Image Sciences, Inc.

Trademark Trial and Appeal Board

Aug 20, 1998

No. 74676406 (T.T.A.B. Aug. 20, 1998)

Hearing: Paper No. 15
October 8, 1997 ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 20, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Image Sciences, Inc.
________
Serial No. 74/676,406
_______
Harold E. Meier of Gardere & Wynne, L.L.P. for Image
Sciences, Inc.
Angela Lykos, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney)
_______
Before Sams, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Image Sciences, Inc. has appealed the refusal of the
Trademark Examining Attorney to register DOCUWORKS as a
trademark for “computer software utility programs for
document creation, production and manufacture; namely, file
transfer identification, conversion from one font to another
and graphic enablers.”1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.

1 Application Serial No. 74.676,406, filed May 18, 1995, based
on an asserted bona fide intention to use the mark in commerce.
Ser No. 74/676,406
2
1052(d), on the ground that applicant’s mark so resembles
the mark DOCWORX, previously registered for “computer
software in the application of document management and
document image processing, and computer hardware and
peripherals in a networked communication environment,
including laser printers, image scanners, computer
processing units, optical disc juke boxes, monitors and
related instruction manuals sold as a unit,”2 that, if
applicant were to use its mark on its identified goods, it
is likely to cause confusion or mistake or to deceive.
The case has been fully briefed, and applicant and the
Examining Attorney represented their positions at an oral
hearing.
We affirm the refusal of registration.
In any determination of likelihood of confusion, two
key factors are the marks and the goods. Turning first to
the goods, the cited registration includes “computer
software in the application of document management and
document image processing.” Applicant’s goods are “computer
software utility programs for document creation, production
and manufacture, namely file transfer, identification,
conversion from one font to another and graphic enablers.”
The Examining Attorney takes the position that
applicant’s goods, as identified, would be encompassed

Ser No. 74/676,406
3
within the computer software identified in the cited
registration. In its appeal brief applicant, although it
recognized that, to the extent they are applicable, the
factors enumerated in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973) must be considered,
never discussed the factor of the similarity or
dissimilarity of the goods. In its reply brief, applicant
has merely stated that applicant’s software is
distinguishable from the registrant’s software and hardware,
without any discussion of how or why.
We agree with the Examining Attorney that applicant’s
computer software would be encompassed within the
identification of the registrant’s computer software.
Applicant has specified that its software programs are used
for file transfer and identification; these operations fall
under the general category of document management, which is
the subject of the registrant’s identified computer
software.
Applicant has pointed out that “there is no per se rule
mandating that likelihood of confusion is to be found in all
cases where the goods or services in question involve
computer software,” or that confusion must be found “in all
cases involving any and all items of computer hardware and
any and all types of computer software sold under similar

2 Registration No. 1,824,212, issued March 1, 1994.
Ser No. 74/676,406
4
marks.” Reply brief, p. 3. We agree with applicant on
these points, but here we find that applicant’s and
registrant’s software are in part identical because both, as
identified, cover document management, i.e., file transfer
and identification.
This brings us to a consideration of the marks.
DOCUWORKS and DOCWORX are extremely similar in appearance,
pronunciation, connotation and commercial impression.
Obviously, there are some differences, in that applicant’s
mark includes the letter “U” and the cited mark uses WORX
instead of WORKS. However, we do not think that these
differences are sufficient to distinguish the marks and
avoid confusion if they were used on legally identical
software. In particular, we are not persuaded by
applicant’s argument that the “U” in its mark is
distinctive. “DOC” is the first three letters, and “DOCU”
is the first four letters of the word “document”: thus, in
both marks these initial portions, for software dealing with
document identification and transfer, or document
management, suggest the same thing. Consumers are not
likely to note or remember that one mark begins with “DOCU”
while the other begins with “DOC.” As for the remainder of
the marks, although “WORKS” is spelled with a conventional
spelling in applicant’s mark, and is spelled as the phonetic
equivalent “WORX” in the registered mark, again, consumers
Ser No. 74/676,406
5
are not likely to note or remember this slight difference.
Under actual marketing conditions consumers do not
necessarily have the opportunity to make side-by-side
comparisons, and instead they must rely on hazy past
recollections. See Dassler KG v. Roller Derby Skate Corp.,
206 USPQ 255 (TTAB 1980).
At the oral hearing applicant argued that because
“worx” is not an actual word, it has no recognized meaning
and no recognized pronunciation. We are not persuaded by
this argument. Although we acknowledge that “worx” is not a
word, consumers will view “worx” as the phonetic and
connotative equivalent of “works.” In this connection, we
would point out that the pronunciation of the letter “X” is
“eks.”3
Applicant has also asserted that “DOC” is a highly
suggestive and commonly used prefix for marks because
applicant’s “computer search of trademark records discloses
in excess of 1,179 registered marks beginning with the
prefix ‘DOC’.” Brief, p. 5. As the Examining Attorney
noted, applicant has failed to make any of these purported
third-party registrations of record. Therefore, we have no
way of knowing what goods or services are shown in the
registrations, or what commercial impression the “DOC”

3 The Random House Dictionary of the English Language, 2d ed.,
unabridged,  1987.
Ser No. 74/676,406
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portion may convey because we do not know the rest of the
marks. Having said this, we acknowledge that “doc” has a
suggestive significance with respect to both applicant’s and
the registrant’s software, but that significance is the same
in both marks. Further, our finding that the marks are
similar is not based on merely the fact that they both begin
with “DOC,” but on the similar commercial impressions of the
marks in their entireties.
Finally, applicant asserts that the purchasers of
applicant’s goods are sophisticated and that they would
exercise care in making their purchasing decisions.
Applicant has not provided any information about the kinds
of people who would purchase its product, nor the cost of
such software and, as its goods are identified, applicant’s
software could be used by anyone with a computer and a need
for document management. Such users are not necessarily
sophisticated purchasers. Moreover, even if we were to
assume that applicant’s and the registrant’s identified
software programs were bought by sophisticated purchasers,
given the legal identity of the goods, and the close
similarity of the marks, the likelihood is that consumers
will not notice the minor differences between the marks, or,
if they do notice these differences, will assume that the
marks are minor variations of each other, indicating origin
of the products in a single source.
Ser No. 74/676,406
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Decision: The refusal of registration is affirmed.
J. D. Sams
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board