Dewey Data LLC

Trademark Trial and Appeal Board

May 28, 2003

No. 76204766 (T.T.A.B. May. 28, 2003)

Mailed: 28 MAY 2003
Paper No. 10
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Dewey Data LLC.
________
Serial No. 76/204,766
_______
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 Simms, Hanak and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
Dewey Data LLC (applicant) has filed an application to
register the mark DITTODISK in typed form, for goods
ultimately identified as “computer hardware and computer
software which are both utilized for computer hard disk
drive protection, duplication and recovery” in
International Class 9.1
1 Serial No. 76/204,766 filed on February 1, 2001. The
application is 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
Ser No. 76/204,766
2
The examining attorney2 ultimately refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), because of the registration of the
mark DITTO (in typed form) for “computer memory storage
devices, namely tape drives; computer memory storage
controllers; computer memory storage tape cartridges” in
International Class 9.3
After the examining attorney made the refusal final,
this appeal followed.
We affirm.
The examining attorney argues that “Ditto” is the
dominant part of the marks and “[a]pplicant has taken the
registrant’s mark in its entirety and has added the
descriptive term DISK to the registrant’s mark.” Brief at
4. The examining attorney goes on to argue that applicant
has “devalued the importance of the similarities of the
marks and the commercial impression retained by the average
consumer.” Brief at 6. Because the examining attorney
found that applicant’s hardware utilized for hard disk
drive protection, duplication and recovery is closely
2 The present examining attorney was not the original examining
attorney for this application.
3 Registration No. 2,192,936 issued October 6, 1998.
Ser No. 76/204,766
3
related to registrant’s computer memory storage devices,
the examining attorney refused registration.
Applicant maintains that, while applicant’s and
registrant’s goods are computer products, they “are clearly
different.” Reply Brief at 2. Applicant also cites
numerous cases to show that incorporating a registrant’s
entire mark and adding another term to it does not
automatically result in a likelihood of confusion. When
the marks are viewed in their entireties, applicant
concludes that its “trademark which is a single word
‘DITTODISK’ is totally dissimilar to the prior registrant’s
trademark for ‘DITTO.’ Each trademark also bears its own
arbitrary connotation and commercial impression.” Brief at
12.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ
563, 567 (CCPA 1973). In considering the evidence of
record on these factors, we must keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”
Ser No. 76/204,766
4
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
We start by comparing applicant’s and registrant’s
marks in their entireties to determine if they are similar
in sound, appearance, or meaning such that they
create similar overall commercial impressions. However,
“[s]ide-by-side comparison is not the test. The focus must
be on the ‘general recollection’ reasonably produced by
appellant’s mark and a comparison of appellee’s mark
therewith.” Johann Maria Farina Gegenuber Dem Julichs-
Platz v. Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ
199, 200 (CCPA 1972) (citation omitted).
In this case, both marks contain the same word
“DITTO.” To this word, applicant adds the descriptive word
“disk.” This additional word does not significantly change
the appearance, pronunciation, meaning, or commercial
impression. In a similar case, the Federal Circuit held
that the addition of the word “Swing” to registrant’s mark
“Laser” did not result in the marks being dissimilar.
“[B]ecause both marks begin with ‘laser,’ they have
consequent similarities in appearance and pronunciation.
Second, the term ‘swing’ is both common and descriptive…
Regarding descriptive terms this court has noted that the
descriptive component of a mark may be given little weight
Ser No. 76/204,766
5
in reaching a conclusion on likelihood of confusion.”
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1845-45 (Fed. Cir. 2000) (citations and quotation
marks omitted). See also In re Dixie Restaurants, 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Court held
that the addition of “The,” “Cafe” and a diamond-shaped
design to registrant’s DELTA mark still resulted in a
likelihood of confusion); Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977)
(CALIFORNIA CONCEPT and surfer design likely to be confused
with CONCEPT for hair care products). Similarly, the marks
DITTO and DITTODISK are similar in sound and appearance.
We agree with the examining attorney that this
additional word would be at least highly descriptive of
applicant’s goods inasmuch as applicant’s goods are
computer hardware and software that are “utilized for
computer hard disk drive protection.” Thus, consumers
would be unlikely to rely on the term “disk” in
distinguishing a product designed to be used to protect
disk drives.4
4 We grant the examining attorney’s request to take judicial
notice of the Random House Compact Unabridged Dictionary
definition of the term “disk.” 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 invitation to take judicial
notice of the definition in the Merriam-Webster’s online
Ser No. 76/204,766
6
The examining attorney has also submitted a dictionary
definition that defines “ditto” as “a duplicate; a copy.”5
The word DITTO used with computer memory storage devices
and computer hardware and software used for, inter alia,
duplication would have the same meaning, i.e., to duplicate
or make a copy of a file. Therefore, these marks are
similar in sound, appearance, meaning, and commercial
impression.
Applicant has cited numerous case in which it was
determined that there was no likelihood of confusion when
an entire registered mark was combined with another term.
Of course, there is no per se rule in this case and every
case must be decided on its own facts. See, e.g., Colgate-
Palmolive Company v. Carter-Wallace, Inc., 432 F.2d 1400,
167 USPQ 529, 530-531 (CCPA 1970) (“We are familiar with,
and have considered, the array of decided cases cited and
relied on by the parties. Except as the decided cases
enunciate principles of trademark jurisprudence, they
provide but meager assistance in the disposition of varied
cases as they arise”). Certainly, as discussed earlier,
dictionary because it is not clear if there is a copy of the
dictionary available in book form. 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).
5 American Heritage Dictionary of the English Language (3d ed.)
(1992).
Ser No. 76/204,766
7
the addition of a descriptive word, such as applicant’s
word “disk,” has often not been sufficient to avoid
confusion. See Cunningham; Dixie Restaurants; and Wella
Corp. The additional wording in the cases that applicant
cites had a greater impact on the commercial impression of
the mark. Colgate-Palmolive, 167 USPQ at 530 (“The
difference in appearance and sound of the marks in issue
[PEAK and PEAK PERIOD] is too obvious to render detailed
discussion necessary”); Lever Brothers Co. v. Barcolene
Co., 463 F.2d 1167, 174 USPQ 392 (CCPA 1972) (ALL CLEAR not
confusingly similar to ALL for household cleaners).
Next, we consider whether applicant’s and registrant’s
goods are related. “In order to find that there is a
likelihood of confusion, it is not necessary that the goods
or services on or in connection with which the marks are
used be identical or even competitive. It is enough if
there is a relationship between them such that persons
encountering them under their respective marks are likely
to assume that they originate at the same source or that
there is some association between their sources.”
McDonald's Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001).
Ser No. 76/204,766
8
Applicant’s goods are computer hardware and software
utilized for computer hard disk drive protection,
duplication and recovery while registrant’s goods are
computer memory storage devices namely tape drives,
controllers, and tape cartridges. Clearly, applicant’s and
registrant’s goods are not identical, but we cannot agree
that these goods are completely different as applicant
argues. We must consider the goods as they are identified
in the registration and applicant. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”). In this case, neither applicant
nor registrant limits its goods to any particular channels
of trade; therefore, we must presume they move in all
normal channels of trade. Schieffelin & Co. v. Molson
Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989)
(“[M]oreover, since there are no restrictions with respect
to channels of trade in either applicant's application or
opposer's registrations, we must assume that the respective
products travel in all normal channels of trade for those
alcoholic beverages”).
While there is no rule that considers all computer
products to be related, Electronic Data Systems Corp. v.
Ser No. 76/204,766
9
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”), 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. We agree with the examining
attorney’s conclusion that these goods are related.
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.
We also cannot accept applicant’s unsupported argument
that “the trade channels are different because the products
are different and are sold to different consumers.” Brief
at 13. We have no reason to find that the purchasers are
different. Indeed, the purchasers would appear to be the
same to the extent that both applicant’s and registrant’s
products would be sold to purchasers who need to protect or
Ser No. 76/204,766
10
duplicate files on their disk drives. The examining
attorney has included some evidence to show that goods
identified as hard disk drives and tape drives are
registered by the same entities under a common mark.6
Applicant also refers to two applications that were
originally brought to applicant’s attention by the
examining attorney. One, (Serial No. 75/552,077) applicant
acknowledges, is abandoned. The other, Serial No.
75/686,996, applicant reports has now matured in
Registration No. 2,488,461 for providing multiple user
access to a global computer information network. Brief at
3. Even if this registration was properly of record, it
does not support applicant’s position. The services in
that application are obviously significantly 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, they cannot be used to justify
the registration of another confusingly similar mark. In
re J.M. Originals, 6 USPQ2d 1393, 1394 (TTAB 1988).
Finally, if we had any doubts regarding whether there
is a likelihood of confusion, we resolve them in favor of
the prior registrant and against the newcomer. In re Hyper
6 Registration No. 2,537,498; 2,543,799; 2,363,973; 2,443,710;
and 2,2272,606.
Ser No. 76/204,766
11
Shoppes (Ohio) Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026
(Fed. Cir. 1988); Kenner Parker Toys v. Rose Art
Industries, 963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir.
1992).
Decision: The refusal to register on the ground that
applicant’s mark is confusingly similar to the mark in the
cited registration is affirmed.