Garmin Ltd.

Trademark Trial and Appeal Board

Sep 5, 2006

No. 78238015 (T.T.A.B. Sep. 5, 2006)

Mailed:
Sept. 5, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Garmin Ltd.
________

Serial No. 78238015
_______

Kevin E. West of Garmin Ltd. for Garmin Ltd.

Angela Micheli, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Hairston, Grendel and Drost, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark ION (in standard character form) for Class 9
goods identified in the application, as amended, as “GPS
receivers, namely GPS navigation receivers for determining
position and speed.”1

1 Serial No. 78238015, filed April 15, 2003. The application is
based on intent-to-use under Trademark Act Section 1(b), 15
U.S.C. §1051(b). The identification of goods quoted above, i.e.,
“GPS receivers, namely GPS navigation receivers for determining
position and speed,” was the subject of an amendment requested by
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78238015
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the identified
goods, so resembles two previously-registered marks (owned
by the same owner) as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d). The first cited registration is of the
mark IONIC SOFTWARE (in standard character form; SOFTWARE
disclaimed), for “computer software in the nature of
interoperable java components for the access and exchange
of geospatial and location-based information, in the field
of web mapping, location based operations, and geo-enabling
distributed applications.”2 The second cited registration
is of the mark depicted below (SOFTWARE disclaimed)

applicant with its September 29, 2005 request for
reconsideration. Prior to submission of the proposed amendment,
applicant’s identification of goods (as previously amended) was
“GPS receivers; and computer peripherals featuring a GPS receiver
and a GPS antenna used to communicate GPS information to a
separate computer.” In her December 12, 2005 Office action
denying the request for reconsideration, the Trademark Examining
Attorney did not mention or act upon applicant’s proffered
amendment to the identification of goods. We have given effect
to the amendment.

2 Registration No. 2656671, issued December 3, 2002.
Ser. No. 78238015
3
for goods identified as “computer software in the nature of
interoperable components for the access and exchange of
geospatial and location-based information, in the field of
web mapping, location based operations, and geo-enabling
distributed applications.”3
Applicant and the Trademark Examining Attorney filed
main appeal briefs. Applicant filed no reply brief, and
did not request an oral hearing. We affirm the refusal to
register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).

3 Registration No. 2731941, issued July 1, 2003. The only
difference in the respective identifications of goods in the two
cited registrations is that this second registration omits the
word “java.”

Ser. No. 78238015
4
The first du Pont factor requires us to determine the
similarity or dissimilarity of applicant’s mark and the
cited registered marks when considered in their entireties
in terms of appearance, sound, connotation and overall
commercial impression. See Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, supra. The test,
under the first du Pont factor, is not whether the marks
can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the goods offered under
the respective marks is likely to result. The focus is on
the recollection of the average purchaser, who normally
retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975). Furthermore, although the marks at
issue must be considered in their entireties, it is well-
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re Chatam
International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed.
Cir. 2004); In re National Data Corp., 753 F.2d 1056, 224
USPQ 749 (Fed. Cir. 1985).
Ser. No. 78238015
5
Initially, we find that the dominant feature in the
commercial impression created by each of the cited
registered marks is the word IONIC. The word SOFTWARE in
each mark is generic and disclaimed. Also, the design
element of the ‘941 mark would not be pronounced, and it
contributes less to the mark’s source-indicating commercial
impression than does the word IONIC. In comparing
applicant’s mark and the cited registered marks, therefore,
we have accorded more weight to the word IONIC in the
registered marks. See In re Chatam International Inc.,
supra; In re National Data Corp., supra.
“Ion” is defined as “an atom or a group of atoms that
has acquired a net electric charge by gaining or losing one
or more electrons.” The American Heritage Dictionary of
the English Language (4th ed. 2000).4 The same dictionary
defines “ionic,” in pertinent part, as “of, containing, or
involving ions.” Thus, the word “ionic” is simply the
adjectival form of the word “ion.” We find that ION and
IONIC have the same arbitrary or fanciful connotation as
applied to the goods at issue in this case.5 We also find

4 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

5 Applicant acknowledges, at page 6 of its brief, that ION “is a
relatively fanciful term in relation to GPS receivers.” We find
Ser. No. 78238015
6
that the two words look and sound similar, differing only
as to the suffix -IC.
Applicant argues that IONIC in the cited registered
marks operates as an adjective describing or modifying the
word SOFTWARE.6 However, there is no evidence that there is
a category or class of software called “ionic software.”
We therefore find that purchasers will not regard the cited
registered marks as comprising a unitary term, i.e., “ionic
software,” but rather will view the marks as comprising the
arbitrary word IONIC followed by the generic term SOFTWARE.

that IONIC likewise is fanciful as applied to the GPS-related
software identified in the cited registrations. We note that
applicant has submitted, with its September 29, 2005 request for
reconsideration, a listing from the Office’s TESS database of
third-party registrations and applications involving marks which
include “ION” as a component of the mark. Generally, third-party
registrations may not be made of record simply by listing them.
In re Duofold Inc., 184 USPQ 638 (TTAB 1974). However, because
the Trademark Examining Attorney did not object to this evidence
in her December 12, 2005 Office action denying the request for
reconsideration, we deem her objection (made for the first time
in her appeal brief) to have been waived. See in re Broyhill
Furniture Industries, Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).
Although we deem applicant’s list to be of record, however, we
find that it is entitled to little probative value. The listing
is of the marks and registration/serial numbers only; it does not
indicate the specific goods covered by the third-party
registrations and applications, only that they are in Class 9.
This evidence therefore does not serve to show that ION or IONIC
is anything but arbitrary and fanciful as applied to the GPS-
related goods at issue herein.

6 Applicant contends: “... the cited marks use the adjective
‘IONIC’ as a modifier of the term ‘SOFTWARE.’ The connotation
created by such a use is that the cited marks are describing the
type of software offered under the mark – i.e., ‘what type of
software is being offered under the mark? ... ‘ionic software’.’”
(Applicant’s brief at pp. 6-7; emphasis in original.)

Ser. No. 78238015
7
That is, it is the word IONIC which serves the source-
indicating function in the cited registered marks.
We find that the basic similarity between the marks
which results from their use of the highly similar and
related words ION and IONIC greatly outweighs the points of
dissimilarity between the marks. The marks do not look and
sound absolutely identical, due to the presence of the
suffix –IC and the generic word SOFTWARE in the cited
registered marks and the ornamental arrow design element in
the ‘941 mark, but that is not the test. We find that
applicant’s mark and the cited registered marks look and
sound similar, and that they carry the same or highly
similar connotations. Purchasers are likely to confuse ION
and IONIC. Moreover, they are more likely to assume, based
on the presence of ION and IONIC in the respective marks,
that a source connection exists, than they are likely to
assume, based on the minor differences between the marks,
that no source connection exists. On balance, we find that
the marks are similar, and that the first du Pont factor
accordingly weighs in favor of a finding of likelihood of
confusion.
We turn next to the second du Pont factor, which
requires us to determine the similarity or dissimilarity of
the goods as identified in the application and in the cited
Ser. No. 78238015
8
registrations, respectively. It is settled that it is not
necessary that the respective goods be identical or even
competitive in order to support a finding of likelihood of
confusion. That is, the issue is not whether consumers
would confuse the goods themselves, but rather whether they
would be confused as to the source of the goods. It is
sufficient that the goods be related in some manner, or
that the circumstances surrounding their use be such that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective goods. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991);
and In re International Telephone & Telegraph Corp., 197
USPQ 910 (TTAB 1978).
The Trademark Examining Attorney has submitted
printouts of fourteen third-party registrations which
include in their identifications of goods both GPS-related
hardware items including receivers, and GPS-related
software used in conjunction therewith. Although such
registrations are not evidence that the marks shown therein
Ser. No. 78238015
9
are in use or that the public is familiar with them, they
nonetheless have probative value to the extent that they
serve to suggest that the goods listed therein are of a
kind which may emanate from a single source under a single
mark. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988).
Also of record is a printout of Registration No.
2288989, owned by applicant, which is of the mark GARMIN
for goods which include both “global positioning satellite
(GPS) based navigation receivers” and “pre-recorded CD-ROMs
and cartridges featuring digital map data and software for
facilitating use of GPS based navigation receivers.”
Likewise of record are printouts from the website of a
third-party retailer (GPS World Supply) depicting and
describing various of applicant’s GPS receivers. Listed
among the features of these receivers is the GPS-related
software used to operate them, e.g.: “Unit Includes:
GPSMAP® 296 receiver ... Trip & Waypoint Manager software”;
“Unit Includes: StreetPilot 2610 receiver w/ built-in
antenna ... MapSource City Navigator v5 CD-ROM w/ full
coverage, full unlock”; “The Rino 120 has eight megabytes
of internal memory for downloadable cartography from
GARMIN’s exclusive line of MapSource CD-ROMs – providing
Ser. No. 78238015
10
topographic, bathymetric, and street-level map
information.” We find that this evidence regarding
applicant’s own products establishes the relatedness of GPS
hardware devices, i.e., receivers, and GPS-related
software. The second du Pont factor accordingly weighs in
favor of a finding of likelihood of confusion.
The third du Pont factor requires us to consider the
similarity or dissimilarity in the trade channels and
classes of purchasers for the respective goods. We make
this determination based on the goods as identified in the
application and registrations, respectively. In re Elbaum,
211 USPQ 639 (TTAB 1981). In its brief (at pp. 9-10),
applicant asserts as follows (emphasis in original):
Appellant’s GPS receivers are stand-alone
hardware devices that receive signals from
orbiting satellites, calculate their position
based on those signals, and display or transmit
that calculated GPS coordinate data. These GPS
receivers are commonly marketed directly to the
consumer/end-user, and are sold through sporting
goods stores, the sporting goods sections of
department stores, electronics stores, and the
like.
In contrast, the computer software of the
cited IONIC SOFTWARE marks is described as
“interoperable components for the access and
exchange” of information in the field of “web
mapping, location based operations, and
geoenabling distributed applications.” As is
known in the art, software “components” are small
utility programs that perform a very specific
function. These “components” are used by
programmers in building a software application,
just as hardware “components” are used by
Ser. No. 78238015
11
technicians in building a hardware device. A
resistor or capacitor is a hardware component
that is used to build, for example, a television
set. However, by itself, a resistor or capacitor
has no utility to a consumer in need of an
assembled television set. Similarly, the
software “components” of the cited IONIC SOFTWARE
marks may be used by programmers or software
developers to build, for example, a Web mapping
application that can run on a home computer.
However, by itself, that software component will
be of no use to a consumer seeking a Web mapping
application. Thus, the intended consumer of
IONIC SOFTWARE is not the consumer/end-user of a
Web mapping application, but is a software
developer or programmer who is developing a Web
mapping application and wants to incorporate the
utility provided by the interoperable components
of the INOIC SOFTWARE into the software being
developed.
Furthermore, while consumer/end-user software
may be sold directly to consumers through
channels such as department stores or electronic
and computer stores, development software is not
typically sold through those channels.
Development software is typically marketed
directly to software development professionals
and programmers through software-specific Web
sites and stores, and through publications geared
towards those developers.

These asserted limitations in the nature of
registrant’s software and the likely classes of purchasers
thereof (i.e., “software development professionals”) are
not apparent from the registrations themselves, nor are
they established by other evidence in the record (including
the printouts from registrant’s website, made of record by
applicant). Likewise, applicant’s assertions as to the
assertedly limited trade channels and classes of purchasers
Ser. No. 78238015
12
for its GPS receivers are not reflected in applicant’s
identification of goods. There is nothing in the record
which shows that registrant’s mark, as used on its software
products, would not be encountered by the same purchasers
(whether individual consumers, business entities or
government agencies) as those in the market for applicant’s
GPS receivers. Nor have we any basis for concluding that
registrant’s GPS software and applicant’s GPS receivers are
not in fact complementary products which could be used
together. We note that the product descriptions for
applicant’s products (appearing on the GPS World Supply
website noted above) include, among the products’ features,
a “PC interface cable”; this shows that applicant’s GPS
receivers are meant to be compatible for use in conjunction
with the user’s personal computer, upon which software such
as registrant’s might also be used.
In short, we find that applicant’s and registrant’s
goods, as identified in the application and registration,
respectively, could be marketed in the same trade channels
and to the same classes of purchasers. The third du Pont
factor weighs in favor of a finding of likelihood of
confusion.
The record does not support applicant’s argument,
under the fourth du Pont factor, that the purchasers of the
Ser. No. 78238015
13
goods at issue necessarily are sophisticated and
knowledgeable purchasers. We find that even sophisticated
purchasers would not be immune to source confusion in this
case; they are likely to be confused by the use of these
highly similar marks on these similar GPS-related products.
See In re Decombe, 9 USPQ2d 1812 (TTAB 1988). The fourth
du Pont factor is neutral, at best.
Finally, there is no evidence under the sixth du Pont
factor (number and nature of similar marks in use on
similar goods) which establishes that the cited registered
marks are at all weak or diluted, or entitled to a narrowed
scope of protection. We have considered applicant’s TESS
listing of third-party registrations as being of record,
but for the reasons discussed above, we find it to be of
little probative value because the goods covered by the
registrations are not apparent from the listing. Moreover,
even if applicant had made the actual third-party
registrations of record, they would not constitute
probative evidence of use under the sixth du Pont factor.
See Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542 (Fed. Cir. 1992).
Weighing all of the evidence of record as it pertains
to the du Pont factors, we conclude that a likelihood of
confusion exists. Use of these similar marks on these
Ser. No. 78238015
14
similar GPS-related goods is likely to cause source or
other confusion. To the extent that any doubts might exist
as to the correctness of this conclusion, we resolve such
doubts against applicant. See In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); and In re Martin’s Famous Pastry Shoppe, Inc. supra.

Decision: The refusal to register is affirmed.