CMC Magnetics Corp.

Trademark Trial and Appeal Board

Sep 11, 2002

No. 76100294 (T.T.A.B. Sep. 11, 2002)

Hearing:
August 13, 2002
Mailed: September 11, 2002
Paper No. 13
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re CMC Magnetics Corporation
________
Serial No. 76/100,294
_______
David E. Dougherty of Dennison, Schulz & Dougherty for CMC
Magnetics Corporation.
Brian D. Brown, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Hairston, Walters and Holtzman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
CMC Magnetics Corporation seeks registration on the
Principal Register of the mark shown below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/100,294
2
for “providing telecommunications connections to a global
computer; telecommunications services, namely personal
communication services; broadcasting programs via a global
computer network; electronic mail services; web casting
audio and visual programming via a global computer
network,” in Class 38.1
The Trademark Examining Attorney has refused
registration under Trademark Act Section 2(d), 15 U.S.C.
§1052(d), on the ground that applicant’s mark is
confusingly similar to the following seven marks,
previously registered to a single entity:
(1) Registration No. 1,988,832 issued July 23, 1996
(Section 8 affidavit accepted; Section 15 affidavit filed)
for the mark NICE shown below,
1 Serial No. 76/100,294, filed August 1, 2000, and asserting first use
and first use in commerce in March 2000. The application contains the
statement that: “The mark consists of a trapezoid with one curved side
and the letter ‘S’ superimposed thereon all over the word
‘NiceShipping.”
Ser No. 76/100,294
3
for “communication systems, namely direction finding and
monitoring systems comprised of antennas, receivers,
processors and software in the field of digital signal
processing, numeric and mapping algorithm;
telecommunication digital recording systems comprised of
digital signal processors, telecommunication processors and
ethernet token rings; command, analyzer and control systems
comprised of bridges, routers and voice servers;”
(2) Registration No. 2,024,791 issued December 24, 1996 for
the mark NICELOG for “multi media multi channel digital
voice logging system, comprised of integrated circuits,
mass memory elements, namely blank hard disk audio tapes,
and software which facilitates the recording of
communications;”
(3) Registration No. 2,111,229 issued November 4, 1997 for
the mark NICECALL for “multimedia multi-channel digital
voice logging system, comprised of integrated circuits mass
memory elements, namely Digital Audio Tape(DAT) drive and
software which records, stores, archives and retrieves
audio segments;”
(4) Registration No. 2,168,019 issued June 23, 1998 for the
mark NICEFAX for “logging system, comprised of fax
machines, telephone lines, computer printers and computer
workstations, which workstations are composed of computers
and computer software for use in the field of digital
signal processing;”
(5) Registration No. 2,177,411 issued July 28, 1998 for the
mark NICEFLOW for “unified messaging computer system
comprising computer and voice and data fax processing cards
and telephone networks, communication interface cards, lan
cards, wan cards, and software for providing voice, data
and fax messaging capabilities;”
Ser No. 76/100,294
4
(6) Registration No. 2,213,759 issued December 29, 1998 for
the mark NICE shown below,
for “telecommunication digital recording systems comprised
of digital signal processors, telecommunication processors
and ethernet token rings; command analyzer and control
systems comprised of bridges, routers and voice servers;
multi media channel digital voice and fax logging systems
comprised of telephone lines, integrated circuits, mass
memory elements and software; unified messaging platforms
comprised of managing, generation, delivery, workflow of
voice, fax and data information, communication systems,
namely, direction, finding and monitoring systems comprised
of antennas, receivers, processors and software in the
field of digital signal processing, numeric and mapping
algorithms;” and
(7) Registration No. 2,341,646 issued April 11, 2000 for
the mark NICE VISION for “video logging systems comprised
of video machines, telephone lines, workstations, software
in the field of digital signal processing, computers and
printers.”
When the refusal was made final, applicant filed this
appeal. Applicant and the Examining Attorney have filed
briefs and an oral hearing was held. We reverse the
refusal to register.
The Examining Attorney maintains that applicant’s mark
and the cited registered marks are confusingly similar
because of the inclusion of the identical term “NICE”
Ser No. 76/100,294
5
therein. Further, with respect to applicant’s services and
registrant’s goods, the Examining Attorney argues that
“there is a clear overlap or relationship between the
respective goods and services and at the very least, both
the application and the cited registrations identify goods
and services that are related to or used in the field of
telecommunications.” (Brief, p. 7).
Applicant, in urging reversal of the refusal to
register, argues that its mark and the cited registered
marks are dissimilar in their entireties, and that the word
“NICE”, as applied to registrant’s goods, is highly
suggestive such that the cited registered marks are not
entitled to a broad scope of protection. In this regard,
applicant relies on the following definition of the word
“nice” taken from Webster’s Ninth New Collegiate
Dictionary:
nice: 3. possessing, marked by or demanding
great or excessive precision and delicacy.
Lastly, applicant argues that the purchasers of applicant’s
services and registrant’s goods are sophisticated, and thus
are not likely to be confused.
Ser No. 76/100,294
6
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 1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities/dissimilarities between the marks and
similarities/dissimilarities between the goods and
services. Federated Food, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
With respect to the marks, while we recognize that
applicant’s marks and the cited registered marks all
include the term “NICE”, when we consider the marks in
their entireties, as we obliged to do, there are specific
differences in the marks. In particular, applicant’s mark
includes a prominent design feature consisting of the
letter “S” superimposed on a trapezoid. The term
NICESHIPPING is beneath the letter “S” and in much smaller
letters. This results in a mark that, when considered in
its entirety, is different in overall commercial impression
from registrant’s marks.
Further, as demonstrated by the dictionary definition,
the word “nice” has some suggestiveness when used in
connection with systems comprised of telecommunications
Ser No. 76/100,294
7
equipment. These kinds of systems possess and/or demand
excessive precision, and thus may be considered “nice”.
Consequently, the cited registered marks are not entitled
to a broad scope of protection.
Insofar as the goods and services are concerned, while
they may be said to be commercially related, there are,
nonetheless, specific differences between applicant’s
telecommunications services and registrant’s goods used in
the telecommunications field. Telecommunication services
involve the rendering of voice, data and video
communications whereas registrant’s goods are systems
comprised of various telecommunications equipment.
Moreover, in the case of registrant’s goods, it appears
that they are highly technical in nature. As such, it is
likely that purchasers of these products would exercise
care in their selection.
In view of the cumulative differences between
applicant’s mark and the cited registered marks and the
involved goods and services; the somewhat limited scope of
protection to be accorded the cited registered marks; and
the care exercised by purchasers of registrant’s goods, we
find that there is no likelihood of confusion in this case.
Decision: The refusal to register under Section 2(d)
is reversed.