Helix Software Co., Inc.

Trademark Trial and Appeal Board

Aug 6, 1999

No. 74301200 (T.T.A.B. Aug. 6, 1999)

Paper No. 21
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Helix Software Co., Inc.
___________
Serial No. 74/301,200
___________
Michael A. Cornman of Schweitzer, Cornman & Gross for
applicant.
Cheryl A. Butler, Trademark Examining Attorney, Law Office
108 (Thomas Lamone, Managing Attorney).
____________
Before Quinn, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Helix Software Co., Inc. has filed a trademark
application to register the mark shown below for “computer
programming services for computer users.”1 The application
includes a disclaimer of SOFTWARE CO. apart from the mark
as a whole.
Serial No. 74/301,200
2
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the marks DOUBLE HELIX and HELIX, previously
registered for “computer programs and program manuals, all
sold as a unit, for use in data based management,”2 that, if
used on or in connection with applicant’s services, it
would be likely to cause confusion or mistake or to
deceive.3
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.

1 Serial No. 74/301,200, in International Class 42, filed August 3,
1992, based on use in commerce, alleging dates of first use and first
use in commerce of June 1, 1992.
2 Respectively, Registration No. 1,643,484 issued May 7, 1991, and
Registration No. 1,682,683 issued April 14, 1992, to Odesta Corporation
(current owner of record is Software Technologies, Inc.). [Sections 8
and 15 affidavits accepted and acknowledged, respectively, in both
registrations.]
3 The refusal to register was based, originally, on two additional
registrations (Nos. 1,587,497 for HELIX VMX and 1,356,406 for ODESTA
HELIZ). However, both of these registrations have been canceled and
are no longer at issue. Thus, we disregard the discussion in the
briefs regarding these marks.
Serial No. 74/301,200
3
In the analysis of likelihood of confusion in this
case, two key considerations in this case are the
similarities between the marks and the similarities between
the goods and services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
The Examining Attorney contends that HELIX is the
dominant portion of both applicant’s and registrant’s
marks. In this regard, the Examining Attorney indicates
that, while the word HELIX “is not the sole dominant
portion of applicant’s mark,” noting that the design
element is distinctive, “HELIX is the dominant audio-
literal source indicating portion of applicant’s mark.”
She states that, because consumers will call for the goods
or services in the marketplace by the word portion of the
mark, the word HELIX in applicant’s mark merits greater
weight in determining likelihood of confusion. She adds
that HELIX is an arbitrary term in connection to both
applicant’s services and registrant’s goods. The Examining
Attorney contends that “those who offer computer
programming services often offer computer programs under
the same mark and that applicant’s services are related to
registrant’s goods.” In support of her position, the
Examining Attorney submitted copies of registrations, owned
Serial No. 74/301,200
4
by six different third parties, for marks registered in
connection with both computer programs and computer
programming services.
Applicant contends that HELIX is “a common geometric,
anatomical, and architectural term”; “that it is not
uncommon in industry in general and in the computer field
as well”; and that it is no more dominant than the term
DOUBLE in one of the cited registrations. Applicant argues
that HELIX is not the dominant portion of its mark, rather,
applicant’s mark is distinguished from the registered marks
because it consists of the unitary phrase forming its name,
“Helix Software Co.,” and the distinctive “H” design; and
that these words and design form a unitary commercial
impression. Applicant contends that it “offers consumers
the service of customized computer programming [which is]
clearly not closely related to the pre-recorded, non-
customized programs supplied by the registrant”; and that
its customized services are, likewise, distinct from the
services identified in the third-party registrations.
Considering, first, the goods and services, we find
the evidence of record sufficient to conclude that
applicant’s services are related to the goods identified in
the cited registrations, and applicant has provided no
evidence to the contrary. Consequently, if the respective
Serial No. 74/301,200
5
goods and services were to be sold under the same or
similar marks, confusion as to source or sponsorship would
be likely to occur. We are not convinced otherwise by
applicant’s arguments regarding the specific nature of its
services or registrant’s goods. We note that both
applicant’s services and registrant’s goods are broadly
identified and, thus, encompass both customized and non-
customized goods and services. Further, we must presume
that applicant’s services and registrant’s goods are sold
in all of the normal channels of trade to all of the normal
purchasers for such goods. See Canadian Imperial Bank v.
Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Turning to the marks, the proper test for determining
the issue of likelihood of confusion is the similarity of
the general commercial impression engendered by the marks.
Due to the consuming public’s fallibility of memory, the
emphasis is on the likely recollection of the average
customer, who normally retains a general rather than a
specific impression of trademarks or service marks. Spoons
Restaurants, Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB
1991), aff’d. No. 92-1086 (Fed. Cir. June 5, 1992); and In
re Steury Corporation, 189 USPQ 353 (TTAB 1975). Both
applicant and the Examining Attorney recognize the well
established principle that, in articulating reasons for
Serial No. 74/301,200
6
reaching a conclusion on the issue of likelihood of
confusion, while the marks are compared in their
entireties, including descriptive or disclaimed portions
thereof, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 732 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). If both words and a design
comprise the mark, the words are normally accorded greater
weight because the words are likely to make an impression
upon purchasers that would be remembered by them and would
be used by them to request the goods and/or services. In
re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB
1987); and Kabushiki Kaisha Hattori Tokeiten v. Scuotto,
228 USPQ 461, 462 (TTAB 1985). See also: Giant Food, Inc.
v. Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983).
We agree with the Examining Attorney that HELIX would
appear to be an arbitrary term in relation to applicant’s
services and registrant’s goods; and that the word HELIX in
each of the respective marks is clearly dominant and,
further, identical. One of registrant’s marks is the word
HELIX alone. In the other of registrant’s marks, the word
Serial No. 74/301,200
7
DOUBLE clearly modifies the word HELIX and, by its meaning,
emphasizes the dominant word HELIX. Looking at applicant’s
mark, although we agree with applicant that the design
element is not insignificant and additional wording is an
element to be considered as part of the mark in its
entirety, we find these elements insufficient to
distinguish applicant’s mark from registrant’s marks. The
wording SOFTWARE CO. is clearly merely descriptive of the
services and the nature of applicant’s company. The “H”
design refers to and emphasizes the initial letter of
HELIX.
Therefore, we conclude that the commercial impressions
of applicant’s mark, HELIX SOFTWARE CO. and “H” design,
and registrant’s marks, DOUBLE HELIX and HELIX, are
sufficiently similar that their contemporaneous use on the
closely related goods and services involved in this case
would be likely to cause confusion as to the source or
sponsorship of such goods and services.
Serial No. 74/301,200
8
Decision: The refusal under Section 2(d) of the Act
is affirmed.
T. J. Quinn
C. E. Walters
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board