Ing. C. Olivetti & C., S.p.A.

Trademark Trial and Appeal Board

Jun 18, 1999

No. 75039580 (T.T.A.B. Jun. 18, 1999)

Paper No. 9
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 18, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Ing. C. Olivetti & C., S.p.A.
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Serial No. 75/039,580
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Donna M. Weinstein of Fish & Richardson. P. C. for Ing. C.
Olivetti & C., S.p.A.
Anne Madden, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Seeherman, Walters and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
Ing. C. Olivetti & C., S.p.A. has filed an application
to register the mark OLIVETTI ENVISION for “computers;
personal and portable computers; keyboards for computers;
electrical power supplies; computer disk drives; blank
streaming tapes; apparatus for reading and recording data
on magnetic and optical supports, namely, blank
magnetically encoded and optical cards and discs, boards
Ser No. 75/039,580
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and cards having microprocessors, readers and recorders for
said boards and cards; devices for reproduction of sound
and images, namely, video controllers, fax/modem boards.”1
Registration has been finally refused under Section
2(d) of the Trademark Act, on the ground of likelihood of
confusion with the registered mark ENVISION for “computer
hardware, namely, color video display stations.”2 Applicant
and the Examining Attorney have filed briefs, but no oral
hearing was requested.
The Examining Attorney maintains that the likelihood
of confusion exists on the basis of the similarity of the
marks, the similarity of the goods and the similarity of
the channels of trade.
Insofar as the goods are concerned, the Examining
Attorney argues that the goods of registrant and applicant
are closely related computer goods which could be used
together. She has made of record third-party registrations
showing that computer goods of both types may emanate from
a single source. Applicant, on the other hand, has offered
no argument with respect to any distinction between the

1 Serial No. 75/039,580, filed January 2, 1996, under Section
44(e),with a claim of priority under Section 44(d), based on
Italian application TO 95C002185 filed July 6, 1995, which
matured into Reg. No. 657043 on September 22, 1995.
2 Registration No. 1,425,518, issued January 20, 1987; Section 8
and 15 affidavit filed and accepted.
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goods. Accordingly, we go forward with our analysis with
the apparently undisputed conclusion that the goods are
closely related computer products and would travel in the
same channels of trade.
The question is whether applicant’s addition of its
house mark OLIVETTI is sufficient to distinguish the
registered mark ENVISION from applicant’s mark OLIVETTI
ENVISION. Applicant contends that the mark ENVISION is
highly suggestive as used with video-oriented computers
and, accordingly, applicant’s well-known house mark is the
dominant portion of its mark and serves to make the
likelihood of confusion remote. Applicant supports its
argument of suggestiveness with copies of fourteen third-
party registrations for the mark ENVISION, or phonetic
equivalents thereof, for use in connection with various
computer products.
The Examining Attorney maintains that the registered
mark ENVISION is not a weak mark; that the third-party
registrations are not evidence of use by others of ENVISION
marks; and that, even if considered, most of the third
party registrations are restricted to computer software for
limited purposes, and are not for computer hardware, as is
involved here. The Examining Attorney further argues that
the addition of the OLIVETTI house mark to registrant’s
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mark would simply would be likely to create confusion as to
the source of registrant’s goods.
As a general rule, the addition of a house mark to one
of two otherwise confusingly similar marks will not serve
to avoid the likelihood of confusion between them. In re
Christian Dior, S.A., 225 USPQ 533 (TTAB 1985); In re C.F.
Hathaway Co., 190 USPQ 343 (TTAB 1976). In fact, the
addition may actually be an aggravation of the likelihood
of confusion, rather than a distinguishing factor.
Exceptions are made to this general rule, however, if there
are some recognizable differences in the conflicting
product marks, or if the product marks are merely
descriptive or highly suggestive or play upon commonly used
or registered terms, so that the addition of the house mark
may be sufficient to render the marks as a whole
distinguishable. See In re Christian Dior, S. A., supra,
and the cases cited therein.
Here the ENVISION portion of applicant’s mark is
identical to registrant’s mark. Accordingly, the first
exception is not applicable.
There is no evidence that the term “envision” is
merely descriptive of computer products, or more
particularly, of registrant’s video display stations.
Thus, contrary to applicant’s arguments, this is not a
Ser No. 75/039,580
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situation similar to that in In re S. D. Fabrics, Inc., 223
USPQ 54 (TTAB 1984) in which the additional presence in the
registered mark of the house mark DAN RIVER was considered
sufficient to distinguish the mark from applicant’s merely
descriptive mark “designers/fabric.”
As for being highly suggestive, the dictionary
definitions introduced by both the Examining Attorney and
applicant define the word “envision” as “to picture in the
mind” or “to picture to oneself.” Such a connotation is at
the most somewhat suggestive of the visualization function
of registrant’s display stations, or monitors.
While applicant has introduced evidence that ENVISION
or its phonetic equivalent has been registered as a mark by
several other entities for products in the computer field,
these registrations do not persuade us that the term
“envision” is highly suggestive in the field of computer
hardware. Of the fourteen registrations made of record,
only six are for the mark ENVISION, rather than a distinct
phonetic variation, and these six are for use in connection
with specific software programs, not hardware.
Nor can we accept the argument that these third-party
registrations evidence “wide-spread use” of the mark
ENVISION for closely related goods. Third-party
registrations are not evidence of use of the marks shown
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therein, or even that consumers are familiar with the marks
so as to be accustomed to the existence of similar marks in
the marketplace. See Hilson Research Inc. v. Society for
Human Resource Management, 27 USPQ2d 1423 (TTAB 1993) and
the cases cited therein. Thus, there is no reason for
finding registrant’s mark ENVISION so limited in trademark
significance that the addition of applicant’s house mark
OLIVETTI would avoid any likelihood of confusion.
Instead, we believe this to be a case in which the
fame being stressed by applicant for its OLIVETTI house
mark only increases the likelihood of confusion when the
house mark is added to what is, in effect, registrant’s
mark ENVISION. In view of the close relationship of
registrant’s ENVISION video display stations to the
OLIVETTI ENVISION computer products of applicant, and the
likelihood that both would be encountered by the same
purchasers, these purchasers might well assume that
applicant is in some way associated with, or now produces,
registrant’s goods. See In re Riddle, 225 USPQ 630 (TTAB
1985)[persons encountering automotive testing equipment
sold under the mark ACCUTUNE and RICHARD PETTY’S ACCUTUNE
automotive service centers would be likely to believe that
Richard Petty was associated with both the goods and the
services, in that both contain the designation ACCUTUNE].
Ser No. 75/039,580
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Although applicant attempts to liken its situation to that
in Playboy of Miami, Inc. v. John B. Stetson Co., 426 F2d.
394, 165 USPQ 686 (CCPA 1970), no such parallel can be
drawn. There, the Court found that STETSON was the
dominant portion of opposer’s mark THE STETSON PLAYBOY, and
would suggest a type of hat. Applicant’s mark PLAYBOY OF
MIAMI, on the other hand, was not seen to have any single
dominant feature. Thus, when the marks were considered in
their entireties, the Court held them sufficiently
different to avoid the likelihood of confusion. Here no
such distinction can be made between ENVISION when used as
registrant’s entire mark and as the second half of
applicant’s mark. The word is the same and creates the
same commercial impression in each mark.
Accordingly, we find that the use by applicant of its
mark OLIVETTI ENVISION for its computer goods is likely to
result in confusion on the part of purchasers, in view of
the previously registered mark ENVISION for related goods.
If there were any doubt in our minds, this too would be
resolved in favor of registrant, as the prior user of the
ENVISION mark. See Giant Food Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir.
1983).
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Decision: The refusal to register under Section 2(d)
is affirmed.
E. J. Seeherman
C. E. Walters
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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