DocuSys, Inc.

Trademark Trial and Appeal Board

Jun 9, 2004

No. 76348236 (T.T.A.B. Jun. 9, 2004)

Mailed:
June 9, 2004
Paper No. 13
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re DocuSys, Inc.1
________
Serial No. 76348236
_______
Michael D. Braunstein of Lerner, David, Littenberg,
Krumholz & Mentlik for DocuSys, Inc.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Quinn, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
On December 13, 2001, applicant filed the above-
captioned application, by which it seeks registration of
the mark DOCUVIEW (in typed form) for goods identified in
the application as
1 By change of name from MEDDOC, Inc., recorded on March 28, 2002
at Reel 2481, Frame 0709.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76348236
2
medical system software for controlling the
operation and management of medical systems for
real time imaging and tracking patients and
patient information, drug administration
information, surgical procedure status
information, and hospital staff and medical
equipment throughout the perioperative
environment, including electronic displays for
visually displaying information, devices for
reading machine readable information, and data
input devices
in Class 9. The application is based on applicant’s
asserted bona fide intention to use the mark in commerce.
Trademark Act Section 1(b), 15 U.S.C. §1051(b).
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to applicant’s goods,
so resembles the mark DOCUVIEW, previously registered (in
typed form) for “computer programs for document management
and production,”2 as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d). The appeal has been fully briefed.
Applicant initially requested an oral hearing but later
withdrew the request, so no oral hearing was held. We
reverse the refusal to register.
2 Registration No. 2152721, issued April 21, 1998. Affidavits
under Trademark Act Sections 8 and 15 accepted and acknowledged.
Ser. No. 76348236
3
The evidence of record on appeal consists of:
dictionary definitions of the words “document,”
“management” and “production,” submitted by applicant as
exhibits to its response to the first office action; two
news releases from the owner of the cited registration,
submitted by applicant (Exhibits A and D to applicant’s
request for reconsideration); printouts of pages from
applicant’s website, submitted by applicant (Exhibits B and
C to applicant’s request for reconsideration); printouts of
the websites or news releases of six third parties which
use DOCUVIEW or variations thereof as marks on or in
connection with software products or services, submitted by
applicant (Exhibits E-I to applicant’s request for
reconsideration); and printouts of definitions of the word
“document” from three on-line computer dictionaries, which
the Trademark Examining Attorney submitted with his brief
and of which he requests that we take judicial notice.3 We
3 The three definitions are from Webopedia, FOLDOC, and TISCALI
Reference, and were accessed by the Trademark Examining Attorney
via the onelook.com website. The Board does not take judicial
notice of on-line dictionaries which are not also available in
printed format. See In re Total Quality Group Inc., 51 USPQ2d
1474, 1476 (TTAB 1999); compare In re CyberFinancial.Net Inc., 65
USPQ2d 1791 n.3 (TTAB 2002). It does not appear from the record
that these three on-line dictionaries also exist in printed
format. However, applicant did not object in its reply brief to
the Trademark Examining Attorney’s submission of the on-line
dictionary evidence, but instead has treated it as being properly
of record. We therefore shall do likewise.
Ser. No. 76348236
4
have given no consideration to the printouts of
registrations of various DOCU- marks owned by applicant,
which were submitted by applicant for the first time with
its reply brief. This evidence is untimely. See Trademark
Rule 2.142(d), 37 C.F.R. §2.142(d).
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E. I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we 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.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We turn first to the second du Pont factor, i.e.,
whether applicant’s goods, as identified in the
application, are similar or dissimilar to the goods
identified in the cited registration. It is not necessary
that the respective goods be identical or even competitive
in order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some
Ser. No. 76348236
5
manner, or that the circumstances surrounding their
marketing are such, that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. See In re Martin’s Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re
International Telephone & Telegraph Corp., 197 USPQ2d 910
(TTAB 1978). Moreover, the greater the degree of
similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between the applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion; where the applicant’s
mark is identical to the registrant’s mark, as it is in
this case, there need be only a viable relationship between
the respective goods or services in order to find that a
likelihood of confusion exists. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
Ser. No. 76348236
6
Applying these principles in the present case, we find
that applicant’s goods are sufficiently dissimilar and
unrelated to the goods identified in the cited registration
that confusion is not likely, notwithstanding the identical
nature of the respective marks in terms of appearance and
sound (see discussion infra).
It is settled that the likelihood of confusion
determination must be made on the basis of the goods or
services as identified in the applicant’s application and
in the cited registration. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813
(Fed. Cir. 1987). The primary point of contention between
applicant and the Trademark Examining Attorney in this
appeal centers on the nature of the goods identified in the
cited registration, i.e., “computer programs for document
management and production.” More specifically, the dispute
centers on the definition of the word “document” in the
registrant’s identification of goods. Applicant cites to
the following dictionary definition of “document” from The
World Book Dictionary (1985) at p. 619: “something written
or printed that gives information and can be used as proof
of some fact; any object used as evidence.” Applicant
argues that the registrant’s computer programs are used to
manage and produce such “written or printed” documents. By
Ser. No. 76348236
7
contrast, applicant argues, applicant’s medical systems
software does not involve the management or production of
such written or printed documents, but rather is used to
control and manage information, i.e, real time information
for tracking patients, drug administration, surgical
procedure status and hospital staff and medical equipment
throughout the perioperative4 environment.
The Trademark Examining Attorney, for his part, argues
that the word “document” in the cited registration’s
identification of goods covers not just conventional
printed or written documents but also “any file produced by
a software application.” He supports this proposition by
citing to the on-line dictionary definitions of “document”
he has made of record:
document: (n.) In the PC world, the term was
originally used for a file created with a word
processor. In addition to text, documents can
contain graphics, charts, and other objects.
Increasingly, the line separating word
processing files from files produced by other
applications is becoming blurred. …
Consequently, the term document is used more
and more to describe any file produced by an
application. (Webopedia.)
4 We take judicial notice that Stedman’s Medical Dictionary (27th
ed. 2000), at 1351, defines “perioperative” as “around the time
of operation.” The Board may take judicial notice of technical
reference works such as medical dictionaries and (see infra)
computer dictionaries. See In re 3Com Corp., 56 USPQ2d 1060,
1061 n.3 (TTAB 2000); see generally TBMP §1208.04 (2d ed., 1st
rev. March 2004).
Ser. No. 76348236
8
document: Any specific type of file produced
or edited by a specific application; usually
capable of being printed. E.g. “Word
document,” “Photoshop document,” etc.
(FOLDOC.)
document: Data associated with a particular
application. For example, a text document
might be produced by a word processor and a
graphics document might be produced with a CAD
package. An OMR or OCR document is a paper
document containing data that can be directly
input to the computer using a document reader.
(TISCALI Reference.)
The Trademark Examining Attorney argues:
These definitions clearly show that the term
“document” as used in context with the
registrant’s goods, refers not only to files
produced by a word processor, but any file
produced by a software application. Therefore,
the applicant’s claim that the registrant’s
identification should be limited to “software
that deals with conventional documents” is not
persuasive. The attached definitions also
clearly indicate that the applicant’s goods are
in fact used for displaying and managing
documents. Applicant’s goods are used for
controlling, managing and displaying patient
information, drug administration information
and surgical procedure status information.
The attached definitions clearly indicate that
it would not be inaccurate to refer to this
information which is managed by a software
application as patient information documents,
drug administration information documents and
surgical procedure status information
documents. In fact, the product description
information taken from the applicant’s website
and entered into the record via the applicant’s
request for reconsideration filed May 8, 2003
depicts the goods being used to collect and
manage information in the form of a document
Ser. No. 76348236
9
that is labeled “Electronic White Board.” The
definitions and evidence of record in this case
contradict the applicant’s assertion that its
goods are not used to create or manage
documents.
(Brief, unnumbered pages 4-5.)
We are of the opinion that the Trademark Examining
Attorney has accorded an unduly broad scope to the goods
identified in the cited registration. We agree with
applicant’s contention that, if the Trademark Examining
Attorney is correct in arguing that the word “document” in
the registration’s identification of goods should be
construed so broadly as to cover “any file produced by a
software application,” it would render superfluous the
language “document management and production” in the
identification of goods because, in that sense, virtually
all computer application programs produce “files” and
therefore produce “documents.” Applicant argues that such
an interpretation would effectively reduce the
registration’s identification of goods to “computer
programs,” an identification which would be impermissibly
broad and indefinite under the Office’s current examination
standards (which require that “computer programs” be
Ser. No. 76348236
10
identified with specificity as to both the function/purpose
and the field; see TMEP §1402.03(d)).5
The Trademark Examining Attorney responds to this
argument by citing In re Linkvest S.A., 24 USPQ2d 1716
(TTAB 1992), in which the Board held that the “computer
programs recorded on magnetic disks” identified in the
cited registration in that case encompassed all computer
programs, including the involved applicant’s more
specifically-identified “computer programs for data
integration and transfer.” As the Trademark Examining
Attorney has noted, In re Linkvest is still good law,
notwithstanding the Office’s more stringent current
requirements for identifying computer programs. See In re
N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000).
However, we agree with applicant’s contention that
this case is readily distinguishable from In re Linkvest.
Unlike the “computer programs recorded on magnetic disks”
involved in Linkvest, which were held to encompass all
types of computer programs, the computer programs
identified in the cited registration herein in fact are
specifically limited in terms of function, i.e., they are
5 It appears from the Office’s Acceptable Identification of Goods
and Services Manual that the Office’s more stringent requirements
for identifying computer programs took effect on April 12, 1999.
The cited registration herein issued in 1998.
Ser. No. 76348236
11
computer programs for “document management and production.”
We take judicial notice that “document management” is a
term of art in the computer field which is used to refer to
a specific type of software or system, as is evidenced by
the following definitions from three computer dictionaries.
In Freedman, The Computer Glossary (9th ed. 2001) at 114,
“document management” is defined as follows: “The capture
and management of documents within an organization. The
term used to imply the management of documents after they
were scanned into the computer. Today, the term has become
an umbrella under which document imaging, workflow, text
retrieval and multimedia fall.” The “document imaging” to
which this definition refers is defined, in turn, as
The online storage, retrieval and management of
electronic images of documents. The main
method of capturing images is by scanning paper
documents. Document imaging systems replace
large paper-intensive operations. Documents
can be shared by all users on a network and
document routing can be controlled by the
computer (workflow). The systems are often
simpler to develop and implement than
traditional data processing systems, because
users are already familiar with the paper
documents that appear on screen.
Likewise, in Pountain, The New Penguin Dictionary of
Computing (2001) at 145, “document management system” is
defined as
Ser. No. 76348236
12
A computerized system for storing large volumes
of documentary material, such as used by large
corporations and government departments to keep
their archives. If the documents are already
in electronic form, they may be put into a text
retrieval system that enables indexed searches,
or they may be transcribed into some standard
notation such as SGML for uniformity of
formatting. Documents not already in
electronic form may be scanned and turned into
editable, searchable computer text by using
optical character recognition (OCR), or else
stores as bitmap images if they are handwritten
or otherwise unsuitable for OCR. In the latter
case the document management system normally
provides some means of annotating each image to
help in retrieving them.
Finally, The Microsoft Computer Dictionary (5th ed. 2002)
defines “document management” as “the full spectrum of
electronic document creation and distribution within an
organization,” and “document management system” (in
relevant part) as
A server-based network facility designed for
the storage and handling of an organization’s
documents. A document management system, or
DMS, is built around a central library known as
a repository and typically supports controlled
access, version tracking, cataloging, search
capabilities, and the ability to check
documents in and out electronically.
Moreover, several of the third-party websites printed
out and submitted by applicant likewise refer to “document
management” products as a specific type or field of
Ser. No. 76348236
13
products. For example, the website of Albatross Consulting
includes the following language:
Document Management Range
Our range of document management products
incorporates three separate products, targeted
at all levels of user from the home user to the
large corporation. …
The Document Reader
The entry level product. It is capable of
reading up to 200 file formats (depending on
licensing), as well as viewing the markup files
created by the other products in the range.
Document Markup
The same basic product as the reader, but with
the added ability to create markup files and
perform batch printing and plotting.
Document Manager
Built around the same technology as the other
products in the family, the Manager
incorporates many functions required [by]
drafting houses and large corporations alike.
It not only views and prints files, it also
stores them in a database, keeps multiple
versions, allows users to search on specific
(user-defined) attributes of the documents,
handles notifications related to document
changes, and much more.
Another website of record (www.scansolutions) refers to the
company’s DocuView TIFF viewer as follows: “DocuView is a
powerful TIFF viewer, [an] image viewer specially designed
for integration with existing applications and databases to
add document imaging, document management or extensive
image viewing capabilities.”
Ser. No. 76348236
14
It is apparent from these dictionary definitions and
this Internet evidence that the word “document,” when used
in the context of “document management,” is not understood
to refer to “any file produced by a software application,”
as the Trademark Examining Attorney argues. Rather, the
term is used and understood in its more specific and
conventional sense, i.e., to refer to discrete, self-
contained documents or images of documents, albeit
electronic, which can be archived, retrieved, modified,
printed out, transmitted, and otherwise used or manipulated
by means of document management software or systems.6
6 We note that registrant’s press releases describing its
software, made of record by applicant, corroborate our finding
that “document management” software, as that term is used in
registrant’s identification of goods, appears to have the meaning
we have ascribed to it. See, for example, the press release
submitted as Exhibit A to applicant’s request for
reconsideration, in which the following headline and relevant
illustrative text appears:
DocuCorp Introduces DocuView 3.0, Expanding Viewing Of
Archived Documents
…
“Image file viewers frequently use font substitution
technology and are not capable of displaying a
document that looks just like the original,” he
explained. “We support the fonts and other resources
used in printstream files, so that what you see on the
screen is what was or would have been printed.
Fidelity to the original document is extremely
important in many viewing applications such as legal
documents.”
…
Other powerful elements include extensive annotation
features: highlighting, stick-on notes with text,
empty and filled rectangles, free text, freehand
drawing, and virtual “rubber stamps” for both text and
Ser. No. 76348236
15
Having thus determined that the goods identified in
the cited registration cover a specific type of software,
i.e., document management software, we further find that
applicant’s software, as identified in the application, is
neither encompassed by registrant’s identification of goods
nor sufficiently related to registrant’s software that
confusion is likely to result from use of the mark DOCUVIEW
on both products. Applicant’s software, as identified in
the application, does not involve the management and
production of “documents” as that term is used and
understood in the context of “document management”
software. Rather, as is apparent from the language of the
images, Andereck added. Annotations can be sized and
manipulated individually, and allow selection of
color, transparency, font style, and line width.
Annotations, which can be displayed or hidden, are
stored separately from the underlying print files, so
print files are never modified.
We have considered this evidence not for the purpose of limiting
or restricting the scope of registrant’s goods; as noted supra,
our likelihood of confusion determination must be based on the
goods as they are identified in the registration. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, supra. Rather,
because the Trademark Examining Attorney has based his argument
in large part on his expansive reading of registrant’s
identification of goods (and has contended that applicant’s
argument is based on an unduly narrow reading of that
identification of goods), we find that registrant’s press
releases, along with the dictionary and Internet evidence
discussed above, are probative evidence to be considered in
ascertaining the common commercial meaning of the words “document
management” in registrant’s identification of goods. See In re
Continental Graphics Corp., 52 USPQ2d 1374 (TTAB 1999); In re
Trackmobile Inc., 15 USPQ2d 1152 (TTAB 1990).
Ser. No. 76348236
16
identification of goods, applicant’s software is used “for
controlling the operation and management of medical systems
for real time imaging and tracking of patients” and various
types of information throughout the perioperative
environment.7
This basic difference in the nature and function of
the respective goods also informs our analysis, under the
first du Pont evidentiary factor, of the similarity or
dissimilarity of the marks when viewed in their entireties
in terms of appearance, sound, connotation and overall
commercial impression. Although applicant’s mark is
identical to the cited registered mark in terms of
appearance and sound, the marks have different connotations
as applied to the respective goods identified in the
7 The Trademark Examining Attorney, relying on statements
contained on applicant’s website, argues that applicant’s
software in fact is used to produce “documents” to the extent
that it is “used to collect and manage information in the form of
a document that is labeled ‘Electronic White Board’.” We are not
persuaded. There is no evidence in the record showing what a
non-electronic “White Board” is, but we presume, from the
depiction of the “electronic white board” on applicant’s website,
that it is a dry-erase board (similar in function to a
chalkboard) upon which the operating room’s schedule for the
current work shift (identifying patients, procedures to be
performed, the operating room in which they are to be performed,
and hospital staff assignments) is displayed. Given its
temporary nature, we cannot conclude that the “white board,” even
in its non-electronic manifestation, is a “document,” or that
because applicant’s software allows for display of an “electronic
white board,” it thereby is used for “document management and
production,” within the meaning of the goods identified in the
cited registration.
Ser. No. 76348236
17
application and in the registration. DOCU, in registrant’s
mark, connotes the noun meaning of “document,” and
registrant’s mark, as applied to registrant’s document
management software, connotes the viewing of documents. In
applicant’s mark and as applied to applicant’s goods, by
contrast, DOCU connotes the verb meaning of “document”
i.e., the software is used to “document” the activities and
status of patients, medical staff and equipment in the
perioperative environment. VIEW, in applicant’s mark,
connotes not the viewing of documents, but rather the
viewing of the results of the software’s documentation of
activities and status in real time.
Further supporting a finding of no likelihood of
confusion in this case is applicant’s evidence, pertinent
to the sixth du Pont factor (i.e., the number and nature of
similar marks in use on similar goods) showing that
DOCUVIEW or some variant thereof is used by at least six
third parties as a mark for document management software
products which are similar or related to registrant’s
software. As applied to document management software, the
mark DOCUVIEW is rather highly suggestive in its own right;
such suggestiveness is corroborated by this evidence that
it is used by many others in the field. We cannot conclude
that registrant’s mark is a particularly strong mark, and
Ser. No. 76348236
18
we certainly cannot conclude that the scope of protection
to be accorded it extends so far as to preclude applicant’s
registration of the mark for applicant’s distinctly
different goods.
Finally, and further weighing against a finding of
likelihood of confusion, is the sophistication of purchasers
and the care with which applicant’s goods would be
purchased. As a general rule, the fact that purchasers are
sophisticated or knowledgeable in a particular field does
not necessarily mean that they are immune from source
confusion. See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In
re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
However, circumstances suggesting care in purchasing may
tend to minimize likelihood of confusion. It is well-
settled that one such set of circumstances is in the field
of goods and services purchased and used by hospital and
medical personnel. See, e.g., Electronic Design & Sales
Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388 (Fed. Cir. 1992); In re N.A.D. Inc., 754 F.2d
996, 224 USPQ 969 (Fed. Cir. 1985); and Hewlett-Packard Co.
v. Human Performance Measurement Inc., 23 USPQ2d 1390 (TTAB
1991); see also Astra Pharm. Prod., Inc. v. Beckman
Instruments, Inc., 718 F.2d 1201, 220 USPQ 786 (1st Cir.
1983). In this case, applicant’s software will be purchased
Ser. No. 76348236
19
and used by hospital and medical professionals. Moreover,
because the software is to be used in the perioperative
environment where concerns for the patient’s safety are
paramount, it is likely that the decision to purchase the
software will be made with care.
In summary, it is settled that “[w]e are not concerned
with mere theoretical possibilities of confusion, deception,
or mistake or with de minimis situations but with the
practicalities of the commercial world, with which the
trademark laws deal.” Electronic Design & Sales v.
Electronic Data Systems, supra, 21 USPQ2d at 1391. For the
reasons discussed above, we find that the evidence of record
does not support a finding that there is a likelihood, as
opposed to merely a theoretical possibility, of confusion.
That is, we find that although applicant’s and registrant’s
respective goods are both software products, they perform
distinctly different and unrelated functions; that
applicant’s goods will be purchased by careful,
sophisticated purchasers; that the mark DOCUVIEW, although
identical in terms of appearance and sound, has a different
connotation and overall commercial impression as applied to
applicant’s and registrant’s respective goods; and that, as
applied to registrant’s goods, the mark is highly suggestive
Ser. No. 76348236
20
and not entitled to an overly broad scope of protection,
especially given the evidence of third-party uses of similar
marks on similar goods. Thus, based on this record, we
conclude that there is no likelihood that the relevant
purchasers will be confused as to the source or sponsorship
of applicant’s and registrant’s respective goods, even if
they both are sold under the mark DOCUVIEW.
Decision: The refusal to register is reversed.