GENBAND Inc.

Trademark Trial and Appeal Board

Mar 30, 2011

No. 77627106 (T.T.A.B. Mar. 30, 2011)

Mailed:
March 30, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re GENBAND Inc.
________

Serial No. 77627106
_______

H. Dale Langley, Jr. of The Law Firm of H. Dale Langley,
Jr., P.C. for GENBAND Inc.1

Sara N. Benjamin, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Holtzman, Zervas and Wolfson, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

On December 5, 2008, GENBAND Inc. filed an intent—to-
use application (Serial No. 77627106) to register the mark
S9 (in standard character form) on the Principal Register
for International Class 9 goods ultimately identified as:
Communications network gateways, namely,
electronic equipment hardware and software for
access and security gateway, namely, electronic

1 On March 14, 2011, well after filing its reply brief, applicant
submitted through the TEAS electronic filing system a revocation
of power of attorney and appointment of a new attorney, Valerie
Verret of Baker Botts L.L.P.
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 77627106
2
equipment routers and switches, and software for
these routers and switches, for access and
security control interconnection between carrier-
to-carrier, carrier-to-enterprise, and carrier-
to-Internet Service Provider (ISP)
telecommunications networks; [and] network access
gateways in the nature of modularized
telecommunications carrier-to-carrier, carrier-
to-enterprise, and carrier-to-ISP electronic
equipment route and switch controllers, for
providing scalable security, management, and
policy enforcement infrastructure platform
gateways for large-volume multiple concurrent
connections.

Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), in view of
Registration No. 3018974 issued to Deep Nines, Inc. for the
mark

(registered November 29, 2005) for “computer systems
comprised of computer software and hardware for
communications systems security, traffic and bandwidth
management.”2
Applicant has appealed the final refusal of its
application. Both applicant and the examining attorney
have filed briefs. As discussed below, the refusal to
register is reversed.

2 The record does not include a description of registrant’s mark.
Ser No. 77627106
3
Our determination of the examining attorney's refusal
to register the mark under Section 2(d) of the Trademark
Act 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. 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities 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
Under the first du Pont factor regarding the
similarity or dissimilarity of the marks, we consider
whether applicant's mark and the registered mark, when
viewed in their entireties, are similar in appearance,
sound, connotation and commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005).
The examining attorney contends that because
applicant’s mark is a standard character mark, the marks
Ser No. 77627106
4
“could be presented in the same manner of display, and the
fact that the registered mark is stylized does not obviate
a likelihood of confusion with applicant’s standard
character mark.” Brief at unnumbered pp. 4 – 5. She
maintains that there is no “defined order” to registrant’s
mark because of the overlapping effect created by the way
the letter “S” is cut out of the “9.”
It is true that applicant’s S9 mark is a standard
character form mark and is not limited to any special form
or style as displayed on its goods. Phillips Petroleum Co.
v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA
1971) (“The drawing in the instant application shows the
mark typed in capital letters, and … this means that [the]
application is not limited to the mark depicted in any
special form” and hence we are mandated “to visualize what
other forms the mark might appear in.”). However, its
standard character form mark S9 does not extend to a
display of the mark as “9S.”
To the extent that the examining attorney considers
registrant’s mark to be an “S9” mark, the marks do not have
“the same manner of display.” The Board must consider a
standard character form mark in “all reasonable manners in
which applicant could depict its mark.” ProQuest
Information and Learning Co. v. Island, 83 USPQ2d 1351,
Ser No. 77627106
5
1359 (TTAB 2007). The manner in which the S9 standard
character mark may be depicted does not extend to the
manner in which registrant depicts the “9” and the “S” of
its mark. The manner in which registrant displays the “9”
and “S” in its mark is unusual because the “S” is embedded
in the leg of the “9,” to the right of the mark. The
rights accorded to applicant's standard character form mark
do not extend to the depiction of the “9” and the “S” in
registrant's mark.
In view of the above discussion, we find the
appearance of the marks to be dissimilar.
We also find the sound of the marks to be different.
In registrant’s mark, the “S” is much smaller than the “9”
and the “S” is positioned at the far right of the mark,
suggesting that it should be pronounced last. Because
“nines” is a natural way to articulate the “9” and the “S”
portion of the mark, we find that the mark is likely to be
pronounced as “dot nines.” The sound of “dot nines”
differs from the sound of applicant’s mark, i.e., “es-
nine,” due to the differing first elements in each mark.3

3 If consumers would perceive the “dot” portion of registrant’s
mark as punctuation and not pronounce it, we still find the marks
are different in sound because “nines” differs in sound from “es-
nine.”
Ser No. 77627106
6
Regarding the meaning of the marks, neither mark has
any particular meaning. One would be considered as a
combination of a symbol (a “dot”) and “nines” and the other
would be considered as an alpha-numeric combination.
Finally, regarding the commercial impressions of the
marks, they too differ. The alpha-numeric combination of
applicant’s mark imparts a different commercial impression
from the commercial impression of registrant’s mark which
is of a symbol and the plural form of the word “nine.”
In view of the differences in the sound, appearance
and commercial impression of the marks, we resolve the du
Pont factor regarding the similarity or dissimilarity of
the marks favor of applicant.
The Goods
The second du Pont factor requires us to determine the
similarity or dissimilarity of the goods as described in
the application and cited registration. We do not consider
the goods on which the marks have actually been used; we
limit our inquiry to the goods set forth in the respective
identifications of goods and services.4 Hewlett-Packard Co.

4 Even though applicant filed its application under the intent-
to-use provisions of the Trademark Act, the record includes
printouts of applicant’s webpages discussing applicant’s goods
and showing applicant’s mark. Applicant has also submitted
printouts of registrant’s webpages. Many of applicant’s
arguments regarding applicant’s and registrant’s goods are based
on what is stated in the webpages.
Ser No. 77627106
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v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002).
Our starting point for our analysis under this du Pont
factor is registrant’s broadly-worded identification of
goods, which states,
computer systems comprised of computer software
and hardware for communications systems security,
traffic and bandwidth management.

Registrant’s identification of goods essentially involves
software and hardware for “computer systems,” and
specifically, “communications systems” (including
telecommunications systems) security, traffic and bandwidth
management. This identification of goods broadly includes
(i) routers and switches, and (ii) software for routers and
switches.
The first item in applicant’s identification is
“communications network gateways.” A gateway is defined in
the Wikipedia webpages (made of record by applicant with
its response to the first Office action) as “in a
communications network, a network node equipped for
interfacing with another network that uses different
protocols.” The Wikipedia evidence explains that
“[r]outers exemplify special cases of gateways” and “the
computers that control traffic between company networks or
the computers used by internet service providers (ISPs) to
Ser No. 77627106
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connect users to the internet are gateway nodes.” Clearly,
gateways are components of computer systems and computer
systems are part of communications networks.
Registrant’s identification of goods, which broadly
recites “computer software and hardware” pertaining to
“communications systems security and traffic management,”
encompasses gateways for access and security.
Applicant includes use limitations in its
identification of goods, specifying that its goods are for
“interconnection between carrier-to-carrier, carrier-to-
enterprise, and carrier-to-Internet Service Provider (ISP)
telecommunications networks.” Registrant’s identification
of goods does not include specific limitations. Rather,
registrant specified in its identification that its
computer systems are for “communications systems” which, at
a minimum, broadly extend to “carrier-to-Internet Service
Provider (ISP) telecommunications networks.”
Thus, based on the forgoing, we find that applicant’s
“communications network gateways” lie within or are
encompassed by registrant’s identification of goods.5

5 To be clear, our finding is based on the “communications
network gateways” in applicant’s identification of goods. We may
find a likelihood of confusion when only one item in a class of
goods is commercially similar to registrant's goods. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, Inc., 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981) (“[L]ikelihood of confusion must be
found if the public, being familiar with appellee's use of
Ser No. 77627106
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We comment on the examining attorney’s submission of
use-based third-party registrations with her final Office
action, and her reliance on such registrations to argue
that various trademark owners have adopted a single mark
for goods of the kind that are identified in both the
application and the registration.6 The examining attorney
has not specified which goods in each registration support
her position. In view of the length of the identifications
of goods in many of these registrations, as well as the
highly technical nature of the goods involved in this
appeal, the examining attorney should have specified which
goods she relies on, at least for a representative number
of third-party registrations.7 We have considered these

MONOPOLY for board games and seeing the mark on any item that
comes within the description of goods set forth by appellant in
its application, is likely to believe that appellee has expanded
its use of the mark, directly or under a license, for such item
….” (emphasis added)).
6 Third-party registrations which individually cover a number of
different items and which are based on use in commerce serve to
suggest that the listed goods and/or services are of a type which
may emanate from a single source. In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993).
7 See, for example, Registration No. 3730144, which recites the
following International Class 9 goods:

computer hardware and software for interconnecting,
managing, securing and operating local and wide area
networks and telephony systems; telephones, telephone
headsets; electronic communication devices, namely,
personal digital assistants, pagers, and cellular and
wireless telephones; wireless communications devices,
namely, wireless LAN hardware and software for the
transmission of voice, data, and video;
telecommunications equipment, namely, hardware and
Ser No. 77627106
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registrations, but their probative value is limited by the
examining attorney’s failure to specify which goods she
relies upon; she has not specified which of the listed
goods in each registration she believes supports her
position.
Trade Channels and Purchasing Conditions
Turning next to the trade channels for both
applicant's and registrant’s goods, we reiterate our
finding above that applicant’s goods are encompassed within
registrant’s broadly-worded identification of goods. We
point out too that neither applicant's nor registrant’s
identifications of goods contain any specific limitations
pertaining to trade channels. Because there are no trade
channel limitations, we presume that registrant’s and
applicant’s identifications of goods encompass all goods of
the nature and type described, and that the identified
goods move in all channels of trade that would be normal

software for use in conjunction with managing and
operating local and wide area networks; gateway
routers in the nature of computer control hardware for
use with telephone systems; telecommunications
switches for use with telephone systems; call
processing software for the transmission of data,
video and voice traffic; storage networking products,
namely, routers, switches, port adapters, and software
used in the operation and management thereof;
downloadable instructional materials, namely, books,
manuals, printed guides for teachers, test booklets,
magazines, newsletters and bulletins in the fields of
Ser No. 77627106
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for such goods, and that they are available to all classes
of purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992); In re Elbaum, 211 USPQ
639 (TTAB 1981). Thus, we do not consider applicant’s
arguments regarding registrant’s and applicant’s actual
trade channels.8 Rather, because of the absence of trade
channel limitations in the identifications of goods, we
find the trade channels for these related goods (as
reflected in the identifications of goods) to be related.
We hence resolve the du Pont factor regarding trade
channels against applicant.
With regard to the du Pont factor involving the
conditions under which and buyers to whom sales are made,
we agree with applicant that purchases of applicant's and
registrant’s goods would both be made with some care. Both
applicant’s and registrant’s goods are of a type that have
a considerable cost and would not be made without

network communications, and managing, operating and
using local, wide and global networks.
8 Applicant maintains that its goods are marketed to large
telecommunications providers, such as Internet and VOIP
telecommunications providers, telephone companies and enterprises
managing multiple networks with large-scale network-to-network
interconnections and “marketing is often direct and through
particular channels of these telecommunications operators.”
Brief at 6. Registrant’s goods, on the other hand, are “marketed
to business, education, health care and government organizations
for computing needs” and are “not marketed for and would not be
viable for large telecommunications applications requiring
Ser No. 77627106
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deliberation and input from technical personnel. This
manner of purchasing reduces the likelihood of source
confusion.
Balancing the du Pont Factors
As discussed above, registrant’s goods encompass
applicant’s goods and applicant's and registrant’s trade
channels are related to one another. However, because the
marks are dissimilar and purchases of both applicant’s and
registrant’s goods are made with care, we find that there
is no likelihood of confusion between registrant’s mark for
its goods and applicant’s mark for its goods.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is reversed.

management of multiple networks with large-scale network-to-
network interconnections.” Brief at 7.