Celestica Int’l. Inc.v.CCC Mobile Oy.

Trademark Trial and Appeal Board

Dec 20, 2002

No. 91112405 (T.T.A.B. Dec. 20, 2002)

Hearing: Paper No. 27
November 12, 2002 EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
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Celestica International Inc. (substituted for Celestica
North America Inc.) v. CCC Mobile Oy.
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Opposition No. 112,405 to Application
Serial No. 75/255,206 filed March 10, 1997.
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David M. Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner for Celestica International Inc. (substituted for
Celestica North America Inc.).
Robert S. Weisbein of Darby & Darby for CCC Mobile Oy.
_____________
Before Hanak, Chapmann and Bottorff, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
CCC Mobile Oy (applicant) seeks to register in typed
drawing form CELESTA for “computer software for smart
phones, personal digital assistants and personal computers
to provide communications in digital cellular networks and
local data management features.” The intent-to-use
application was filed on March 10, 1997.
Opp. No. 112,405
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In its Notice of Opposition, Celestica North America
Inc. alleged that prior to March 10, 1997 it had used the
marks CELESTICA and CELESTICA and design in connection with
certain types of computer hardware and the custom
manufacture of certain types of computer hardware, and
further alleged that the contemporaneous use of CELESTA for
applicant’s goods and CELESTICA for opposer’s goods and
services is “likely to cause confusion, or to cause
mistake, or to deceive.” (Notice of Opposition paragraph
7). While in the Notice of Opposition opposer did not make
specific reference to Section 2(d) of the Trademark Act, it
is clear that this is the basis for the opposition.
Applicant filed an answer to the Notice of Opposition
which denied the pertinent allegations. In particular,
applicant denied the allegations of paragraph 7 of the
Notice of Opposition.
At the outset, we note that in footnote 1 of its
brief, Celestica North America Inc. requests that Celestica
International Inc. be substituted as the party plaintiff
because “opposer’s pleaded registrations and applications
were assigned from Celestica North America Inc. to
Celestica International Inc. and recorded before the
USPTO.” In its brief, applicant has not challenged this
request. Indeed, at page 1 of its brief, applicant
Opp. No. 112,405
3
identifies opposer as “Celestica International Inc.”
Accordingly, the opposer in this proceeding shall be deemed
Celestica International Inc.
Opposer and applicant filed briefs. Both were present
at a hearing held on November 12, 2002.
As the parties agree, the record in this case is quite
sparse. It consists of certified status and title copies
of four registrations owned by opposer for the marks
CELESTICA and CELESTICA and design. These were properly
made of record by means of a Notice of Reliance. (Opposer’s
brief page 4; Applicant’s brief page 1). The two
registrations for CELESTICA and design cover the identical
goods and services as do the two registrations for
CELESTICA per se. Because opposer’s mark CELESTICA and
design is more dissimilar from applicant’s mark CELESTA
than is opposer’s mark CELESTICA per se, we have elected to
disregard in our likelihood of confusion analysis the two
registrations for CELESTICA and design. Moreover, because
at the hearing held on November 12, 2002 the parties agreed
that the goods of opposer’s trademark registration for
CELESTICA were closer to the goods of applicant’s CELESTA
application than were the services of opposer’s CELESTICA
service mark registration, we have elected to disregard the
latter in our likelihood of confusion analysis.
Opp. No. 112,405
4
To cut to the quick, our likelihood of confusion
analysis will focus on a comparison of applicant’s mark
CELESTA in typed drawing form for “computer software for
smart phones, personal digital assistants and personal
computers to provide communications in digital cellular
networks and local data management features” vis-à-vis
opposer’s mark CELESTICA in typed drawing form for
“computer hardware, namely, circuit boards, memory cards
and power supplies.” Registration No. 2,162,279. Because
opposer has properly made of record a certified status and
title copy of this Registration No. 2,162,279, priority is
not an issue in this proceeding, it rests with opposer.
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).
As noted previously, the record in this case is
extremely sparse. Opposer merely made of record certified
status and title copies of its four registrations.
Applicant made of record no evidence. However, the sparse
nature of the record has made it more difficult for this
Board to determine whether there exists a likelihood of
confusion. Rather than having the benefit of testimony to
help explain the nature of opposer’s goods and applicant’s
goods as set forth in Registration No. 2,162,279 and the
application, this Board has been forced to resort to
Opp. No. 112,405
5
dictionary definitions of the terms contained in the
identifications of goods set forth in the registration and
application.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the marks and the similarities of the goods. 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.”).
Marks are compared in terms of visual appearance,
pronunciation and meaning (if any). In terms of visual
appearance, the two marks, when depicted in typed drawing
form, are extremely similar, almost to the point of being
nearly identical. Applicant’s mark CELESTA consists of the
first six letters and the final letter of opposer’s mark
CELESTICA. In our subjective judgment, a consumer familiar
with opposer’s mark CELESTICA, upon seeing applicant’s mark
CELESTA, could easily not notice the fact that the seventh
and eighth letters of “opposer’s” mark (i.e. the IC) were
missing and hence assume that he or she was viewing
opposer’s mark CELESTICA. This is particularly true when
one takes into account that marks are not compared on a
Opp. No. 112,405
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side by side basis. Rather, the test is whether a
consumer, having seen opposer’s mark and having retained
but a general recollection of it, would, upon seeing
applicant’s mark at a later time, assume that it is
opposer’s mark.
In terms of pronunciation, we find that the two marks
are again extremely similar even if applicant’s mark is
properly pronounced as having three syllables, and
opposer’s mark is properly pronounced as having four
syllables. Of course, it must be remembered that “there is
no correct pronunciation of a trademark.” In re Belgrade
Shoe Co., 411 F.2d 1352, 162 USPQ 227 (CCPA 1969). Again,
while this is a subjective judgment, it is our view that a
not insignificant number of consumers could “mispronounce”
one or both of the two marks such that the resulting
“mispronunciations” would be almost identical.
Finally, in terms of meaning or connotation, we find
that both marks lack any meaning to the vast majority of
relevant consumers, namely, purchasers of computer hardware
and software. In this regard we note that at page 8 of its
brief applicant states that “the term ‘celestica’ has no
meaning.” We also note that at page 8 of its brief
applicant states that “a celesta is a musical instrument.”
It is true that the word “celesta” is defined as follows:
Opp. No. 112,405
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“a musical instrument consisting principally of a set of
graduated steel plates struck with hammers that are
activated by a keyboard. [1895-1900].” Random House
Webster’s College Dictionary (2000). However, it appears
that a celesta is a rare if not archaic musical instrument.
Applicant has offered no evidence that would even suggest
that purchasers and users of computer hardware and software
would recognize the word “celesta” as referring to a
musical instrument.
Of course, the fact that both opposer’s mark CELESTICA
and applicant’s mark CELESTA lack any meaning does not
favor applicant’s position. Rather, if anything, it
slightly favors opposer’s position. Because both marks are
arbitrary to purchasers and users of computer hardware and
software, this means that these purchasers and users have
no way of distinguishing the two marks in terms of meaning.
Before leaving the issue of the meaning of the marks,
we wish to make it clear that we reject opposer’s
contention that the “marks convey the same meaning or
connotation.” (Opposer’s brief page 9). In this regard,
opposer argues without any evidentiary support that its
mark CELESTICA connotes the word “celestial.” Opposer then
notes that certain dictionaries, in defining the word
“celesta,” conclude their definition with the words “see
Opp. No. 112,405
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celestial.” Not only has opposer totally failed to provide
any evidentiary support that its mark CELESTICA connotes
the term “celestial,” but in addition, we have just found
that very few purchasers and users of computer hardware and
software would understand the word “celesta” to refer to a
musical instrument, much less to the adjective “celestial.”
In sum, we find that the two marks are extremely
similar in terms of visual appearance to the point of being
nearly identical. In terms of pronunciation, the two marks
are likewise extremely similar, although perhaps not to the
point of being nearly identical. Finally, the arbitrary
nature of both marks means that consumers do not have any
meanings to attach to either mark which would enable them
to distinguish the two marks.
Turning to a consideration of the goods as set forth
in the application and in opposer’s Registration No.
2,162,279, we start with the proposition that as the
similarity of the marks increases, the respective goods
need not be as similar in order to support a likelihood of
confusion. For example, when two marks share a
“substantial identity,” then their use can lead to a
likelihood of confusion “even when [the] goods or services
are not competitive or intrinsically related.” In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688-89 (Fed. Cir.
Opp. No. 112,405
9
1993). Of course, in the present case the two marks are
not identical. However, they are extremely similar, and
hence if they were used on related goods, we would find
that there exists a likelihood of confusion.
With this proposition in mind, we turn to a
consideration of the identification of goods as set forth
in the application and the identification of goods as set
forth in Registration No. 2,162,279. Applicant seeks to
register CELESTA for computer software for, among other
goods, personal computers and personal digital assistants
to provide communications in digital cellular networks and
local data management features. Opposer’s CELESTICA
computer hardware includes memory cards and power supplies.
In order to gain a better understanding of certain
terms contained within the two identifications of goods,
this Board has independently consulted a dictionary of its
own choosing, namely, the Microsoft Computer Dictionary (5th
ed. 2002). Not only is this work extremely comprehensive,
but in addition it is quite timely in that it was published
this year. The term “personal computer” is defined as
simply “a computer designed for use by one person at a
time.” A “laptop” is defined as “a small, portable
personal computer that runs on either batteries or AC
power, designed for use during travel.” While this
Opp. No. 112,405
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dictionary has no listing for the term “personal digital
assistant,” it does define PDA as an “acronym for Personal
Digital Assistant. A light-weight palmtop computer …”
Turning to a consideration of some of the terms
contained in opposer’s registration, we note that a “memory
card” is defined as a “memory module that is used to extend
RAM storage capacity … in a portable computer, such as a
laptop, notebook or handheld PC.” A “power supply” is
defined as “an electrical device that transforms standard
wall outlet electricity … into lower voltages … required by
computer systems. Personal computer power supplies are
rated by wattage.”
In essence, applicant’s identification of goods makes
it clear that applicant provides computer software to
owners of personal computers and personal digital
assistants to enable these devices to provide
communications in digital cellular networks and local data
management. Opposer’s pertinent registration covers memory
cards and power supplies, items that can be attached to
various personal computers to expand their storage capacity
or to enable them to plug into a standard wall outlet for
their electrical supply.
In view of the foregoing, we find that certain of the
goods set forth in the application and certain of the goods
Opp. No. 112,405
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set forth in the pertinent registration are clearly
related. To elaborate, applicant’s goods are computer
software for personal computers and personal digital
assistants to enable these devices to provide
communications in digital cellular networks and local data
management. Certain of the goods of the pertinent
registration – namely, memory cards and power supplies –
can likewise be used by owners of personal computers to
enhance their storage capacity and to operate their
personal computers from a standard wall outlet. In short,
the same consumer could purchase CELESTA computer software
for his personal computer to provide communications in a
digital cellular network and likewise purchase a CELESTICA
memory card to enhance his personal computer’s storage
capacity. Given the fact that the two marks are extremely
similar, we find that this personal computer owner could
easily assume that the CELESTA computer software and the
CELESTICA memory card bore the same mark, or at an absolute
minimum, emanated from the same source.
Of course, to the extent that there are doubts on the
issue of likelihood of confusion, this Board is obligated
to resolve doubts in favor of opposer whose rights in the
mark CELESTICA are superior to those of applicant in the
mark CELESTA. Century 21 Real Estate Corp. v. Century Life
Opp. No. 112,405
12
of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992); Shell Oil, 26 USPQ2d at 1691.
Three final comments are in order. First, at page 10
of its brief applicant argues that the channels of trade
are different in that its “computer software is directed to
end-user consumers,” whereas “component products such as
those offered by opposer are directed to manufacturers.”
While certain of opposer’s goods, such as circuit boards,
could not be installed on personal computers by end-user
consumers, the dictionary definitions make clear that
opposer’s memory cards and power supplies could easily be
installed on personal computers by ordinary end-user
consumers.
Second, applicant also argues at page 10 of its brief
that opposer’s customers are sophisticated in that they
“are likely to have an understanding of circuit boards,
memory cards and power supplies, and are likely purchasing
agents for manufacturers of finished computer products.”
(emphasis added). Not only has applicant offered no
evidence to support this contention, but as just noted, the
dictionary definitions make clear that memory cards and
power supplies could be installed on personal computers by
ordinary users.
Opp. No. 112,405
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Third, at page 11 of its brief, applicant argues that
“opposer’s mark is not famous.” As noted, opposer offered
no evidence other than its four registrations. If opposer
wished to establish that its mark is famous, it had the
burden of doing so. However, we wish to make it clear that
in determining that there exists a likelihood of confusion,
we have not considered opposer’s mark to be famous.
Decision: The opposition is sustained on the basis
that the contemporaneous use of applicant’s mark CELESTA
for certain of applicant’s goods and opposer’s mark
CELESTICA for certain of the goods set forth in its
Registration No. 2,162,279 is likely to result in
confusion.