ERIM Int’l., Inc.

Trademark Trial and Appeal Board

Feb 27, 2002

No. 75541700 (T.T.A.B. Feb. 27, 2002)

2/27/02

Hearing: Paper No. 11
January 24, 2002 ejs

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________

In re ERIM International, Inc.
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Serial No. 75/541,700
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John G. Posa and Julie A. Greenberg of Gifford, Krass,
Groh, Sprinkle, Anderson & Citkowski, P.C. for ERIM
International, Inc.

Catherine Pace Cain, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney)
_______

Before Seeherman, Quinn and Bottorff, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

ERIM International, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
GEOWORX as a trademark for “computer software for
generating and managing geo-spatial products, namely the
conversion of raw remote sensing data into image files for
the automated extraction of features in standard image
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/541,700
2
formats.”1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on
the ground that applicant’s mark so resembles the mark
GEOWORKS, previously registered for “publications, namely,
books and training manuals regarding computer programs,” as
to be likely, if used on applicant’s identified goods, to
cause confusion or mistake or to deceive.
The appeal has been fully briefed, and applicant and
the Examining Attorney appeared at an oral hearing before
the Board.
We affirm the refusal of registration.
Our determination is based on an analysis of all of
the probative facts in evidence that are relevant to the
factors set forth in In re E.I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, they are identical in
pronunciation and virtually identical in appearance.

1 Application Serial No. 75/541,700, filed August 24, 1998,
based on an asserted bona fide intention to use the mark in
commerce.

Ser No. 75/541,700
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Although the last letters of each mark differ slightly,
GEOWORX ending in an “X” and GEOWORKS ending in a “KS,” the
first six letters are identical and they create the strong
similarity in appearance. The marks also have the same
connotation. Accordingly, we find that they convey the
same commercial impression.
Applicant argues that the final letters of its mark
will be noticed because the suffix WORX forms the basis of
its family of marks and/or products. Applicant bases this
assertion on what appears to be literature for the GEOWORX
product in which various features are identified by terms
ending in WORX, e.g., ExtractWorx for “automated Feature
Extraction to create derived information,” DEM Worx to
“Create High Quality DEMs” and SARWorx to “Convert Raw SAR
Signals in to Image Frame Files.” There are several
problems with applicant’s position. First, applicant’s
assertion and the product literature submitted by applicant
are insufficient to demonstrate that it has a family of
WORX marks, or that consumers will likely not be confused
because of the presence of the asserted family feature.
The exhibit relates only to applicant’s GEOWORX product.
As noted previously, applicant filed its application based
on an intent to use the mark, and the record does not
indicate that applicant has commenced use as yet.
Ser No. 75/541,700
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Certainly no amendment to allege use has been filed.
Further, there is no indication as to whether the “GeoWorx
Product Description” document has been distributed or, if
so, to whom and under what circumstances. In short, the
record fails to show that applicant has a recognized family
of WORX marks.
More importantly, even if applicant could make a
showing that it had a preexisting family of WORX marks, it
is not relevant because an applicant cannot rely upon its
other marks in seeking registration of a particular mark.
See In re U.S. Plywood-Champion Papers, Inc., 175 USPQ 445
(TTAB 1972). As discussed in Baroid Fluids Inc. v. Sun
Drilling Products, 24 USPQ2d 1048 (TTAB 1992), the family
of marks doctrine may not be used defensively to justify
registration of a mark likely to cause confusion with
another mark.
This brings us to a consideration of the goods. We
must bear in mind that even when goods or services are not
competitive or intrinsically related, the use of marks
which are identical can lead to the assumption that there
is a common source. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687 (Fed. Cir. 1993). If the marks are
the same or almost so, it is only necessary that there be a
viable relationship between the goods or services in order
Ser No. 75/541,700
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to support a holding of likelihood of confusion. In re
Concordia International Forwarding Corp., 222 USPQ 355, 356
(TTAB 1983).
It is applicant’s position that the goods are
unrelated, and that the consumers of its goods would not
encounter the registrant’s goods. Applicant has explained
that its computer programs have a “highly specialized
application, relating to geo-spatial data processing for
use in creating image files in connection with complex
military defense and other sophisticated commercial
applications relating to geographical image development.”
Brief, p. 3. It also states that its products are sold at
prices that often exceed $200,000. Applicant further
asserts that the registrant’s goods are computer manuals
“used in relation to cellular telephones and consumer
advertisements transmitted to such telephones.” Id.
It is well established that it is not necessary that
the goods be identical or even competitive in nature in
order to support a finding of likelihood of confusion. It
is sufficient that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons under circumstances that
would give rise, because of the marks used in connection
therewith, to the mistaken belief that the goods originate
Ser No. 75/541,700
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from or are in some way associated with the same source.
In re International Telephone and Telegraph Corp., 197 USPQ
910, 911 (TTAB 1978). Further, we must compare the goods
based on the identifications in the application and the
cited registration, rather than on what the evidence shows
the goods to be. Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, NA, 811 F.2d 1490, 1 USPQ2d 1813 (Fed.
Cir. 1987); In re Elbaum, 211 USPQ 639 (TTAB 1981).
Thus, although applicant may assert that the
registrant’s books and training manuals regarding computer
programs may relate solely to cellular telephones and
consumer advertisements transmitted to such telephones, for
purposes of our determination we must deem those books and
training manuals to be used for all types of computer
programs, including programs such as the applicant’s
software for generating and managing geo-spatial products,
as well as other highly specialized and sophisticated
computer programs.
Thus, the goods of applicant and registrant must
legally be deemed to be complementary products which can be
sold in the same channels of trade to the same classes of
consumers.
Moreover, the Examining Attorney has made of record a
number of third-party registrations which show that
Ser No. 75/541,700
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registrants have adopted a single mark for both computer
software and books and training manuals for computer
programs. See, for example, Registration No. 2,324,275 for
“computer software for use in processing and analyzing
remote sensing, geographic, cartographic and other spacial
[sic] information and accompanying instruction or user
manuals sold as a unit”; Registration No. 2,375,677 for,
inter alia, “computer hardware and computer software for
application and operating system functions for use in
commercial interaction in the field of global computer
networks” and “printed matter, namely, books, brochures and
instructional manuals, all relating to commercial
interaction applications in the field of global computer
networks”; Registration No. 2,309,960 for, inter alia,
“digitized maps and computer CD-Rom software and
instructional manuals sold as a unit for mapping, graphical
depiction, display, analysis and annotation of digitized
maps for airborne, land, and marine navigation”;
Registration No. 2,342,672 for, inter alia, “computer
software for desktop publishing” and “manuals, books and
magazines for use with computer software for desktop
publishing”; Registration No. 2,356,040 for, inter alia,
“educational computer software for use in training on
computer applications” and “printed manuals, namely,
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reports, books magazines and manuals featuring computer
software and computer information”; Registration No.
2,327,832 for, inter alia, “computer software for use in
printing hardcopy output” and “computer hardware and
software manuals”; Registration No. 2,258,957 for, inter
alia, “computer programs for desktop to host
communications” and “computer program manuals for desktop
to host communication programs” and Registration No.
2,255,934 for, inter alia, “software for monitoring,
managing and performing diagnostics relative to network
management systems” and “technical manuals, users’ manuals,
and other descriptive written materials associated with
software for monitoring, managing, and performing
diagnostics relative to network management systems.”
Third-party registrations which individually cover a
number of different items and which are based on use in
commerce2 serve to suggest that the listed goods and/or
services are of a type which may emanate from a single
source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783 (TTAB 1993).

2 We have given no weight to those third-party registrations
submitted by the Examining Attorney which are based on Section 44
of the Trademark Act.

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Comparing the goods in light of the above-noted legal
principles, we find that applicant's computer software for
generating and managing geo-spatial products is
sufficiently related to books and training manuals
regarding computer programs that, when both are sold under
the nearly identical marks GEOWORX and GEOWORKS, confusion
is likely.
We recognize applicant's contention that the
purchasers of its product are sophisticated and
discriminating, a contention that the Examining Attorney
does not dispute. Although this factor favors applicant,
it is outweighed by the similarities between the marks and
the goods.
In finding likelihood of confusion, we note
applicant’s assertion that the identification of goods in
the cited registration “cannot be interpreted as covering
virtually every field in which computers are employed.”
Reply brief, p. 2. We acknowledge that this is a very
broad identification which might not be sufficiently
definite if the application were being examined today.
Although we are required by Section 7 of the Trademark Act,
as well as the relevant case law, to give this broad
identification full force, applicant is not without
remedies in its attempt to obtain a registration.
Ser No. 75/541,700
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Specifically, applicant may seek a consent from the owner
of the cited registration, or applicant may seek a
restriction in the cited registration, pursuant to Section
18 of the Act, that may serve to avoid a likelihood of
confusion. See, Eurostar Inc. v. "Euro-Star" Reitmoden GmbH
& Co. KG, 34 USPQ2d 1266 (TTAB 1994).
Finally, to the extent that any doubt exists on the
issue of likelihood of confusion, it is well settled that
such doubt must be resolved against the newcomer and in
favor of the prior user. In re Pneumatiques, Caoutchouc
Manufacture et Plastiques Kleber-Colombes, 487 F.2d 918,
179 USPQ 729 (CCPA 1973).
Decision: The refusal of registration is affirmed.