Firefly Technologies, inc.

Trademark Trial and Appeal Board

Jun 15, 2007

No. 76365573 (T.T.A.B. Jun. 15, 2007)

Mailed:
June 15, 2007
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Firefly Technologies, Inc.
________

Serial No. 76365573
_______

Michael M. McGaw of Smith & Hopen, P.A. for Firefly
Technologies, Inc.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark FIREFLY (in standard character format) for goods
identified in the application, as amended, as follows:
“systems for alphanumeric text entry, namely,
hand-held and desktop computer input
keyboards and keypads” in Int. Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining

1 Application Serial No. 76365573 was filed on February 4, 2002
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 76365573
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Attorney has found that applicant’s mark, when used in
connection with the identified goods, so resembles the mark
FIREFLY (in standard character format) registered for the
following goods:
“video cameras; digital video input and
storage devices, namely, light sensitive
devices such as CCD’s or CMOS cameras which
transfer digital video and image data over
devices such as IEEE1394 ports, USB ports and
ethernet interfaces to recording devices,
namely, hard drives, floppy and compact disks
and memory chips; digital and analogue
imaging cameras and software for computer
imaging uses with said cameras; computer and
video hardware, namely, light to electricity
converting devices such as CCD and CMOS
cameras, and cameras that have image
processing capabilities, and software for use
with said cameras for creating and capturing
still and video images; computer software for
acquiring, capturing, creating, manipulating,
converting, transferring, presenting and
storing still and video images; computer
hardware and software for 3-D range sensing,
namely, for object dimensioning, object
classification, object tracking, and motion
control, namely, autonomous navigation;
computer hardware and software for 3-D
digitization, namely, for 3-D modeling,
virtual reality, animation and photorealistic
rendering; computer hardware and software for
capturing and processing of images associated
with video surveillance; and instructional
manuals sold as a unit therewith” in
International Class 9,2

2 Registration No. 2528664 issued on January 8, 2002 based upon
an application filed on August 30, 2000, later claiming first use
anywhere at least as early as November 9, 2000 and first use in
commerce at least as early as December 8, 2000.

Serial No. 76365573
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as to be likely to cause confusion, to cause mistake or to
deceive.
The Trademark Examining Attorney and applicant have
briefed the case. We affirm the refusal to register.
In arguing for registrability, applicant contends that
given the difference in the type of goods offered as well as
the dissimilarity of trade channels, and in light of the
sophistication of the consumers, the Office has failed to
demonstrate a likelihood of consumer confusion.
By contrast, the Trademark Examining Attorney contends
that the evidence of record demonstrates that the respective
goods are of a kind that may emanate from a single source,
are highly related, and that the applicant’s goods are
within the registrant’s normal zone of expansion.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any
Serial No. 76365573
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likelihood of confusion analysis, however, two key, although
not exclusive, considerations are the similarities between
the marks and the relationship between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
The marks
We turn first to the du Pont factor focusing on the
similarity of the marks in their entireties. The Trademark
Examining Attorney argues that applicant’s mark is the same
as the registered mark in appearance, sound, connotation and
commercial impression. Applicant admits that the respective
marks are identical. [Applicant’s brief, p. 3]. Hence, we
find that applicant’s mark is identical in all respects to
registrant’s cited mark.
The goods
We turn next to the relationship of the goods as
described in the application and cited registration. As
noted above, the marks are identical in every respect. With
both registrant and applicant using the identical
designation, “the relationship between the goods on which
the parties use their marks need not be as great or as close
Serial No. 76365573
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as in the situation where the marks are not identical or
strikingly similar.” Amcor, Inc. v. Amcor Industries, Inc.,
210 USPQ 70, 78 (TTAB 1981). See also In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)
[“[E]ven when goods or services are not competitive or
intrinsically related, the use of identical marks can lead
to an assumption that there is a common source.”].
In order to support a holding of likelihood of
confusion, it is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity of
the marks, give rise to the mistaken belief that they
originate from the same producer. See On-line Careline Inc.
v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); and In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
We agree with applicant that our analysis must focus on
the way the identified goods are encountered in the
marketplace by typical consumers and whether consumers will
be confused as to the source of the products. See 3 J.
Serial No. 76365573
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Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,
§ 23:58 (4th ed. 2004) [a tribunal must “attempt to recreate
the conditions under which prospective purchasers make their
choices” in order to arrive at a “realistic” evaluation of
likelihood of confusion].
When faced with a determination of likelihood of
confusion in the field of computers, computer peripherals
and components, and an array of digital gadgets having
state-of-the-art microprocessing capabilities, we certainly
have no per se rule, for example, that computer keyboards
are related to digital video camera and collateral devices
for image capture and manipulation.
On the other hand, applicant argues that “the
functionality of keyboards and image capture devices, such
as video cameras, is quite different.” Applicant argues
that the uses of a computer keyboard and an image capture
device are in no way so related such that they would be
likely to be connected in the mind of a prospective
purchaser.
We agree with the Trademark Examining Attorney that
merely because applicant’s goods may have different
“functionalities” or uses from registrant’s goods, this fact
does not preclude a finding of likelihood of confusion. The
issue is not likelihood of confusion between particular
Serial No. 76365573
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goods, but likelihood of confusion as to the source of those
goods. In re Shell Oil Co., supra. In support of his
position, the Trademark Examining Attorney has made of
record a sampling of third-party registrations (all based on
use in commerce) drawn from the X-SEARCH database showing
that a number of third parties have registered the same mark
for both computer keyboards and devices for image capture
such as video cameras:

for, inter alia, “… computer
keyboards … photographic
cameras, video cameras and
motion picture cameras; video
recorders …” in International
Class 9;3

for, inter alia, “… keyboards,
trackballs, touchscreens, video
cameras …” in Inter. Class 9;4

MAXFIRE
for, inter alia, “… computer
keyboards … and video cameras”
in International Class 9;5

TRIANA
for, inter alia, “… keyboards …
photographic video cameras and
lenses therefore …” in Int.
Class 9;6

3 Registration No. 2263931 issued on July 27, 1999; Section 8
affidavit (six-year) accepted.
4 Registration No. 2275080 issued on September 7, 1999.
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
5 Registration No. 2283631 issued on October 5, 1999. Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
6 Registration No. 2320324 issued on February 22, 2000.
Section 8 affidavit (six-year) accepted.
Serial No. 76365573
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for, inter alia, “… computer
keyboards … video cameras …” in
International Class 9;7

for, inter alia, “… computer
keyboards … video cameras,
video cassette recorders …” in
International Class 9;8

HYPICT
for, inter alia, “… digital
cameras, television sets,
television cameras, video
cameras … computer keyboards …
audiovisual apparatus and
apparatus for recording,
transmitting or reproducing
sound or images, namely, video
cassette recorders, video
cameras, sound tape recorders,
video tape recorders, video
disk players …” in
International Class 9;9

SCHOOL TECHNOLOGY SOLUTIONS
for, inter alia, “… keyboards
… video recorders … video
cameras …” in International
Class 9;10

EPSON SMART PANEL
for, inter alia, “… computer
keyboards … video cameras,
digital cameras …” in
International Class 9;11

I/O MAGIC
for, inter alia, “… computer
keyboards; video cameras …
digital cameras …” in
International Class 9;12

7 Registration No. 2409124 issued on November 28, 2000.
Section 8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
8 Registration No. 2421709 issued on January 16, 2001. Section
8 affidavit (six-year) accepted and Section 15 affidavit
acknowledged.
9 Registration No. 2520648 issued on December 18, 2001.
10 Registration No. 2563962 issued on April 23, 2002.
11 Registration No. 2574992 issued on June 4, 2002.
12 Registration No. 2623403 issued on September 24, 2002.
Serial No. 76365573
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MAKING YOUR MOBILE LIFE EASIER
for, inter alia, “… keyboards …
digital and video cameras …” in
Inter. Class 9;13

for, inter alia, “… computer
keyboards … apparatus for
recording, transmission or
reproduction of sound or
images, namely, digital
cameras, digital video
recorders, … video cameras,
photographic cameras, video
monitors …” in International
Class 9;14

PARKERVISION
for, inter alia, “… video
cameras, teleprompters,
keyboards …” in International
Class 9;15

EPSON MATRIXCCD
for, inter alia, “… computer
keyboards … video cassette
recorders, video cameras, sound
tapes recorders, video tape
recorders … digital cameras …”
in International Class 9;16

for, inter alia, “… remote
keyboards for personal
computers … video cameras,
digital cameras …” in
International Class 9;17

13 Registration No. 2694811 issued on March 11, 2003.
14 Registration No. 2782574 issued on November 11, 2003.
15 Registration No. 2788645 issued on December 2, 2003.
16 Registration No. 2823690 issued on March 16, 2004.
17 Registration No. 2823809 issued on March 16, 2004.
Serial No. 76365573
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for, inter alia “… keyboards …
surveillance systems, namely,
video cameras, electronic
locks, electronic motion
sensors; digital video
recorders …” in International
Class 918

GAGGENAU
for, inter alia, “… units and
input/output devices, namely,
keyboards and display monitors;
… reproduction and processing
of sounds and/or characters
and/or images, namely, video
cameras …” in International
Class 9;19

for, inter alia “… computer
keyboards; … computer interface
boards; color monitoring video
cameras” in International Class
9;20

We have held that these printouts have probative value
to the extent that they serve to suggest that the goods
listed therein, namely computer keyboards and devices for
image capture such as video cameras, are of a kind that may
emanate from a single source. See In re Infinity Broad.
Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and
In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at
n.6 (TTAB 1988).
In response to this evidence, applicant argues that of
nearly four thousand federal trademark registrations listing

18 Registration No. 2860706 issued on July 6, 2004.
19 Registration No. 2861161 issued on July 6, 2004.
20 Registration No. 2864207 issued on July 20, 2004.
Serial No. 76365573
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either “keyboards” or “video cameras” in the identification
of goods, only 125 list both of these terms.
The Trademark Examining Attorney contends that
applicant’s quick numerical comparison is misleading
inasmuch as registrant’s long listing of goods includes much
more than just “video cameras.” Moreover, he points out
that there is not a minimum number of such registrations the
Office must place into the record in order to support a
finding of likelihood of confusion.
Other than these third-party registrations, we note
that the record is devoid of any showing of the relationship
in the actual marketplace of applicant’s type of goods to
registrant’s type of goods. Nonetheless, while the
respective goods are not competitive, given the fact that we
are faced with identical marks, we find that the Trademark
Examining Attorney has provided sufficient probative
evidence that under the circumstances of this case, these
respective goods could be encountered by the same persons
under conditions that could give rise to the mistaken belief
that they originate from the same producer. Thus, the
factor of the relatedness of the goods favors a finding of
likelihood of confusion.
Serial No. 76365573
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Channels of trade
There are no limitations in either applicant’s or
registrant’s identifications of goods as to their nature,
type, channels of trade or classes of purchasers. Hence, it
is presumed that the scope of the registration encompasses
all goods of the nature and type described, and that the
identified goods move in all channels of trade that would be
normal for such goods. Accordingly, both applicant’s and
registrant’s goods must be deemed to be rendered in all
channels of trade that are appropriate for computers,
digital video cameras, and the components of each. In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991) [women’s shoes
are complementary to women’s outerwear, and there are no
restrictions on registrant’s channels of trade]; and In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981) [“geriatric
preparation” is considered to encompass “therapeutic soak
for arthritic hands and feet”]. Hence, the related du Pont
factor focusing on the channels of trade also favors a
finding of likelihood of confusion.
The conditions under which and buyers to whom sales are made
We noted earlier that neither applicant nor registrant
has limited the identification of goods to particular
customers. Moreover, applicant has acknowledged that its
Serial No. 76365573
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own goods (e.g., computer keyboards) are commonly sold at a
relatively low price and therefore would not be subjected to
a high level of scrutiny or care.
As to registrant’s goods, applicant argues that “these
are highly sophisticated goods that would only be purchased
by a highly sophisticated consumer after exercising a great
deal of care.” Applicant bases this conclusion, in part, on
registrant’s identification of goods (e.g., "computer
hardware and software for 3-D range sensing, namely, for
object dimensioning, object classification, object tracking,
and motion control, namely, autonomous navigation; computer
hardware and software for 3-D digitization, namely, for 3-D
modeling, virtual reality, animation and photorealistic
rendering …”).
However, this does not change the outcome herein.
Assuming that registrant’s goods may well be offered to both
professionals and the general public, the standard of care
is determined by looking to the least sophisticated
purchasers in the class – ordinary consumers. Additionally,
the fact that some purchasers may be sophisticated or
knowledgeable in a particular field does not necessarily
mean that they are sophisticated or knowledgeable in the
field of trademarks or immune from source confusion. See In
re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re Pellerin
Serial No. 76365573
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Milnor Corp., 221 USPQ 558 (TTAB 1983). Rather, even
consumers of registrant’s goods who are professionals would
mistakenly believe that these respective goods originate
with, or are in some way associated with, the same producer.
Conclusion:
Applicant’s goods are sufficiently related to
registrant’s goods that given their sale under identical
marks, ordinary consumers are likely to be confused as to
the source or origin of the respective goods.
Decision: We affirm the refusal to register herein
based upon Section 2(d) of the Lanham Act.