Compunitix, Inc.

Trademark Trial and Appeal Board

Mar 30, 2004

No. 75373093 (T.T.A.B. Mar. 30, 2004)

Mailed: March 30, 2004
Paper No. 18
CEW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Compunitix, Inc.
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Serial No. 75373093
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Ansel M. Schwartz, Esq. for Compunitix, Inc.
John M. Gartner, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
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Before Walters, Chapman and Bucher, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Compunitix, Inc. has filed an application to register
the mark MINUET on the Principal Register for “multiple
point control units for multimedia, audio or video
conferencing, namely conferencing bridges,” in International
Class 9.1

1 Serial No. 75373093, filed October 14, 1997, based on an allegation of
a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS
PRECEDENT OF
THE TTAB
Serial No. 75373093
2
The Trademark Examining Attorney has issued a final
refusal to register under Section 2(d) of the Trademark Act,
15 U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark MINUET, previously registered for
“computer software, namely, a communications program to
automatically distribute calls,”2 that, if used on or in
connection with applicant’s goods, it would be likely to
cause confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
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. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In considering the evidence of
record on these factors, we keep in mind that “[t]he
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.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

2 Registration No. 2,263,615 issued July 20, 1999, to Cintech Tele-
Management Systems, Inc.
Serial No. 75373093
3
1098, 192 USPQ 24, 29 (CCPA 1976). See, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997); and In re Azteca Restaurant Enterprises, Inc., 50
USPQ2d 1209 (TTAB 1999) and the cases cited therein.
The marks in this case are identical. It is well
established that when the marks at issue are the same or
nearly so, the goods in question do not have to be identical
to find that confusion is likely. As we stated in In re
Concordia International Forwarding Corp., 222 USPQ 352, 356
(TTAB 1983), “… the greater the degree of similarity in the
marks, the lesser the degree of similarity that is required
of the products or services on which they are being used in
order to support a holding of likelihood of confusion.” It
is sufficient that the goods are related in some manner and
that their character or the circumstances surrounding their
marketing are such that they are likely to be encountered by
the same people in situations that would give rise to the
mistaken belief that the producer was the same. In re
International Telephone and Telegraph Corp., 197 USPQ 910
(TTAB 1978).
Regarding the goods, the Examining Attorney contends
that both marks are used to identify telecommunications
devices; that both identifications of goods are broadly
worded with no limitations and, therefore, the channels of
trade are the same; that, even if the purchasers of the
Serial No. 75373093
4
respective products are sophisticated, such purchasers are
not immune from trademark confusion.
In support of his position, the Examining Attorney
submitted copies of another registration owned by applicant
and two third-party registrations. The identification of
goods in Registration No. 2,355,738, owned by this applicant
for the mark CONTEXSPAN, is “telecommunication hardware and
software for linking bridges for conferencing.”
One of the third-party registrations submitted by the
Examining Attorney, No. 2,085,869 includes in its
identification of goods: “… video, audio and related
equipment in the areas of telecommunications, namely, analog
codecs, … PC-screen projectors, cameras, microphones, video
cards, video monitors, … multipoint video and audio
conference bridges, and analog and digital voice, data,
image, and video switches.” The identification of goods in
the other third-party registration, No. 2,469,125, is
“telecommunications hardware, namely, telephones that
operate using a connectionless protocol, power supplies for
such telephones, conference bridges, adapters for telephones
and facsimile machines that convert a connectionless
protocol to analog transmission, and software for call
processing, voice mail, and calling features, namely, call
hold, call wait, call forward, and conference.” (Emphasis
added.)
Serial No. 75373093
5
Applicant begins its argument that the goods are
different with the assumption that the registrant’s goods
are limited to “software for phone calls by general
customers in homes, buildings, etc. since there is no
indication of any specific market channel.” Applicant
contends that its products, on the other hand, are directed
to “corporations having enough employees to purchase a
dedicated conferencing bridge so they do not have to utilize
conferencing services offered by companies such as AT&T or
MCI.” (Brief, p. 3.) Applicant states that its goods apply
only to more than two-party calls; that its units are
expensive, costing approximately $50,000 apiece; that the
trade channels for its goods and the registrant’s goods are
different because applicant sells only to end-users through
direct sales by a sales person, whereas registrant’s
customers purchase the software on disk; and that the
purchasers of applicant’s goods are knowledgeable,
sophisticated purchasers, usually with engineering
bachelor’s degrees or higher degrees. Applicant notes that
the purchasers of applicant’s goods are not the users who
make the phone calls; and that “[t]he software associated
with the registration is for the purpose of distributing
calls[,] [that] ‘distributing’ means ‘to spread out[,]’
[whereas applicant’s] goods are for the purpose of bringing
Serial No. 75373093
6
together three or more parties to a telephone or video
call.” (Brief, pp. 4-5.)
The question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Applicant’s own prior registration contains both
hardware and software for linking bridges for conferencing.
The identification of goods in the cited registration
contains no limitations and, thus, contrary to applicant’s
assumptions and contentions, registrant’s software is not
limited to distributing two-party calls, nor is it limited
to being disseminated on diskettes to individual end-users.
Rather, the broad identification of goods in the
registration encompasses all types of computer software for
automatically distributing calls, from a low-end basic
product to expensive software. We see from applicant’s own
prior registration that linking bridges for conferencing
involves both hardware and software. We find this record
Serial No. 75373093
7
sufficient to conclude that the products are sufficiently
related that, if identified by identical marks, confusion as
to source is likely.
Moreover, the broad identifications of goods in both
the application and the cited registration means that both
products are distributed through all normal trade channels
for such products to all usual purchasers thereof, and there
is likely to be overlap. The fact that some set of
purchasers of both applicant’s and registrant’s products may
be knowledgeable, sophisticated purchasers does not mean
that they are immune from trademark confusion.
Therefore, we conclude that in view of the identity of
the marks herein, their contemporaneous use on the related
goods involved in this case is likely to cause confusion as
to the source or sponsorship of such goods.
Further, applicant, as the newcomer, has both the
opportunity and the obligation to avoid confusion. While we
have no doubt in this case, we point out that we are
obligated to resolve any doubt that confusion is likely in
favor of the registrant. See J & J Snack Foods Corp. v.
McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir.
1991); and In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025 (Fed Cir. 1988).
Decision: The refusal under Section 2(d) of the Act is
affirmed.