Calcium Software Limited

Trademark Trial and Appeal Board

Dec 12, 2006

No. 78377250re (T.T.A.B. Dec. 12, 2006)

Mailed:
December 12, 2006
AZ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Calcium Software Limited
________

Serial No. 78377250
_______

Request for Reconsideration
_______

Edward J. Chalfie of Ladas & Parry for Calcium Software
Limited.

Florentina Blandu, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Zervas, Kuhlke and Cataldo, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

On September 25, 2006, applicant filed a combined
request for reconsideration of our final decision mailed on
August 25, 2006, and request for suspension of proceedings.
In our final decision, we affirmed the examining attorney’s
refusal to register applicant's MAILPRIMER mark for
“[m]ultimedia messaging software; computer software for the
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser No. 78377250
2
writing, sending, storage, processing, control,
organization and/or management of email and other forms of
communication” under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), in view of the previously registered mark
PRIMER.
At p. 4 of the final decision, we stated “the
connotation and commercial impression of applicant's mark
taken as a whole is that applicant's PRIMER software is
intended to be used in connection with mail.” Applicant
has challenged this statement, and maintains that “[s]ince
applicant's mark is the unitary term MAILPRIMER, not
PRIMER, the Board’s error in identifying applicant's mark
as PRIMER will [sic] was prejudicial to applicant's rights
to [sic], denying it a fair opportunity to argue that the
two trademarks present significantly different commercial
impressions”; “the Board failed to give proper weight to
applicant's mark as a whole when comparing it to the mark
in the cited registration”; and “the Board erred in stating
that the similarities in meaning and commercial impression
outweigh the differences in the respective trademarks.”
Request for reconsideration at pp. 1 – 2.
The passage from our decision that applicant
challenges discusses the connotation and commercial
impression of applicant's mark in view of its two
Ser No. 78377250
3
components, MAIL and PRIMER, with MAIL at a minimum being a
descriptive term. Thus, the Board did not identify
applicant's mark as PRIMER; it identified the commercial
impression and meaning of the mark in view of the
descriptiveness, “at a minimum,” of the MAIL component of
the mark. Final decision at p. 4. Thus, we find no error
in the Board’s statement.
Further, applicant's contention that we did not give
proper weight to applicant's mark as a whole when comparing
applicant's mark to the cited mark is not well taken. At
p. 5 of our decision, we stated that “when the marks are
considered as a whole, the similarities in meaning and
commercial impression outweigh [the] differences”, and that
“the marks are more similar than dissimilar when considered
in their entireties.” Thus, we find no error in our
consideration of the marks.
Applicant also maintains that we erred in considering
the examining attorney’s evidence from the wwww.answyr.com
web site because the web site is not actually on
www.answyr.com; what actually occurs is that the user is
directed to another web site, i.e., www.globalgraphics.com,
and that “[t]here is no mention on that web page of the
trademark PRIMER, other than the page’s title ‘PDF viewer
for Palm, Pocket PC and Windows CE (Formerly Ansyr PDF
Ser No. 78377250
4
Primer).’” Applicant should have challenged the examining
attorney’s evidence at the time the examining attorney
submitted the evidence, not over a year after its
submission. By not objecting to the evidence at the time
of its submission, we consider applicant to have waived any
objection thereto. Further, applicant's submission of the
www.globalgraphics.com web page is entirely improper – the
Board will not consider new evidence submitted for the
first time with a request for reconsideration of a final
decision. The record on an appeal should be complete prior
to the filing of an appeal. Trademark Rule 2.142(d). See
also, TBMP § 1207.01 (2d ed. rev. 2004).
Applicant also contends that more than five years have
passed since the registration of the PRIMER mark on
September 25, 2001; and requests that “upon reconsideration
or re-opening of this ex parte appeal,” the Board suspend
proceedings pending the cancellation of the cited
registration. Applicant cites to TBMP § 1213 in support of
its request.
Because the fifth anniversary of the cited
registration did not occur until one month after we issued
our final opinion, it appears that applicant’s strategy in
filing its request for reconsideration – which, as
discussed above, is without merit – is to extend the
Ser No. 78377250
5
duration of this case so as to take advantage of Board
practice regarding requests for suspension of cases in
which the only issue is a Section 2(d) refusal, as
discussed in TBMP §1213 (2d ed. rev. 2004). Section 1213
makes clear, however, that the request for suspension must
be filed prior to the issuance of the final decision.
Because the final decision has been issued, we will not
grant applicant's request for suspension.
In view of the foregoing, opposer’s request for
reconsideration of the Board’s decision and its request for
suspension are denied, and the Board’s August 25, 2006
decision stands.
-o0o-