Gemfire Corp.

Trademark Trial and Appeal Board

Mar 30, 2004

No. 75934845 (T.T.A.B. Mar. 30, 2004)

Mailed: 30 MAR 2004
Paper No. 15
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gemfire Corporation
________
Serial No. 75934845
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Charles B. Katz, Esq. for Gemfire Corporation.
Lesley LaMothe, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Seeherman, Chapman and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On March 3, 2000, Gemfire Corporation (applicant)
applied to register the following mark on the Principal
Register:
The goods in the application were ultimately
identified as “electronic display systems, consisting of
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75934845
2
display panels and components thereof; computer and display
peripherals and computer software for the operation of
electronic display systems and display panel functions;
integrated optical circuits; integrated optical components
which consist of optical waveguides, switches, couplers,
modulators, demodulators, optical sensors, multiplexers,
demultiplexers, add-drop multiplexers, filters, tunable
filters, communication links, transmitters, receivers,
amplifiers, attenuators, light sources, optical signal
processors and planar optical processors; and integrated
optical systems comprised of integrated optical components,
namely, attenuators, variable attenuators, optical
amplifiers and amplifier light sources” in International
Class 9 and “technological and scientific research in the
field of optics and optoelectronics; product development
for others in the fields of optics and optoelectronics;
[and] licensing of intellectual property” in International
Class 42.1
The examining attorney has refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
1 Serial No. 75934845. The application was based on an
allegation of applicant’s bona fide intention to use the mark in
commerce. Applicant’s amendment to its identification of goods
and services, dated October 30, 2001, was accepted by the
examining attorney in the Office Action dated July 23, 2002.
Ser No. 75934845
3
15 U.S.C. § 1052(d), because of a prior registration for
the following mark to Pirelli S.p.A.:
The registration (No. 2,248,468) issued on June 1,
1999, for a long list of goods in International Class 9.2
2 Coaxial cables, data transmission cables, computer cables,
power cables, super conductor electrical cables, optical fiber
cables and electrical cables for use in telecommunications
applications; electrical cable junctions, electrical conductors
and replacement parts therefor for submarine and terrestrial use;
fiber optic light and image conduits; telecommunications systems
comprised of any one or a combination of the following - optical
signal generators, optical signal regenerators, optical signal
receivers, optical signal transmitters, optical signal
distributors, optical signal converters, optical signal
multiplexing and demultiplexing, optical amplifiers, optical
repeaters, optical filters, optical fibers and replacement parts
thereof; wavelength division multiplexing optical
telecommunications systems comprised of any one or combination of
the following - optical signal generators, optical signal
regenerators, optical signal receivers, optical signal
transmitters, optical signal distributors, optical signal
converters, optical signal multiplexing and demultiplexing,
optical amplifiers, optical repeaters, optical filters, optical
fibers and replacement parts thereof; video, voice and data
transmission systems comprised of any one or a combination of the
following - optical signal generators, optical signal
regenerators, optical signal receivers, optical signal
transmitters, optical signal distributors, optical signal
converters, optical signal multiplexing and demultiplexing,
optical amplifiers, optical repeaters, optical filters, optical
fibers and replacement parts thereof; systems for interactive
services distribution comprised of any one or combination of the
following - optical signal generators, optical signal
regenerators, optical signal receivers, optical signal
transmitters, optical signal distributors, optical signal
converters, optical signal multiplexing and demultiplexing,
Ser No. 75934845
4
The registration contains a disclaimer of the term
“Photonics.”
While the original application included a disclaimer
of the term “photonic,” the examining attorney nonetheless
refused registration on the ground that applicant’s mark
was merely descriptive, in addition to the refusal under
Section 2(d).
optical amplifiers, optical repeaters, optical filters, optical
fibers and replacement parts therefor; transmitters, receivers
and transmission distribution systems comprised of any one or a
combination of the following - optical signal generators, optical
signal regenerators, optical signal receivers, optical signal
transmitters, optical signal distributors, optical signal
converters, optical signal multiplexing and demultiplexing,
optical amplifiers, optical repeaters, optical filters, optical
fibers and replacement parts therefor for use in converting
electrical signals to optical signals and vice versa; devices for
the transmission of optical signals, namely, fiber optics and
fiber optic networks comprised of any one or combination of the
following - optical cables, optical transmitting stations,
optical receiving stations, optical intermediate stations for
dividing, multiplexing, selecting, adding, and extracting
signals, and replacement parts therefor; optical signal
generators, optical signal receivers, optical signal
transmitters, optical signal regenerators, optical signal
amplifiers, optical signal couplers, optical signal switches,
optical fibers and replacement parts therefor; cable television
transmitters, cable television distribution networks comprised of
any one or combination of the following - optical signal
generators, optical signal regenerators, optical signal
receivers, optical signal transmitters, optical signal
distributors, optical signal converters, optical signal
multiplexing and demultiplexing, optical amplifiers, optical
repeaters, optical filters, optical fibers and replacement parts
thereof; cable television signal modulators, cable television
signal amplifiers, cable television receivers, and replacement
parts therefor; optical wave guide devices on a planar optical
substrate, namely, optical signal splitters, optical signal
modulators, optical signal filters, lasers not for medical use,
multiplexers and replacement parts therefor, optical signal
amplifiers and replacement parts therefor, and optical signal
modulators and replacement parts therefor.
Ser No. 75934845
5
Applicant traversed the refusals and, regarding the
descriptiveness refusal, applicant argued that:
Applicant’s mark is a combination of “photon,”
which demotes a particular of light, and “IC,” which
is well-known acronym in the electronics art for an
integrated circuit. An IC is a slice or chip of
material on which a complex of electronic components
and their interconnections is etched or imprinted.
Applicant’s combination of terms to create the
stylized mark PhotonIC creates a unitary mark that
conveys a unique commercial impression …
“[P]hotonics” is the technology of generating and
harnessing light and other forms of radiant energy
whose quantum [is] the photon. It is a relatively new
area of technology for which there are numerous
applications. Even so, Applicant’s mark is not
“photonics” or even “photonic” but rather the stylized
mark PhotonIC.
Finally, in the original application, Applicant
disclaimed the term “photonic” because it is not the
term “photonic” for which Applicant seeks
registration, but rather the stylized PhotonIC mark.
Similarly, in Pirelli’s registration for the PHOTONICS
& Design mark cited by the Examiner and discussed
below, Pirelli disclaimed the term “photonics” and was
issued a registration.
Response dated March 27, 2001 at 2-3 (emphasis in
original).
In the next Office action, the examining attorney made
the refusal to register under Section 2(d) final but she
withdrew the refusal to register under Section 2(e)(1).
The examining attorney was persuaded by applicant’s
arguments and added that “applicant’s disclaimer of
“PHOTONIC[]” is not necessary and will not be printed.”
Office Action dated July 27, 2001 at 2.
Ser No. 75934845
6
Regarding the remaining refusal under Section 2(d),
the examining attorney maintains that the marks are similar
and the goods are legally identical. The examining
attorney has made it clear that “[r]egistration was refused
under Trademark Act Section 2(d), 15 U.S.C. 1052(d), as to
Class 9” and not with respect to the services in Class 42.
Examining Attorney’s Brief at 2. Therefore, the only issue
remaining before the board is whether the mark in the cited
registration is likely to cause confusion with applicant’s
mark if the marks are used on the Class 9 goods identified
in the application and registration.
After the examining attorney made the refusal final,
this appeal followed.
We reverse.
Determining whether there is a likelihood of confusion
requires application of the factors set forth in In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). See also In re E. I. du Pont de
Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA
1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1896 (Fed. Cir. 2000). In considering the evidence
of record on these factors, we must keep in mind that
“[t]he fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential
Ser No. 75934845
7
characteristics of the goods and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
The first question we address is whether applicant’s
and registrant’s marks, when compared in their entireties,
are similar in sound, appearance, or meaning such that they
create similar overall commercial impressions. Each mark
is for the word “Photonic,” although registrant adds the
letter “s” to the end of its mark. We agree with the
examining attorney that the difference between the
pronunciation of the marks would be slight, even if
prospective purchasers recognize applicant’s mark as two
separate terms as applicant argues.
In addition, “Photonics” is defined as “the study and
technology of the use of light for the transmission of
information. [1950-55; see PHOTONIC, -ICS; perh. on the
model of ELECTRONICS].” The Random House Dictionary of the
English Language (Unabridged) (2d ed. 1987).3 The word
“photonic[s]” would therefore have the same meaning in
applicant’s and registrant’s mark. This meaning would be a
highly descriptive meaning when applied to registrant’s and
3 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
Ser No. 75934845
8
applicant’s optical goods. Indeed, both registrant and
applicant have disclaimed the term “photonic[s].” The
examining attorney, not applicant, stated that a
disclaimer was not necessary, apparently because she viewed
the term “PhotonIC” (stylized) as a unitary term.
The only similarity between the marks is the term that
both applicant and registrant have offered to disclaim.
Disclaimed matter is often “less significant in creating
the mark’s commercial impression.” In re Code Consultants
Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). As stated
previously, the terms “photonic” and “photonics” have
obvious descriptive qualities when applied to the goods of
applicant and registrant.4 “Regarding descriptive terms,
[the Federal Circuit] has noted that the ‘descriptive
component of a mark may be given little weight in reaching
a conclusion on the likelihood of confusion.’” Cunningham
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
4 Applicant asserts that “the word PHOTONICS is incapable of
serving as a distinctive mark (when used in connection with the
relevant goods), absent additional features such as the visual
stylization in Registrant’s mark. Consumers of the relevant
goods are not likely to believe that the term PHOTONICS denotes
source, and hence will not call for these goods by PHOTONICS
alone, doing so would be equivalent to calling for electronic
goods by the bare term “electronics.” Applicant’s Brief at 6-7
(emphasis in original). Previously, applicant admitted that it
“disclaimed the term ‘photonic’ because it is not the term for
which Applicant seeks registration, but rather the stylized
PhotonIC.” Response dated March 27, 2001 at 3 (emphasis in
original).
Ser No. 75934845
9
(Fed. Cir. 2000), quoting, In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985). Therefore,
the fact that both marks use the same base word is not as
significant as it often is in likelihood of confusion
cases.
In addition, although both marks have the same basic
meaning, applicant goes on to assert that applicant’s
stylization actually emphasizes that the mark is for the
word “Photon” and the term “IC” meaning “integrated
circuit.”5 The term “IC” is a term that individuals in the
computer field would likely recognize. We agree that the
stylization of applicant’s mark would create a different,
additional meaning when the mark is used on applicant’s
goods. Therefore, we are not persuaded that the marks in
this case would have the same meaning, other than to the
extent that the disclaimed term “photonic[s]” appears in
both marks.
Next, we compare the appearance of the marks and their
overall commercial impression.
5 IC is a recognized abbreviation for an integrated circuit.
Sippi, Computer Dictionary (3rd ed. 1984). We take judicial
notice of this definition.
Ser No. 75934845
10
The only similarity of the marks would be the fact
that the marks are for the same basic descriptive word.
Registrant’s mark is dominated by the letter “P,” which is
displayed in an unusual elongated style. Registrant’s mark
is in all upper case letters and thick type, while
applicant’s mark has an unusual mixture of upper and lower
case letters and less prominent type. In addition,
applicant has argued that the mark would be viewed as
“photon” and “IC.” Because of the unusual capitalization
of its mark, we find this argument persuasive.
While words often dominate when marks are compared for
likelihood of confusion purposes, this is not always the
case, particularly when the term is a weak term without
much trademark significance. See In re Electrolyte
Laboratories Inc., 913 F.2d 930, 16 USPQ2d 1239, 1240 (Fed.
Ser No. 75934845
11
Cir. 1990) (Court held that the marks K+ and design and
K+EFF (stylized) for potassium supplements were not
confusingly similar when K is the symbol for potassium and
“EFF” is an abbreviation for effervescent because “the
design of the marks is significantly different”); Steve’s
Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1478
(TTAB 1987) (Marks containing the word “STEVE’S for
different types of restaurants held to not be confusingly
similar in part because the “design portion of applicant’s
mark is extremely suggestive of the fact that applicant’s
restaurant features hot dogs. The highly stylized
depiction of humanized frankfurters, prancing arm in arm to
musical notes, creates a distinctive commercial impression.
Even with the words ‘STEVE’S’ appearing above the hot dog
figures, applicant’s mark is distinguishable from the
registered mark of opposer, which is simply the word
‘STEVE’S’ in block letter form”). Therefore, we agree with
applicant that the marks create overall different
commercial impressions because of the differences in their
appearances and meanings and because their similarity is
confined to a term with a highly descriptive significance
for the involved goods.
Regarding the other factors, the examining attorney
argues that “the goods are legally identical.” Examining
Ser No. 75934845
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Attorney’s Brief at 7. Applicant does not contest the
examining attorney’s assertion. We add that applicant’s
“integrated optical components which consist of optical
waveguides, switches, couplers, modulators, demodulators,
optical sensors, [and] multiplexers…” and registrant’s
“optical wave guide devices,” “multiplexers,” and “optical
signal switches” appear to involve similar goods or
components of goods. Therefore, the goods are, if not
overlapping, at least very closely related optical
components.
Applicant also argues that the purchasers here are
sophisticated purchasers. “The target buyers of the goods
– typically manufacturers of optical communication
equipment – are highly sophisticated, and purchases of the
goods will necessarily involve a deliberate and thorough
evaluation of technical features and specifications.”
Applicant’s Brief at 7. The examining attorney responds by
arguing that “the fact that purchasers are 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.”
Examining Attorney’s Brief at 6. We agree that
sophisticated purchasers are not immune from trademark
confusion. However, the purchasers of these products would
Ser No. 75934845
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likely understand the descriptive significance of the
common term in the marks. Also, there is no evidence that
these purchases would be impulsive. Therefore, the fact
that thought and deliberation would be involved in making
technical purchases by individuals with knowledge of
optical components does lessen the likelihood that these
purchasers would believe that optical components would
originate from a common source simply because the term
“photonic[s]” with significantly different stylizations
appears on the goods.
When we consider the record in this case and balance
the du Pont factors on the question of likelihood of
confusion, we conclude that confusion is not likely.
Decision: The refusal to register applicant’s mark
for the goods in International Class 9 under Section 2(d)
is reversed.6
6 As we noted earlier, there is no refusal to register
applicant’s mark as to applicant’s services in International
Class 42.