Boardtown Corp.

Trademark Trial and Appeal Board

Aug 21, 2003

No. 76224169 (T.T.A.B. Aug. 21, 2003)

Mailed: August 21, 2003
Paper No. 12
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Boardtown Corporation
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Serial No. 76/224,169
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Frederick L. Cooper, III of Buker, Jones & Haley, P.C. for
Boardtown Corporation.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Hohein, Chapman, and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Boardtown Corporation (a Mississippi corporation)
filed an application on March 14, 2001, to register on the
Principal Register the mark WOMBAT HELP DESK SYSTEM
for goods amended to read as follows: “computer software
programs sold through direct sales channels for use in the
field of technical support and help desk management,
namely, providing problem ticket tracking, searchable
knowledge base, contact management, and sales lead
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76/224169
2
tracking” in International Class 9. The application is
based on applicant’s assertion of its bona fide intention
to use the mark in commerce on the identified goods.
Applicant disclaimed the words “help desk system.”
Registration has been refused under Section 2(d) of
the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to its identified goods, so
resembles the registered mark shown below
for “software in the field of providing multiple-user
access to a global computer information network, and
software for interfaces, search engines, E-mail, modem and
system requirements” in International Class 9,1 as to be
likely to cause confusion, mistake or deception.
When the refusal was made final, applicant appealed.
Briefs have been filed, but applicant did not request an
oral hearing.
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court in
1 Registration No. 2,073,962 issued June 24, 1997. See Section
8(c)(1) of the Trademark Act, 15 U.S.C. §1058(c)(1).
Ser. No. 76/224169
3
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, however,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
Turning first to a consideration of the involved
marks, it is well settled that marks must be considered in
their entireties as to the similarities and dissimilarities
thereof. However, our primary reviewing court has held
that in articulating reasons for reaching a conclusion on
the question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature or
portion of a mark. That is, one feature of a mark may have
more significance than another. See Cunningham v. Laser
Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845 (Fed. Cir.
2000); Sweats Fashions Inc. v. Pannill Knitting Co., 833
F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In re
Ser. No. 76/224169
4
National Data Corporation, 753 F.2d 1056, 224 USPQ 749, 752
(Fed. Cir. 1985).
In this case, both applicant’s mark and registrant’s
mark share the term WOMBAT. It is the dominant feature of
both the cited registrant’s mark, and applicant’s mark.
The addition of the highly descriptive words “help desk
system” as applied to applicant’s computer software
programs relating to help desk management, does not detract
from the dominance of the word WOMBAT in the commercial
impression created by applicant’s mark, and does not serve
to distinguish applicant’s mark from the cited registered
mark. Likewise, the presence of the word “NET,” which
generally connotes the Internet or a network of computers,
does not detract from the dominance of the word WOMBAT in
the commercial impression created by registrant’s mark, and
does not serve to distinguish registrant’s mark from
applicant’s mark. In addition, the pictorial
representation of a “wombat” emphasizes the dominance of
the term WOMBAT in registrant’s mark. While applicant’s
mark includes the words “help desk system” and registrant’s
mark includes the word “net,” we nonetheless find these
marks are similar in sound and appearance.
There is nothing in the record to show that the term
“WOMBAT” is anything other than arbitrary in relation to
Ser. No. 76/224169
5
the involved goods.2 Given the arbitrary nature of the term
with respect to both applicant’s and registrant’s goods,
and the dominance that the term has in both marks, it not
only connotes essentially the same thing for both
applicant’s and registrant’s goods, but the marks create a
very similar overall commercial impression.
As explained earlier, the differences in the marks do
not serve to distinguish the marks here in issue. That is,
purchasers are unlikely to remember the specific
differences between the marks, focusing more on the word
WOMBAT (and the picture of a wombat), due to the
recollection of the average purchaser, who normally retains
a general, rather than a specific, impression of the many
trademarks encountered. Purchasers seeing the marks at
separate times may not recall these differences between the
marks. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
2 The Examining Attorney pointed out that “wombat” identifies “an
Australian animal.” (See, brief, unnumbered page 3, and Final
Office action, p. 2). We take judicial notice of The American
Heritage Dictionary of the English Language (4th ed. 2000)
definition of “wombat” as “n. Any of several stocky burrowing
Australian marsupials of the family Vombatidae, somewhat
resembling a small bear and feeding mainly on grass, leaves and
roots.” See TBMP §704.12(a) (2d ed. June 2003), and cases cited
therein.
Ser. No. 76/224169
6
We find that applicant’s mark WOMBAT HELP DESK SYSTEM
and registrant’s mark “WombatNet” and design of a wombat,
when considered in their entireties, are somewhat similar
in appearance and in sound, and very similar in
connotation. The overall commercial impression of each
mark is of an animal, arbitrary in relation to the goods,
as each mark begins with the word “wombat” and the design
element in registrant’s mark reinforces this impression.
See In re Azteca Restaurant Enterprises Inc., 50 USPQ2d
1209 (TTAB 1999).
Turning to the similarities/dissimilarities and the
nature of the involved goods, the Board must determine the
issue of likelihood of confusion on the basis of the goods
and/or services as identified in the application and the
registration, and in the absence of any specific
limitations therein, on the basis of all normal and usual
channels of trade and methods of distribution for such
goods. See Octocom Systems Inc. v. Houston Computer
Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1990); Canadian Imperial Bank of Commerce, National
Association v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); and Squirtco v. Tomy Corp., 697 F.2d
1034, 216 USPQ 937 (Fed. Cir. 1983).
Ser. No. 76/224169
7
Further, it is well settled that goods or services
need not be identical or even competitive to support a
finding of likelihood of confusion, it being sufficient
instead that the goods or services are related in some
manner or that the circumstances surrounding their
marketing are such that they would likely be encountered by
the same persons under circumstances that could give rise
to the mistaken belief that they emanate from or are
associated with the same source. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); and In re Opus One Inc., 60 USPQ2d 1812 (TTAB
2001).
In support of his position that these goods are
related, the Examining Attorney submitted copies of some
third-party registrations, based on use in commerce, to
show that applicant’s help desk functions for its software,
and registrant’s software for interfaces, E-mail and modem
system requirements are offered under the same mark. (See,
for example, Registration No. 2,535,011 for “computer
software using artificial intelligence for use in managing
help-desk functions, namely, for use in maintaining help-
desk logs, for use in processing and tracking third party
e-mail inquiries...”; Registration No. 2,026,546 for, inter
alia, “computer software for use in the fields of asset
Ser. No. 76/224169
8
management, help desk support, technical support, ...
inventory management, network management, office
automation, scheduling, project management, E-mail,
telephone inquiries and linkage, information and database
retrieval, sales force and contact management, ...”; and
Registration No. 1,952,553 for “computer software for use
in the fields of information and database retrieval, asset
management, help desk support, technical support, ...
inventory management, network management, office
automation, scheduling, project management, E-mail, ...
information and database retrieval, sales force and contact
management ....”)
When considering the third-party registrations
submitted by the Examining Attorney, it is settled that
third-party registrations are not evidence of commercial
use of the marks shown therein, or that the public is
familiar with them. Nonetheless, third-party registrations
which individually cover a number of different items and
which are based on use in commerce have some probative
value to the extent they suggest that the listed goods
emanate from a single source. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and In re Mucky
Duck Mustard Co., Inc., 6 USPQ2d 1467, footnote 6 (TTAB
1988).
Ser. No. 76/224169
9
The Examining Attorney also submitted evidence in the
form of several pages from various Internet web sites
showing that manufacturers and distributors of software
provide software which performs various functions,
including those such as the e-mail and modem interface
requirements in registrant’s identified goods as well as
the technical support and help desk management in
applicant’s identified goods. See, for example, the
following:
“Project Insight—Project Management
Software: ... MS Project Integration,
MS Office Integration, Auto-Alerts,
Email Notifications...” www.project-
management-software.org;
“Autotask Better Manage People,
Projects, Time & Costs Introducing
AutotaskPSA 100% Web-based PSA
[Professional Services Automation]
Software Solution Features ... Project
Management ... Attendance Tracking ...
HelpDesk/Service Desk ...”
www.autotask.com;
Tarka – The Integrated ISP [Internet
Service Providers] Management Software
for ISPs ... Tarka integrates your
email, web, authentication and access
servers to provide a single point of
administration for your entire network.
... manages the following common ISP
services: Dial-in accounts... Mail
accounts, including mailboxes, aliases,
and virtual domain accounts, ...
Tracking of usage and statistics...
Billing by e-mail... www.netcraft.com;
and
Ser. No. 76/224169
10
Blue Ocean Software A Division of
INTUIT Blue Ocean Software Delivers
Track-It!5.0 ... New features include
increased scalability, expanded asset
management functionality, added
reporting capability, and enhanced
security.
...
“Track-It! Is the world’s most widely
used asset management and help desk
solution... www.blueocean.com.
Based on this record, we find that the Examining
Attorney has presented a prima facie case that the
respective goods are related within the meaning of Section
2(d) the Trademark Act, as interpreted by the Courts and
the Board.
Regarding the channels of trade/purchasers/conditions
of sale du Pont factors, applicant strongly urges that the
Examining Attorney erred by “failing to properly consider
the respective channels of trade and standard of care
regarding the purchasing decision.” (Applicant’s brief,
p.3.) Specifically, applicant acknowledges that the
channels of trade are not limited in the registration, but
applicant contends that the Examining Attorney did not
address the facts set forth in the July 2001 declaration of
applicant’s president, William Ford. Mr. Ford avers that
applicant’s goods are designed for use by Internet service
providers and other professional service providers, and are
not marketed to the general public; that its goods are sold
Ser. No. 76/224169
11
solely through applicant’s direct sales force; that
applicant’s goods are “relatively expensive, ranging in
price from approximately $3000 to $10,000 at the present
time” (paragraph 4); that its goods are marketed to
sophisticated purchasers acting on behalf of customers who
purchase with great care and only after careful
examination; and that applicant’s sales cycle takes about
30-60 days involving substantial negations culminating, if
successful, in a contract as required by applicant.
Applicant then argues as follows (applicant’s brief,
p. 6):
In summary, despite the fact that the
respective parties sell products within
the same broad field, and even to the
same customers, and further that some
of the functionality of some of the
components of the respective products
is similar, such facts do not, by
themselves establish relatedness,
similarity of trade channels or overlap
of customers. Other factors, such as
the respective channels of trade, the
relatively high standard of care
exercised by purchasers, and the
limitation on Applicant’s relevant
market dictated by Applicant’s product
design features, should also be given
the weight required by law in order to
give proper consideration to the
practicalities of the commercial world,
and not to mere theoretical
possibilities of confusion, or mistake,
or with de minimus situations.
Accordingly, if the factors indicated
in Applicant’s Declaration are given
proper consideration and weight, when
Ser. No. 76/224169
12
coupled with Applicant’s direct
channels limitation, there should be no
likelihood of confusion with the mark
cited by the Examiner.
(Emphasis in original.)
The Examining Attorney contends that both applicant’s
and registrant’s computer software programs could require
support services, personnel training and some degree of
customization in that while the cost of registrant’s goods
is not of record, those goods could be expensive or vary in
cost; and that registrant’s goods could also require
negotiations to create a software package compatible with
the customer’s needs. However, he maintains that there is
a likelihood of confusion as explained below (brief,
unnumbered page 6):
Finally, sophisticated customers or
purchasers, while knowledgeable in a
particular field, would not necessarily
mean that they are sophisticated or
knowledgeable in the field of
trademarks, particularly where the
computer software is in a related
field, marketed under similar marks,
each having the identical arbitrary
wording as the major or most notable
component of each mark.
We first note that applicant’s identification of goods
is specifically limited by the language “sold through
direct sales channels,” but it is not otherwise restricted.
Registrant’s goods, as identified, are broadly worded and
the identification is not restricted as to either trade
Ser. No. 76/224169
13
channels or purchasers. Thus, registrant’s goods may be
sold through all the normal trade channels and to all the
usual classes of consumers for such goods. See Octocom
Systems Inc. v. Houston Computer Services, Inc., supra;
Canadian Imperial Bank of Commerce, National Association v.
Wells Fargo Bank, supra; and In re Smith and Mehaffey, 31
USPQ2d 1531 (TTAB 1994).
While we agree that the purchase of the involved
computer software would be made after careful
consideration, nonetheless, we find that, this factor does
not negate a finding of likelihood of confusion. Even
assuming the purchasers and/or users of these goods are
sophisticated, this does not mean that such consumers are
immune from confusion as to the origin of the respective
goods, especially when sold under very similar marks. See
Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 132
USPQ 289 (CCPA 1962); In re Total Quality Group Inc., 51
USPQ2d 1474 (TTAB 1999); and In re Decombe, 9 USPQ2d 1812
(TTAB 1988). That is, even relatively sophisticated
purchasers and users of these computers software programs
could believe that these goods come from the same source,
if offered under the involved substantially similar and
arbitrary marks. See Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
Ser. No. 76/224169
14
1990); and Aries Systems Corp. v. World Book Inc., 23
USPQ2d 1742, footnote 17 (TTAB 1992).
In this case, applicant’s goods and those of
registrant could be encountered by consumers in
circumstances that would give rise to the belief that both
parties’ goods come from or are associated with the same
source. For example, consumers might consider the WOMBAT
HELP DESK SYSTEM products of applicant to be additions to
the product line of registrant, who already sells computer
software for multiple-user access to the Internet and for,
inter alia, interfaces, E-mail and modem and system
requirements under a mark which includes the arbitrary word
WOMBAT, as well as the pictorial representation of a
wombat. See Dan Robbins & Associates, Inc. v. Questor
Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979).
Finally, to the extent we have any doubt on the
question of likelihood of confusion, it must be resolved
against applicant as the newcomer, because the newcomer has
the opportunity to avoid confusion and is obligated to do
so. See TBC Corp. v. Holsa Inc., 126 F.3d 1470, 44 USPQ2d
1315 (Fed. Cir. 1997); and In re Hyper Shoppes (Ohio) Inc.,
837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.