Computer Corporation of America

Trademark Trial and Appeal Board

Sep 25, 2001

No. 75481164 (T.T.A.B. Sep. 25, 2001)

9/25/01

Paper No. 11
JQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Computer Corporation of America
________

Serial No. 75/481,164
_______

Maggie A. Lange and Jerry Cohen of Perkins, Smith & Cohen
for applicant.

Scott Baldwin, Trademark Examining Attorney, Law Office 112
(Janice O’Lear, Managing Attorney).
_______

Before Simms, Quinn and Chapman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by Computer Corporation
of America to register the mark shown below

for “computer software, namely, database access software
which performs in a client server architecture, and is
installable on personal computers, or other intelligent
client terminals, and in a local network as a gateway to
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/481,164
2
data stored on a mainframe.”1 The word “Connect” is
disclaimed apart from the mark.
Registration has been refused by the Trademark
Examining Attorney under Section 2(d) of the Act on the
ground that applicant’s mark, when used in connection with
applicant’s goods, so resembles the previously registered
mark CONNECT for “computer programs and instruction manuals
sold therewith for use with personal computers in accessing
informational databases”2 as to be likely to cause
confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney contends that the marks are
similar in that the literal portions of the marks are
identical. According to the Examining Attorney, the
addition of the star design in applicant’s mark is
insufficient to distinguish it from registrant’s mark. The
Examining Attorney also maintains that the goods, as
identified, are virtually identical or otherwise

1 Application Serial No. 75/481,164, filed May 7, 1998, alleging
first use anywhere and first use in commerce on December 31,
1993.
2 Registration No. 1,372,228, issued November 26, 1985; combined
Sections 8 and 15 affidavit filed.
Ser No. 75/481,164
3
substantially related. The Examining Attorney submitted a
dictionary definition of the term “connect.”
Applicant argues that the marks as a whole are
distinguishable. Applicant also contends that the goods
are sufficiently different, asserting that “the non-
specific registration of the prior mark should not
prejudice later applicants for registration which identify
goods/services with adequate precision” and that “it is
contrary to public policy to require an applicant, in
circumstances of the type presented here, to force an
applicant to seek partial cancellation of an overbroad
prior registration.” (brief, p. 2). Applicant further
states that purchasers of the goods are sophisticated and
that there has been no actual confusion between the marks.
Our determination under Section 2(d) is based on an
analysis of all of the 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 between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Ser No. 75/481,164
4
The marks have obvious similarities in sound and
appearance. Applicant has adopted the entirety of
registrant’s mark and merely added a subordinate star
design to it. See: Coca-Cola Bottling Co. v. Joseph E.
Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA
1975)[the mere addition of subordinate matter to a
registered mark generally is not sufficient to avoid a
likelihood of confusion]; and In re Appetito Provisions Co.
Inc., 3 USPQ2d 1553 (TTAB 1987)[when a mark consists of a
word and design, the word portion is more likely to be
remembered by purchasers and to be used in calling for the
goods]. As to connotation, although the term “connect” may
have a meaning relative to the goods involved herein, both
marks convey the same thought, that is, that the computer
programs function to join or connect a computer with a
database.
In sum, the marks, when considered in their
entireties, engender substantially similar overall
commercial impressions such that, if used in connection
with related goods, confusion would be likely to occur.
Insofar as the goods are concerned, it is not
necessary that the goods be identical or even competitive
in nature in order to support a finding of likelihood of
confusion. It is sufficient that the circumstances
Ser No. 75/481,164
5
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods originate from or are in some way associated with
the same source. In re International Telephone and
Telegraph Corp., 197 USPQ 910 (TTAB 1978). Further, the
identifications of goods in the application and the cited
registration control the comparison of the goods. See:
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813, 1815 (Fed. Cir. 1987)[“[T]he question of
likelihood of confusion must be determined based on an
analysis of the mark as applied to the goods and/or
services recited in applicant’s application vis-à-vis the
goods and/or services recited in [the] registration, rather
than what the evidence shows the goods and/or services to
be.”]; and In re Elbaum, 211 USPQ 639 (TTAB 1981).
When the goods are compared in light of the legal
constraints cited above, we find that applicant’s “computer
software, namely, database access software which performs
in a client server architecture, and is installable on
personal computers, or other intelligent client terminals,
and in a local area network as a gateway to data stored on
a mainframe” is related to registrant’s broadly identified
Ser No. 75/481,164
6
“computer programs and instruction manuals sold therewith
for use with personal computers in accessing informational
databases.” For purposes of the legal analysis of
likelihood of confusion herein, it is presumed that
registrant’s registration encompasses all goods of the
nature and type identified, that the identified goods move
in all channels of trade that would be normal for such
goods, and that the goods would be purchased by all
potential customers. In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992); and In re Elbaum, supra at 640. Although
their products, in reality, may be specifically different,
both applicant’s and registrant’s computer software, as
identified, is used to allow personal computers to access
databases. There are no limitations in registrant’s
identification of goods and, thus, we must presume that
registrant’s software may be used in client server
architecture and in a local area network. Further, we must
presume that registrant’s computer programs are purchased
not only by individuals, but also by computer professionals
to access databases in computer networks. Thus, the goods,
as identified, are presumed to travel in the same or
similar channels of trade and are bought by the same
classes of purchasers.
Ser No. 75/481,164
7
We recognize applicant’s contention that the average
purchaser buying its product is “a sophisticated
organization with a background in networked systems,
massive data bases, retrieval and storage strategies,
information systems, management and finance through one or
more of the organization’s personnel and departments.”
(response, June 22, 1999). Applicant’s statement, however,
is not supported by any evidence in the record. In any
event, although this factor would favor applicant, it is
outweighed by the similarities between the marks and the
goods.
In finding likelihood of confusion, we acknowledge
applicant’s concern about the scope of protection being
given to the cited registration (brief, p. 2), but
applicant is not without remedies in its attempt to obtain
a registration. Applicant may seek a consent from the
owner of the cited registration, or applicant may seek a
restriction in the cited registration, pursuant to Section
18 of the Act, that may serve to avoid a likelihood of
confusion. See: Eurostar Inc. v. “Euro-Star” Reitmoden
GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994). Compare:
Electronic Data Systems Corp. v. EDSA Micro Corp., 23
USPQ2d 1460 (TTAB 1992)[no likelihood of confusion between
Ser No. 75/481,164
8
specifically identified computer services and programs in
different fields].
Applicant points to the absence of any actual
confusion between the involved marks in the time since
applicant began using its mark. As a du Pont factor, the
absence of actual confusion weighs in applicant’s favor.
The probative weight is very limited here, however, by the
fact that there are no specifics regarding the extent of
use by applicant or registrant. Thus, there is no way to
assess whether there has been a meaningful opportunity for
confusion to occur in the marketplace.
We find that purchasers familiar with registrant’s
computer programs for use with personal computers in
accessing informational databases sold under the mark
CONNECT would be likely to believe, upon encountering
applicant’s mark CONNECT and star design for computer
software, namely, database access software which performs
in a client server architecture, and is installable on
personal computers, or other intelligent client terminals,
and in a local area network as a gateway to data stored on
a mainframe, that the goods originated with or were somehow
associated with or sponsored by the same entity.
Lastly, to the extent that any of the points argued by
applicant casts doubt on our ultimate conclusion on the
Ser No. 75/481,164
9
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); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.