Dewey Data LLC

Trademark Trial and Appeal Board

Jun 23, 2003

No. 76204767 (T.T.A.B. Jun. 23, 2003)

Mailed: June 23, 2003
Paper No. 10
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dewey Data LLC
________
Serial No. 76/204,767
_______
Thomas I. Rozsa of Rozsa & Chen LLP for Dewey Data LLC.
Monique C. Miller, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Hairston and Drost, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Dewey Data LLC has appealed from the final refusal of
the Trademark Examining Attorney to register the mark
DITTODRIVE for “computer hardware and computer software
which are both utilized for computer hard disk drive
protection, duplication and recovery.”1 Registration
1 Application Serial No. 76/204,767, filed February 1, 2001,
alleging a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/204,767
2
has been finally refused pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with the
identified goods, so resembles the mark DITTO for “computer
memory storage devices, namely tape drives; computer memory
storage controllers; [and] computer memory storage tape
cartridges,”2 as to be likely to cause confusion, mistake or
deception.
Applicant and the Examining Attorney have filed appeal
briefs.3 No oral hearing was requested. We affirm the
refusal.
It is the Examining Attorney’s position that the marks
are highly similar and that the goods are closely related.
The Examining Attorney argues that “applicant has
appropriated the registrant’s mark in its entirety and has
added the descriptive term DRIVE to the mark.” (Brief, p.
4). Further, the Examining Attorney maintains that the
goods of the parties are related as “they both involve
computer hardware” and that “the functions of the goods are
similar, as the applicant’s goods involve ‘protection,
2 Registration No. 2,192,936 issued October 6, 1998.
3 The current Examining Attorney was not the original Examining
Attorney in this case.
Ser No. 76/204,767
3
duplication and recovery’ and the registrant’s goods
involve ‘storage.’” (Brief, p. 8). Further, the Examining
Attorney maintains that the applicant’s and the
registrant’s goods are related and would travel in the same
channels of trade. In support of the refusal, the
Examining Attorney submitted copies of third-party
registrations for marks which the Examining Attorney
maintains “demonstrate registration of the same mark by a
single entity [for] goods related to those of both the
applicant and the registrant.” (Brief, p. 8).
Applicant, in urging reversal of the refusal to
register, argues that when the marks are considered in
their entireties, they create different commercial
impressions; that the Examining Attorney has improperly
dissected the marks; and that the goods are very different
in nature and travel in different channels of trade.
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 and Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In the analysis
of likelihood of confusion presented by this case, two key
considerations are the similarities of the marks and the
similarities of the goods. Federated Foods, Inc. v. Fort
Ser No. 76/204,767
4
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
To determine whether the applicant’s mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression, the test is not whether the marks
can be distinguished when subjected to a side-by-side
comparison. Rather, the question is whether the marks are
sufficiently similar in terms of their overall commercial
impressions that confusion as to source of the goods
offered under the respective marks is likely to result.
Furthermore, although the marks at issue must be considered
in their entireties, it is well settled that one feature of
a mark may be more significant than another feature, and it
is not improper to give more weight to this dominant
feature in determining the commercial impression created by
the mark. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
In this case, we find that applicant’s mark DITTODRIVE
and registrant’s mark DITTO are similar in sound,
appearance, meaning and overall commercial impression.
Applicant’s mark encompasses the entirety of registrant’s
DITTO mark and, while it adds thereto the term DRIVE, such
term is entitled to less weight because it is descriptive
Ser No. 76/204,767
5
in connection with applicant’s computer hardware and
software “utilized for computer hard disk drive
protection.”4 In view of the descriptiveness of the word
DRIVE, it is the word DITTO which has the
source-identifying significance in applicant’s mark. Thus,
the addition of DRIVE to applicant’s mark does not
distinguish the parties’ marks. Further, we note that it
is often the first part of a mark that is most likely to be
impressed upon the mind of a purchaser and remembered. See
Presto Products Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988).
Additionally, although neither applicant nor the
Examining Attorney has discussed the connotation of the
word “ditto,” we take judicial notice of a dictionary
definition to establish its meaning. The American Heritage
College Dictionary (Fourth edition, 2002) defines the word
“ditto” as “a duplicate; a copy.” The word DITTO used with
computer memory storage devices and computer hardware and
4 We grant the Examining Attorney’s request to take judicial
notice of The Computer Glossary definition of the term “drive.”
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). We decline the Examining Attorney’s similar
request to take judicial notice of The Computer Language Company
Inc.’s on-line definition because it is not clear that this is a
recognized dictionary. In re Total Quality Group Inc., 51 USPQ2d
1474, 1475-76 (TTAB 1999); In re CyberFinancial.Net Inc., 65
USPQ2d 1789, 1791 n.3 (TTAB 2002).
Ser No. 76/204,767
6
software used for, inter alia, duplication, would have the
same meaning, i.e., to duplicate or make a copy of a file
or disk. Therefore, these marks are similar in sound,
appearance, meaning and commercial impression.
Applicant has cited a number of cases in which the
addition of a term to another’s mark has been found to
avoid a likelihood of confusion. The cases cited by
applicant are distinguishable from the present situation.
The resulting mark in this case, DITTODRIVE, creates the
same overall commercial impression as DITTO, as opposed to,
for example, TIC TAC and TIC TAC TOE in In re Ferrero, 479
F.2d 1395, 178 USPQ 167 (CCPA 1973) and PEAK and PEAK
PERIOD in Colgate-Palmolive Co. v. Carter-Wallace, Inc. 432
F.2d 1400, 167 USPQ 529 (CCPA 1970).
Turning next to the goods, the issue to be determined
here is not whether the goods are likely to be confused but
rather whether there is a likelihood that the relevant
purchasers will be misled into the belief that they emanate
from the same source. Thus, goods need not be identical or
even competitive in nature in order to support a finding of
likelihood of confusion. It is enough that they are
related in some manner or that some circumstances
surrounding their marketing are such that they would be
likely to be seen by the same persons under circumstances
Ser No. 76/204,767
7
which could give rise, because of the marks used therewith,
to a mistaken belief that they originate from or are in
some way associated with the same producer or that there is
an association between the producers of the goods. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991), and cases cited
therein.
There is no per se rule that all computer products are
related. Electronic Data Systems Corp. v. EDSA Micro
Corp., 23 USPQ2d 1460, 1463 (TTAB 1992) [“All computer
software programs process data, but it does not necessarily
follow that all computer programs are related”).
Nonetheless, in this case, we find that applicant’s and
registrant’s goods are sufficiently related. Applicant’s
hardware and software are used to protect, duplicate, and
recover hard disk drives. Registrant’s computer memory
storage devices would include tape drives and tape
cartridges that could be used to duplicate and protect
files stored on a hard disk. Thus, registrant’s and
applicant’s goods are more than simply computer hardware,
they are products that could be used to accomplish the same
functions, i.e., duplicating or protecting hard disk files.
Indeed, since both applicant’s and registrant’s marks use
the word “Ditto,” meaning to duplicate or copy, the marks
even suggest that the goods are used for the same purpose.
Ser No. 76/204,767
8
With respect to applicant’s contention that the
parties’ goods travel in different channels of trade to
different purchasers, applicant has submitted no evidence
to support this contention. Even if such evidence were
properly of record, it would not affect our decision
herein. The question of likelihood of confusion must be
determined on the basis of the identification of goods set
forth in the subject application and the cited
registration. Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990).
There are no restrictions in applicant’s or
registrant’s identification of goods with respect to trade
channels or purchasers. Thus, we must deem that both
applicant’s and registrant’s goods travel though all the
normal channels of trade to all the usual purchasers.
Accordingly, we can draw no distinctions between the
parties’ channels of trade and purchasers, but rather must
consider them to be the same. Indeed the purchasers would
appear to be the same to the extent that both applicant’s
and registrant’s goods would be sold to purchasers who need
to protect or duplicate files on their disk drives.
In finding that the goods are related, we have given
little weight to the third-party registrations submitted by
Ser No. 76/204,767
9
the Examining Attorney in an attempt to show a relationship
between the goods. The problem with this evidence is that
only two of the registrations are based on use and cover
both types of goods involved in this appeal.5 In other
words, only two of the registrations cover computer
hardware and software products for hard disk protection,
duplication and recovery, on the one hand, and computer
memory storage devices, on the other hand. Also, we note
that these two registrations are owned by a single entity.
Applicant also points to two applications that were
originally brought to applicant’s attention by the
Examining Attorney. According to applicant, one (Serial
No. 75/552,077) is abandoned and the other (Serial No.
75/686,996) has issued into Registration No. 2,488,461 for
providing multiple user access to a global computer
information network. Even if this registration were
properly of record, it does not support applicant’s
position. The services in the registration are obviously
very different from applicant’s goods. Also, while third-
party registrations may be used to demonstrate that a
portion of a mark is suggestive or descriptive, as
5 For example, Registration No. 2,481,358 covers, inter alia,
“memory cards” and “printed material relating to computer
hardware and software”; and Registration No. 2,303,386 covers,
inter alia, “data storage recovery services” and “maintenance of
computer hardware.”
Ser No. 76/204,767
10
indicated in AMF Incorporated v. American Leisure Products,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973), they
may not be used to justify the registration of another
confusingly similar mark.
Finally, to the extent that there may be any doubt on
the issue of likelihood of confusion, we must resolve such
doubt in favor of the registrant and prior user. See In re
Pneumatiques, Caoutchouc Manufacture et Plastiques Kleber-
Colombes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Decision: The refusal to register is affirmed.