Ciena Corp.

Trademark Trial and Appeal Board

Apr 30, 2002

No. 75794637 (T.T.A.B. Apr. 30, 2002)

4/30/02

Paper No. 14
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ciena Corporation
________

Serial No. 75/794,637
_______

Timothy J. Lyden of Hogan & Hartson L.L.P. for Ciena
Corporation.

Barbara A. Gaynor, Trademark Examining Attorney, Law Office
123 (Sidney I. Moskowitz, Managing Attorney).
_______

Before Simms, Cissel and Bottorff, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On September 8, 1999, applicant filed the above-
identified application to register the mark "FASTPATH" on
the Principal Register for "repair and/or replacement
service for telecommunications equipment." The application
was based on applicant's assertion that it possessed a bona
fide intention to use the mark in connection with these
services in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/794,637
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that if applicant were to use the mark it
seeks to register in connection with the services
identified in the application, applicant's mark would so
resemble the identical mark "FASTPATH," which is registered1
for "integrated circuits, printed circuit boards, and
telephony devices, namely, modems, cable modems, and
integrated services digital network interfaces," that
confusion would be likely because the marks are identical
and the services with which applicant intends to use the
mark are related to the goods listed in the cited
registration.
Responsive to the refusal to register, applicant
amended the recitation of services in the application to
read as follows: "repair and replacement of proprietary
telecommunication equipment modules." Applicant argued
that, as reflected by this amendment, applicant’s services
are not related to the goods set forth in the cited
registration closely enough for confusion to be likely.
The Examining Attorney was not persuaded by

1 Reg. No. 2,188,210, issued on the Principal Register on
September 8, 1998, to Cirrus Logic, Inc., a California
corporation.
Ser No. 75/794,637
3
applicant's arguments, and the refusal to register under
Section 2(d) of the Act was made final in the second Office
Action. In support of her contention that the goods
specified in the registration are commercially related to
the services with which applicant intends to use the mark,
the Examining Attorney made of record five third-party
registrations wherein the goods listed include integrated
circuits, printed circuit boards and/or modems, as well as
repair services for telecommunication equipment. For
example, one registration lists "communications interface
cards" and "modems," in addition to "communications
equipment installation, maintenance, and repair namely,
telephones, computer networks and transceivers..." The
next registration includes "modems,” as well as "repair and
maintenance services for electronic components and
telecommunications components and equipment; and repair and
maintenance services for communications components and
equipment." The third registration includes both
"integrated circuits" and "printed circuit boards," as well
as “installation, maintenance and repair services in the
field of telecommunication equipment." Yet another lists
"computer circuit boards, modems, audio interface and
conversion boards and circuits," "network interface boards,
telephone and data transmission interface boards and
Ser No. 75/794,637
4
circuits," as well as "installation, maintenance and repair
of …telephone and telephone messaging systems, voicemail
and voice messaging, electronic mail, automated attendant,
interactive voice response, database access and processing,
video, multimedia and fax processing systems." The final
third-party registration made of record by the Examining
Attorney includes "installation and maintenance services in
the field of communications network systems," as well as
"interface cards, printed circuit boards... and modems."
Based on these third-party registrations, the
Examining Attorney argued that confusion is likely in the
case at hand because customers for these goods and services
are used to seeing the same entities use their marks on
integrated circuits, printed circuit boards and/or modems,
as well as in connection with repair services for
telecommunication equipment.
In addition to maintaining the refusal based on the
likelihood that confusion, the Examining Attorney also made
final the requirement for applicant to amend the recitation
of services by deleting the indefinite term "replacement."
Applicant responded to the final refusal and final
requirement by amending the application to recite its
services as "repair of proprietary fiber optic
telecommunication equipment modules; installation of
Ser No. 75/794,637
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replacement proprietary fiber optic telecommunication
equipment modules," and arguing that confusion is not
likely because the goods and services in question are
“dissimilar." Applicant argued that its recitation of
services, as amended, is limited to services in connection
with fiber optic telecommunications equipment, which is
inherently different from the goods identified in the cited
registration.
Applicant requested reconsideration by the Examining
Attorney, but concurrently filed a Notice of Appeal. The
Board instituted the appeal, but suspended action on it and
remanded the application to the Examining Attorney for
reconsideration.
Upon reconsideration, the Examining Attorney accepted
applicant's amended recitation of services, but maintained
the refusal to register under Section 2(d) of the Act.
Additional third-party registrations were attached to her
Office Action in an effort to demonstrate the relatedness
of registrant's integrated circuits, printed circuit boards
and modems with and applicant's fiber optic
telecommunication equipment repair and installation
services. Four of these third-party registrations are
based on use in commerce. The first two, owned by the same
business, list "modems... fiber optic cable... fiber optic
Ser No. 75/794,637
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connectors; integrated circuits" and "maintenance of
telecommunications systems and telecommunications
networks." The next lists "printed circuit boards" and
"modems," as well as "installation, assembly and
maintenance and repair of data communications circuits...
and... fiber optic telecommunication equipment." The last
one includes "printed circuit boards" and "modems," in
addition to "installation, assembly and maintenance and
repair of data communications circuits... and... fiber
optic telecommunication equipment." This registration,
however, is owned by a German corporation and based on
Section 44 of the Act, rather than use in commerce.
After declining to pass the application to publication
after reconsideration of it, the Examining Attorney then
returned the file to the Board for resumption of action on
the appeal. Both applicant and the Examining Attorney
filed briefs, and applicant filed a reply brief. Applicant
did not request an oral hearing before the Board.
In the case of In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to
our primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among these factors are the similarity of the marks
and the similarity of the goods or services as they are set
Ser No. 75/794,637
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forth in the application and the registration,
respectively. If the marks in question are identical, as
in the instant case, the relationship between the goods or
services does not need to be as close in order to support a
finding that confusion is likely as would be the case if
there were differences between the marks. Amcor, Inc. v.
Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981).
In view of the identity of the marks, our inquiry
focuses on the relationship between the services recited in
the application and the goods set forth in the cited
registration. It is well settled that confusion may be
found likely to occur from the use of the same or similar
marks both for goods and for services involving those
goods. In re Hyper Shoppes (Ohio) Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed. Cir. 1988). The goods and services do
not have to be the same, or even directly competitive. All
that is necessary in order to support a finding that
confusion is likely is that the goods and services be
related in some manner, or the conditions surrounding their
marketing be such that they could be encountered by the
same purchasers under circumstances that could give rise to
the mistaken belief that both the goods and the services
come from the same source. In re International Telephone &
Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Ser No. 75/794,637
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Such is the case now before us. While the goods and
services are not identical, the third-party registrations
made of record by the Examining Attorney demonstrate that
other businesses have registered their marks for both some
of the types of goods specified in the registration as well
as for services of the kind applicant intends to render
under the same mark. As noted above, these third-party
registrations include references to telecommunications
equipment, including integrated circuits, printed circuit
boards and modems, all listed in the cited registration,
and also to fiber optic telecommunication equipment repair
and installation services. These registrations are
probative of the relatedness of the goods at issue in this
case in that they show that other businesses in the field
have registered their own marks for both these goods and
these services, and thus that both may be expected to
emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1983); In re Mucky Duck Co., 6
USPQ2d 1467 (TTAB 1988).
Applicant argues to the contrary, that the services
with which it intends to use the mark are rendered in
different trade channels to different, sophisticated,
customers, but these arguments are not supported with any
evidence. The channels of trade are not limited in either
Ser No. 75/794,637
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the registration or the application, nor is the Board
presented with evidence relating to this factor or to the
sophistication of the purchasers of either the goods listed
in the registration or the services recited in the
application. In any event, it is well settled that the
fact that purchasers are sophisticated or knowledgeable in
a particular field does not necessarily mean that they are
sophisticated or knowledgeable with respect to trademarks,
or that they are somehow immune from source confusion
caused by the use of the same or similar marks in
connection with related goods or services. In re Decombe,
9 USPQ2d 1812 (TTAB 1988). As noted above, the record
shows that other businesses have registered their marks for
both goods and services similar to the ones in issue in
this case. While this fact does not necessarily establish
that the same customers purchase both, it does support the
conclusion that potential purchasers have a basis upon
which to understand that the use of one mark in connection
with both indicates a common source.
Similarly unpersuasive is applicant’s argument that
the services identified in the application are
“fundamentally different” from the goods set forth in the
cited registration, in that the services will be rendered
in the telecommunications field, whereas the goods are used
Ser No. 75/794,637
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in the computer field. As the Examining Attorney points
out, however, the goods listed in the registration include
“telephony devices, namely, modems, cable modems, and
integrated services digital network interfaces.” In any
event, it is not disputed that computers play integral
roles in the rendering of telecommunications services.
In summary, confusion would be likely if applicant
were to use the mark it seeks to register because the mark
is identical to the cited registered mark and the services
with which applicant intends to use it are commercially
related to the products listed in the cited registration.
Even if we were left with doubts regarding this conclusion,
any such doubts would have to be resolved against applicant
and in favor of the prior user and registrant. J & J Snack
Foods v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889
(Fed. Cir. 1991).
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.