Garmin Corp.

Trademark Trial and Appeal Board

Feb 3, 1998

No. 74527855 (T.T.A.B. Feb. 3, 1998)

Hearing: Paper No. 21
April 1, 1997 PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB. 3, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Garmin Corporation
________
Serial No. 74/527,855
_______
Devon A. Rolf of Kokjer, Kircher, Bowman & Johnson, P.C.
for Garmin Corporation.
Gerald T. Glynn, Trademark Examining Attorney, Law Office
102 (Myra Kurzbard, Managing Attorney).
_______
Before Hanak, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Garmin Corporation to
register the mark GPSMAP for goods which were subsequently
identified as "global positioning indicators, namely,
electronic receivers used in marine and avionic navigation
for use in locking onto a plurality of signals emitted from
Ser No. 74/527,855
2
global satellites to determine the geographical locale of a
positioning indicator.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark, when applied to its goods, so
resembles the mark GPS MAP-KIT, with the designation “GPS”
disclaimed, and registered for “audio receivers of Global
Positioning Satellite Signals combined with a CD-ROM
geographic data storage device,”2 as to be likely to cause
confusion or mistake or to deceive.
We reverse.
Turning first to the goods, applicant contends that the
respective goods of the parties have different applications,
and more importantly, are sold to sophisticated purchasers.
It appears from this record, and in fact the Examining
Attorney has conceded, that the goods are used for different
purposes. (Brief, p. 4) In particular, registrant’s goods
receive global positioning satellite signal information and
store the geographical data in a CD-ROM device, whereas
applicant’s goods are used to pinpoint a global positioning
indicator’s geographic locale. Further, while neither the
identification of goods in the application or registration

1 Application Serial No. 74/527,855 filed May 23, 1994, alleging
a bona fide intention to use the mark in commerce.
2 Registration No. 1,773,453 issued May 25, 1993. The
designation “GPS” has been disclaimed apart from the mark as
shown.
Ser No. 74/527,855
3
contains any restrictions as to trade channels and
purchasers, it is nonetheless clear from the nature of the
goods that they are sophisticated electronic equipment which
would be selected with great care by purchasers familiar
with the source or origin of the products.
Turning then to the marks, due to the highly suggestive
nature of GPSMAP and GPS MAP-KIT as applied to the
respective goods, we find that they are sufficiently
different to avoid any likelihood of confusion. In this
regard, we note that the designation GPS, which has been
disclaimed in registrant’s mark GPS MAP-KIT, is an acronym
for “Global Positioning System.”3 The marks GPSMAP and GPS
MAP-KIT were obviously adopted to suggest that each parties’
electronic receivers are for use in connection with the
Global Positioning System. Under the circumstances, the
scope of protection afforded registrant’s mark must be
limited and cannot extend to preclude the registration by
others of similarly suggestive, but otherwise
distinguishable trademarks for electronic receivers for use
in connection with the Global Positioning System. Here, the

3 The Examining Attorney made of record an excerpt from Newton’s
Telecom Dictionary (7th ed.) wherein GPS is defined as:
Global Positioning System. A system to allow us
all to figure out precisely where we are anywhere
on earth. The GPS will eventually consist of a
constellation of 21 satellites orbiting the earth
at 10,900 miles—-they circle the earth twice a day.
In a way, you can think of them as “man-made stars”
to replace the stars that we’ve traditionally used
Ser No. 74/527,855
4
differences between the marks as a result of applicant’s
presentation of its mark as one term, GPSMAP, and the
inclusion of KIT in registrant’s mark, GPS MAP-KIT, are
sufficient, in view of the nature of the marks to avoid any
likelihood of confusion.
In sum, given the deliberation involved in determining
the suitability of particular electronic receivers for use
in connection with the Global Positioning System, the
different applications for the parties’ respective goods,
and the highly suggestive nature of the marks, we believe
that the parties’ mark are not so similar that confusion as
to the origin or affiliation of the parties’ respective
goods would be likely to occur.
Decision: The refusal to register is reversed.
E. W. Hanak
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

for navigation. . . .
Ser No. 74/527,855
5
Ser No. 74/527,855
6