Concurrent Tech-nologies Corp.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 76040747 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Paper No. 20
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Concurrent Technologies Corporation
________
Serial No. 76/040,747
_______
Janel M. Purnell of Buchanan Ingersoll, P.C. for Concurrent
Technologies Corporation.
Jennifer D. Chicoski, Trademark Examining Attorney, Law
Office 115 (Tomas Vlcek, Managing Attorney).
_______
Before Cissel, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 4, 2000, applicant filed the above-identified
application to register the mark “CONCURRENT TECHNOLOGIES
CORPORATION” on the Principal Register for “Web page
design, creation, hosting and maintenance; programming
services, namely, detection and correction of software
bugs, viruses and flaws; customization of software for
others; global computer network consulting and development
services” in Class 42. The basis for filing the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. S.N. 76/040,747
2
application was applicant’s assertion that it had used the
mark in commerce.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that applicant’s mark so resembles the mark
shown below,
which is registered1, with a disclaimer of “CONCURRENT
COMPUTER,” for the following:
“computer systems, sold as a unit or individual parts
thereof, comprising-—computer hardware; computer
software; namely, operating programs, programming
tools, compilers and productivity programs, computer
programs for use with computer networks and
distributed computing, computer programs for use with
graphics and data acquisition, and application
programs in the fields of simulation and training,
signal intelligence and analysis, financial trading,
measurement and control, radar and health care;
computer peripherals and computer interfaces for use
1 Reg. No. 1,912,054, issued on Aug. 15, 1995 to Concurrent
Computer Corp., a Delaware corporation. Affidavit under Sections
8 and 15 accepted.
Ser No. S.N. 76/040,747
3
in conjunction with high performance and real-time
applications” in Class 9;
“manuals, printed pamphlets and books related to
computer systems for use in high performance and real-
time applications or to hardware and/or computer
programs associated with such systems” in Class 16;
“repair, maintenance, and installation services of
computer systems used in high performance and real-
time applications and of hardware and/or computer
programs associated with such systems” in Class 37;
“training services; namely, concerning computer
systems for use in high performance and real-time
applications for hardware and/or computer programs
associated with such systems” in Class 41; and
“consulting and design services for others relating to
systems integration and to the use of computer systems
for use in high performance and real-time applications
and of hardware and/or computer programs associated
with such systems” in Class 42.
The Examining Attorney also pointed out problems in
the application dealing with the recitation of services and
the dates of use, and required applicant to disclaim the
descriptive wording “TECHNOLOGIES CORPORATION” apart from
the mark as shown.
Applicant responded to the first Office Action by
clarifying its dates of use and amending the recitation of
services to adopt the wording suggested by the Examining
Attorney. As amended, the recitation reads as follows:
“programming services, namely, detection and correction of
software bugs, viruses and flaws; computer software design
and modification for others; computer consulting in the
Ser No. S.N. 76/040,747
4
field of web pages and global computer networks; web site
design, creation, hosting and maintenance; design,
configuration and administration of computers and computer
networks, in international class 42.” Applicant argued
that the requested disclaimer was not called for, and also
argued that the refusal to register based on likelihood of
confusion was not justified.
The Examining Attorney accepted applicant’s amendments
to the dates-of-use clause and recitation of services in
the application, but maintained and made final the
requirement to disclaim the term “TECHNOLOGIES CORPORATION”
apart from the mark as shown. She also maintained and made
final the refusal to register based on likelihood of
confusion.
Submitted in support of her position were several
exhibits. One is a copy of a page from applicant’s
website. It states that applicant “has the technology and
the experience to develop Web solutions for any sized
business,” that applicant “can choose appropriate
technology to meet specific needs,” and that applicant’s
“expertise can usher your organization into the world of
electronic commerce using Web technologies.” The Examining
Attorney contended that this language makes it clear that
the term “TECHNOLOGIES CORPORATION,” when used in
Ser No. S.N. 76/040,747
5
connection with applicant’s services, conveys to potential
customers “the purpose and focus of the applicant, the
expertise it has and the services it provides.”
The Examining Attorney also submitted copies of twenty
third-party registrations listing computer-related services
in which the terms “TECHNOLOGIES CORPORATION” or
“TECHNOLOGIES, INC.” are disclaimed, and argued that both
words have descriptive connotations in the context of
technological services rendered by corporations.
Applicant timely filed a Notice of Appeal, followed by
an amendment disclaiming the descriptive term
“CORPORATION.” Additionally, applicant requested the Board
to remand the application to the Examining Attorney for
consideration of additional evidence. This evidence
included a declaration from applicant’s Director of
Manufacturing Technology to the effect that the term
“TECHNOLOGIES” has become distinctive of applicant’s
services; dictionary definitions of the terms “computer”
and “technologies”; an affidavit from applicant’s vice
president to the effect that he is unaware of any actual
confusion between applicant’s mark and the cited registered
mark; copies of pages from applicant’s website, argued to
establish that applicant’s customers are sophisticated; and
copies of pages from the website of the owner of the cited
Ser No. S.N. 76/040,747
6
registration, also argued to establish the sophistication
of the customers for these computer-related goods and
services.
Following the erroneous dismissal of the appeal and
subsequent reinstatement of it, the Board suspended action
on the appeal and remanded the application file to the
Examining Attorney for consideration of the additional
evidence submitted by applicant. The Examining Attorney
accepted the disclaimer of the word “CORPORATION” and
applicant’s claim of distinctiveness with respect to the
word “TECHNOLOGIES” and accordingly withdrew the
requirement for applicant to disclaim the term
“TECHNOLOGIES CORPORATION.” The refusal to register based
on likelihood of confusion, however, was maintained.
Attached to her action was a list of applicant’s other
applications to register its mark for different goods
and/or services; a list of four third-party registrations,
two of which are on the Supplemental Register, for marks
which include the term “CONCURRENT,” and copies of
information about these registrations retrieved from the
Office’s database; and a definition from an on-line
dictionary of the word “TECHNOLOGIES” as “electronic or
digital products and systems considered as a group.” The
Ser No. S.N. 76/040,747
7
application was returned to the Board for resumption of
action on the appeal.
Applicant submitted its appeal brief2, the Examining
Attorney submitted her brief on appeal, and applicant filed
a reply brief, but applicant did not request an oral
hearing before the Board.
The sole issue before the Board in this appeal is
whether confusion is likely between applicant’s mark,
“CONCURRENT TECHNOLOGIES CORPORATION,” for services which
include computer software design and modification, and the
cited registered mark,
2 Applicant submitted copies of printouts from the Office’s TESS
and TARR systems with its brief. The information therein relates
to one pending application and one registration owned by
applicant, both for the word mark here sought to be registered.
The Examining Attorney has objected to our consideration of this
evidence because it was not submitted before the record closed
with the filing of the Notice of Appeal. Trademark Rule 2.142(d)
states that the record should be complete with the filing of a
Notice of Appeal, but in this case, we are allowing this evidence
into the record even though it was submitted after that time
because all the evidence does is update information properly made
of record by the applicant earlier. In her December 9, 2002
denial of applicant’s request for reconsideration, applicant
listed a number it owned. All the objected-to evidence does is
provide details of two of those applications and confirm that in
the intervening time, one application proceeded to registration
and the other one was published for opposition. This information
plainly was not available earlier, so we are allowing applicant
to make it of record at this time. We hasten to note, however,
that its probative value is insignificant, in that the Board is
not bound by decisions made during the examination of
applications which are not before us in this appeal.
Ser No. S.N. 76/040,747
8
for services which include the design of computer hardware
and software.
The predecessor to our primary reviewing court listed
the principal factors to be considered in determining
whether confusion is likely in the case the In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Chief among these factors are the similarity of the
marks as to appearance, pronunciation, meaning and
commercial impression and the similarity of the goods or
services with which they are used.
In view of the apparent overlap of the services, the
issue of whether confusion is likely turns on whether
applicant’s mark and the registered mark are so similar
that they are likely to be confused. We hold that when
these two marks are compared in their entireties, they are
not so similar that confusion is likely.
Although it is well settled that in determining
whether confusion is likely, the marks in question must be
considered in their entireties, it is nonetheless
appropriate, under certain circumstances, to recognize that
Ser No. S.N. 76/040,747
9
one feature of a mark may have more significance in
creating the commercial impression engendered by that mark.
Greater weight may be given to that dominant feature in
determining whether confusion is likely. Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
1976).
The Examining Attorney takes the position that each of
the marks at issue is dominated by the same term,
“CONCURRENT,” and therefore that the overall commercial
impressions engendered by the marks are similar. The
Examining Attorney, notwithstanding her apparent acceptance
of applicant’s position with respect to the acquired
distinctiveness of “TECHNOLOGIES,” argues that the words
“TECHNOLOGIES CORPORATION” have very little, if any,
source-identifying significance in connection with
applicant’s services, and that, in a similar sense, neither
the descriptive term “COMPUTERS” nor the design element in
the registered mark contributes much to the overall
commercial impression generated by that mark. Despite
arguing that “CONCURRENT” dominates the cited registered
mark, the Examining Attorney seems to take the position
that the term is disclaimed in the cited registration
because it is descriptive of registrant’s goods and
services. She refers to an on-line dictionary definition
Ser No. S.N. 76/040,747
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of “CONCURRENT” as meaning “operating or occurring at the
same time,” which presumably leads to the conclusion that a
concurrent computer is one which performs concurrent
processing, that is to say, one which simultaneously
processes more than one command at a time. The Examining
Attorney contends that, in any event, the connotation
“CONCURRENT” has with respect to registrant’s products and
services is the same connotation it has in connection with
the applicant’s services, so the marks create similar
commercial impressions.
We disagree with her basic premise that the only
common element in these two marks, the word “CONCURRENT,”
is the dominant element of either mark. Instead, if we
adopt the argument put forward by the Examining Attorney
that this word has the same significance in applicant’s
mark that it has in connection with the registrant’s mark,
we must conclude that it is therefore either merely
descriptive or highly suggestive in connection with the
respective computer and software design services. As such,
it can hardly be characterized accurately as the dominant
component of either mark.
With the entire literal portion of the registered mark
disclaimed, the design element is clearly the dominant and
source-distinguishing portion of that mark. In view of:
Ser No. S.N. 76/040,747
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(1) the descriptive significance of “CONCURRENT” in
connection with registrant’s goods and services and, by the
Examining Attorney’s argument, its weakness as an element
of applicant’s mark, (2) applicant’s disclaimer of
“CORPORATION”, and (3) applicant’s claim of distinctiveness
with regard to “TECHNOLOGIES,” the dominant element of
applicant’s mark would appear to be “TECHNOLOGIES.”
In short, we find no support for adopting the
conclusion urged by the Examining Attorney, that these two
marks are similar in their entireties, when registrant’s
mark is dominated by a distinctive design, applicant’s mark
is dominated by the apparently distinctive term
“TECHNOLOGIES,” and the only element common to both marks
is a descriptive term (for registrant) or a highly
suggestive one (for applicant). When these two marks are
considered in their entireties, the similarities in
appearance, pronunciation and connotation are not
sufficient to make confusion likely.
We should emphasize that our conclusion that confusion
is not likely is not based on applicant’s arguments with
regard to applicant’s other applications to register its
mark, on the third-party applications or registrations, or
on the asserted sophistication of the purchasers of the
products and services involved in this case. The
Ser No. S.N. 76/040,747
12
information of record regarding applications and
registrations of marks which include the term “CONCURRENT”
are not evidence of use of such marks or that the consuming
public is familiar with their use, so that information is
entitled to very little weight in resolving the question of
whether or not confusion is likely. In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983); National
Aeronautics and Space Administration v. Record Chemical
Co., 185 USPQ 563 (TTAB 1975). Of course, consistent
administration of the Lanham Act is a goal of this agency,
but, as noted above, the Board is neither necessarily aware
of how other applications have been treated at the
examination level of the Office nor bound by decisions made
there. In re AFG Industries, Inc. 17 USPQ2d 1162 (TTAB
1990). Additionally, although applicant argues that
customers for computer hardware and software design are
sophisticated purchasers with regard to these relatively
expensive services, it is well settled that knowledge and
sophistication with respect to particular products and
services does not necessarily translate into the ability to
avoid being confused by the use of similar marks in
connection with closely related goods and/or services. In
re Decombe, 9 USPQ2d 1812 (TTAB 1988).
Ser No. S.N. 76/040,747
13
DECISION: The refusal to register under Section 2(d) of
the Lanham Act on the ground of likelihood of confusion is
reversed.