Cimmetry Systems Inc.

Trademark Trial and Appeal Board

Feb 28, 2001

No. 75465988 (T.T.A.B. Feb. 28, 2001)

2/28/01
Paper No. 12
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Cimmetry Systems Inc.
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Serial No. 75/465,988
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Lawrence E. Abelman of Abelman, Frayne & Schwab for
Cimmetry Systems Inc.
Leslie L. Richards, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
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Before Quinn, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Cimmetry Systems Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark CIMMETRY for the following goods and services:
computer software for use in document format
support, namely document display, document
printing, file access, network file access,
linking files, markup, all in file formats,
consolidation of files; viewing, downloading
and printing files from a global computer
network; and viewing, copying and printing
e-mail attachments to documents in class 9;
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/465,988
2
computer education and training services in
class 41; and
technical support for others in the field of
computers; computer consultation; custom
design of computer software for others in
class 42.1
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark, if used in connection with the
identified goods and services, would so resemble the mark
SYMMETRY registered for “computers,”2 as to be likely to
cause confusion or mistake or to deceive.
Applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
It is the Examining Attorney’s position that
applicant’s mark CIMMETRY and the cited mark SYMMETRY are
similar in appearance and are phonetic equivalents.
Further, the Examining Attorney argues that the computer
software and computer services applicant intends to offer
under the involved mark are related to registrant’s
computers. In connection with the refusal, the Examining
Attorney submitted copies of eighteen third-party
registrations of marks which cover computer software,
1 Serial No. 75/465,988 filed April 10, 1988; asserting a bona
fide intention to use the mark in commerce.
2 Registration No. 1,496,641 issued July 19, 1988; Section 8
affidavit accepted; Section 15 affidavit received.
Ser No. 75/465,988
3
computer education and training services, computer
consultation services, and/or computer software design for
others, on the one hand, and computers, on the other hand.
This evidence was submitted to support the Examining
Attorney’s position that the same entities offer computers
as well as computer software and the various computer
services applicant intends to offer under the same mark.
Applicant, in urging reversal of the refusal to
register, contends that the marks are dissimilar; that its
computer software and computer services are different from
registrant’s computers; that the relevant purchasers of its
goods and services use a high degree of care; and that
registrant’s SYMMETRY mark is entitled to only a narrow
scope of protection. Applicant submitted copies of four
third-party registrations of marks which include the word
SYMMETRY.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. In re E. I. du Pont de Nemours & Co., 476
F.2d 2357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and services. Federated Food, Inc. v. Fort
Ser No. 75/465,988
4
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Comparing the marks, we agree with the Examining
Attorney that applicant’s mark CIMMETRY is the phonetic
equivalent of and is similar in appearance (albeit spelled
differently) to the cited mark SYMMETRY. Although
applicant argues that any possibility of confusion will be
dispelled because the cited mark SYMMETRY has a recognized
meaning whereas its mark CIMMETRY is a coined term, we
disagree. When the marks are verbalized, they are
identical.
We note that this is unlike the situation is Serial
No. 75/465,820 wherein the mark applicant seeks to register
is CIMMETRY SYSTEMS along with a prominent design
incorporating the letters “CS”. In the case before us, we
have only the word CIMMETRY. The identity of pronunciation
and similarity in appearance to the mark in the cited
registration tips the balance in this case to a conclusion
that the overall commercial impressions of the marks herein
are substantially similar.
Applicant’s contention that the cited mark is weak,
and thus entitled to a narrow scope of protection is not
supported by the record in this case. None of the third-
party SYMMETRY registrations submitted by applicant cover
Ser No. 75/465,988
5
goods and services of the type involved in this appeal or
goods and services which are even arguably related thereto.
Turning then to the goods and services involved
herein, it is well settled that goods and/or services need
not be identical or even competitive in nature to support a
finding of likelihood of confusion. Instead, it is
sufficient that the goods and/or services are related in
some manner and/or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under situations that would
give rise, because of the marks employed in connection
therewith, to the mistaken belief that they originate from
or are in some way associated with the same producer or
provider. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
We readily acknowledge that there is no “per se” rule
relating to likelihood of confusion in the computer field.
However, as noted above, the Examining Attorney made of
record a number of third-party registrations demonstrating
that computers, on the one hand, and computer software and
applicant’s various computer services, on the other hand,
are commonly offered by a single source under a single
mark. While the involved goods and services are
specifically different, we find this evidence establishes
Ser No. 75/465,988
6
that registrant’s goods and applicant’s goods and services
are sufficiently commercially related that confusion is
likely in view of the substantial similarity in the marks
herein.
Applicant’s contention that its goods and services
will move in different channels of trade to different
purchasers is not persuasive. In the absence of any
convincing evidence to the contrary, we think it reasonable
to assume that the companies to which applicant’s computer
software and computer services will be offered, i.e.,
Fortune 1000 companies and small businesses, would also be
customers for registrant’s computers.
We note applicant’s attorney’s point that its computer
software and computer services are of a specialized nature
and that the purchasers thereof are likely to be
sophisticated. Suffice it to say that no evidence in
support of these assertions was submitted. In any event,
even careful purchasers are not immune from source
confusion.
To the extent that the points raised by applicant may
cast doubt on our ultimate conclusion on the issue of
likelihood of confusion, we resolve that doubt, as we must,
in favor of the prior registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Ser No. 75/465,988
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Accordingly, we find that there is a likelihood of
confusion in this case because the marks are identical in
sound and somewhat similar in appearance and the goods and
services and related. In particular, purchasers familiar
with registrant’s SYMMETRY computers, would be likely to
believe, upon encountering applicant’s CIMMETRY mark for
computer software for use in document format support and
various computer services, that such goods and services
emanate from or are otherwise sponsored by or affiliated
with the same source.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.