ECI Software Solutions, Inc.

Trademark Trial and Appeal Board

Apr 12, 2017

No. 86544101 (T.T.A.B. Apr. 12, 2017)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
February 28, 2017 April 12, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re ECI Software Solutions, Inc.
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Serial No. 86544101
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Peter J. Willsey, Vincent J. Badolato, and Shane M. Rumbaugh of Cooley LLP for
ECI Software Solutions, Inc.

Nicole Nguyen, Trademark Examining Attorney, Law Office 107 (J. Leslie Bishop,
Managing Attorney).
_____

Before Adlin, Masiello, and Goodman, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
ECI Software Solutions, Inc. (“Applicant”) filed an application for registration on
the Principal Register of the mark NAVERISK in standard characters for the
following goods and services:1
Computer software for the monitoring and management
of IT systems; computer software for project and resource
management, specifically excluding software that
facilitates or relates to Policy Management, insurance

1 Application Serial No. 86544101 was filed on February 24, 2015 under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), on the basis of Applicant’s alleged bona fide intention to
use the mark in commerce.
Serial No. 86544101

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claims management and loss control, in International
Class 9;
Computer services for the monitoring and management of
IT systems; design and development of computer software
for others, specifically excluding the design and
development of software that facilitates or relates to
Policy Management, insurance claims management and
loss control; computer services for project and resource
management, specifically excluding computer services
relating to Policy Management, insurance claims
management and loss control; computer technical support
services, namely, service desk or help desk services for IT
systems; providing online non-downloadable software for
use in the monitoring and management of IT systems, in
International Class 42.
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods and services, so resembles the registered mark
NAVRISK (in standard characters) as to be likely to cause confusion, or to cause
mistake, or to deceive. The cited mark is registered for “Computer software
platforms for Policy Management, insurance claims management and loss control,”
in International Class 9.2 When the refusal was made final, Applicant appealed to
this Board and filed a request for reconsideration. The Examining Attorney denied
the request for reconsideration and this appeal proceeded. The case is fully briefed
and Applicant and the Examining Attorney appeared at an oral hearing on
February 28, 2017.

2 Reg. No. 3526752, issued November 4, 2008; Section 8 affidavit accepted.
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1. Evidentiary matter.
Applicant objects to the evidence that the Examining Attorney submitted for the
first time with her brief.3 That evidence is untimely. 37 C.F.R. § 2.142(d);4 TBMP
§ 1207.01 (Jan. 2017). The new evidence is not suitable for judicial notice5 because it
does not consist of facts “not subject to reasonable dispute” nor does it come from
“sources whose accuracy cannot reasonably be questioned.” See Fed. R. Evid. 201(b).
We have not considered the evidence.
2. Refusal under Section 2(d).
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 issue of
likelihood of confusion as set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods and services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant and the
Examining Attorney have also presented evidence and arguments regarding
customers, and lack of actual confusion.

3 Applicant’s reply brief at 6, 14 TTABVUE 7.
4 “Evidence should not be filed with the Board after the filing of a notice of appeal. If the
appellant or the examining attorney desires to introduce additional evidence after an
appeal is filed, the appellant or the examining attorney should submit a request to the
Board to suspend the appeal and to remand the application for further examination.”
5 Examining Attorney’s brief, 13 TTABVUE 14.
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(a) The marks.
We first consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689 (Fed. Cir. 2005). “The 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.” Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
The marks NAVERISK and NAVRISK are quite similar in appearance. They
differ by only a single letter and otherwise share the letter strings NAV and RISK
in the same order. As to sound, while it is true that there is no single correct
pronunciation of a coined trademark, In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012), it is nonetheless obvious that these two marks could be
pronounced the same, as they are so highly similar in spelling. With respect to
meaning, both marks appear to be coined terms having no recognized meaning. To
the extent that they may be perceived as suggestive, they are likely to convey the
same suggestive meaning or connotation because they are so similar. Applicant’s
argument that the registered mark suggests “navigating risk,” while Applicant’s
mark does not because it is a “fanciful term,”6 is not persuasive. Applicant provides

6 Applicant’s brief at 3, 11 TTABVUE 7.
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no explanation for why the addition of the letter E in its mark should suffice to rid
its mark of the suggestion of navigation and risk.
Considering the marks in their entireties, with their similarities in appearance,
sound, and connotation, and their very minor differences, we find that they create
highly similar overall commercial impressions. Therefore, this factor weighs heavily
in favor of a finding of likelihood of confusion.
(b) The goods and services.
We next consider the similarity or dissimilarity of the goods and services as
identified in the application and the cited registration. Stone Lion Capital Partners,
LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014);
Octocom Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990). We need not consider whether each of Applicant’s identified
goods and services is related to Registrant’s goods; for purposes of a du Pont
analysis, it is sufficient if likelihood of confusion is found with respect to use of an
applicant’s mark in connection with any good or service in a particular
International Class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); Apple Computer v. TVNET.Net, Inc.,
90 USPQ2d 1393, 1398 (TTAB 2007). In this case, both Applicant and the
Examining Attorney have focused their attention on comparing Registrant’s
“Computer software platforms for Policy Management” with Applicant’s computer
software and computer services “for the monitoring and management of IT
systems.” Applicant correctly points out that it would be unrealistic to suggest that
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all types of computer software are commercially related goods for purposes of a du
Pont analysis,7 and the same is true when comparing computer software and
computer services.
The Examining Attorney and Applicant disagree as to the meaning of “Policy
Management” as used in the cited registration. Applicant contends that this term is
ambiguous and argues:
The phrase “policy management” should be construed
conjunctively, not disjunctively, with the remaining text
in the description. … The inclusion of the phrases
“insurance claims management” and “loss control” in the
description of goods for the Cited Mark are obvious
references to insurance policy management. Use of these
other terms makes clear that the registrant included
“policy” in its description of goods as a reference to
insurance policies or agreements …8
Clearly, if we construe “Policy” to mean “insurance policy,” the software identified in
the cited registration would have a very particular purpose, i.e., to assist in the
administration of the contractual terms of insurance policies. Applicant argues that
such insurance-related software is far different from its own software and computer
services for managing information technology (“IT”).
The Examining Attorney contends, however, and the record shows, that “policy
management” is a term of art in the administration of business enterprises. The
record includes references to many third-party products that are described as
“policy management” software. Advertisements describe these software products as
helping businesses create, update and change internal policies; to keep track of

7 Applicant’s brief at 4-5, 11 TTABVUE 8-9.
8 Id. at 7, 11 TTABVUE 11 (emphasis in original).
Serial No. 86544101

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them by storing and organizing them; to make current versions of the policies
readily available to employees for their reference; to facilitate educating employees
about them; to enforce them; and to assess employees’ compliance with them. They
are often described as helping businesses coordinate internal policies and comply
with government regulations. Some examples from the record are set forth below:
DynamicPolicy is a Web-based application that automates
and manages the complete cycle of creation, distribution,
publication, education and enforcement of corporate
policies and procedures. … Management is also able to
track the understanding and compliance of the corporate
policies among employees …9
PolicyStat is policy management software that gets your
staff the information they need when they need it. …
Keeping policies current and easy for your staff to find
reduces risks and eliminates surprises.10
Thomson Reuters Policy Manager: Ensure compliance
through effective policy management across your
organization. … [A]n enterprise-wide solution that
directly connects your organization’s internal policies with
the governing external regulations.11
Accountable is an online HIPAA compliance management
platform that helps organizations manage employee
training, business associate agreements, and their annual
risk assessment. The software was developed to help
simplify the process of becoming HIPAA compliant …12
PowerDMS: Reduces the cost and complexity of policy
management and training by storing, updating,
disseminating, and tracking critical content.13

9 Applicant’s response of June 1, 2016 at 50.
10 Id. at 67.
11 Id. at 66.
12 Id. at 34.
13 Id. at 34.
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RSA Archer Policy Management Software that provides a
consistent process for managing the lifecycle of corporate
policies and their exceptions. It offers a centralized
infrastructure for creating policies, standards, and control
procedures and mapping them to corporate objectives,
regulations, industry guidelines, and best practices.14
MetricStream IT Policy Management Software Solution:
… provides a central repository for storing and organizing
all types of IT policies based on various templates and
classification criteria with automatic or user defined
numbering scheme. …The solution allows users to create
a new or to change an existing IT policy. … The solution
provides tight integration between the IT policy and
procedure repository and the IT compliance, risk and
control framework.15
BWise Compliance & Policy Management Software
Solution: … BWise helps compliance teams quickly
identify company policies and business processes directly
impacted by each regulation.16
See also references to similar software products under the marks ARALOC, MCN
Healthcare Policy Manager, and Check Point.17 Applicant agrees that this type of
“policy management software” is “software designed to manage organizational
policies and procedures and assist policy drafters in writing, sharing, updating, and
attesting to policy changes.”18
Applicant and the Examining Attorney agree that the Board may look to extrinsic
evidence in order to determine the meaning of “Policy Management.” However,
Applicant goes too far in arguing that we should look to Registrant’s internet

14 Office Action of December 1, 2015 at16.
15 Id. at 23.
16 Id. at 27.
17 Applicant’s response of June 1, 2016 at 34 and 30; Office Action of December 1, 2015 at 8.
18 Applicant’s brief at 10, 11 TTABVUE 14.
Serial No. 86544101

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website in order to learn that Registrant’s software is primarily (or perhaps
exclusively) insurance-related, citing In re Trackmobile, Inc., 15 USPQ2d 1152
(TTAB 1990). Indeed, as the Examining Attorney correctly argues, such extrinsic
evidence may not be used to limit in any way the scope of protection accorded the
cited registration.
In Trackmobile, the Board was faced with interpreting an identification of goods
that included an industry term of art (“light railway motor tractors”). The Board
considered the registrant’s specimens and marketing literature in order to learn the
meaning of that term of art (which indeed turned out to be quite different from
what a layperson might have thought). Similarly, in the present case it is
appropriate for us to consider the evidence presented by Applicant and the
Examining Attorney in order to learn the meaning of the term “policy
management.” However, there is a difference between determining the meaning of a
term of art and determining the current scope of a registrant’s business. The Board
in Trackmobile did not look to the specimens and literature for the purpose of
limiting the scope of the registration to the precise limits of the registrant’s current
business. Therefore, on this point we agree with the Examining Attorney: in
interpreting the cited registration, we must presume that Registrant’s goods
encompass all goods of the nature and type identified in the registration. In re
Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006). Although Applicant’s
suggestion that “Policy” means “insurance policy” is a plausible one, the evidence
shows that “policy management” has a particular, non-insurance meaning in the
Serial No. 86544101

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field of business software. We must include this meaning in our interpretation of
the scope of the cited registration. Indeed, in an ex parte proceeding we are required
to give “full sweep” to Registrant’s identified goods. Paula Payne Prods. Co. v.
Johnson Publ’g Co., Inc., 473 F.2d 901, 177 USPQ 76, 77-78 (CCPA 1973).19
We turn, then, to consider whether the goods and services at issue “are related in
some manner and/or if the circumstances surrounding their marketing are such
that they could give rise to the mistaken belief that they emanate from the same
source.” Coach Servs. Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722 (internal
quotation omitted). Applicant contends that they are not related, that the respective
goods and services offer “a different function, to fulfill a different demand, marketed
to different customers”;20 and that typically “companies that offer Policy
Management software … do not also provide software for the monitoring and
managing of IT systems.”21
The Examining Attorney has sought to demonstrate that providers of IT
management software or services also provide policy management software. Her
contention is supported by the following three items of evidence:

19 We have given full consideration to Applicant’s argument that the word “policy” is a
“homograph” and that, in order to avoid an absurd interpretation, we must not give it every
conceivable meaning that it could have. See Applicant’s brief at 6, 11 TTABVUE 10 (“The
Cited Registration should not be interpreted expansively to include both meanings of the
word ‘policy’ because it invokes distinctly different sectors of the marketplace and refers to
completely unrelated goods.”) The evidence shows that “policy management” has a meaning
that is relevant to businesses in general, including Registrant, even if we assume that
Registrant’s business is limited to insurance. Therefore, when we interpret “policy
management” software to mean more than “insurance policy management” software, we are
not straying into a “distinctly different sector of the marketplace.”
20 Applicant’s brief at 10, 11 TTABVUE 14.
21 Id. at 13, 11 TTABVUE 17.
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LabTech Solutions offers “IT management solutions” for
“remote monitoring and management.”22 Its website also
touts its software as follows: “Managing configurations
and IT policies has never been easier … LabTech’s
dynamic group structure brings IT policy management to
a whole new level … Need to make a policy update?
Changes easily replicate to all group members
automatically.”23
Ventiv Technology provides “IT Solutions” to the
insurance industry, “manages mission-critical insurance
applications … includ[ing] proactively monitoring
application availability, performance, response times,
exceptions, faults, and failures.”24 It also provides “Policy
and Program Management” to help insurance companies
“in managing their increasingly complicated insurance
requirements. … Our policy and program management
capabilities helps you … remain compliant with each local
country’s regulations …”25
Kaseya offers an “IT systems management platform” that
allows users to remotely manage “Clients, Servers,
Networks & Mobile Devices.”26 It also offers a policy
management software for “[k]eeping users’ settings
aligned with corporate policy” that “allows you to take
stock of your environment and effectively manage desktop
policy by enforcing … security settings…”27

22 Office Action of June 23, 2016 at 35.
23 Id. at 38.
24 Id. at 7-8.
25 Id. at 13. As the evidence shows, this company provides software and services in all three
of the most relevant areas: IT management, corporate policy management, and insurance
policy-related applications.
26 Office Action of June 23, 2016 at 41-42.
27 Id. at 48. We do not agree with Applicant’s contention that this function is “very
different” from policy management. The evidence indicates that ensuring that employees
follow IT security policies is often central to compliance with laws and rules relating to data
confidentiality (e.g., HIPAA) that may apply to various types of businesses. Much of the
evidence concerning “policy management” software (discussed above) relates to security
requirements of this type.
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It is evident from the record as a whole that, although IT management and policy
management are different functions, they are both likely to be important concerns
of many businesses. A business that uses a computer system may desire either
services or software for IT management, i.e., services or software that assist with
the “monitoring, managing and maintaining IT systems.”28 Similarly, businesses
that use computer systems to store and process data are likely to have policies for
the proper use of those computer systems and the proper treatment of those data,
such as policies regarding computer system security and policies regarding access to
and confidentiality of data. These businesses would have an interest in policy
management software, and they would overlap with the businesses interested in
Applicant’s goods and services. Both IT and IT policy may require management.
Those who use computer systems are likely to view the management of the
operation of those systems as related to the policies regarding the use of those
systems.
Applicant has presented evidence intended to show “over a dozen examples of
industry leaders that do not provide a combination of Applicant’s goods and services
and the goods covered by the Cited Registration.”29 We find this evidence
unconvincing: we cannot deduce from evidence indicating that a company does
provide a certain product or service that it does not provide any other product or
service.

28 See Applicant’s characterization of “IT Management” software, Applicant’s brief at 9, 11
TTABVUE 13.
29 Applicant’s brief at 14, 11 TTABVUE 18; Applicant’s response of June 1, 2016 at 27-67.
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The record is full of marketing materials from businesses offering computer
services and software, and it is evident that such purveyors offer to provide
comprehensive products to serve a wide range of computer-related needs, often
customized to the order of the buyer. As customers are likely to see a relationship
between needs filled by Applicant’s and Registrant’s products and services, and IT
companies sometimes offer both types of software or service, the circumstances are
such that customers would likely believe the goods and services at issue emanate
from the same source if they were offered under confusingly similar marks. This
du Pont factor therefore weighs in favor of a finding of likelihood of confusion.
(c) Customers.
Applicant contends that IT management software “is often purchased by managed
service providers” or “MSPs,” and explains that “[a]n MSP is an entity that remotely
manages a customer’s IT infrastructure and/or end-user systems…”30 However,
there is nothing in the application that would limit Applicant’s customers to MSPs,
and we must therefore assume that Applicant's goods and services are available to
all classes of customers for those goods and services. See, e.g., Paula Payne Products
Co. v. Johnson Publishing Co., 177 USPQ at 77-78. As was discussed above,
Applicant’s goods and services appear to be appropriate for enterprises that operate
their businesses by use of computer systems; and the Ventiv and LabTech
advertisements are directed to businesses other than MSPs. Even if we accept
Applicant’s contention that Registrant’s goods are appropriate only for insurance

30 Applicant’s brief at 9-10, 11 TTABVUE 13-14.
Serial No. 86544101

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companies, there is evidence showing that IBM,31 AppDynamics,32 and Ventiv offer
IT management services to insurance companies. Although not voluminous, this
evidence indicates that the goods and services at issue are offered in some cases to
the same classes of customers.
On the other hand, we agree with Applicant’s suggestion that the relevant
customers are sophisticated “professional or commercial purchasers”33 that would
apply to the selection of the goods and services a degree of care commensurate with
business decisions, even though there is no evidence regarding the cost of the goods
and services to support Applicant’s contention that the goods are “high-priced and
infrequently made.”34
Thus, the fact that the goods and services may be offered to the same classes of
customers weighs in favor of a finding of likelihood of confusion, while the
sophistication of the customers weighs against such a finding.
(d) Absence of actual confusion.
Applicant contends that its mark has been in use for three years, and that it is not
aware of any instances of actual confusion with Registrant’s mark.35 The record of
this case contains little information regarding the extent to which Applicant has
used and promoted its mark, or the extent of use of Registrant’s mark. On this
record we cannot determine whether there have been meaningful opportunities for

31 Office Action of June 23, 2016 at 29-30, 32.
32 Id. at 56-57, 63.
33 Applicant’s brief at 15, 11 TTABVUE 19.
34 Id. at 16, 11 TTABVUE 20.
35 Declaration of Gordon P. Kushner ¶¶ 2-3, Applicant’s response of June 1, 2016 at 16-17.
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actual confusion to occur in the marketplace. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In any event, the uncorroborated
statement that there are no known instances of actual confusion is of little
evidentiary value in this ex parte proceeding, in which we have no opportunity to
hear from Registrant. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1205 (Fed. Cir. 2003). Accordingly, the du Pont factor of the length of time during
and conditions under which there has been contemporaneous use without evidence
of actual confusion is neutral.
(e) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. The marks are
highly similar in appearance, sound, meaning and overall commercial impression;
the goods and services at issue sometimes emanate from the same source, and it has
been shown that they are sometimes marketed to the same class of customers.
Although the relevant customers exercise care, the marks are so similar that even a
careful customer could mistake one for the other under ordinary market conditions.
Overall, we find that Applicant’s mark, in the context of Applicant’s identified goods
and services, so resembles the cited registered mark as to be likely to cause
confusion or mistake or to deceive.
Decision: The refusal under Section 2(d) is affirmed.