E8 Storage Systems Ltd.

Trademark Trial and Appeal Board

Dec 11, 2019

87597189 (T.T.A.B. Dec. 11, 2019)

Mailed: December 11, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

E8 Storage Systems Ltd.
_____

Application Serial No. 87597189
_____

A. Tally Eitan of Eitan Mehulal & Sadot for E8 Storage Systems Ltd.

Rhoda Nkojo, Trademark Examining Attorney, Law Office 117,
Hellen Bryan-Johnson, Managing Attorney.
_____

Before Zervas, Bergsman and Ritchie, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

E8 Storage Systems Ltd. (Applicant) filed an application on the Principal Register
of the mark E8 STORAGE, in standard character form, for the goods set forth below,
as amended:
Computer software for storage of data and information;
computer software that allows software modules in virtual
containers to deliver processing of data; Rack-mounted
computer storage devices, namely, high speed storage sub
systems for high performance and high availability storage
of electronic data either locally or via a telecommunications
network; all the foregoing not intended for end-users and
all the foregoing excluding computer software for use in
This Opinion Is Not a
Precedent of the TTAB
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monitoring and responding to computer security breaches
and computer anti-virus software, in Class 9.1
Applicant disclaimed the exclusive right to use the word “Storage.”
The Examining Attorney refused to register Applicant’s mark under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so
resembles the registered mark E8 SECURITY, in standard character form, for
“computer software for use in monitoring and responding to computer security
breaches; computer anti-virus software,” in Class 9, as to be likely to cause confusion.2
Registrant disclaimed the exclusive right to use the word “Security.”
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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575
U.S. 138, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). “Not all of the DuPont factors are
relevant to every case, and only factors of significance to the particular mark need be
considered.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1800 (Fed.
Cir. 2018) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010)); see also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78

1 Application Serial No. 87597189 filed September 6, 2017, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming February 15, 2017, as the date of first use of
the mark anywhere and in commerce.
2 Registration No. 4681429, registered February 3, 2015. The registration also includes
services in Class 42 that were not included in the Section 2(d) refusal.
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USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114
USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which
we have evidence, we focus our analysis on those factors we find to be relevant.”).
“[E]ach case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA
1973). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747
(Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for
which there is record evidence but ‘may focus … on dispositive factors, such as
similarity of the marks and relatedness of the goods’”) (quoting Herbko Int’l, Inc. v.
Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
I. The similarity of dissimilarity of the marks.
We turn first to the DuPont likelihood of confusion factor focusing on the similarity
or dissimilarity of the marks in their entireties as to appearance, sound, connotation
and commercial impression. DuPont, 177 USPQ at 567. “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Davia, 110
USPQ2d 1810, 1812 (TTAB 2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co.,
390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in
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either form, spelling or sound alone is likely to cause confusion.”) (citation omitted).
In comparing the marks, we are mindful that “[t]he proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Cai v. Diamond Hong,
Inc., 127 USPQ2d at 1801 (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); see also Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012).
Applicant’s mark E8 STORAGE is similar to the registered mark E8 SECURITY
because both marks share the arbitrary term E8. The term E8 has no meaning when
used in connection with computer storage software or computer security software.3
An arbitrary mark is a “known word used in an unexpected or uncommon way.”
Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173
(Fed. Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected
or uncommon way” and observing that such marks are typically strong); see also Palm
Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,

3 “E8 is any of several closely related exceptional simple Lie groups, linear algebraic groups
of Lie algebras of dimension 248.” Wikipedia attached to the December 21, 2017 Office Action
(TSDR 90-96); see also Aimath.org attached to the December 21, 2017 Office Action (TSDR
97-98); OXFORD LIVING DICTIONARIES (oxforddictionaries.com) attached to the July 21, 2018
Office Action (TSDR 10-14); Merriam-Webster.com attached to the July 21, 2018 Office
Action (TSDR 15-21).
All references to the application record are to the Trademark Status and Document Retrieval
(TSDR) system. All citations to documents contained in the TSDR database are to the
downloadable .pdf version of the documents.
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73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are conceptually strong
trademarks).
Although we consider the marks in their entireties, there is nothing improper in
stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, such as a common dominant element, provided the ultimate
conclusion rests on a consideration of the marks in their entireties. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). In this case, the descriptive words
“Storage” and “Security” have less significance in the analysis regarding the
similarity or dissimilarity of the marks. See In re Detroit Athletic Co., 903 F.3d 1297,
1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d
1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”).
The descriptive words “Storage” and “Security” have diminished significance too
because E8 is the lead term in both marks; relevant purchasers are likely to notice
and remember E8. E8 in both marks hence form the commercial impression
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engendered by the marks. See In re Detroit Athletic Co., 128 USPQ2d at 1048 (finding
“the identity of the marks’ two initial words is particularly significant because
consumers typically notice those words first”); Palm Bay Imps., 73 USPQ2d at 1692
(“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve”
is the first word in the mark and the first word to appear on the label); Century 21
Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992) (upon encountering the marks, consumers will first notice the identical
lead word); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (noting
that the dominance of BARR in the mark BARR GROUP is reinforced by its location
as the first word in the mark); Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to
be impressed upon the mind of a purchaser and remembered”).
Finally, because both Applicant’s mark and Registrant’s mark are in standard
character form, they are not limited to any particular depiction. The rights associated
with a mark in standard characters reside in the wording, and not in any particular
display. Thus, Applicant may depict its mark in any manner, regardless of the font
style, size, or color. In fact, Applicant may display E8 STORAGE in a manner similar
to Registrant’s mark. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11
(Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1259 (Fed. Cir. 2011). Applicant’s original and substitute specimens,
shown below, display the term E8 as the dominant part of Applicant’s mark.
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Likewise, Registrant may display its mark with an emphasis on the leading term E8.
Trade dress may be used to prove that a word mark projects a similar commercial
impression. As the Court of Appeals for the Federal Circuit has stated:
Ordinarily, for a word mark we do not look to the trade
dress, which can be changed at any time. Vornado, Inc. v.
Breuer Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340, 342
(CCPA 1968). But the trade dress may nevertheless
provide evidence of whether the word mark projects a
confusingly similar commercial impression.
Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1458
(Fed. Cir. 1992). See Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d
669, 223 USPQ 1281, 1284 (Fed. Cir. 1984).
In sum, because both marks include the dominant, arbitrary term E8 followed by
a descriptive term, the marks are similar. “[I]f the dominant portion of both marks is
the same, then confusion may be likely notwithstanding peripheral differences.” In
re Denisi, 225 USPQ 624, 624 (TTAB 1985). The peripheral differences in this case
fail to distinguish the marks.
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II. The similarity or dissimilarity and nature of the goods.
In determining whether the goods at issue are related, it is not necessary that the
goods of the parties be similar or competitive in character to support a holding of
likelihood of confusion; it is sufficient for such purposes that a party claiming damage
establish that the goods are related in some manner or that conditions and activities
surrounding marketing of these goods are such that they would or could be
encountered by same persons under circumstances that could, because of similarities
of marks used with them, give rise to the mistaken belief that they originate from or
are in some way associated with the same producer. Coach Servs., 101 USPQ2d at
1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB
2010).
Where very similar marks are involved, as is the case here, the degree of similarity
between the parties’ goods that is required to support a finding of likelihood of
confusion declines. Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661
(TTAB 2002) (“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.”); In re Opus One Inc., 60 USPQ2d 1812, 1815
(TTAB 2001) (same). It is only necessary that there be a viable relationship between
the two to support a finding of likelihood of confusion. In re Concordia Int’l
Forwarding Corp., 222 USPQ 355, 356 (TTAB 1983). The issue here, of course, is not
whether purchasers would confuse the parties’ goods, but rather whether there is a
likelihood of confusion as to the source of these goods. In re Cook Medical Technologies
Serial No. 87597189

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LLC, 105 USPQ2d 1377, 1380 (TTAB 2012); Helene Curtis Indus. Inc. v. Suave Shoe
Corp., 13 USPQ2d 1618, 1624 (TTAB 1989); In re Rexel Inc., 223 USPQ 830 (TTAB
1984).
To show that the identified storage software and security software are related, the
Examining Attorney submitted excerpts from third-party websites using similar
marks for storage and security software, such as that identified in the application
and in the cited registration. The Examining Attorney submitted excerpts from the
third parties listed below.4
Evidence submitted with December 21, 2017 Office Action:
1. IBM
a. IBM Security (ibm.com/security/products)5
b. IBM Spectrum Storage (ibm.com/it-infrastructure and
ibm.com/storage/spectrum)6
2. Hewlett-Packard
a. HP Secure (hp.com)7
b. HP software defined storage (hp.com)8

4 It was not necessary for the Examining Attorney to submit these excerpts a second time in
her July 21, 2018 Office Action.
5 TSDR 13-41.
6 TSDR 44-50.
7 TSDR 51-57.
8 TSDR 58-64.
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3. Veritas
a. Veritas (veritas.com/solutions/data-protection)9
b. Veritas (veritas.com/products/software-defined-storage)10
4. Dell
a. DELL EMC software defined storage (dellemc.com)11
b. DELL DATA GUARDIAN (data.security.dell.com/security-solutions)12
5. Microsoft
a. Microsoft software defined storage (microsoft.com-us/cloud-
platform/software-defined-storage)13
b. Microsoft Secure (microsoft.com/en-us/security)14
Evidence submitted with July 21, 2018 Office Action:
1. NetApp
a. NetApp data storage software (netapp.com)15
b. NetApp ONTAP data security (netapp.com)16

9 TSDR 65-67.
10 TSDR 68-73.
11 TSDR 74-78.
12 TSDR 79-81.
13 TSDR 82-85.
14 TSDR 86-89.
15 TSDR 31-38.
16 TSDR 39-45.
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2. VMWARE
a. VMWARE Professional Services for security (vmware.com/professional-
services/transform-security.html)17
b. VMWARE defined data storage (vmware.com/products/software-defined-
storage.html)18
In addition, the Examining Attorney submitted copies of five third-party
trademark registrations for marks for both computer software security and storage
of data and information.19 Third-party registrations based on use in commerce that
individually cover a number of different goods might have probative value to the
extent that they serve to suggest that the listed goods are of a type that may emanate
from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-1786
(TTAB 1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988), aff’d mem. 864 F.2d 149 (Fed. Cir. 1988). The registrations, with relevant
portions of the identifications, are listed below.
Mark Reg. No. Goods
CLOUD PROCESSOR 4618925 Computer data processing systems
comprising, inter alia, memory and computer
security software; computer data storage
systems comprising computer memory
SUNGUARD
AVAILABILITY
SERVICES
4694503 Computer software for use in the field of
computer security and data storage
optimization

17 TSDR 46-53.
18 TSDR 54-56.
19 July 21, 2018 Office Action (TSDR 71-92). We did not consider Registration No. 5283909
for the mark COPSYNC because the description of goods does not include computer security
software (TSDR 80-84).
Serial No. 87597189

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Mark Reg. No. Goods
CM BROWSER 5056339 Computer security and privacy software;
software for use in database management and
electronic storage of data
NORTON SECURED 4365342 Computer software for database management
in the field of cryptographic network security
and data security functions; computer
software and firmware for the management,
transmission, and storage of data and
information
RUGGED.
RELIABLE. READY.
5501841 Computer storage devices, namely, high-speed
storage subsystems for storage and backup of
electronic data either locally or via a
telecommunications network; computer
security consultancy; computer security
consultancy in the field of scanning and
penetration testing of computers and
networks to assess information and security
vulnerability

Applicant contends that the goods are not related for the following reason:

Registrant performs behavior analytics. This means the
security element of Registrant monitors the user’s
behavior, learn[s] from it, and act[s] upon it in their
security product. Whereas Applicant’s product, by contrast
is not even exposed to the end users because it is only
attached to the servers.
* * *
[T]he Applicant provides infrastructure integrated
software to form cost-effective storage services. Applicant
does not sell to computer administrators which
Registrant’s [sic] sell to.20
The problem with Applicant’s contention is that we must compare Applicant’s and
Registrant’s respective goods as they are identified in the application and the cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,

20 Applicant’s Brief, p. 2 (7 TTABVUE 3).
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110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput.
Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s
description of goods includes “computer software for storage of data and information”
“excluding computer software for use in monitoring and responding to computer
security breaches and computer anti-virus software” and Registrant’s description of
goods includes “computer anti-virus software.” Notwithstanding Applicant’s
argument regarding the actual scope of its own and the cited Registrant’s commercial
use of its mark, the evidence submitted by the Examining Attorney shows that the
same companies use the same or similar marks to identify both “computer software
for storage of data and information” and “computer anti-virus software.”
Applicant argues that “[t]he fact that other parties may provide security software
and storage software by the same source, does not warrant that this is the case in the
present circumstances as in the present case.”21 While Applicant may not provide
security software and Registrant may not provide storage software, the evidence
shows that some companies provide both types of software under the same or similar
marks. Thus, a consumer familiar with E8 SECURITY software encountering E8
STORAGE software may mistakenly believe that the software emanates from the
same source because of the similarity of the marks used to identify the software.
We find that the goods are related.

21 Applicant’s Brief, p. 4 (7 TTABVUE 5).
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III. Established, likely-to-continue channels of trade and classes of consumers.
As noted above, Registrant’s description of goods is “computer software for use in
monitoring and responding to computer security breaches; computer anti-virus
software” without any limitations or restrictions. Because there are no limitations as
to channels of trade or classes of purchasers in the description of goods in the cited
registration, we presume that Registrant’s goods are offered in all channels of trade
normal for those goods, and that they are available to all classes of purchasers for
those goods. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); Paula Payne Prods. Co. v. Johnson Publ’g Co.,
473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258
F.2d 956, 119 USPQ 139, 140 (CCPA 1958); In re Integrated Embedded, 120 USPQ2d
1504, 1515 (TTAB 2016); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
This means that Registrant’s could license its security software to those who are not
“end-users,” that is, consumers who would or could license Applicant’s storage
software. Thus, the restrictions in Applicant’s description of goods do not remove the
potential overlap in channels of trade and classes of consumers.22 Registrant’s
description of goods is unrestricted which allows Registrant’s channels of trade and
classes of consumers to overlap with Applicant’s channels of trade and classes of

22 The restrictions “all the foregoing not intended for end-users and all the foregoing excluding
computer software for use in monitoring and responding to computer security breaches and
computer anti-virus software” are separated from the rest of the description of goods by a
semicolon. “Semicolons should generally be used to separate distinct categories of goods or
services within a single class.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) §
1402.01(a) (2018). However, as the restrictions do not make sense as a standalone category
of products. Given the structure of the identification, as worded, we find that the restrictions
apply to all of the products identified.
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consumers. In this regard, it is common knowledge that security software protection
is essential for any computer system or network no matter its size or complexity.
Because security is an essential feature of any computer system or network, it would
not be unusual for a computer system or network to have both storage software
(whether or not licensed to end users) and security software.
We find that Applicant’s goods are offered in some of the same channels of trade
and to some of the same classes of consumers as Registrant’s goods.
IV. Consumer purchasing care
Applicant contends that the prospective purchasers of Applicant’s and
Registrant’s software exercise a high degree of care when making their purchasing
decisions because of the complexity of those products. The prospective purchasers
have “a clear understanding of the needs and requirements of the products are aware
of the full spectrum of the respective products’ capabilities.”23 In addition, “the
purchase process is carefully designed, thereby eliminating likelihood of confusion.”24
Finally, the high price of Applicant’s software minimizes the likelihood of confusion.
As stated above, the purchase patterns for the respective
products are very specific. This fact, together with the
difference in nature of the products, the sophistication of
the buyers and different channels of trade of the respective
products, and the price of Applicant’s software which
amounts to US$100,000 further support the conclusion
that any possibility of confusion is negated. Again, the
buyers of Applicant’s goods do not make the purchase
decision hastily. As a matter of necessity, the purchase
patterns call for careful consideration and do not allow for
impulse purchasing habits. Evidently, the products of the

23 Applicant’s Brief, p. 4 (7 TTABVUE 5).
24 Applicant’s Brief, p. 5 (7 TTABVUE 6).
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Registrant also address specific needs of Registrant’s
buyers who seek security software solution for monitoring
end-users’ behaviour to detect security breaches.25
The first problem with Applicant’s arguments is that they are attorney argument;
they are not supported by any evidence. As the Federal Circuit has held, “Attorney
argument is no substitute for evidence.” Zheng Cai, d/b/a Tai Chi Green Tea Inc. v.
Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting
Enzo Biochem, Inc. v. Gen-Probe Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005)); see also
In re U.S. Tsubaki, Inc., 109 USPQ2d 2002, 2006 (TTAB 2014) (finding that there
was no proof to support the statements in the record by counsel).
Even assuming that we could accept counsel’s arguments as facts, Applicant did
not explain the purchasing process. Compare Edwards Lifesciences Corp. v. VigiLanz
Corp., 94 USPQ2d 1399, 1413 (TTAB 2010) (products cost $14,000 and $47,000
respectively and testimony established that purchases of both products involve
significant study and negotiation).
Finally, Applicant relies on extrinsic evidence to explain or clarify the nature of
Applicant’s data storage software and Registrant’s security software. As noted above,
Applicant’s description of goods includes “computer software for storage of data and
information” not intended for end users and excluding computer software for use in
monitoring and responding to computer security breaches and computer anti-virus
software. However, we may not read other limitations or restrictions into the
description of goods. See In re i.am.symbolic, LLC, 123 USPQ2d at 1748; Squirtco v.

25 Applicant’s Brief, p. 6 (7 TTABVUE 7).
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Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific
limitation and nothing in the inherent nature of Squirtco’s mark or goods that
restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board,
thus, improperly read limitations into the registration”); In re Thor Tech, 90 USPQ2d
1634, 1638 (TTAB 2009) (“We have no authority to read any restrictions or limitations
into the registrant’s description of goods.”). Therefore, we must presume that
Applicant’s storage software includes all types of storage software of various levels of
complexity and at various price ranges other than software licensed to end users and
excluding security software. Likewise, Registrant’s identified security software
includes all types of security software of various levels of complexity and price ranges.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1163-64 (Fed. Cir. 2014) (recognizing Board precedent requiring consideration
of the “least sophisticated consumer in the class”); In re Opus One Inc., 60 USPQ2d
at 1817 (while the applicant “offered evidence to show that registrant’s OPUS ONE
wine is an expensive wine... ‘wine’ must be presumed to encompass inexpensive or
moderately-price wine.”); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986) (evidence that relevant goods are expensive wines sold to discriminating
purchasers must be disregarded given the absence of any such restrictions in the
application or registration).
Given the nature of the goods, we accept Applicant’s assertion that the respective
software may be licensed by consumers exercising a heightened degree of purchaser
care. Nevertheless, even careful purchasers are likely to be confused when
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encountering similar goods sold under similar marks. As stated by the Court of
Appeal for the Federal Circuit, “[t]hat the relevant class of buyers may exercise care
does not necessarily impose on that class the responsibility of distinguishing between
similar trademarks for similar goods. ‘Human memories even of discriminating
purchasers ... are not infallible.’” In re Research and Trading Corp., 793 F.2d 1276,
230 USPQ 49, 50 (Fed. Cir. 1986) (quoting Carlisle Chem. Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). Therefore, the fact that
the purchasers are experienced computer software professionals who may exercise
care before licensing these software products does not mean there can be no likelihood
of confusion. In the present case, the similarity between the marks and the similarity
between the goods as identified outweigh any sophisticated purchasing decision. See
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819, 1823 (TTAB 1989),
aff'd, Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840.
1841-42 (Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated
purchasers, careful purchasing decision, and expensive goods).
We find this DuPont factor to be neutral.26
V. Conclusion
Because the marks are similar, the goods are related, and the goods are offered in
some of the same channels of trade to some of the same classes of consumers, we find
that Applicant’s mark E8 STORAGE for “computer software for storage of data and

26 Even had we found this factor to weigh against a likelihood of confusion, it is outweighed
by the other factors in our finding that confusion is likely.”
Serial No. 87597189

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information; computer software that allows software modules in virtual containers to
deliver processing of data; Rack-mounted computer storage devices, namely, high
speed storage sub systems for high performance and high availability storage of
electronic data either locally or via a telecommunications network; all the foregoing
not intended for end-users and all the foregoing excluding computer software for use
in monitoring and responding to computer security breaches and computer anti-virus
software” is likely to cause confusion with the registered mark E8 SECURITY for
“computer software for use in monitoring and responding to computer security
breaches; computer anti-virus software.”
Decision: The refusal to register Applicant’s mark E8 STORAGE is affirmed.