentication tokens for a
challenge/response logon as well as encryption
for files on desktop and laptop computers;
Serial No. 78724979
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smartcards to store information in electronic
format; card readers; and computer software in
the field of network I&A (identification and
authentication) for outside access to the
network, data encryption and decryption,
identification of persons by stored images
recorded on smartcards, password protection for
access to networks, computer programs and
computer files, and security for communications
between network users and public networks such as
the global communications network; a computer
system that incorporates a smartcard, a smartcard
reader and the software to insure the security of
businesses, employees and computer networks, and
to provide network security and access control, a
data repository for emergency medical information
and personnel data, systems integrity, and
identification with digital photo images and
fingerprints encoded in the smartcard;

Registration No. 2484541 for the mark SAFENET for
goods identified as:

Products that provide secure communication on
global computer communication networks and local
are networks, namely computer hardware for use
with encryption, user verification and
authentication, local area networks, firewall
applications; electronic encryption units;
encoded smart cards containing programming used
to generate and verify user passwords; data
encryption computer software; local area computer
network monitoring software, and computer
peripherals, namely modems and routers; computer
software in the field of security firewall for
computers and computer users;

and
Registration No. 2717912 for the mark SMART@IO
for goods identified as:

desktop personal computers; notebook personal
computers, portable personal computers; cellular
telephones; personal digital assistants; handheld
personal computers; input/output controllers,
namely, electronic controllers, computer cursor
Serial No. 78724979
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controller devices, namely, computer mouse; media
readers, namely bar code readers, magnetic
encoded card readers; smart card readers; smart
card controllers for controlling smart card
interface with computers; personal computer
peripherals, namely, reader support smart cards
containing programming used for interfacing with
computers; secure digital computer memory; multi-
media cards, namely blank smart cards or
magnetically encoded smart cards; compact flash
readers for reading smart cards; universal serial
bus including ports, modems, and adapters; serial
ports; parallel port interfaces.

These registrations are representative of many more
which the Examining Attorney has made of record. These
registrations, and the others submitted by the Examining
Attorney, suggest that the respective goods are of a type
which may emanate from the same source. In re TSI Brands
Inc., 67 USPQ2d 1657, 1659 (TTAB 2002); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
In fact, in this case, as we stated above, the totality of
the evidence, including the third-party registration, show
(1) that “smart cards” falls within the definition of a
“computer,” (2) that “smart cards” and the other
authentication apparatus applicant identifies may be
incorporated into a “computer” and (3) that “smart cards”
and the other authentication apparatus applicant identifies
are also used with and complementary to “computers.”
Serial No. 78724979
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Accordingly, we conclude that the respective goods are
closely related, if not identical, and that the channels of
trade for the respective goods are overlapping.
Applicant argues most strenuously that there would not
be a likelihood of confusion here because the purchasers of
its goods are sophisticated. Applicant argues that the
Examining Attorney has not given proper weight to this
factor. Applicant states:
The personnel making the decision to purchase
smart cards are educated, sophisticated
purchasers with a high level of technical
expertise in smart cards and in the computer
equipment in which the smart cards will be
implemented. Such purchasers need to know the
technical requirements for the security systems
they are designing. This requires knowledge of
the computer system and the smart cards. Thus,
such purchasers would be expected to exercise a
great deal of care in selecting smart cards and
would be able to differentiate between
applicant’s mark and registrant’s mark.

Applicant’s Brief at 4 (citation omitted). The Examining
Attorney disagrees and argues that purchaser sophistication
is not a controlling factor here.
First, we note that in the presentation of its
arguments as to this factor applicant explicitly
acknowledges that there is an integral relationship between
smart cards, on the one hand, and computers and computer
systems on the other. That is, they are used together.
While we do not have direct evidence that the purchasers of
Serial No. 78724979
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the smart cards and the other authentication equipment
identified in the application are sophisticated in all
instances, we will assume as applicant argues, that these
individuals would have significant relevant technical
expertise. However, we cannot consider this factor in
isolation; in this case the marks are highly similar and
the goods are closely related, if not identical.
Furthermore, even sophisticated individuals are not immune
from trademark confusion. In re Decombe, 9 USPQ2d 1812
(TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983). Therefore, after considering the totality of
the circumstances in this case, we conclude that the
sophistication of potential purchasers would not diminish
the likelihood of confusion.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s PROTIVA mark if
used in connection with “multi-factor authentication
apparatus for logical access consisting primarily of
encoded smart cards, digitally encoded tokens, and
authentication software” in International Class 9 and the
registered PROTEVA mark used in connection with “electrical
and scientific apparatus, specifically computers” in
International Class 9.
Serial No. 78724979
15
Decision: We affirm the refusal under Trademark Act
Section 2(d).