ChanneLinx .com, Inc.

Trademark Trial and Appeal Board

Apr 25, 2002

No. 75779288 (T.T.A.B. Apr. 25, 2002)

Mailed: 4/25/2002
Paper No. 21
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re ChanneLinx.com, Inc.
________
Serial No. 75/779,288
_______
John E. Vick, Jr., of Dority & Manning, P.A. for
ChanneLinx.com, Inc.
John D. Dalier, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Chapman and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
On August 19, 1999, ChanneLinx.com, Inc. (applicant)
filed an application to register the mark CHANNELINX.COM
(in typed form) on the Principal Register for services
ultimately identified as follows:
Computerized online services for enabling electronic
commerce in the fields of building materials and
supplies, petroleum-related chemicals, industrial
equipment and supplies, manufacturing equipment, and
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/779,288
2
construction equipment and supplies in International
Class 35;1
Network installation services for enabling electronic
commerce in the field of building materials and
supplies, petroleum-related chemicals, industrial
equipment and supplies, manufacturing equipment, and
construction equipment and supplies In International
Class 37; and
Software maintenance services for enabling electronic
commerce in the field of building materials and
supplies, petroleum-related chemicals, industrial
equipment and supplies, manufacturing equipment, and
construction equipment and supplies in International
Class 42.2
The Examining Attorney3 ultimately refused to register
applicant’s mark for three reasons. First, the Examining
Attorney held that applicant’s mark, when used on the
identified services, so resembles the mark shown below for
“computer hardware and software used in data transfer and
data communications applications” in International Class 9
that there is a likelihood of confusion under Section 2(d)
of the Trademark Act.4 15 U.S.C. § 1052(d).
1 Applicant proposed this identification for the services in
International Class 35. The identification of services currently
reads: “Advertising and sale of products by way of electronic
commerce on the internet, including the sale and procurement of
building materials and building supplies in electronic commerce.”
The Examining Attorney’s requirement for applicant to amend its
identification of services is one of the issues on appeal.
2 Serial No. 75/779,288. The application contains an allegation
of a date of first use and a date of first use in commerce of
June 16, 1999.
3 The current Examining Attorney was not the original Examining
Attorney in this application.
4 Registration No. 1,862,275 issued November 15, 1994. The
registration issued to Computer Network Technology Corporation.
Ser No. 75/779,288
3
The registration contains a disclaimer of the words
“Channel Link,” and the mark registered under the
provisions of Section 2(f) of the Trademark Act.
Second, the Examining Attorney refused to register
applicant’s mark because of a registration of the mark
CHANNELINK (in typed form), owned by a different party, for
“educational services, namely, offering seminars and
training others in the use and operation of computers and
related equipment” in International Class 41.5
Third, because the Examining Attorney determined that
the identification of services was indefinite for the
International Class 35 services, he required applicant to
amend those services.
On November 20, 2000, the Office received a combined Section 8 &
15 affidavit for this registration (certificate of mailing dated
November 15, 2000). There is no indication in the file of any
response to applicant’s submission.
5 Registration No. 2,244,349 issued May 11, 1999. The
registration issued to NEC Technologies, Inc. The registration
also contains a second class of services that are not relevant to
this appeal: “promoting the sale of the goods of others through
the administration of incentive awards” in International Class
35.
Ser No. 75/779,288
4
After the Examining Attorney made the refusals final,
this appeal followed. Both applicant and the Examining
Attorney filed briefs.6 An oral hearing was requested and
scheduled, but ultimately the oral hearing was cancelled at
applicant’s request. See Applicant’s Letter dated January
7, 2002.
I. Requirement to amend the identification of services
We first address the Examining Attorney’s requirement
for an amendment to the Class 35 identification of
services. The amended identification of services at the
time of the Examining Attorney’s final Office action read:
Advertising and sale of products by way of electronic
commerce on the internet, including the sale and
procurement of building materials and building
supplies in electronic commerce.
The Examining Attorney objected to this identification
of services on the ground, inter alia, that it was
“indefinite because the applicant uses the wording
‘including’ and ‘sale.’” Office Action dated June 2, 2000,
6 There was an unusual twist to this appeal inasmuch as applicant
submitted an amendment to the identification of services and
additional evidence in November 2000. Apparently, the submission
was never associated with the file and applicant and the
Examining Attorney filed their briefs and based their arguments
on different identifications of services and different evidence
in the record. When this became apparent, applicant requested a
remand to the Examining Attorney to consider its missing
submission, which was granted by the Board on May 25, 2001. The
Examining Attorney accepted the submission but maintained the
refusals to register under Section 2(d) and the requirement for a
Ser No. 75/779,288
5
p. 5. In the brief (p. 12), the Examining Attorney again
objected to the identification of services on the ground
that it contained the indefinite words “including” and
“sale.” Applicant subsequently filed a “Motion to Suspend
Appeal and Remand for Further Examination Pursuant to 37
CFR § 2.142(d)” because it became apparent to applicant
that its amendment and evidence had not been associated
with the file and had not been considered by the Examining
Attorney. That paper contained a further amendment to the
identification of services in International Class 35:
Computerized online services for enabling electronic
commerce in the fields of building materials and
supplies, petroleum-related chemicals, industrial
equipment and supplies, manufacturing equipment, and
construction equipment and supplies.
After the Board remanded the case, the Examining
Attorney addressed the requirement for an amended
identification of services as follows:
Finally, the amended identification of services in
International Class 35 is again rejected. The FINAL
requirement that the applicant must amend its
identification of services in International Class 35
is maintained and continued.
Office Action dated August 8, 2001, p. 2.
While we understand the Examining Attorney’s
requirement for applicant to amend the current
more definite identification of the services in International
Class 35. See Office Action dated August 8, 2001.
Ser No. 75/779,288
6
identification of services because it contains such terms
as “including” and “sale,” we note that applicant has
attempted to overcome these objections by submitting an
amended identification of services for International Class
35 that meets the Examining Attorney’s objections.
Inasmuch as the Examining Attorney has not articulated any
reason for his objection to the proposed amended
identification of services and we are unaware of any
objection, we reverse the requirement for a further
amendment to the proposed amended identification of
services in International Class 35. We will refer to this
most recent amendment to the identification of services
when we refer to applicant’s Class 35 services in this
appeal.
II. Refusal based on Registration No. 1,862,275
We now address the first refusal under Section 2(d) of
the Trademark Act. The Examining Attorney refused to
register applicant’s mark because he determined that it was
confusingly similar to Registration No. 1,862,275.
Applicant has applied to register the mark
CHANNELINX.COM in typed form while the cited mark is for
the mark:
Ser No. 75/779,288
7
Both the cited registrant’s mark and applicant’s mark are
for the phonetically similar common term “Channelink.”
Applicant spells its mark with an “x” instead of a “k.”
Applicant adds the top-level domain (TLD) term “.com” to
its mark. In addition, the registrant displays its mark in
a block letter style. While the word portions of the marks
are very similar, we must compare the marks in their
entireties. Here, we note that the registration contains a
disclaimer of the words “Channel Link” and that it issued
under the provisions of Section 2(f) of the Trademark Act.
Registrant does not claim any rights in the words “Channel
Link” and instead relies on the design of “Channel” in
capital letters telescoped with “ink” in small letters
together with the block lettering design for acquired
distinctiveness. The Federal Circuit has held that it
“must be remembered that [registrant’s] trademark consists
of highly stylized letters and is therefore in the gray
region between pure design marks which cannot be vocalized
and words which are clearly intended to be.” In re
Ser No. 75/779,288
8
Electrolyte Laboratories Inc., 913 F.2d 930, 16 USPQ2d
1239, 1240 (Fed. Cir. 1990).
We also add that applicant’s and registrant’s marks
are not identical. Some differences are barely noteworthy.
Applicant adds a “.com” to its mark, and it spells the
“link” portion of the mark differently than registrant.
However, other differences are significant. Unlike
registrant’s mark, applicant’s mark is not stylized. It is
well settled that it is improper to dissect a mark. In re
Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688
(Fed. Cir. 1993). However, more or less weight may be
given to a particular feature of a mark for rational
reasons. In re National Data Corporation, 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). Another important
feature is the disclaimer in the cited registration.
Disclaimed matter is often given less weight than other
elements of a mark. Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993).
Because of the disclaimer and the registration of
registrant’s stylized design under Section 2(f), we do not
find that that the term “channelink” is entitled to a broad
scope of protection.
Next, we consider the services of applicant and
registrant. Applicant’s services involve computerized
Ser No. 75/779,288
9
online services, network installation services and software
maintenance services for enabling electronic commerce in
the fields of materials and supplies, petroleum-related
chemicals, industrial equipment and supplies, manufacturing
equipment, and construction equipment and supplies.
Registrant’s services are computer hardware and software
used in data transfer and data communications applications.
We must consider the goods and services as they are
described in the identification of goods and services in
the applications and registration. “Likelihood of
confusion must be determined based on an analysis of the
mark applied to the … services recited in applicant’s
application vis-à-vis the … services recited in [a] …
registration, rather than what the evidence shows the …
services to be.” In re Dixie Restaurants, 105 F.3d 1405,
41 USPQ 1531, 1534 (Fed. Cir. 1997)(punctuation in
original), quoting, Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed.
Cir. 1987).
While we realize that both applicant’s and
registrant’s goods and services involve computers, this
fact does not establish that goods or services are
necessarily related.
Ser No. 75/779,288
10
It is important to note that, in order to support a
holding of likelihood of confusion, there must be some
similarity between the goods and services at issue
herein beyond the fact that each involves the use of
computers. In view of the fact that computers are
useful and/or are used in almost every facet of the
world of business, commerce, medicine, law, etc., it
is obvious that distinctions must be made.
Reynolds and Reynolds Co. v. I.E. Systems Inc., 5 USPQ2d
1749, 1751 (TTAB 1987). The Board has clearly held that
there is no pre se rule that all computer hardware and/or
software are related. Information Resources Inc. v.
X*Press Information Services, 6 USPQ2d 1034, 1038 (TTAB
1988).
The Examining Attorney has submitted copies of several
registrations “showing entities offering and using the same
mark on or in connection with computer hardware, computer
installation and computer software.” Examining Attorney’s
brief at 6. However, the specific question here is not
whether computer hardware, computer installation and
computer software are related but whether applicant’s
computer services involving building, chemical, and
construction fields are related to registrant’s hardware
and software in the data transfer and data communications
applications fields. We are not convinced that these
fields are related.
[W]hile applicant and registrant are both in the
computer field, applicant is seeking registration for
Ser No. 75/779,288
11
a specific, specialized piece of peripheral computer
hardware, namely buffers. The cited registration, on
the other hand, relates to a specific, specialized
type of applications software, namely, computer
programs in the field of energy conservation and
management. While there exists the possibility that
those users of registrant's specialized software could
also conceivably have a need for applicant's buffers
in order to store data, we do not believe that this
possibility of overlap in the computer field is
significant enough to warrant a finding of likelihood
of confusion as to source especially where, as here,
applicant has presented a declaration from its
president (uncontroverted by any opposing evidence) as
to the differences in marketing and otherwise, between
applications software designed for a specific
practical application and other types of "systems" or
"utility" software designed to help the computer or
its peripherals operate. The evidence of third-party
registrations introduced by the Examining Attorney to
show the same mark used in connection with computer
hardware and software appears to be limited to
"systems" or "utility" type software, as opposed to
applications software. Remembering that applicant's
goods are not software at all, we are persuaded that
even in the event a customer of registrant's
applications software is exposed to applicant's
buffers, that customer would not be likely to believe
the respective goods emanated from the same source,
since those are products associated with disparate
parts of the computer field.
In re Quadram Corp., 228 USPQ 863, 865-66 (TTAB 1985).
Similarly in this case, applicant is seeking
registration for a particular type of computer service.
Applicant’s identification of services indicates that, for
these services, the primary customers would be the owners
or operators of building, construction, and related
businesses. Applicant’s specimens indicate that
“ChanneLinx.com enables enterprises to easily communicate
Ser No. 75/779,288
12
and conduct business across network boundaries with
vertical markets.” Registrant’s services are directed to
data transfer and data communications applications.
Applicant’s declarant stated that “[t]he customers to which
[registrant] sells its ‘CHANNELink’ products are likely to
be those persons who need very sophisticated computer
services such as storage area networks. The customers
likely to be interested in purchasing such sophisticated
computer technology are persons engaged in the MIS
[management information systems] departments of large
corporations.” Holliday declaration at 7, paragraph 21.
We are mindful of the requirement that we consider the
services as they are set out in the identification of
services. However, because registrant’s identification of
services is not entirely clear, we have considered the
evidence of registrant’s services to determine what the
identification of services would mean in the trade. See In
re Trackmobile, Inc., 15 USPQ2d 1152, 1153-54 (TTAB 1990)
(“The terms ‘mobile railcar movers’ and ‘light railway
motor tractors’ are somewhat vague to members if this Board
who possess no special knowledge of such equipment… [W]hen
the description of goods for a cited registration is
somewhat unclear, as in the case herein, it is improper to
simply consider that description in a vacuum and attach all
Ser No. 75/779,288
13
possible interpretations to it when the applicant has
presented extrinsic evidence showing that the description
of goods has a specific meaning to members of the trade”).
When we consider the services of applicant and
registrant, we do not consider them to be related. While
both services are computer services, the potential overlap
of customers is de minimis.
In sum, the marks in this case, while similar, are not
identical. Applicant’s services are directed to the
operators of building, construction, and related
businesses. These purchasers would not be likely to
encounter registrant’s data communications applications
hardware and software, which would be directed towards
information technology professionals. When we consider the
marks in their entireties and the goods and services in the
application and registration, we conclude that there is not
a likelihood of confusion.
III. Refusal based on Registration No. 2,244,349
The Examining Attorney also determined that
applicant’s CHANNELINX.COM and the second registered mark,
CHANNELINK, are confusingly similar. Both marks are
depicted in typed form, and the Examining Attorney argues
that they are “virtually identical in spelling, appearance
and commercial impression.” Examining Attorney’s brief at
Ser No. 75/779,288
14
5. The Examining Attorney noted that the first nine
letters are the same. The Examining Attorney further held
that despite the differences in the next letter, “k” and
“x,” and the addition of a top level domain name, “.com,”
the “marks create the same overall impression in that both
contain the phonetic equivalent term CHANNELINK.” Id.
Applicant argues that the marks are spelled
differently and it emphasizes the “.com” of its mark.
Applicant maintains that they have different commercial
impressions. Regarding the services, applicant notes that
it is not seeking registration of its mark for educational
training services, that its services cost between $5,000 to
in excess of a million dollars, and that the potential
customers are sophisticated. Applicant also asserts that
there has been no actual confusion.
Because we agree with the Examining Attorney, we
affirm the refusal to register because of the cited ‘349
registration.
In likelihood of confusion cases, we must consider the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973), keeping 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
Ser No. 75/779,288
15
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
The first factor we consider is whether the marks are
similar in sound, appearance, meaning or commercial
impression. du Pont, 177 USPQ at 567.
One difference between the two marks is the presence
of the “.com” in applicant’s mark. This addition at the
end of applicant’s mark does not readily distinguish the
two marks.
The most common method of locating an unknown domain
name is simply to type in the company name or logo
with the suffix .com…. [C]ompanies strongly prefer
that their domain name be comprised of the company or
brand trademark and the suffix .com.
Sporty’s Farm L.L.C. v. Sportsman’s Market Inc., 202
F.3d 489, 53 USPQ2d 1570, 1572 (2d Cir. 2000).
As a result, the “.com” portion of marks has not been
given much significance. See Brookfield Communications,
Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50
USPQ2d 1545, 1558 (9th Cir. 1999) (observing that the
differences between the mark "MovieBuff" and the domain
name "moviebuff.com" are "inconsequential in light of the
fact that Web addresses are not caps-sensitive and that the
‘.com’ top-level domain signifies the site’s commercial
nature").
Ser No. 75/779,288
16
Also, the slightly different spelling of “channelinx”
and “channelink” is not significant because it results in a
very similar look and sound of the mark. The use of a
phonetic equivalent with a slight misspelling does not
result in a term with a markedly different appearance from
a registered mark. In re Research and Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (“There is
little room to debate the similarity between ROPELOCK and
ROPELOK in appearance”). The only slight difference in
pronunciation may be the difference between a singular or
plural sound, which would not result in any significant
change in the commercial impression of the marks. Wilson
v. Delaunay, 245 F.2d 877, 114 USPQ 339, 342 (CCPA 1957)
(“There is no material difference in the trademark sense
between the singular and plural form of the word ‘Zombie’
and they will therefore be regarded as the same mark”). In
addition, the meaning of the two marks does not distinguish
them. Both would have a similar meaning of a “channel
link” or “channel links.”
Regarding the relatedness of the services, the
Examining Attorney’s brief addressed the issue of
likelihood of confusion based on the identification of
services before it was amended. After a remand to consider
the new identification of services and additional evidence,
Ser No. 75/779,288
17
the Examining Attorney maintained the refusals under
Section 2(d). The Examining Attorney’s reasoning is set
out below:
The applicant’s amended identification of services in
International Class 37 and 42 are accepted and made of
record. However, this amended identification has no
impact on the FINAL refusal or brief as written and
the refusal under Section 2(d) is maintained and
continued. The fact that the goods and services of
the parties differ is not controlling in determining a
likelihood of confusion. The issue is not likelihood
of confusion between particular goods and services,
but likelihood of confusion as to the source of those
goods and services. See In re Rexel Inc., 223 USPQ
830, 831 (TTAB 1984), and cases cited therein.
In addition, the examining attorney must determine
whether there is a likelihood of confusion on the
basis of the goods and services as they are identified
in the application and registration. If the cited
registrations describe goods and services broadly and
there are no limitations as to their nature, type,
channels of trade or classes of purchasers, it is
presumed that the registrations encompass all goods
and services of the typed described, that they move in
all normal channels of trade, and that they are
available to all potential purchasers.
Finally, the amended identification of services in
International Class 35 is again rejected. The FINAL
requirement that the applicant must amend its
identification of services in International Class 35
is maintained and continued.
After careful consideration of the law and facts of
the case, the examining attorney must deny the request
for reconsideration and adhere to the final action as
written, since no new facts or reasons have been
presented which are significant and compelling with
regard to the point at issue.
Office Action dated August 8, 2001 at 1-2 (emphasis in
original).
Ser No. 75/779,288
18
We must consider the goods and services as they are
described in the identification of goods and services in
the application and registration. See Dixie Restaurants,
supra. See also Octocom Systems Inc. v. Houston Computer
Services, 918 F.2d 937, 942, 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 sales of the goods are directed”).
Applicant’s services include “network installation
services for enabling electronic commerce in the field of
building materials and supplies, petroleum-related
chemicals, industrial equipment and supplies, manufacturing
equipment, and construction equipment,” and software
maintenance and similar services. Registrant’s services
include “offering seminars and training others in the use
and operation of computers and related equipment.” The
Examining Attorney has submitted copies of several
registrations to show that computer-related installation,
maintenance, and other services are offered under the same
mark as computer training services. See e.g., Registration
Ser No. 75/779,288
19
No. 2,348,519 (installation and upgrade of computer
networks and computer systems and computer education
training services); No. 2,340,207 (installation,
maintenance, repair and refurbishing of used computers and
training in the use of computer hardware and software); No.
2,315,334 (installation, maintenance and repair of computer
systems, designing and hosting web sites for others and
courses of instruction in the field of computers); and No.
2,316,065 (installation of computer networks, website
design and training in the use and operation of computer
systems). These registrations are some evidence that
computer installation, maintenance, and other services and
computer training services are offered by the same party
under the same mark. These registrations support the
Examining Attorney’s position that the services of
applicant and registrant are related. 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).
Ser No. 75/779,288
20
We find that the registrant’s services of offering
seminars and training others in the use of and operation of
computers are related to applicant’s computer–related
services. Also, unlike the other cited registrant, the
‘349 registrant has not limited its identification of
services to any particular field and the services would
include training others in the operation of computers in
the field of building materials and supplies, petroleum-
related chemicals, industrial equipment, and construction
equipment and supplies. In addition, even if the
purchasers of applicant’s and registrant’s services are
sophisticated, they would likely be confused when
applicant’s CHANNELINX.COM mark and registrant CHANNELINK
mark are used on these closely related services. Octocom
Systems, 16 USPQ2d at 1787. Finally, even if there is no
actual confusion, the lack of actual confusion does not
establish that there is no likelihood of confusion. Giant
Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565,
218 USPQ 390, 396 (Fed. Cir. 1983). In this ex parte
proceeding, we have no information from the registrant.
Applicant’s computer services and registrant’s
educational services include offering services in the same
field. When the very similar marks CHANNELINX.COM and
Ser No. 75/779,288
21
CHANNELINK are used on these related services, we conclude
that there is a likelihood of confusion.
Decision: The refusal to register applicant’s mark
under Section 2(d) because of Registration No. 1,862,275
and the requirement for a further amendment to the proposed
identification of services in Class 35 are reversed. The
refusal to register applicant’s mark under Section 2(d) on
the ground that applicant’s mark for its services is
confusingly similar to the mark CHANNELINK for the services
in Registration No. 2,244,349 is affirmed.